Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1035462
`02/12/2020
`
`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
`
`Federici Brands LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/12/2020
`
`195 DANBURY ROAD DAVENPORT BUILDING
`WILTON, CT 06897
`UNITED STATES
`
`JOHN P. MARGIOTTA
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`jmargiotta@fzlz.com, skipen@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
`
`Applicant Information
`
`Application No
`
`88428458
`
`Publication date
`
`10/15/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`02/12/2020
`
`Biocare Labs, Inc.
`14800 McKinley Ave #B
`Posen, IL 60469
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`02/12/2020
`
`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: Hydrating, anti-inflammatory, and anti-
`oxidant ingredients sold as a component ingredient of hair care preparations andnon-medicated skin
`care preparations
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4404188
`
`Registration Date
`
`09/17/2013
`
`Application Date
`
`05/01/2012
`
`Foreign Priority
`Date
`
`02/28/2012
`
`
`ESTTA1035462
`02/12/2020
`
`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
`
`Federici Brands LLC
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/12/2020
`
`195 DANBURY ROAD DAVENPORT BUILDING
`WILTON, CT 06897
`UNITED STATES
`
`JOHN P. MARGIOTTA
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`jmargiotta@fzlz.com, skipen@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
`
`Applicant Information
`
`Application No
`
`88428458
`
`Publication date
`
`10/15/2019
`
`Opposition Filing
`Date
`
`Applicant
`
`02/12/2020
`
`Biocare Labs, Inc.
`14800 McKinley Ave #B
`Posen, IL 60469
`UNITED STATES
`
`Opposition Peri-
`od Ends
`
`02/12/2020
`
`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: Hydrating, anti-inflammatory, and anti-
`oxidant ingredients sold as a component ingredient of hair care preparations andnon-medicated skin
`care preparations
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`4404188
`
`Registration Date
`
`09/17/2013
`
`Application Date
`
`05/01/2012
`
`Foreign Priority
`Date
`
`02/28/2012
`
`
`
`Word Mark
`
`Design Mark
`
`COLOR WOW
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2012/10/22 First Use In Commerce: 2013/03/22
`Hair care preparations
`
`U.S. Registration
`No.
`
`5384504
`
`Registration Date
`
`01/23/2018
`
`Application Date
`
`06/05/2017
`
`Foreign Priority
`Date
`
`12/06/2016
`
`Word Mark
`
`Design Mark
`
`COLOR WOW DREAM COAT
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2017/06/30 First Use In Commerce: 2017/06/30
`Hair care preparations for human use
`
`U.S. Registration
`No.
`
`5378556
`
`Registration Date
`
`01/16/2018
`
`Application Date
`
`06/06/2017
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`COLOR WOW STYLE ON STEROIDS
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2017/05/26 First Use In Commerce: 2017/05/26
`Hair care preparations for human use
`
`
`
`U.S. Registration
`No.
`
`5201150
`
`Registration Date
`
`05/09/2017
`
`Word Mark
`
`Design Mark
`
`INSTAWOW
`
`Application Date
`
`02/23/2016
`
`Foreign Priority
`Date
`
`02/03/2016
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 003. First use: First Use: 2016/12/16 First Use In Commerce: 2017/02/10
`Facial masks; non-medicated skin care preparations
`
`85613551#TMSN.png( bytes )
`87475861#TMSN.png( bytes )
`87477187#TMSN.png( bytes )
`86916665#TMSN.png( bytes )
`F3397611.PDF(83489 bytes )
`
`Signature
`
`/John Margiotta/
`
`Name
`
`Date
`
`JOHN P. MARGIOTTA
`
`02/12/2020
`
`
`
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`FEDERICI BRANDS LLC,
`
`
`
`
`
`
`
`
`
`
`
`
`BIOCARE LABS, INC.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition No. ___________
`
`
`
`Opposer,
`
`v.
`
`
`
`
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Federici Brands LLC (“Opposer”), a Delaware limited liability company with its
`
`principal place of business at 195 Danbury Road, Davenport Building, Wilton, Connecticut
`
`06897, believes that it will be damaged by the issuance of a registration for the trademark
`
`WOWOILS! as applied for in Application Serial No. 88/428,458, and therefore opposes the
`
`same. As grounds for this opposition, Opposer, by its counsel, Fross Zelnick Lehrman & Zissu,
`
`P.C., alleges as follows:
`
`1.
`
`Opposer is a leading company in the beauty and hair care industry and is known
`
`for its innovative products.
`
`2.
`
`Since at least as early as 2012, Opposer has used the mark COLOR WOW and
`
`various WOW-formative marks (collectively, the “WOW Marks”) in connection with a wide
`
`variety of goods in the beauty and hair care industry, including shampoos, conditioners, leave-in
`
`hair supplements, styling products, facial masks, and skin care preparations.
`
`3.
`
`Each year, Opposer spends a significant budget on advertising to promote the
`
`goods offered under its WOW Marks. Significant press coverage of Opposer’s goods, as well as
`
`{F3396100.1 }
`
`
`
`Opposer’s receipt of over forty beauty industry awards, further bolster public recognition of the
`
`WOW Marks. As a result, Opposer’s Wow Marks have become widely known and
`
`commercially successful, representing enormous goodwill for Opposer.
