Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1229548
`08/16/2022
`
`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
`
`Correspondence
`information
`
`Zulily, LLC
`
`09/14/2022
`
`2601 ELLIOT AVE.
`FLOOR 2
`SEATTLE, WA 98121
`UNITED STATES
`
`DAVID J. BYER
`K&L GATES LLP
`ONE LINCOLN STREET
`BOSTON, MA 02111
`UNITED STATES
`Primary email: BOTrademarks@klgates.com
`Secondary email(s): alice.schermer@klgates.com, david.byer@klgates.com,
`rikaleigh.johnson@klgates.com
`617.261.3115
`
`Applicant information
`
`Application no.
`
`90828662
`
`Opposition filing
`date
`
`Applicant
`
`08/16/2022
`
`ZULLYHAIRSKINCARE, LLC
`90-25 138TH PLACE, C5
`NEW YORK, NY 11435
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`05/17/2022
`
`Opposition period
`ends
`
`09/14/2022
`
`Class 035. First Use: Oct 2, 2020 First Use In Commerce: Oct 2, 2020
`All goods and services in the class are opposed, namely: On-line retail store services featuringNatur-
`al cosmetics, Non medicated skin toners, Non-foaming cosmetic preparationsfor skin, face, body,
`Non-medicated cosmetic soap, Non-medicated cosmetics, Non-medicated facial and eye serum con-
`taining antioxidants, Non-medicated skin carepreparations, Non-medicated skin care preparations,
`namely, creams, lotions, gels, toners, cleaners and peels, Non-medicated skin care preparations,
`namely, creams, lotions, gels, toners, cleaners and peels, Non-medicated skin creams, Non-
`medicated skin serums; On-line retail store services featuring Non-medicated skin toners, Non-
`medicated cleansers for personal use, namely, creams, lotions, gels, toners, cleaners and peels,
`Non-medicated cleansers, namely, skin cleansers, facial cleansers, Non-medicated cosmeticskin
`care preparations consisting of organic coconut virgin oil, Non-medicated exfoliating preparations for
`skin, face,body, Non-medicated lotions for skin, face, body, Non-medicated preparations all for the
`care of skin, hair and scalp, Non-medicated serums for use on skin, face, body, Non-medicated skin,
`
`

`

`face, bodycare preparations, Oils for cosmetic purposes, Organic cosmetics, Skin and bodytopical lo-
`tions, creams and oils for cosmetic use, Skin moisturizers used as cosmetics; On-line retail store ser-
`vices featuring Hair products, namely, shampoo,gel, shampoo, conditioner, deep conditioner, hair oil,
`hair serum, scalp oil, hair mask; On-line retail store services featuring Hair accessories, combs, blow-
`dryer, brushes, bonnet, hair pins, satin scarf, bonnet, satin bonnet; On-line retail store services fea-
`turing Anti-acne face cleanser, beard oil, organic conditioner, express hair growth oil, ginger and
`moringa hair tonic, growth lash serum,intimate scrub, intimate soap, rejuvenating rose face oil, tur-
`meric and ginger scrub
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Common-law Rights
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`3868643
`
`Register
`
`Principal
`
`Registration date
`
`10/26/2010
`
`Word mark
`
`Design mark
`
`ZULILY
`
`Application date
`
`12/21/2009
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Jan 27, 2010 First Use In Commerce: Jan 27,
`2010
`On-line retail store services featuringa wide variety of consumer goods of others
`
`U.S. registration
`no.
`
`5800608
`
`Register
`
`Principal
`
`Registration date
`
`07/09/2019
`
`Word mark
`
`ZULILY
`
`Application date
`
`10/15/2015
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Jan 27, 2010 First Use In Commerce: Jan 27,
`2010
`Retail store services available throughcomputer communications featuring gen-
`eral merchandise; and online retail store services in the field of general mer-
`chandise available through internet, mobile phone and portable and hand-held
`digitaland electronic devices
`
`U.S. registration
`no.
`
`4557281
`
`Register
`
`Principal
`
`Registration date
`
`06/24/2014
`
`Word mark
`
`Design mark
`
`ZULILY
`
`Application date
`
`06/10/2013
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 025. First use: First Use: Jan 27, 2010 First Use In Commerce: Jan 27,
`2010
`Clothing, namely, coats, jackets, dresses, skirts, shorts, pants, bottoms,
`rompers, overalls, pajamas, swimsuits, tops,sweaters, sweatshirts, shirts, belts,
`socks, gloves, mittens and scarves; footwear; headgear, namely, hats, visors
`and caps; none of the aforesaid goods being bridalwear, wedding dresses,
`bridesmaid dresses and clothing being specially designed, adapted and immedi-
`ately recognizable as such for wear at religious events
`Class 042. First use: First Use: Jan 27, 2010 First Use In Commerce: Jan 27,
`2010
`Hosting of digital content, namely, on-line blogs; providing a web site featuring
`temporary use of non-downloadable software for the viewing, uploading, sharing
`and presenting of information relatingto merchandise for babies, infants, chil-
`dren, mothers to be and parents; hosting online web facilities for others for or-
`ganizing and conducting online meetings, gatherings, and interactive discus-
`
`

