Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA888254
`04/06/2018
`
`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
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`KAS Direct, LLC
`
`04/18/2018
`
`1600 Stewart AvenueSuite 411
`Westbury, NY 11590
`UNITED STATES
`
`Angela Kalsi
`IpHorgan Ltd.
`195 Arlington Heights Rd., Suite 125
`Buffalo Grove, IL 60089
`UNITED STATES
`Email: mail@iphorgan.com, akalsi@iphorgan.com
`
`Applicant Information
`
`Application No
`
`87578688
`
`Publication date
`
`12/19/2017
`
`Opposition Filing
`Date
`
`Applicant
`
`04/06/2018
`
`Opposition Peri-
`od Ends
`
`04/18/2018
`
`Ladyganics LLC
`Unit 201
`1513 Tin Cup Ct.
`Panama City Beach, FL 32413
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 2017/06/04 First Use In Commerce: 2017/06/05
`All goods and services in the class are opposed, namely: After-shave balms; After-shave creams;
`After-sun lotions; After-sun oils; Aftersun creams; After sun moisturisers; Aromatic essential oils; Aro-
`matic oils for the bath; Aromatic potpourris; Bath bombs; Bath herbs; Bath soaps; Beauty balm
`creams; Beauty soap; Body lotions; Body scrub; Bubble bath; Cleaning preparations; Cosmetic sun
`oils; Cosmetic soaps; Cosmetic sun-protecting preparations; Cosmetic sun-tanning preparations;
`Cosmetic sunscreen preparations; Deodorant for personal use; Deodorant soap; Deodorants for body
`care; Dry shampoos; Essential oils for aromatherapy use; Facial beauty masks; Facial scrubs; Fra-
`grance sachets; Fragranced body care preparations, namely, body scrubs, shower gels, bath bombs,
`non-medicated bath salts, bath herbs, massage oils, tanning oils; Fragranced face care preparations,
`namely, facial cleansers, facial skin toners, facial moisturizers, facial masks, facial scrubs, non-
`medicated facial soaps, facial oils, facial aftershaves, aftershave balms, lip balms; Fragranced skin
`care preparations, namely, skin cleansers, skin moisturizers, perfumes, colognes; Hair conditioner;
`Hair conditioners; Hair shampoo; Inhaler sold filled with essential oils for use in aromatherapy; In-
`halers sold filled with essential oils, not for medical or therapeutic use; Laundry soap; Lip balm; Liquid
`bath soaps; Lotions for face and body care; Massage oils; Moisturizingbody lotions; Non-medicated
`bath salts;Non-medicated bubble bath preparations;Non-medicated skin care preparations; Oils for
`
`

`

`hair conditioning; Perfumed soap; Perfumed soaps; Personal deodorants; Shaving soap; Shaving
`soaps; Shower and bath gel; Skin moisturizers used as cosmetics; SPF sun block sprays; Stain re-
`movers; Sun-tanning oils; Tanning oils; Toilet soap; Toilet soaps; Aftershave preparations; Toning lo-
`tion, for the face, body and hands
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols, or brings them into contempt, or disrep-
`ute
`
`Trademark Act Section 2(d)
`
`Trademark Act Section 2(a)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`5274736
`
`Registration Date
`
`08/29/2017
`
`Word Mark
`
`Design Mark
`
`BABYGANICS
`
`Application Date
`
`11/09/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2008/04/02 First Use In Commerce: 2008/04/02
`All-purpose household cleaning preparations; disposable wipes impregnated
`with cleaning chemicals or compounds for household use; multi-surface house-
`hold cleaning preparations; bathtub and tile cleaning preparations; floor cleaning
`preparations; preparations to clean dishes and bottles; preparations to clean
`toys and furniture surfaces; disposable wipes impregnated with cleaning com-
`pounds to clean toys and furniture; hand soaps; laundry detergent; antistatic dry-
`er sheets; preparations to remove stains; face and hand wipes impregnated with
`a cleaning preparation; baby wipes; shampoo and body wash preparations;
`moisturizing cream body wash preparations; bubble bath; lip and non-medicated
`face balms; skin moisturizing lotions; toothpaste; non-medicatedskin care pre-
`parations, namely, skin ointments to promote healing; sunscreen creams and
`sun block preparations; sunscreen sticks and sprays
`Class 005. First use: First Use: 2008/12/08 First Use In Commerce: 2008/12/08
`Hand sanitizing preparations; hand sanitizing wipes; sanitizing hand wipes; med-
`icated eczema creams; medicated diaper rash creams; insect repellants; teeth-
`ing gels; baby diapers; disposable swim diapers for children and infants; odor
`neutralizing preparations for use on fabric and upholstery; topical preparations
`for the relief of coughs and colds
`Class 021. First use: First Use: 2016/04/00 First Use In Commerce: 2016/04/00
`Reusable dryer balls made of wool that are placed in the clothes drying ma-
`chineto assist in the drying process and also to soften fabric
`
`

