Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1021747
`12/11/2019
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer Information
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`Name
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`Skinny & Co., Inc.
`
`Granted to Date
`of previous ex-
`tension
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`Address
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`Attorney informa-
`tion
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`12/25/2019
`
`4762 W. 74TH ST.
`INDIANAPOLIS, IN 46278
`UNITED STATES
`
`BRADLEY M. STOHRY
`REICHEL STOHRY DEAN LLP
`212 W. 10TH ST. SUITE A-285
`INDIANAPOLIS, IN 46202
`UNITED STATES
`brad@rsindy.com, docket@rsindy.com
`3174238820
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`Applicant Information
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`Application No
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`88399015
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`Publication date
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`08/27/2019
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`Opposition Filing
`Date
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`Applicant
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`12/11/2019
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`Opposition Peri-
`od Ends
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`12/25/2019
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`DLJJ & Associates, LLC
`1801 S La Cienega Blvd. Suite 301
`Los Angeles, CA 90035
`UNITED STATES
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`Goods/Services Affected by Opposition
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`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: BB creams; Blush; CC creams; Cosmetic
`creams for skin care; Cosmetic masks; Cosmetic nourishing creams; Cosmetic preparations; Cos-
`metic preparations for eyelashes; Cosmetic preparations for skin care; Cosmetics; Cosmetics and
`cosmetic preparations; Cosmetics and make-up; Eye liner; Eye gels; Eye make-up; Eye pencils; Eye-
`shadow; Eyebrow pencils; Foundation;Lip balm; Lip glosses; Lip liner; Lip stains; Lipstick; Make-up
`kits comprised of non-medicated cosmetics; Make-up sets; Mascara; Skin care preparations, namely,
`skin peels; Skin care products, namely, non-medicated skin serum; Anti-aging moisturizer; Anti-aging
`moisturizers used as cosmetics; Beauty lotions; Beauty serums; Body and beauty care cosmetics;
`Cleansing creams; Eye lotions; Face creams for cosmetic use; Facial moisturizers;Non-medicated
`skin care preparations; Non-medicated skin care preparations, namely, creams, lotions, gels, toners,
`cleaners and peels; Non-medicated skin serums; Skin bronzer; Skin lotions; Skin moisturizer
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`Grounds for Opposition
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`

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`Priority and likelihood of confusion
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`Trademark Act Section 2(d)
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`Mark Cited by Opposer as Basis for Opposition
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`U.S. Registration
`No.
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`5232984
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`Registration Date
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`06/27/2017
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`Word Mark
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`Design Mark
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`SKINNY & CO.
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`Application Date
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`09/29/2014
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`Foreign Priority
`Date
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`NONE
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`Description of
`Mark
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`Goods/Services
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`NONE
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`Class 003. First use: First Use: 2017/04/12 First Use In Commerce: 2017/04/12
`All-purpose cleaners; bath soaps in liquid, solid or gel form; coconut oil for cos-
`metic purposes; cosmetic soaps; hair care preparations consisting of organic
`coconut virgin oil and coconut virgin oil; hair shampoos and conditioners; hand
`soaps; lip balm; non-medicated cosmetic skin care preparations consisting of or-
`ganic coconut virgin oil and coconut virgin oil; non-medicated lip care prepara-
`tions; non-medicated lip protectors; soapsand detergents; soaps for household
`use; soaps for personal use
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`Attachments
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`86408898#TMSN.png( bytes )
`Skinny Notice of Opposition against THE SKINNY.pdf(133259 bytes )
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`Signature
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`/bms/
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`Name
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`Date
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`BRADLEY M. STOHRY
`
`12/11/2019
`
`

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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
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`In the matter of Trademark App. Ser. Nos. 88/399,015
`For the mark THE SKINNY
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`Skinny & Co, Inc.,
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`Opposer,
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`DLJJ & Associates, LLC,
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`Applicant.
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`Opposition No.:______________
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`NOTICE OF OPPOSITION
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`
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`Skinny & Co, Inc. (“Opposer”) hereby opposes the above-referenced application to register
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`the mark THE SKINNY filed by DLJJ & Associates, LLC (“Applicant”). The grounds for
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`opposition are as follows:
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`THE PARTIES
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`1.
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`Opposer is an Indiana corporation with a place of business at 4762 W. 74th St.,
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`Indianapolis, IN 46278.
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`2.
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`Applicant is a California limited liability company with a place of business at 1801
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`S La Cienega Blvd., Suite 301, Los Angeles, CA 90035.
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`OPPOSER AND ITS USE OF THE SKINNY & CO. MARK
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`3.