`

`sions in the field of pregnancy, birth, parenting and childcare; provision of cus-
`tomized web pages featuring user-defined information and personal profiles
`
`U.S. registration
`no.
`
`4704515
`
`Register
`
`Principal
`
`Registration date
`
`03/17/2015
`
`Word mark
`
`Design mark
`
`ZULILY
`
`Application date
`
`06/10/2013
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized word "ZULILY"; a half circle comprised of
`flower petals surrounds the letters "ZU".
`
`Class 025. First use: First Use: Jan 27, 2010 First Use In Commerce: Jan 27,
`2010
`Clothing, namely, dresses; bottoms; pants; shorts, skirts; tops; shirts; sweaters;
`sweatshirts; rompers; overalls; pajamas; swimsuits; jackets; coats;
`scarves;mittens; gloves; socks; belts; footwearand headgear, namely, hats;
`caps; visors; none of the aforesaid goods being bridalwear, wedding dresses,
`bridesmaid dresses and clothing being specially designed, adapted and immedi-
`ately recognizableas such for wear at religious events
`
`U.S. registration
`no.
`
`6456654
`
`Register
`
`Principal
`
`Registration date
`
`08/17/2021
`
`Word mark
`
`ZULILY
`
`Application date
`
`12/20/2019
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "zulily" in a stylized script.
`
`Class 025. First use: First Use: Mar 1, 2021 First Use In Commerce: Mar 1,
`2021
`Clothing, namely, coats, jackets, dresses, skirts, shorts, pants, bottoms,
`rompers, overalls, pajamas, swimsuits, tops,sweaters, sweatshirts, shirts, belts,
`socks, gloves, mittens and scarves; footwear; headgear, namely, hats, visors
`and caps; none of the aforesaid goods being bridalwear, wedding dresses,
`bridesmaid dresses and clothing being specially designed, adapted and immedi-
`ately recognizable as such for wear at religious events
`
`U.S. registration
`no.
`
`6278858
`
`Register
`
`Principal
`
`Registration date
`
`02/23/2021
`
`Word mark
`
`Design mark
`
`ZULILY
`
`Application date
`
`12/20/2019
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "zulily" in a stylized script.
`
`Class 035. First use: First Use: Feb 11, 2019 First Use In Commerce: Feb 11,
`2019
`On-line retail store services featuringa wide variety of consumer goods of others;
`retail store services available through computer communications featuring gen-
`eral merchandise; and online retail store services in the field of general mer-
`
`

`

`chandise available through internet, mobile phone and portable and hand-held
`digital and electronic devices; promoting the issuance and sale of privately-
`branded credit card accounts of others; promoting the sale of privately-branded
`creditcards through the administration of incentive programs; promoting the ac-
`ceptance of a privately-branded credit card as a method of payment for transac-
`tions
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`NONE
`
`Application date
`
`NONE
`
`Goods/services
`
`Clothing, namely, coats, jackets, dresses, skirts, shorts, pants, bot-
`toms, rompers, overalls, pajamas, swimsuits, tops, sweaters, sweat-
`shirts, shirts, belts, socks, gloves, mittens and scarves; footwear;
`headgear, namely, hats, visors and caps; none of the aforesaid goods
`being bridalwear, wedding dresses, bridesmaid dresses and clothing
`being specially designed, adapted and immediately recognizable as
`such for wear at religious events; On-line retail store services featur-
`ing skin care, hair care, beauty, and wellness products; On-line retail
`store services featuring a wide variety of consumer goods of others;
`retail store services available through computer communications fea-
`turing general merchandise; and online retail store services in the field
`of general merchandise available through internet, mobile phone and
`portable and hand-held digital and electronic devices; promoting the
`issuance and sale of privately-branded credit card accounts of others;
`promoting the sale of privately-branded credit cards through the ad-
`ministration of incentive programs; promoting the acceptance of a
`privately-branded credit card as a method of payment for transactions
`
`U.S. application/ registration NONE
`
`Application date
`
`NONE
`
`