`

`U.S. Registration
`No.
`
`5274735
`
`Registration Date
`
`08/29/2017
`
`Word Mark
`
`Design Mark
`
`BABYGANICS
`
`Application Date
`
`11/09/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "BABYGANICS" in green, lower case, stylized let-
`ters.
`
`Class 003. First use: First Use: 2008/04/02 First Use In Commerce: 2008/04/02
`All-purpose household cleaning preparations; disposable wipes impregnated
`with cleaning chemicals or compounds for household use; multi-surface house-
`hold cleaning preparations; bathtub and tile cleaning preparations; floor cleaning
`preparations; preparations to clean dishes and bottles; preparations to clean
`toys and furniture surfaces; disposable wipes impregnated with cleaning com-
`pounds to clean toys and furniture; hand soaps; laundry detergent; antistatic dry-
`er sheets; preparations to remove stains; face and hand wipes impregnated with
`a cleaning preparation; baby wipes; shampoo and body wash preparations;
`moisturizing cream body wash preparations; bubble bath; lip and non-medicated
`face balms; skin moisturizing lotions; toothpaste; non-medicatedskin care pre-
`parations, namely, skin ointments to promote healing; sunscreen creams and
`sun block preparations; sunscreen sticks and sprays
`Class 005. First use: First Use: 2008/04/02 First Use In Commerce: 2008/04/02
`Hand sanitizing preparations; hand sanitizing wipes; sanitizing hand wipes; med-
`icated eczema creams; medicated diaper rash creams; insect repellants; teeth-
`ing gels; baby diapers; disposable swim diapers for children and infants; odor
`neutralizing preparations for use on fabric and upholstery; topical preparations
`for the relief of coughs and colds
`Class 021. First use: First Use: 2016/04/00 First Use In Commerce: 2016/04/00
`Reusable dryer balls made of wool that are placed in the clothes drying ma-
`chineto assist in the drying process and also to soften fabric
`
`U.S. Registration
`No.
`
`4378857
`
`Registration Date
`
`08/06/2013
`
`Word Mark
`
`Design Mark
`
`BABYGANICS
`
`Application Date
`
`08/20/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2008/03/17 First Use In Commerce: 2008/03/17
`All-purpose household cleaning preparations; glass and surface cleaning pre-
`parations; bathtub and tile cleaning preparations; floor cleaning preparations;
`preparations to clean dishes and bottles; dishwasher detergent; hand soaps;
`laundry detergent; anti-static dryer sheets; preparations to remove stains; odor
`removers for pets; scented room sprays; baby wipes; non-medicated diaper rash
`cream; shampoo and body wash preparations; non-medicated bubble bath pre-
`parations; lip and face balms; skin moisturizing lotions;toothpaste; non-
`medicated skin care preparations, namely, skin ointments to promote healing;
`sunscreen creams and sun block preparations; sunscreen sticks
`Class 005. First use: First Use: 2008/08/14 First Use In Commerce: 2008/08/14
`Hand sanitizing preparations; hand sanitizing wipes; medicated sunscreen and
`sunblock preparations; medicated sunscreensticks; medicated body-wash pre-
`parations; cleaning preparations, namely, odor eliminators not for personal use;
`odor neutralizing preparations for general use on various surfaces; air deodoriz-
`ing preparations for rooms; medicated diaper rash creams; saline nasal sprays;
`anti-insect spray; anti-inflammatory teething gels
`
`U.S. Registration
`No.
`
`3196553
`
`Registration Date
`
`01/09/2007
`
`Word Mark
`
`Design Mark
`
`BABYGANICS
`
`Application Date
`
`03/02/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 003. First use: First Use: 2005/12/01 First Use In Commerce: 2005/12/01
`all-purpose cleaners comprised of all natural ingredients that can be used in
`households with babies and pets
`
`87231209#TMSN.png( bytes )
`87231196#TMSN.png( bytes )
`85707590#TMSN.png( bytes )
`78827190#TMSN.png( bytes )
`Notice of Opposition.pdf(159259 bytes )
`Exhibit A.pdf(340391 bytes )
`Exhibit B.pdf(1774234 bytes )
`
`Signature
`
`/Angela Kalsi/
`
`Name
`
`Date
`
`Angela Kalsi
`
`04/06/2018
`
`