`
`4.
`
`Along with its robust common-law rights in the WOW Marks, Opposer also owns
`
`several U.S. trademark registrations for the WOW Marks for a wide variety of beauty and hair
`
`care goods, including but not limited to the following:
`
`Mark
`
`Reg’n No. Reg’n Date
`
`International Class; Goods and/or Services
`
`COLOR WOW
`
`4,404,188* 09/17/2013
`
`IC 3: Hair care preparations
`
`COLOR WOW
`DREAM COAT
`
`COLOR WOW
`STYLE ON
`STEROIDS
`
`5,384,504
`
`01/23/2018
`
`IC 3: Hair care preparations for human use
`
`5,378,556
`
`01/16/2018
`
`IC 3: Hair care preparations for human use
`
`INSTAWOW
`
`5,201,150
`
`05/09/2017
`
`IC 3: Facial masks; non-medicated skin care
`preparations
`
`
`
`These registrations are valid, subsisting, and in full effect and serve as prima facie evidence of
`
`the validity of the registered marks and of Opposer’s exclusive right to use these marks in
`
`connection with the goods identified therein, pursuant to Section 33(a) of the Lanham Act, 15
`
`U.S.C. § 1115(a). In addition, U.S. Registration No. 4,404,188 has become incontestable
`
`pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065, and therefore serves as conclusive
`
`evidence of Opposer’s exclusive right to use that mark in commerce on or in connection with the
`
`goods identified in the registration, as provided by Section 33(b) of the Lanham Act, 15 U.S.C. §
`
`1115(b).
`
`5.
`
`Upon information and belief, applicant Biocare Labs, Inc. (“Applicant”) is an
`
`Illinois corporation with an address of 14800 McKinley Ave #B, Posen, Illinois 60469.
`
`{F3396100.1 }
`
`2
`
`
`
`6.
`
`On May 13, 2019, Applicant filed with the United States Patent and Trademark
`
`Office (“USPTO”) Application Serial No. 88/428,458 to register the mark WOWOILS!
`
`(“Applicant’s Mark”) for “Hydrating, anti-inflammatory, and anti-oxidant ingredients sold as a
`
`component ingredient of hair care preparations and non-medicated skin care preparations” in
`
`International Class 3, on the basis of Applicant’s claimed intent to use the mark in United States
`
`commerce.
`
`7.
`
`Opposer used and acquired rights in the WOW Marks long prior to any date on
`
`which Applicant can rely to register Applicant’s Mark.
`
`8.
`
`The Application was filed long after Opposer first used the WOW Marks in the
`
`United States and long after Opposer’s first registration of the WOW Marks with the USPTO.
`
`9.
`
`Opposer’s rights in the WOW Marks are prior and superior to any rights
`
`Applicant may claim in Applicant’s Mark.
`
`10.
`
`Applicant is not connected to Opposer in any way, and has not been authorized by
`
`Opposer to use Applicant’s Mark.
`
`11.
`
`The goods identified in the Application are identical and/or highly related to
`
`goods Opposer offers under its WOW Marks and, upon information and belief, will be offered to
`
`the same customers or types of customers to whom goods offered under Opposer’s WOW Marks
`
`are being offered.
`
`12.
`
`Upon information and belief, Applicant had actual knowledge of Opposer’s prior
`
`rights to and interest in the WOW Marks before seeking to register Applicant’s Mark. At a
`
`minimum, as a matter of law, Applicant was on constructive notice of Opposer’s rights in the
`
`WOW Marks based on Opposer’s registrations therefor.
`
`{F3396100.1 }
`
`3
`
`
`
`13.
`
`Applicant’s Mark, which, like Opposer’s WOW Marks, incorporates the term
`
`WOW as its dominant part, is closely similar in sound, meaning, appearance, and commercial
`
`impression to Opposer’s WOW Marks.
`
`14.
`
`By virtue of Opposer’s longstanding and continuous use of the WOW Marks, the
`
`goodwill associated with the marks, and Opposer’s registrations therefor, the registration of
`
`Applicant’s Mark for goods identical or closely related to Opposer’s goods is likely to cause
`
`confusion or cause mistake or to deceive the purchasing public into mistakenly believing that
`
`goods offered under Applicant’s Mark originate from Opposer, or are endorsed or sponsored by
`
`Opposer, or are otherwise connected to Opposer, in violation of Section 2(d) of the Lanham Act,
`
`15 U.S.C. § 1052(d).
`
`15.
`
`As a result of the foregoing, registration of Applicant’s Mark would be
`
`inconsistent with Opposer’s prior exclusive rights in the WOW Marks, and would threaten
`
`destruction of Opposer’s investment and goodwill in its longstanding and valuable WOW Marks.
`
`Opposer therefore is likely to be harmed by registration of the Application for Applicant’s Mark.
`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
`
`registration sought by Applicant in Application Serial No. 88/428,458 be refused.
`
`Dated: New York, New York
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`February 12, 2020
`
`By: %‘ W
`
`
`
`John P. Margiotta
`Sydney Kipen
`151 West 42nd Street, 17th Floor
`New York, New York 10036
`
`(212) 813-5900
`
`Attorneys for Opposer
`
`{F33961001 )
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
