Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA836479
`07/31/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Laverana GmbH & Co. KG
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`07/30/2017
`
`Am Weingarten 4
`Wennigsen, 30974
`GERMANY
`
`Attorney informa-
`tion
`
`James L. Scott
`Warner Norcross & Judd LLP
`111 Lyon Street NW
`900 Fifth Third Center
`Grand Rapids, MI 49503
`UNITED STATES
`Email: trademarks@wnj.com, jscott@wnj.com
`Phone: 6167522000
`
`Applicant Information
`
`Application No
`
`87134822
`
`Publication date
`
`01/31/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`07/31/2017
`
`Opposition Peri-
`od Ends
`
`07/30/2017
`
`LAVIOR INC
`3650 S. Eastern Avenue, Suite 100-A
`LAS VEGAS, NV 89169
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Cosmetic creams for skin care; Body and-
`beauty care cosmetics; Body creams; Body lotions; Body scrub; Body wash; Cosmetic body scrubs
`for the body; Cosmetic creams; Cosmetic hand creams; Cosmetic preparations for body care; Cos-
`metic preparations for skin care; Cosmetic preparations for the hair and scalp; Cosmetic soaps; Cos-
`metics and make-up; Cosmetics, namely, lip repairers; Eye lotions; Face and body creams; Face and
`body lotions; Face creams for cosmetic use; Facial cleansers; Facial lotion; Facial moisturizers; Hair
`shampoos and conditioners; Lip balm; Lip cream; Lip gloss; Lotions for cosmetic purposes; Lotions
`for skin; Moisturizing body lotions; Moisturizing creams; Moisturizing preparations for the skin; Non-
`medicated balms for use on lips;Non-medicated lip care preparations; Non-medicated lip protectors;
`Non-medicated serums for use on eye area; Nonmedicated skin care creams and lotions; Non-
`medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Oils for
`cosmetic purposes; Skin creams; Skin lotions; Skin moisturizer; Skin and body topical lotions, cream-
`sand oils for cosmetic use; Body polish;Skin conditioning creams for cosmetic purposes; Skin lotion;
`Soaps for body care; Wrinkle-minimizing cosmetic preparations for topical facial use; Bar soap; Bath
`soaps in liquid, solid or gel form; Hand soaps; Shower gel; nail polish, nailvarnish; perfume; plant-
`
`