`

`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`:
`:
`:
`:
`:
`
`87578688
`August 22, 2017
`December 19, 2017
`LADYGANICS
`Ladyganics LLC
`
`
`In the Matter of Application:
`
`Appl. No.
`Filed
`
`Published
`Mark
`
`Applicant
`
`KAS Direct, LLC
`
`
`
`
`
`
`
`v.
`
`
`
`
`Ladyganics LLC
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`Applicant.
`
`Opposition No. (Not Yet Assigned)
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`
`
`KAS Direct, LLC believes it will be harmed by registration of the trademark
`
`LADYGANICS by Ladyganics LLC (“Ladyganics” or “Applicant”) as applied for in U.S.
`
`Application Serial No. 87578688. Accordingly, KAS Direct, LLC (“KAS Direct” or “Opposer”)
`
`by its attorneys IpHorgan Ltd. hereby opposes registration of Ladyganics’ applied-for mark. In
`
`support of this Notice of Opposition, KAS Direct states as follows:
`
`1)
`
`Opposer KAS Direct is a Delaware limited liability company located at 1600
`
`Stewart Avenue, Suite 411, Westbury, New York 11590.
`
`2)
`
`KAS Direct is the owner of the BABYGANICS trademark, for use on or in
`
`connection with a wide variety of goods, including cleaning preparations, detergents, skincare
`
`products, soaps, bath products, and sunscreens.
`
`
`
`1
`
`

`

`3)
`
`KAS Direct owns multiple United States Trademark Registrations for its
`
`BABYGANICS trademarks (“BABYGANICS Registrations” or “BABYGANICS Marks”),
`
`Reg. No.
`(Appl. No.)
`3196553
`(78827190)
`
`4378857
`(85707590)
`
`Priority
`Date
`December
`1, 2005
`
`March 17,
`2008
`
`Reg. Date
`(Filing Date)
`January 9,
`2007
`(March 2,
`2006)
`August 6,
`2013
`(August 20,
`2012)
`
`including the following:
`
`Mark
`
`Goods/Services (Class)
`
`BABYGANICS All-purpose cleaners comprised
`of all natural ingredients that can
`be used in households with
`babies and pets (Class 03)
`BABYGANICS All-purpose household cleaning
`preparations; glass and surface
`cleaning preparations; bathtub
`and tile cleaning preparations;
`floor cleaning preparations;
`preparations to clean dishes and
`bottles; dishwasher detergent;
`hand soaps; laundry detergent;
`anti-static dryer sheets;
`preparations to remove stains;
`odor removers for pets; scented
`room sprays; baby wipes; non-
`medicated diaper rash cream;
`shampoo and body wash
`preparations; non-medicated
`bubble bath preparations; lip and
`face balms; skin moisturizing
`lotions; toothpaste; non-
`medicated skin care
`preparations, namely, skin
`ointments to promote healing;
`sunscreen creams and sun block
`preparations; sunscreen sticks
`(Class 03);
`Hand sanitizing preparations;
`hand sanitizing wipes;
`medicated sunscreen and
`sunblock preparations;
`medicated sunscreen sticks;
`medicated body-wash
`preparations; cleaning
`preparations, namely, odor
`eliminators not for personal use;
`odor neutralizing preparations
`
`
`
`2
`
`

