Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1058891
`05/31/2020
`
`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
`
`Parfums Christian Dior
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`05/13/2020
`
`33, AVENUE HOCHE
`PARIS, 75008
`FRANCE
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 W. 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`lpopp-rosenberg@fzlz.com, skipen@fzlz.com
`2128135900
`
`Applicant Information
`
`Application No
`
`88392054
`
`Publication date
`
`01/14/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`05/31/2020
`
`Opposition Peri-
`od Ends
`
`05/13/2020
`
`NEW STETIC S.A.
`Cra 43 A N 14-40 Castropol El Poblado
`Guarne, Antioquia, .
`COLOMBIA
`
`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: preparations for artificial nails for cosmetic
`use; acrylic nail powder and liquid resin preparations for sculpting nails; preparations for the care of
`nails; preparations for polishing nails; nail repair preparations
`
`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.
`
`2696047
`
`Registration Date
`
`03/11/2003
`
`Application Date
`
`03/24/1999
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`J'ADORE
`
`NONE
`
`Class 003. First use: First Use: 1999/06/00 First Use In Commerce: 2000/02/11
`perfume, eau de toilette, [ cologne, ] and milks for the care of the body [ andface
`]
`
`Attachments
`
`F3543409.pdf(28592 bytes )
`
`Signature
`
`/Laura Popp-Rosenberg/
`
`Name
`
`Date
`
`LAURA POPP-ROSENBERG
`
`05/31/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`PARFUMS CHRISTIAN DIOR,
`
`
`
`
`
`
`
`
`
`
`
`NEW STETIC S.A.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Opposition No. ___________
`
`Opposer,
`
`
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Parfums Christian Dior believes that it will be damaged by the issuance of a
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`registration for the trademark ADORA NAIL ACRYLIC (& Design) as applied for by applicant
`
`New Stetic S.A. in Application Serial No. 88/392,054 and therefore opposes the same. As
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`grounds for this opposition, Opposer, by its counsel, Fross Zelnick Lehrman & Zissu, P.C., states
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`as follows:
`
`A.
`
`Opposer and Its J’ADORE Mark
`
`1.
`
`Opposer Parfums Christian Dior (“Opposer”) is a French société anonyme with an
`
`address of 33 Avenue Hoche, Paris, France 75008.
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`2.
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`For over two decades, Opposer has used the mark J’ADORE in connection with a
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`popular range of perfume and body products.
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`3.
`
`Opposer has extensively used and promoted the J’ADORE mark. Through this
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`extensive promotion and use, and the success of Opposer’s offerings under the mark, Opposer’s
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`J’ADORE mark has come to represent enormous goodwill of Opposer.
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`{F3541589.2 }
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`
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`4.
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`Long before any date upon which Applicant can rely, Opposer’s J’ADORE mark
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`became uniquely identified with Opposer and came to identify the goods of Opposer exclusively.
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`5.
`
`In addition to its robust common law rights in the J’ADORE mark, Opposer owns
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`U.S. trademark Registration No. 2,696,047 for J’ADORE covering “perfume, eau de toilette, and
`
`milks for the care of the body” in International Class 3.
`
`B.
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`Applicant and Its Application
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`6.
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`Upon information and belief, applicant New Stetic S.A. (“Applicant”) is a
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`Colombia sociedad anonima (sa) with an address of 1 Cra 43 A N 14-40 Castropol El Poblado
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`Guarne, Antioquia, Colombia.
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`7.
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`On April 18, 2019, Applicant filed with the United States Patent and Trademark
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`Office (“USPTO”) Application Serial No. 88/392,054 (the “Application”) to register the
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`following mark:
`
`
`
` (“Applicant’s Mark”). The Application covers “preparations for artificial nails for cosmetic use;
`
`acrylic nail powder and liquid resin preparations for sculpting nails; preparations for the care of
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`nails; preparations for polishing nails; nail repair preparations” in International Class 3, and was
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`filed under Section 1(b) of the Lanham Act based on Applicant’s claimed intent to use the mark
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`in commerce.
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`CLAIM FOR RELIEF:
`PRIORITY AND LIKELIHOOD OF CONFUSION
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`Opposer repeats and re-alleges each and every allegation contained in paragraphs
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`8.
`
`1 through 7 as if fully set forth herein.
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`9.
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`Upon information and belief, Opposer’s rights in the J’ADORE mark are prior to
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`and superior to any rights Applicant may claim in Applicant’s Mark.
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`{F3541589.2 }
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`2
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`
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`10.
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`Applicant is not connected to Opposer in any way and has not been authorized by
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`Opposer to use Applicant’s Mark.
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`11.
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`Applicant’s Mark is confusingly similar to Opposer’s J’ADORE mark in sight,
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`sound and commercial impression, including because Applicant’s Mark contains the word
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`ADORA, which differs from Opposer’s “ADORE” only by the last letter and means “to adore”
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`in Spanish.
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`12.
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`Applicant seeks to register Applicant’s Mark for goods that closely related to
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`goods sold by and registered to Opposer under the J’ADORE mark.
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`13.
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`Owing to the strength of Opposer’s J’ADORE mark, the similarity between the
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`parties’ marks, and the similarity of the parties’ goods, as well as other factors, Applicant’s use
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`and registration of Applicant’s Mark in connection with the goods identified in the Application is
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`likely to cause confusion, cause mistake, or to deceive consumers to falsely believe that
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`Applicant’s goods emanate from or otherwise are authorized, sponsored by, or affiliated with
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`Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. 1052(d).
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`14.
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`As a result of the foregoing, registration to Applicant of Applicant’s Mark in
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`International Class 3 would be inconsistent with Opposer’s prior exclusive rights in the
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`J’ADORE mark and would threaten to destroy Opposer’s investment and goodwill in the
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`J’ADORE mark. Opposer therefore will be injured by registration of Applicant’s Mark.
`
`
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`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
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`registration sought by Applicant in Application Serial No. 88/392,054 be refused.
`
`
`
`The delay in filing was due to the COVID-19 outbreak, which materially interfered with
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`Opposer’s ability to timely file this document due to office closures and other related
`
`circumstances.
`
`{F3541589.2 }
`
`3
`
`
`
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`Dated: New York, New York
`May 31, 2020
`
`
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`
`
`
`
`By: /Laura Popp-Rosenberg/
` Laura Popp-Rosenberg
` Sydney Kipen
`
`151 West 42nd St., 17th Floor
`New York, New York 10036
`Tel: (212) 813-5900
`Email: lpopp-rosenberg@fzlz.com
` skipen@fzlz.com
`
` Attorneys for Opposer
`
`{F3541589.2 }
`
`4
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`