`

`based cosmetics, Organic skincare cosmetics; non-medicated skin care preparations for clean-
`ing,soothing and protecting the skin; skin soothing moisturizers, skin soothing balms
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Non-medicated, therapeutic skin creams
`and gels for the treatment of skin conditions; Parapharmaceutical products for use in dermatology;
`Pharmaceutical preparations and substances for the treatment of damaged skin and tissue; Pharma-
`ceutical preparations for the treatment and prevention of skin conditions; Therapeuticpharmaceutical
`for the treatment of skin conditions; Topical gel and creams formedical and therapeutic treatment of
`skin conditions; Medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners
`and peels; Medicated Skin care preparations for the treatment of topical cuts and rashes, diabetes
`mellitus wounds, atopic dermatitis, molluscum contagiosum and Herpes; Non-medicated therapeutic
`skin care preparations for the treatment of topical cuts and rashes,diabetes mellitus wounds, atopic
`dermatitis, molluscum contagiosum and Herpes; Acne treatment preparations; Cold sore treatment
`preparations; Dermatological pharmaceutical products; Hemorrhoid treatment preparations; Nail
`fungus treatment preparations; plant-based pharmaceuticals for the treatment of skin conditions; Or-
`ganic skincare products, namely, non-medicated therapeutic skin creams for thetreatment of skin
`conditions; medicatedskin care preparations for cleaning, soothing and protecting the skin; non-
`medicated therapeutic skin soothing moisturizers for the treatment of topical cuts and rashes, dia-
`betes mellitus wounds, atopic dermatitis, molluscum contagiosum, herpes, eczema, inflammation in-
`fection wounds, Bedsores and Psoriasis , non-medicated therapeutic skin soothing balms forthe
`treatment of topical cuts and rashes, diabetes mellitus wounds, atopic dermatitis, molluscum conta-
`giosum, herpes, eczema, inflammation infection wounds, Bedsores and Psoriasis; anti-inflammatory
`and pain relief skin creams and gels; non-medicated therapeutic skin creams and balms to prevent
`chafing and blisters and to soothe skin irritation
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2687717
`
`Registration Date
`
`02/18/2003
`
`Application Date
`
`02/22/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`LAVERA
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`COSMETICS, NAMELY, FACE CREAMS AND LOTIONS, SKIN CLEANSERS,
`PERSONAL HYGIENE PRODUCTS, NAMELY, SHOWER GELS, SHAMPOOS
`AND BODY LOTIONS, SUN SCREEN PREPARATIONS;PRODUCTS FOR BA-
`BIES' AND CHILDRENS' CARE, NAMELY, BATHING OILS, SHAMPOOS, SKIN
`OILS AND CREAMS; MEN'S CARE PRODUCTS, NAMELY, SHAVING
`CREAM, AFTER-SHAVE BALMS, SHOWER SHAMPOOS AND DEODOR-
`ANTS; HAIR LOTIONS, DENTIFRICES, [ PERFUME, FOOT CREAMS AND
`LOTIONS; FOOT CARE PRODUCTS, NAMELY, ABRASIVE DEVICES IN THE
`NATURE OF PUMICE STONES, RASPS, OR FILES FOR TREATINGCORNS
`AND CALLUSES, NON-MEDICATED POWDERS AND LIQUIDS FOR
`BATHING FEET, AND NON-ELECRIC MASSAGE DEVICES, SPECIFICALLY,
`DEVICES DESIGNED FOR MASSAGING FEET; ] DECORATIVE COSMETICS,
`NAMELY, TINTED MOISTURIZING CREAMS, MAKEUP, COMPACT FACE
`POWDERS AND ROUGES, COVER-UP STICKS, LIPSTICKS, EYE-
`DECORATING PENCILS AND MASCARA
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`[ NUTRITIONAL SUPPLEMENTS AND VITAMINS ]
`
`

`

`Attachments
`
`Notice of Opposition.pdf(121989 bytes )
`
`Signature
`
`/JS/
`
`Name
`
`Date
`
`James L. Scott
`
`07/31/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`
`
`
`
`
`
`Re: Application Serial No. 87134822
`Published on January 31, 2017
`
`
`Laverana GmbH & Co. KG
`
`
`
`v.
`
`Lavior Inc.
`
`
`
`
`
`
`Opposer,
`
`Applicant
`
`
`
`NOTICE OF OPPOSITION
`
`1.
`
`Opposer, Laverana GmbH & Co. KG, is a German limited partnership with
`
`business offices at Am Weingarten 4, Wennigsen, Germany 30974.
`
`2.
`
`Applicant, Lavior Inc. is a Delaware corporation with an address of 3650 S.
`
`Eastern Avenue, Suite 100-A, Las Vegas, Nevada 89169.
`
`3.
`
`On August 11, 2016, Applicant filed U.S. Application Serial No. 87134822, to
`
`register the mark LAVIOR in standard characters. As amended, Application Serial No.
`
`87134822 seeks registration of the mark LAVIOR for use with the following goods in
`
`International Classes 3 and 5:
`
`Class 3:
`
`Cosmetic creams for skin care; Body and beauty care
`
`cosmetics; Body creams; Body lotions; Body scrub; Body wash;
`
`Cosmetic body scrubs for the body; Cosmetic creams; Cosmetic hand
`
`creams; Cosmetic preparations for body care; Cosmetic preparations for
`
`skin care; Cosmetic preparations for the hair and scalp; Cosmetic soaps;
`
`16117461
`
`