`

`5274735
`(87231196)
`
`April 2,
`2008
`
`August 29,
`2017
`(November
`9, 2016)
`
`
`
`for general use on various
`surfaces; air deodorizing
`preparations for rooms;
`medicated diaper rash creams;
`saline nasal sprays; anti-insect
`spray; anti-inflammatory
`teething gels. (Class 05)
`All-purpose household cleaning
`preparations; disposable wipes
`impregnated with cleaning
`chemicals or compounds for
`household use; multi-surface
`household cleaning preparations;
`bathtub and tile cleaning
`preparations; floor cleaning
`preparations; preparations to
`clean dishes and bottles;
`preparations to clean toys and
`furniture surfaces; disposable
`wipes impregnated with cleaning
`compounds to clean toys and
`furniture; hand soaps; laundry
`detergent; antistatic dryer sheets;
`preparations to remove stains;
`face and hand wipes
`impregnated with a cleaning
`preparation; baby wipes;
`shampoo and body wash
`preparations; moisturizing cream
`body wash preparations; bubble
`bath; lip and non-medicated face
`balms; skin moisturizing lotions;
`toothpaste; non-medicated skin
`care preparations, namely, skin
`ointments to promote healing;
`sunscreen creams and sun block
`preparations; sunscreen sticks
`and sprays (Class 03);
`Hand sanitizing preparations;
`hand sanitizing wipes; sanitizing
`hand wipes; medicated eczema
`creams; medicated diaper rash
`creams; insect repellants;
`teething gels; baby diapers;
`disposable swim diapers for
`children and infants; odor
`
`
`
`3
`
`

`

`5274736
`(87231209)
`
`April 2,
`2008
`
`August 29,
`2017
`(November
`9, 2016)
`
`neutralizing preparations for use
`on fabric and upholstery; topical
`preparations for the relief of
`coughs and colds (Class 05);
`Reusable dryer balls made of
`wool that are placed in the
`clothes drying machine to assist
`in the drying process and also to
`soften fabric (Class 21)
`BABYGANICS All-purpose household cleaning
`preparations; disposable wipes
`impregnated with cleaning
`chemicals or compounds for
`household use; multi-surface
`household cleaning preparations;
`bathtub and tile cleaning
`preparations; floor cleaning
`preparations; preparations to
`clean dishes and bottles;
`preparations to clean toys and
`furniture surfaces; disposable
`wipes impregnated with cleaning
`compounds to clean toys and
`furniture; hand soaps; laundry
`detergent; antistatic dryer sheets;
`preparations to remove stains;
`face and hand wipes
`impregnated with a cleaning
`preparation; baby wipes;
`shampoo and body wash
`preparations; moisturizing cream
`body wash preparations; bubble
`bath; lip and non-medicated face
`balms; skin moisturizing lotions;
`toothpaste; non-medicated skin
`care preparations, namely, skin
`ointments to promote healing;
`sunscreen creams and sun block
`preparations; sunscreen sticks
`and sprays (Class 03);
`Hand sanitizing preparations;
`hand sanitizing wipes; sanitizing
`hand wipes; medicated eczema
`creams; medicated diaper rash
`creams; insect repellants;
`teething gels; baby diapers;
`
`
`
`4
`
`

`

`disposable swim diapers for
`children and infants; odor
`neutralizing preparations for use
`on fabric and upholstery; topical
`preparations for the relief of
`coughs and colds (Class 05);
`Reusable dryer balls made of
`wool that are placed in the
`clothes drying machine to assist
`in the drying process and also to
`soften fabric (Class 21)
`
`
`
`Attached hereto as Exhibit A are true and correct copies of the registration certificates and TESS
`
`printouts for Opposer’s BABYGANICS Registrations. These registrations are valid, subsisting,
`
`and in full force and effect.
`
`4)
`
`KAS Direct has filed a Declaration of Use and Incontestability under Sections 8
`
`and 15 of the Lanham Act for Registration No. 3196553. The Declaration was accepted by the
`
`U.S. Patent and Trademark Office. As a result, this Registration is incontestable under Section 15
`
`of the Lanham Act.
`
`5)
`
`The goods claimed in Opposer’s BABYGANICS Registrations are not limited as
`
`to their nature, type, channels of trade, or class of purchasers. Accordingly, it is presumed that
`
`these registrations encompass all goods of the type described, that they move in all normal
`
`channels of trade, and that they are available to all classes of purchasers.
`
`6)
`
`KAS Direct has expended considerable time, money, and effort in advertising,
`
`promoting, and popularizing its BABYGANICS Marks throughout the United States. As a
`
`consequence of these efforts, KAS Direct has acquired tremendous goodwill in the
`
`BABYGANICS Marks.
`
`7)
`
`As a result of KAS Direct’s longstanding and continuous use of its BABYGANICS
`
`Marks, the relevant consuming public recognizes the BABYGANICS Marks as identifying KAS
`
`
`
`5
`
`