`

`no.
`
`Register
`
`Registration date
`
`Mark
`
`NONE
`
`NONE
`
`Goods/services
`
`Clothing, namely, dresses; bottoms; pants; shorts, skirts; tops; shirts;
`sweaters; sweatshirts; rompers; overalls; pajamas; swimsuits; jackets;
`coats; scarves; mittens; gloves; socks; belts; footwear and headgear,
`namely, hats; caps; visors; none of the aforesaid goods being bridal-
`wear, wedding dresses, bridesmaid dresses and clothing being spe-
`cially designed, adapted and immediately recognizable as such for
`wear at religious events; On-line retail store services featuring skin
`care, hair care, beauty, and wellness products.
`
`U.S. application/ registration
`no.
`
`NONE
`
`Application date
`
`NONE
`
`Register
`
`Registration date
`
`Mark
`
`Goods/services
`
`NONE
`
`NONE
`
`ZULILY
`
`On-line retail store services featuring a wide variety of consumer
`goods of others; Retail store services available through computer
`communications featuring general merchandise; and online retail
`store services in the field of general merchandise available through in-
`ternet, mobile phone and portable and hand- held digital and electron-
`ic devices; Clothing, namely, coats, jackets, dresses, skirts, shorts,
`pants, bottoms, rompers, overalls, pajamas, swimsuits, tops, sweat-
`ers, sweatshirts, shirts, belts, socks, gloves, mittens and scarves;
`footwear; headgear, namely, hats, visors and caps; none of the afore-
`said goods being bridalwear, wedding dresses, bridesmaid dresses
`and clothing being specially designed, adapted and immediately re-
`cognizable as such for wear at religious events; Hosting of digital con-
`
`

`

`tent, namely, on-line blogs; providing a web site featuring temporary
`use of non-downloadable software for the viewing, uploading, sharing
`and presenting of information relating to merchandise for babies, in-
`fants, children, mothers to be and parents; hosting online web facilit-
`ies for others for organizing and conducting online meetings, gather-
`ings, and interactive discussions in the field of pregnancy, birth, par-
`enting and childcare; provision of customized web pages featuring
`user-defined information and personal profiles; On-line retail store
`services featuring skin care, hair care, beauty, and wellness products.
`
`Attachments
`
`77898115#TMSN.png( bytes )
`86789634#TMSN.png( bytes )
`85954772#TMSN.png( bytes )
`85954773#TMSN.png( bytes )
`88735805#TMSN.png( bytes )
`88735801#TMSN.png( bytes )
`ZULILY Stylized3.jpg
`ZULILY & Design1.jpg
`Notice of Opposition - ZULLYHAIRSKINCARE.pdf(133411 bytes )
`Exhibit 1 - Zulily Website.pdf(559894 bytes )
`Exhibit 2 - 3868643 - 77898115.pdf(482336 bytes )
`Exhibit 3 - 5800608 - 86789634.pdf(1226805 bytes )
`Exhibit 4 - 4557281 - 85954772.pdf(160653 bytes )
`Exhibit 5 - 4704515 - 85954773.pdf(2080169 bytes )
`Exhibit 6 - 6456654 - 88735805.pdf(1248587 bytes )
`Exhibit 7 - 6278858 - 88735801.pdf(1279277 bytes )
`Exhibit 8 - ZULLYHAIRSKINCARE Application.pdf(566306 bytes )
`Exhibit 9 - 90828662 Notice of Publication.pdf(51492 bytes )
`Exhibit 10 - Screenshots from ZULLYHAIRSKINCARE.pdf(293680 bytes )
`
`Signature
`
`/s/ RiKaleigh C. Johnson
`
`Name
`
`Date
`
`DAVID J. BYER
`
`08/16/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Application Serial No.: 90/828662
`For the mark: ZULLYHAIRSKINCARE
`International Class 035
`Published in the Official Gazette on May 17, 2022
`____________________________________
`
`
`
`
`
`
`)
`ZULILY, LLC ,
`
`
`
`)
`
`
`
`
`
`
`)
`
`Opposer,
`
`
`
`)
`
`
`
`
`
`
`)
`v.
`
`
`
`
`
`)
`
`
`
`
`
`
`)
`ZULLYHAIRSKINCARE, LLC,
`
`)
`
`
`
`
`
`
`)
`
`Applicant.
`
`
`
`)
`
`
`
`
`
`
`)
`
`
`Opposition No.
`
`
`Zulily, LLC (“Opposer” or “Zulily”), a Washington limited liability company,
`
`
`
`NOTICE OF OPPOSITION
`
`having its principal place of business at 2601 Elliott Avenue, Suite 200 Seattle, WA 98121,
`
`believes
`
`it will be damaged by
`
`the
`
`registration of
`
`the proposed mark
`
`ZULLYHAIRSKINCARE as shown in the above-identified Trademark Application Serial
`
`No. 90/828662 (“Opposed Application”), filed July 14, 2021, by ZULLYHAIRSKINCARE,
`
`LLC (“Applicant”), and hereby opposes the registration of the same. As grounds for the
`
`opposition, Opposer alleges that:
`
`1. Opposer is a Washington limited liability company, having its principal place of
`
`business at 2601 Elliott Avenue, Suite 200 Seattle, WA 98121.
`
`2. Opposer is a well-known online retailer and owner of the ecommerce site at
`
`www.zulily.com that provides customers with unique and special products, including
`
`hair and skin care products. Opposer helps consumers around the world discover special
`
`
`
`
`
`
`
`1
`
`