`

`Cosmetics and make-up; Cosmetics, namely, lip repairers; Eye lotions;
`
`Face and body creams; Face and body lotions; Face creams for cosmetic
`
`use; Facial cleansers; Facial lotion; Facial moisturizers; Hair shampoos
`
`and conditioners; Lip balm; Lip cream; Lip gloss; Lotions for cosmetic
`
`purposes; Lotions for skin; Moisturizing body lotions; Moisturizing
`
`creams; Moisturizing preparations for the skin; Non-medicated balms for
`
`use on lips; Non-medicated lip care preparations; Non-medicated lip
`
`protectors; Non-medicated serums for use on eye area; Nonmedicated
`
`skin care creams and lotions; Non-medicated skin care preparations,
`
`namely, creams, lotions, gels, toners, cleaners and peels; Oils for
`
`cosmetic purposes; Skin creams; Skin lotions; Skin moisturizer; Skin and
`
`body topical lotions, creams and oils for cosmetic use; Body polish; Skin
`
`conditioning creams for cosmetic purposes; Skin lotion; Soaps for body
`
`care; Wrinkle-minimizing cosmetic preparations for topical facial use;
`
`Bar soap; Bath soaps in liquid, solid or gel form; Hand soaps; Shower
`
`gel; nail polish, nail varnish; perfume; plant-based cosmetics, Organic
`
`skincare cosmetics; non-medicated skin care preparations for cleaning,
`
`soothing and protecting the skin; skin soothing moisturizers, skin
`
`soothing balms.
`
`Class 5:
`
`Non-medicated, therapeutic skin creams and gels for the
`
`treatment of skin conditions; Parapharmaceutical products for use in
`
`dermatology; Pharmaceutical preparations and substances for
`
`the
`
`treatment of damaged skin and tissue; Pharmaceutical preparations for
`
`the
`
`treatment and prevention of
`
`skin conditions; Therapeutic
`
`16117461
`
`

`

`pharmaceutical for the treatment of skin conditions; Topical gel and
`
`creams for medical and therapeutic treatment of skin conditions;
`
`Medicated skin care preparations, namely, creams, lotions, gels, toners,
`
`cleaners and peels; Medicated Skin care preparations for the treatment of
`
`topical cuts and rashes, diabetes mellitus wounds, atopic dermatitis,
`
`molluscum contagiosum and Herpes; Non-medicated therapeutic skin
`
`care preparations for the treatment of topical cuts and rashes, diabetes
`
`mellitus wounds, atopic dermatitis, molluscum contagiosum and Herpes;
`
`Acne
`
`treatment preparations; Cold sore
`
`treatment preparations;
`
`Dermatological pharmaceutical products; Hemorrhoid
`
`treatment
`
`preparations; Nail
`
`fungus
`
`treatment
`
`preparations;
`
`plant-based
`
`pharmaceuticals for the treatment of skin conditions; Organic skincare
`
`products, namely, non-medicated therapeutic skin creams for the
`
`treatment of skin conditions; medicated skin care preparations for
`
`cleaning, soothing and protecting the skin; non-medicated therapeutic
`
`skin soothing moisturizers for the treatment of topical cuts and rashes,
`
`diabetes mellitus wounds, atopic dermatitis, molluscum contagiosum,
`
`herpes, eczema, inflammation infection wounds, Bedsores and Psoriasis ,
`
`non-medicated therapeutic skin soothing balms for the treatment of
`
`topical cuts and rashes, diabetes mellitus wounds, atopic dermatitis,
`
`molluscum contagiosum, herpes, eczema,
`
`inflammation
`
`infection
`
`wounds, Bedsores and Psoriasis; anti-inflammatory and pain relief skin
`
`creams and gels; non-medicated therapeutic skin creams and balms to
`
`prevent chafing and blisters and to soothe skin irritation.
`
`16117461
`
`