`

`Direct as the source of the goods offered thereunder and distinguishing those goods from the goods
`
`of others. Moreover, as KAS Direct’s most important trademark, the BABYGANICS Mark
`
`functions as an identity of KAS Direct.
`
`8)
`
`Applicant Ladyganics is a Wyoming limited liability company with an address at
`
`1513 Tin Cup Ct., Panama City Beach, Florida 32413.
`
`9)
`
`Applicant filed on August 22, 2017, U.S. Application Serial No. 87578688 for the
`
`mark LADYGANICS under Trademark Act Section 1(a), in connection with the following goods
`
`in International Class 03:
`
`After-shave balms; After-shave creams; After-sun lotions; After-sun oils;
`After sun creams; After sun moisturisers; Aromatic essential oils; Aromatic
`oils for the bath; Aromatic potpourris; Bath bombs; Bath herbs; Bath soaps;
`Beauty balm creams; Beauty soap; Body lotions; Body scrub; Bubble bath;
`Cleaning preparations; Cosmetic sun oils; Cosmetic soaps; Cosmetic sun-
`protecting preparations; Cosmetic sun-tanning preparations; Cosmetic
`sunscreen preparations; Deodorant for personal use; Deodorant soap;
`Deodorants for body care; Dry shampoos; Essential oils for aromatherapy
`use; Facial beauty masks; Facial scrubs; Fragrance sachets; Fragranced
`body care preparations, namely, body scrubs, shower gels, bath bombs, non-
`medicated bath salts, bath herbs, massage oils, tanning oils; Fragranced face
`care preparations, namely, facial cleansers, facial skin toners, facial
`moisturizers, facial masks, facial scrubs, non-medicated facial soaps, facial
`oils, facial aftershaves, aftershave balms, lip balms; Fragranced skin care
`preparations, namely, skin cleansers, skin moisturizers, perfumes, colognes;
`Hair conditioner; Hair conditioners; Hair shampoo; Inhaler sold filled with
`essential oils for use in aromatherapy; Inhalers sold filled with essential oils,
`not for medical or therapeutic use; Laundry soap; Lip balm; Liquid bath
`soaps; Lotions for face and body care; Massage oils; Moisturizing body
`lotions; Non-medicated bath
`salts; Non-medicated bubble bath
`preparations; Non-medicated skin care preparations; Oils for hair
`conditioning; Perfumed soap; Perfumed soaps; Personal deodorants;
`Shaving soap; Shaving soaps; Shower and bath gel; Skin moisturizers used
`as cosmetics; SPF sun block sprays; Stain removers; Sun-tanning oils;
`Tanning oils; Toilet soap; Toilet soaps; Aftershave preparations; Toning
`lotion, for the face, body and hands.
`
`10) Applicant asserts that the LADYGANICS mark was first used in commerce in the
`
`United States on June 5, 2017.
`
`
`
`6
`
`

`

`11)
`
`The LADYGANICS application was published for opposition in the December 19,
`
`2017, edition of the USPTO’s Official Gazette.
`
`12) KAS Direct believes it will be injured by registration of the LADYGANICS mark
`
`in connection with the International Class 03 goods identified in the LADYGANICS application.
`
`13) KAS Direct has not consented to Ladyganics’ use or registration of the
`
`LADYGANICS mark.
`
`14) Opposer’s BABYGANICS Registrations have filing dates, registration dates, and
`
`first use dates that precede the filing date and asserted use date of the LADYGANICS
`
`application. In addition, the BABYGANICS Marks have been in continuous use in U.S.
`
`commerce since long before the filing date and asserted use date of the Applicant’s
`
`LADYGANICS mark. Therefore, the BABYGANICS Marks and BABYGANICS Registrations
`
`have priority over the LADYGANICS application.
`
`15)
`
`The LADYGANICS mark is confusingly similar in sound, appearance, and
`
`commercial impression to the BABYGANICS mark. The marks differ only in their first and third
`
`letters and are otherwise identical. The marks share a similar pronunciation as a result of the long
`
`A sound in both “lady” and “baby” and the marks’ identical endings “ganics.” Moreover, the
`
`LADYGANICS mark gives the impression that it is an extension of the BABYGANICS brand or
`
`a product line within the BABYGANICS brand that is specially designed for women.
`
`16)
`
`Furthermore, images of babies appear on the Applicant’s website home page and
`
`“About Us” page. This suggests an intent to expand into selling products for babies, which will
`
`create a serious risk of confusion in the marketplace. Consumers may see LADYGANICS baby
`
`products as interchangeable with BABYGANICS products, and there is also the potential of
`
`
`
`7
`
`