`

`deals and products for themselves, their families, and their homes. Opposer launches
`
`thousands of products each day, including skin care, hair care, beauty, and wellness
`
`products. Opposer uses compelling video and imagery to bring more than 50,000
`
`products to life daily. See Exhibit 1.
`
`3. On December 21, 2009, Opposer filed an application in the United States Patent and
`
`Trademark Office (“USPTO”) to register the word mark ZULILY. On October 26, 2010,
`
`Opposer received a registration for the word mark ZULILY for use with the following
`
`services: “On-line retail store services featuring a wide variety of consumer goods of
`
`others” in International Class 35 (Registration No. 3,868,643) (the “ZULILY ’643
`
`mark”). Zulily’s right to use the ZULILY ’643 mark is incontestable; the mark has been
`
`used in commerce since at least as early as January 27, 2010. A true and correct copy of
`
`the ZULILY ’643 mark’s Certificate of Registration from the USPTO website is attached
`
`as Exhibit 2.
`
`4. On October 15, 2015, Opposer filed an application in the United States Patent and
`
`Trademark Office (“USPTO”) to register the word mark ZULILY. On July 9, 2019,
`
`Opposer received a registration for the word mark ZULILY for use with the following
`
`services: “Retail store services available through computer communications featuring
`
`general merchandise; and online retail store services in the field of general merchandise
`
`available through internet, mobile phone and portable and hand-held digital and
`
`electronic devices” in International Class 35 (Registration No. 5,800,608) (the “ZULILY
`
`’608 mark”). Zulily has used the ZULILY ’608 mark in commerce since at least as early
`
`as January 27, 2010. A true and correct copy of the ZULILY ’608 mark’s Certificate of
`
`Registration from the USPTO website is attached as Exhibit 3.
`
`
`
`2
`
`

`

`5. On June 10, 2013, Opposer filed an application in the USPTO to register the word mark
`
`ZULILY. On June 24, 2014, Opposer received a registration for the word mark ZULILY
`
`for use with the following goods and services: “Clothing, namely, coats, jackets, dresses,
`
`skirts, shorts, pants, bottoms, rompers, overalls, pajamas, swimsuits, tops, sweaters,
`
`sweatshirts, shirts, belts, socks, gloves, mittens and scarves; footwear; headgear, namely,
`
`hats, visors and caps; none of the aforesaid goods being bridalwear, wedding dresses,
`
`bridesmaid dresses and clothing being specially designed, adapted and immediately
`
`recognizable as such for wear at religious events” in International Class 025 and
`
`“Hosting of digital content, namely, on-line blogs; providing a web site featuring
`
`temporary use of non-downloadable software for the viewing, uploading, sharing and
`
`presenting of information relating to merchandise for babies, infants, children, mothers
`
`to be and parents; hosting online web facilities for others for organizing and conducting
`
`online meetings, gatherings, and interactive discussions in the field of pregnancy, birth,
`
`parenting and childcare; provision of customized web pages featuring user-defined
`
`information and personal profiles” in International Class 42 (Registration No. 4,557,281)
`
`(the “ZULILY ’281 mark”). Zulily’s right to use the ZULILY ’281 mark is incontestable;
`
`the mark has been used in commerce since at least as early as January 27, 2010. A true
`
`and correct copy of the ZULILY ’281 mark’s Certificate of Registration from the
`
`USPTO website is attached as Exhibit 4.
`
`6. On June 10, 2013, Opposer filed an application in the USPTO to register the mark
`
`ZULILY and Design. On March 17, 2015, Opposer received a registration for the mark
`
`ZULILY and Design for use with the following goods: “Clothing, namely, dresses;
`
`bottoms; pants; shorts, skirts; tops; shirts; sweaters; sweatshirts; rompers; overalls;
`
`
`
`3
`
`