`

`4.
`
`Opposer owns U.S. Trademark Registration No. 2687717 for the mark LAVERA
`
`(“Opposer’s Registration”).
`
`5.
`
`6.
`
`7.
`
`Opposer’s Registration is valid and subsisting and in full force and effect.
`
`Opposer’s Registration is incontestable.
`
`A true and correct copy of a current printout of information from the electronic
`
`database records of the USPTO is attached hereto and shows the current status and title of
`
`Opposer’s Registration.
`
`8.
`
`Opposer has for years, and since prior to the filing date of Applicant’s application
`
`and Applicant’s first use of the mark LAVIOR, used the mark LAVERA in association with
`
`cosmetics and skin care products.
`
`9.
`
`Opposer has expended substantial resources to advertise and promote its products
`
`under the mark LAVERA.
`
`10.
`
`Opposer has used the LAVERA mark, and the relevant public recognizes the
`
`LAVERA mark as identifying goods emanating exclusively from Opposer, since before
`
`Applicant first used the mark LAVIOR and before August 11, 2016.
`
`11.
`
`Opposer’s mark LAVERA is inherently distinctive as used in connection with
`
`Opposer’s products.
`
`12.
`
`Through Opposer’s advertising and promotion of cosmetics and skincare products
`
`under the LAVERA mark, the relevant public has come to recognize the mark as signifying
`
`Opposer and its products, and Opposer has built up extensive and valuable goodwill in the mark.
`
`13.
`
`Opposer believes that it will be damaged by registration of the mark in
`
`Applicant’s application. Opposer, therefore, has standing under Lanham Act §13(a), 15 U.S.C. §
`
`1063(a), to oppose the application.
`
`16117461
`
`

`

`14.
`
`The goods covered by Applicant’s application are highly similar to, related to, and
`
`overlap with the goods sold by Opposer under the LAVERA mark.
`
`15.
`
`There is no issue of priority. The date of the opposed application is later than
`
`Opposer’s use of the mark LAVERA in interstate commerce in the United States.
`
`16.
`
`The LAVIOR mark in the opposed application is substantially identical in sight,
`
`sound, and meaning to Opposer’s mark LAVERA.
`
`17.
`
`Applicant’s application is not restricted by trade channel. Applicant’s products
`
`are likely to be offered to an overlapping class of purchasers through the same and similar
`
`channels of trade.
`
`18.
`
`The mark in the opposed application when used in connection with the goods
`
`identified in the application so resembles Opposer’s mark LAVERA that it is likely to cause
`
`confusion, mistake, or deception as to the origin of Applicant’s goods and to confuse, mislead,
`
`and deceive members of the public into believing that Applicant’s goods originate from, or are
`
`sponsored, approved, or licensed by Opposer, or are in some way connected to Opposer and its
`
`products.
`
`19.
`
`Applicant’s use and registration of the LAVIOR mark for the goods identified in
`
`the opposed applications is likely to cause confusion, deception, and/or mistake among the
`
`relevant public.
`
`20.
`
`Applicant’s use and registration of the LAVIOR mark for the goods identified in
`
`the opposed applications is likely to falsely suggest a connection with Opposer and Opposer’s
`
`mark LAVERA.
`
`16117461
`
`

`

`21.
`
`If Applicant were granted the registration herein opposed, it would thereby obtain
`
`at least a prima facie exclusive right to use the marks. The registration would be a source of
`
`damage and injury to Opposer.
`
`
`
`
`
`Opposer requests that the application be rejected and registration of the mark
`
`Respectfully submitted,
`
`LAVERANA GMBH & CO. KG
`
`By: Warner Norcross & Judd LLP
`
`______________________________
`James L. Scott
`900 Fifth Third Center
`111 Lyon Street N.W.
`Grand Rapids, MI 49503
`(616) 752-2469
`Attorneys for Opposer
`
`denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`16117461
`
`

`

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`3rd tab providing Post Registration information next to the "Status" and "Document" tabs, below the search text box. The
`tab will not appear if the mark is not registered.
`
`STATUS
`
`DOCUMENTS
`
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`
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`
`Print
`
`Generated on: This page was generated by TSDR on 2017-07-31 15:55:16 EDT
`
`Mark: LAVERA
`
`No Image exists for this
`case.
`
`US Serial Number: 75646981
`
`US Registration Number: 2687717
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing Date: Feb. 22, 1999
`
`Registration Date: Feb. 18, 2003
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: The registration has been renewed.
`
`Status Date: Jan. 24, 2013
`
`Publication Date: Mar. 05, 2002
`
`Mark Information
`
`Mark Literal Elements: LAVERA
`
`Standard Character Claim: No
`
`Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`
`
`Foreign Information
`
`Foreign Application
`Number:
`
`H55330
`
`Foreign Registration
`Number:
`
`1087216
`
`Foreign
`Application/Registration
`Country:
`
`GERMANY
`
`Goods and Services
`
`Foreign Application Filing
`Date:
`
`Dec. 01, 1995
`
`Foreign Registration Date: Feb. 22, 1999
`
`Foreign Expiration Date: Dec. 31, 2005
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`
`