`

`reverse confusion wherein BABYGANICS products could be mistaken for the LADYGANICS
`
`baby product line. Attached hereto as Exhibit B are screenshots from www.ladyganics.com.
`
`17)
`
`The LADYGANICS application claims goods in International Class 03 that are
`
`identical and highly-related to the goods in Opposer’s BABYGANICS Registrations.
`
`18) Given the identical and highly-related nature of the goods claimed in the
`
`LADYGANICS application and the goods identified in KAS Direct’s BABYGANICS
`
`Registrations, these goods are likely to be marketed and sold to the same consumers and in the
`
`same channels of trade.
`
`19) Owing to KAS Direct’s use of and priority of rights in its BABYGANICS Marks,
`
`the confusing similarity of the parties’ marks, the identical and highly related nature of the
`
`goods, and the broad exposure of the BABYGANICS Marks to the same consumers in the same
`
`markets and channels of trade as those implicated by Ladyganics’ applied-for mark,
`
`LADYGANICS so resembles KAS Direct’s BABYGANICS Marks as to be likely to cause
`
`confusion or mistake, or to deceive, within the meaning of 15 15 U.S.C. § 1052(d).
`
`20)
`
`Further, because (a) Applicant’s applied-for LADYGANICS mark is in part
`
`identical to the BABYGANICS Marks; (b) Applicant’s applied-for mark used in connection with
`
`International Class 03 goods would be recognized by purchasers as pointing uniquely and
`
`unmistakably to KAS Direct; (c) KAS Direct is not connected with any goods sold under
`
`Applicant’s mark; and (d) KAS Direct’s BABYGANICS Marks are famous and of high
`
`reputation, a false connection between the goods sold under Applicant’s applied-for
`
`LADYGANICS mark and KAS Direct would be presumed within the meaning of 15 U.S.C. §
`
`1052(a).
`
`
`
`8
`
`

`

`21)
`
`Registration of the applied-for LADYGANICS mark will impair KAS Direct’s
`
`ability to continue deriving benefits from the valuable reputation and goodwill it has accrued in
`
`the BABYGANICS MArks.
`
`22)
`
`For the foregoing reasons, Applicant’s applied-for LADYGANICS mark should
`
`be denied registration under 15 U.S.C. §§ 1052(d) and (a).
`
`
`
`WHEREFORE, KAS Direct requests that this Notice of Opposition be sustained and that
`
`U.S. Application Serial No. 87578688 for the LADYGANICS mark be refused registration.
`
`
`
`Date: April 6, 2018_
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/Angela S. Kalsi/______________
`Angela S. Kalsi
`
`
`
`IpHorgan, Ltd
`195 Arlington Heights Road, Suite 125
`Buffalo Grove, Illinois 60089
`
`
`Tel:
`(847) 808-5500
`
`
`
`Fax:
`(847) 808-7238
`
`Email: mail@iphorgan.com; akalsi@iphorgan.com
`
`Attorneys for Opposer
`KAS Direct, LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`

`

`Reg. No. 3,196,553
`
`Registered Jan. 09, 2007
`
`KAS DIRECT, LLC (DELAWARE LIMITED LIABILITY COMPANY)
`1600 STEWART AVENUE, SUITE 411
`WESTBURY, NY 11590
`
`New Cert. Nov. 01, 2016
`
`CLASS 3: all-purpose cleaners comprised of all natural ingredients that can be used in
`households with babies and pets
`
`Int. Cl.: 3
`
`Trademark
`
`Principal Register
`
`FIRST USE 12-1-2005; IN COMMERCE 12-1-2005
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`SER. NO. 78-827,190, FILED 03-02-2006
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten  Years*
`What and When to File:
`
`First Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`
`years after the registration date.
`
` See 15 U.S.C. §§1058, 1141k.
`
` If the declaration is accepted, the
`
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`Second Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) and an Application
`
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
` and  an  Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date).  The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the  World Intellectual Property Organization, under
`Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
`date of the international registration.  See 15 U.S.C. §1141j.  For more information and renewal forms for the
`international registration, see http://www.wipo.int/madrid/en/.
`
`NOTE:  Fees and requirements for maintaining registrations are subject to change.  Please check the
`USPTO website for further information.
` With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online at h
`ttp://www.uspto.gov.
`
`NOTE:  A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic  Application System (TEAS) Correspondence  Address and Change of Owner  Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of 2 / RN # 3196553
`
`