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`Opposer sells a variety of pure coconut oil products, including cosmetic products,
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`beauty products, bath products, cleansing products, and other related products (collectively, the
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`“Beauty and Cosmetic Products”).
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`4.
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`5.
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`Opposer is the owner of substantial trademark rights in the SKINNY & CO. mark.
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`Opposer owns U.S. Trademark Registration Number 5,232,984 for the SKINNY &
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`CO. mark, which registration covers “All-purpose cleaners; bath soaps in liquid, solid or gel form;
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`coconut oil for cosmetic purposes; cosmetic soaps; hair care preparations consisting of organic
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`coconut virgin oil and coconut virgin oil; hair shampoos and conditioners; hand soaps; lip balm;
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`non-medicated cosmetic skin care preparations consisting of organic coconut virgin oil and
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`coconut virgin oil; non-medicated lip care preparations; non-medicated lip protectors; soaps and
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`detergents; soaps for household use; soaps for personal use” in Class 3.
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`6.
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`Opposer has been using the SKINNY & CO. mark to promote the Beauty and
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`Cosmetic Products since 2017. Since that time, Opposer has established extensive and valuable
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`goodwill in the SKINNY & CO. mark and has spent significant amounts of time and money
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`establishing this goodwill.
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`7.
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`The SKINNY & CO. mark has come to indicate and stand for the high-quality
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`Beauty and Cosmetic Products offered by Opposer.
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`8.
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`As a result of Opposer’s use of the SKINNY & CO. mark, the SKINNY & CO.
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`mark has become valuable property of Opposer.
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`APPLICANT AND ITS TRADEMARK APPLICATION
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`9.
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`Trademark App. Ser. Nos. 88/399,015 (the “Application”) was filed by Applicant
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`for the mark THE SKINNY on April 23, 2019.
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`10.
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`The Application is an intent-to-use application and covers “BB creams; Blush; CC
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`creams; Cosmetic creams for skin care; Cosmetic masks; Cosmetic nourishing creams; Cosmetic
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`preparations; Cosmetic preparations for eyelashes; Cosmetic preparations for skin care;
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`Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and make-up; Eye liner; Eye gels;
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`Eye make-up; Eye pencils; Eye-shadow; Eyebrow pencils; Foundation; Lip balm; Lip glosses; Lip
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`liner; Lip stains; Lipstick; Make-up kits comprised of non-medicated cosmetics; Make-up sets;
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`Mascara; Skin care preparations, namely, skin peels; Skin care products, namely, non-medicated
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`Page 2
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`skin serum; Anti-aging moisturizer; Anti-aging moisturizers used as cosmetics; Beauty lotions;
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`Beauty serums; Body and beauty care cosmetics; Cleansing creams; Eye lotions; Face creams for
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`cosmetic use; Facial moisturizers; Non-medicated skin care preparations; Non-medicated skin care
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`preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin
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`serums; Skin bronzer; Skin lotions; Skin moisturizer” in Class 3.
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`GROUNDS FOR AND REJECTING APPLICANT’S TRADEMARK APPLICATION
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`11.
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`Opposer’s actual, continuous, and continuing use of the SKINNY & CO. mark in
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`commerce began well before Applicant filed its Application and/or began using THE SKINNY as
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`a mark.
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`12.
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`Opposer’s application for the SKINNY & CO. mark that resulted in Reg. No.
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`5,232,984 predates the Application by numerous years.
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`13.
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`Applicant’s use and registration of the mark THE SKINNY for the goods listed in
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`the Application is likely to cause confusion, mistake, and/or lead to deception as to the origin of
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`Applicant’s goods in violation of Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. §§1114 and
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`1125(a).
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`14.
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`The likelihood of confusion is apparent in this instance because the marks SKINNY
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`& CO. and THE SKINNY are highly similar, and the marks will be used in connection with
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`identical beauty and cosmetic products.
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`15.
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`Applicant’s use and registration of the mark THE SKINNY is likely to result in
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`confusion and substantial damage and injury to Opposer. Persons familiar with Opposer’s
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`SKINNY & CO. mark are likely to believe that Applicant’s goods originate with, or are licensed,
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`sponsored or approved by Opposer. Any such confusion would inevitably result in loss of sales to
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`Opposer, and/or damage the goodwill and reputation that Opposer has established in the SKINNY
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`& CO. mark.
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`WHEREFORE, Opposer prays that the Application be rejected.
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`Dated this 11th day of December, 2019.
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`Respectfully submitted,
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`/Bradley M. Stohry/
`Bradley M. Stohry
`REICHEL STOHRY DEAN LLP
`212 West 10th Street
`Suite A-285
`Indianapolis, Indiana 46202
`(317) 423-8820
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`By:
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`Attorney for Skinny & Co, Inc.
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`Page 4
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