`

`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`For: COSMETICS, NAMELY, FACE CREAMS AND LOTIONS, SKIN CLEANSERS, PERSONAL HYGIENE PRODUCTS, NAMELY,
`SHOWER GELS, SHAMPOOS AND BODY LOTIONS, SUN SCREEN PREPARATIONS; PRODUCTS FOR BABIES' AND CHILDRENS'
`CARE, NAMELY, BATHING OILS, SHAMPOOS, SKIN OILS AND CREAMS; MEN'S CARE PRODUCTS, NAMELY, SHAVING CREAM,
`AFTER-SHAVE BALMS, SHOWER SHAMPOOS AND DEODORANTS; HAIR LOTIONS, DENTIFRICES, [ PERFUME, FOOT CREAMS
`AND LOTIONS; FOOT CARE PRODUCTS, NAMELY, ABRASIVE DEVICES IN THE NATURE OF PUMICE STONES, RASPS, OR
`FILES FOR TREATING CORNS AND CALLUSES, NON-MEDICATED POWDERS AND LIQUIDS FOR BATHING FEET, AND NON-
`ELECRIC MASSAGE DEVICES, SPECIFICALLY, DEVICES DESIGNED FOR MASSAGING FEET; ] DECORATIVE COSMETICS,
`NAMELY, TINTED MOISTURIZING CREAMS, MAKEUP, COMPACT FACE POWDERS AND ROUGES, COVER-UP STICKS,
`LIPSTICKS, EYE-DECORATING PENCILS AND MASCARA
`
`International Class(es): 003 - Primary Class
`
`U.S Class(es): 001, 004, 006, 050, 051, 052
`
`Class Status: ACTIVE
`
`Basis: 44(e)
`
`For: [ NUTRITIONAL SUPPLEMENTS AND VITAMINS ]
`
`International Class(es): 005 - Primary Class
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`Class Status: SECTION 8 - CANCELLED
`
`Basis: 44(e)
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: Yes
`
`Filed 66A: No
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: Yes
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Amended Use:
`
`Amended ITU:
`
`Amended 44D:
`
`Amended 44E:
`
`Current Owner(s) Information
`
`Owner Name: LAVERANA GMBH & CO. KG
`
`Owner Address: AM WEINGARTEN 4
`WENNIGSEN GERMANY 30974
`
`Legal Entity Type: LIMITED PARTNERSHIP
`
`Attorney/Correspondence Information
`
`Attorney of Record
`Attorney Name: Nina Shreve
`
`Correspondent
`Correspondent
`Name/Address:
`
`Nina Shreve
`FITZPATRICK, CELLA, HARPER & SCINTO
`
`State or Country Where
`Organized:
`
`GERMANY
`
`Docket Number: 01849.000007
`
`

`

`1290 AVENUE OF THE AMERICAS
`NEW YORK, NEW YORK UNITED STATES 10104-3800
`
`Phone: 212-218-2100
`
`Domestic Representative
`Domestic Representative
`Name:
`
`Nina Shreve
`
`Fax: 212-218-2200
`
`Prosecution History
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Continued Use: Section 8 - Accepted
`
`Affidavit of Incontestability: Section 15 - Accepted
`
`Renewal Date: Feb. 18, 2013
`
`Change in Registration: Yes
`
`TM Staff and Location Information
`
`TM Staff Information - None
`File Location
`Current Location: GENERIC WEB UPDATE
`
`Assignment Abstract Of Title Information - Click to Load
`
`Proceedings - Click to Load
`
`Fax: 212-218-2200
`
`Phone: 212-218-2100
`
`Date in Location: Jan. 24, 2013
`
`