Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1111946
`02/03/2021
`
`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
`
`02/03/2021
`
`33 AVENUE HOCHE
`PARIS, 75008
`FRANCE
`
`Attorney informa-
`tion
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: lpopp-rosenberg@fzlz.com
`Secondary Email(s): skipen@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
`
`Docket Number
`
`PCDR 2011091
`
`Applicant Information
`
`Application No.
`
`88913701
`
`Publication date
`
`10/06/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`02/03/2021
`
`Opposition Peri-
`od Ends
`
`02/03/2021
`
`SAMUEL, KENYA
`1077 BOSTON ROAD #5F
`BRONX, NY 10456
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2017/01/15 First Use In Commerce: 2018/09/11
`All goods and services in the class are opposed, namely: Make-up application services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application
`or amendment to allege use was filed
`
`Trademark Act Sections 1(a) and (c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2696047
`
`Application Date
`
`03/24/1999
`
`
`ESTTA1111946
`02/03/2021
`
`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
`
`02/03/2021
`
`33 AVENUE HOCHE
`PARIS, 75008
`FRANCE
`
`Attorney informa-
`tion
`
`LAURA POPP-ROSENBERG
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`151 WEST 42ND STREET, 17TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary Email: lpopp-rosenberg@fzlz.com
`Secondary Email(s): skipen@fzlz.com, ttabfiling@fzlz.com
`212-813-5900
`
`Docket Number
`
`PCDR 2011091
`
`Applicant Information
`
`Application No.
`
`88913701
`
`Publication date
`
`10/06/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`02/03/2021
`
`Opposition Peri-
`od Ends
`
`02/03/2021
`
`SAMUEL, KENYA
`1077 BOSTON ROAD #5F
`BRONX, NY 10456
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 044. First Use: 2017/01/15 First Use In Commerce: 2018/09/11
`All goods and services in the class are opposed, namely: Make-up application services
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application
`or amendment to allege use was filed
`
`Trademark Act Sections 1(a) and (c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2696047
`
`Application Date
`
`03/24/1999
`
`
`
`Registration Date
`
`03/11/2003
`
`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
`
`Notice of Opposition JADOREABLE KREATIONS.PDF(16577 bytes )
`
`Signature
`
`/Laura Popp-Rosenberg/
`
`Name
`
`Date
`
`Laura Popp-Rosenberg
`
`02/03/2021
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`PARFUMS CHRISTIAN DIOR,
`
`
`
`
`
`
`
`
`
`
`
`KENYA SAMUEL,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`Opposition No. ___________
`
`Opposer,
`
`
`
`Applicant.
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer Parfums Christian Dior believes that it will be damaged by the issuance of a
`
`registration for the trademark J’ADOREABLE KREATION’S as applied for by applicant Kenya
`
`Samuel in Application Serial No. 88913701 and therefore opposes the same. As grounds for this
`
`opposition, Opposer, by its counsel, Fross Zelnick Lehrman & Zissu, P.C., states 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.
`
`2.
`
`Starting in 1999, Opposer has used the mark J’ADORE in connection with the
`
`promotion and sale of perfume and related body products. During that time, the J’ADORE
`
`fragrance has become one of the most famous fragrances in the United States. Its long-running
`
`advertising campaign, including television commercials, featuring movie star Charlize Theron as
`
`product spokesperson is also very well-known.
`
`3.
`
`Over more than two decades, and long before the earliest date on which Applicant
`
`can rely, Opposer has extensively used and promoted the J’ADORE mark. As such, consumers
`
`{F3878625.1 }
`
`
`
`have come to recognize the J’ADORE mark as exclusively identifying Opposer’s goods. As a
`
`result, the J’ADORE mark has garnered strong trademark rights and represents enormous
`
`goodwill to Opposer. Moreover, owing to Opposer’s reputation, substantial sales success,
`
`inestimable popularity, and significant investment in advertising, the J’ADORE mark has
`
`become famous throughout the United States and the world.
`
`4.
`
`In addition to its robust common law rights in the J’ADORE mark, Opposer owns
`
`U.S. trademark Registration No. 2696047 for J’ADORE covering “perfume, eau de toilette, and
`
`milks for the care of the body” in International Class 3. This registration is valid, subsisting and
`
`in full force and effect, and constitutes evidence of the validity of the J’ADORE mark and of
`
`Opposer’s exclusive right to use the J’ADORE mark for the goods identified in the registration.
`
`In addition, the registration has become incontestable and serves as conclusive evidence of
`
`Opposer’s exclusive right to use the 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).
`
`B.
`
`Applicant and Its Application
`
`5.
`
`Upon information and belief, applicant Kenya Samuel (“Applicant”) is an
`
`individual with an address of 1077 Boston Road #5F, Bronx, New York 10456.
`
`6.