`

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`
`Word Mark
`BABYGANICS
`Goods and Services IC 003. US 001 004 006 050 051 052. G & S: all-purpose cleaners comprised of all natural ingredients
`that can be used in households with babies and pets. FIRST USE: 20051201. FIRST USE IN
`COMMERCE: 20051201
`
`Standard Characters
`Claimed
`Mark Drawing Code
`(4) STANDARD CHARACTER MARK
`Serial Number
`78827190
`Filing Date
`March 2, 2006
`Current Basis
`1A
`Original Filing Basis 1A
`Published for
`Opposition
`Registration Number 3196553
`International
`Registration Number 1019684; 1054316
`Registration Date
`January 9, 2007
`Owner
`(REGISTRANT) Kas Direct, LLC. LIMITED LIABILITY COMPANY NEW YORK 4 Kuhl Avenue
`Hicksville NEW YORK 11801
`
`October 24, 2006
`
`(LAST LISTED OWNER) KAS DIRECT, LLC LIMITED LIABILITY COMPANY DELAWARE 1600
`STEWART AVENUE, SUITE 411 WESTBURY NEW YORK 11590
`
`Assignment
`Recorded
`Attorney of Record
`Type of Mark
`Register
`
`ASSIGNMENT RECORDED
`
`Jeannine Rittenhouse
`TRADEMARK
`PRINCIPAL
`
`1 of 2
`
`4/6/2018, 11:56 AM
`
`

`

`Trademark Electronic Search System (TESS)
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:4dm0zv.2.1
`
`Affidavit Text
`Renewal
`Live/Dead Indicator
`
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20170316.
`1ST RENEWAL 20170316
`LIVE
`
`| .HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`2 of 2
`
`4/6/2018, 11:56 AM
`
`

`

`Reg. No. 4,378,857
`
`Registered Aug. 06, 2013
`
`Corrected Nov. 08, 2016
`
`Int. Cl.: 3, 5
`
`Trademark
`
`Principal Register
`
`Kas Direct, LLC (DELAWARE LIMITED LIABILITY COMPANY)
`1600 STEWART AVENUE, SUITE 411
`Westbury, NY 11590
`
`CLASS 3: All-purpose household cleaning preparations; glass and surface cleaning
`preparations; bathtub and tile cleaning preparations; floor cleaning preparations; preparations
`to clean dishes and bottles; dishwasher detergent; hand soaps; laundry detergent; anti-static
`dryer sheets; preparations to remove stains; odor removers for pets; scented room sprays;
`baby wipes; non-medicated diaper rash cream; shampoo and body wash preparations; non-
`medicated bubble bath preparations; lip and face balms; skin moisturizing lotions; toothpaste;
`non-medicated skin care preparations, namely, skin ointments to promote healing; sunscreen
`creams and sun block preparations; sunscreen sticks
`
`FIRST USE 3-17-2008; IN COMMERCE 3-17-2008
`
`CLASS 5: Hand sanitizing preparations; hand sanitizing wipes; medicated sunscreen and
`sunblock preparations; medicated sunscreen sticks; medicated body-wash preparations;
`cleaning preparations, namely, odor eliminators not for personal use; odor neutralizing
`preparations for general use on various surfaces; air deodorizing preparations for rooms;
`medicated diaper rash creams; saline nasal sprays; anti-insect spray; anti-inflammatory
`teething gels
`
`FIRST USE 8-14-2008; IN COMMERCE 8-14-2008
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`OWNER OF U.S. REG. NO. 3196553
`
`SER. NO. 85-707,590, FILED 08-20-2012
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten  Years*
`What and When to File:
`
`First Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`
`years after the registration date.
`
` See 15 U.S.C. §§1058, 1141k.
`
` If the declaration is accepted, the
`
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`Second Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) and an Application
`
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
` and  an  Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date).  The
`deadlin