`
`On May 13, 2020, Applicant filed with the United States Patent and Trademark
`
`Office (“USPTO”) Application Serial No. 88913701 (the “Application”) to register the mark
`
`J’ADOREABLE KREATION’S (“Applicant’s Mark”). The Application covers “Make-up
`
`application services” in International Class 44, and was filed under Section 1(a) of the Lanham
`
`Act, 15 U.S.C. § 1051(a), based on a claimed first use date of January 15, 2017 and a first use in
`
`commerce date of September 11, 2018.
`
`{F3878625.1 }
`
`2
`
`
`
`7.
`
`Upon information and belief, at the time that Applicant filed the Application,
`
`Applicant had actual knowledge of Opposer’s prior and exclusive rights in the J’ADORE mark
`
`as a result of Opposer’s extensive use and promotion of the J’ADORE mark and the fame of the
`
`J’ADORE mark accruing from such use and promotion. At the very least, Applicant was on
`
`constructive notice of Opposer’s prior and exclusive rights in the J’ADORE mark by virtue of
`
`Opposer’s federal trademark registration therefor, pursuant to Section 22 of the Lanham Act, 15
`
`U.S.C. § 1072.
`
`8.
`
`Applicant is not connected to Opposer in any way and has not been authorized by
`
`Opposer to register or use Applicant’s Mark.
`
`FIRST GROUND FOR RELIEF
`PRIORITY AND LIKELIHOOD OF CONFUSION UNDER 15 U.S.C. § 1052(d)
`
`Opposer repeats and re-alleges each and every allegation contained in paragraphs
`
`9.
`
`1 through 8 as if fully set forth herein.
`
`10.
`
`Opposer’s rights in the J’ADORE mark are prior and superior to any rights
`
`Applicant may claim in Applicant’s Mark.
`
`11.
`
`Applicant’s Mark is highly similar to Opposer’s J’ADORE mark in sight, sound,
`
`and commercial impression, including because Applicant’s Mark incorporates Opposer’s
`
`J’ADORE mark in its entirety.
`
`12.
`
`Applicant is not connected to Opposer in any way and has not been authorized by
`
`Opposer to use Applicant’s Mark.
`
`13.
`
`Applicant seeks to register Applicant’s Mark for services that are closely related
`
`to the goods sold by and registered to Opposer under the J’ADORE mark.
`
`14.
`
`Owing to the fame and strength of Opposer’s J’ADORE mark, the similarity
`
`between the parties’ marks, and the close similarity of the parties’ respective goods and services,
`
`{F3878625.1 }
`
`3
`
`
`
`as well as other factors, consumers are likely to be deceived into falsely believing that the
`
`services offered by Applicant under Applicant’s Mark originate from or are otherwise associated
`
`with or endorsed by Opposer, or that there is some relationship between Applicant and Opposer
`
`or the goods and services of Applicant and Opposer, all to Opposer’s injury and harm.
`
`15.
`
`Thus, registration of Applicant’s Mark as applied for in the Application is likely
`
`to cause confusion, to cause mistake, or to deceive the public into falsely believing that the
`
`services offered by Applicant under Applicant’s Mark come from or are otherwise sponsored by
`
`or connected with Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`16.
`
`As a result of the foregoing, registration to Applicant of Applicant’s Mark would
`
`be inconsistent with Opposer’s prior exclusive rights in the J’ADORE mark and would threaten
`
`to destroy Opposer’s investment and goodwill in that mark. Opposer therefore will be injured by
`
`registration of Applicant’s Mark.
`
`SECOND GROUND FOR RELIEF:
`VOID AB INITIO FOR NON-USE
`
`17.
`
`Opposer incorporates by reference paragraphs 1 through 16 above as if fully set
`
`forth herein.
`
`18.
`
`The specimen submitted by Applicant with the Application does not match
`
`Applicant’s Mark as it appears in the Application. The mark in the Application is
`
`“J’ADOREABLE KREATION’S” whereas the specimen displays “J’ADORABLE
`
`KREATIONS,” without the first “e” in the first term and without the apostrophe in the second
`
`term.
`
`19.
`
`Upon information and belief, Applicant had not sold the applied-for services
`
`under Applicant’s Mark (as opposed to the different mark shown in the specimen) in the United
`
`States as of the filing date of the Application.
`
`{F3878625.1 }
`
`4
`
`
`
`20.
`
`Accordingly, upon information and belief, Applicant had not used Applicant’s
`
`Mark in U.S. commerce as of the time Applicant filed the Application based on use in commerce
`
`under Section 1(a) of the Lanham Act.
`
`21.
`
`Because Applicant’s Mark was not in use in commerce on the filing date of the
`
`use-based Application in connection with the services specified therein, the Application is void
`
`ab initio under Section 1(a) of the Lanham Act, 15 U.S.C. 1051(a).
`
`22.
`
`By reason of the foregoing, Opposer will be injured by registration of Applicant’s
`
`Mark.
`
`
`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
`
`registration sought by Applicant in Application Serial No. 88913701 be refused.
`
`
`Dated: New York, New York
`February 3, 2021
`
`
`
`
`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
`
`{F3878625.1 }
`
`5
`
`
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