`

`pajamas; swimsuits; jackets; coats; scarves; mittens; gloves; socks; belts; footwear and
`
`headgear, namely, hats; caps; visors; none of the aforesaid goods being bridalwear,
`
`wedding dresses, bridesmaid dresses and clothing being specially designed, adapted and
`
`immediately recognizable as such for wear at religious events” in International Class 25
`
`(Registration No. 4,704,515) (the “ZULILY and design ’515 mark”). Zulily’s right to
`
`use the ZULILY ’515 mark is incontestable; the mark has been used in commerce since
`
`at least as early as early as January 27, 2010. A true and correct copy of the ZULILY
`
`and design ’515 mark’s Certificate of Registration from the USPTO website is attached
`
`as Exhibit 5.
`
`7. On December 20, 2019, Opposer filed an application in the USPTO to register the mark
`
`ZULILY stylized. On August 17, 2021, Opposer received a registration for the mark
`
`ZULILY stylized for use with the following goods: “Clothing, namely, coats, jackets,
`
`dresses, skirts, shorts, pants, bottoms, rompers, overalls, pajamas, swimsuits, tops,
`
`sweaters, sweatshirts, shirts, belts, socks, gloves, mittens and scarves; footwear;
`
`headgear, namely, hats, visors and caps; none of the aforesaid goods being bridalwear,
`
`wedding dresses, bridesmaid dresses and clothing being specially designed, adapted and
`
`immediately recognizable as such for wear at religious events” in International Class 25
`
`(Registration No. 6,456,654) (the “ZULILY stylized ’654 mark”). Zulily has used the
`
`ZULILY ’654 mark in commerce since at least as early as March 1, 2021. A true and
`
`correct copy of the ZULILY stylized ’654 mark’s Certificate of Registration from the
`
`USPTO website is attached as Exhibit 6.
`
`8. On December 20, 2019, Opposer filed an application in the USPTO to register the mark
`
`ZULILY stylized. On February 23, 2021, Opposer received a registration for the mark
`
`
`
`4
`
`

`

`ZULILY stylized for use with the following services: “On-line retail store services
`
`featuring a wide variety of consumer goods of others; retail store services available
`
`through computer communications featuring general merchandise; and online retail store
`
`services in the field of general merchandise available through internet, mobile phone and
`
`portable and hand-held digital and electronic devices; promoting the issuance and sale
`
`of privately-branded credit card accounts of others; promoting the sale of privately-
`
`branded credit cards through the administration of incentive programs; promoting the
`
`acceptance of a privately-branded credit card as a method of payment for transactions”
`
`in International Class 35 (Registration No. 6,278,858) (the “ZULILY stylized ’858
`
`mark”). Zulily has used the ZULILY ’858 mark in commerce since at least as early as
`
`February 11, 2019. A true and correct copy of the ZULILY stylized ’858 mark’s
`
`Certificate of Registration from the USPTO website is attached as Exhibit 7.
`
`9. The marks referenced in paragraphs 3 through 8 are referred to herein collectively as
`
`“Opposer’s ZULILY Marks.”
`
`10. Opposer’s ZULILY Marks are inherently distinctive and therefore should be afforded
`
`the strongest protection.
`
`11. Since at least as early as 2010, Opposer has continuously and pervasively used the
`
`distinctive ZULILY word mark in the United States for its offer and provision of online
`
`retail store services, and in connection with certain goods, and has accrued common law
`
`rights in and to the ZULILY word mark in connection with these services.
`
`12. Opposer has widely advertised and promoted retail services under Opposer’s ZULILY
`
`Marks in interstate commerce in the United States.
`
`
`
`5
`
`

`

`13. Opposer’s ZULILY Marks, through long use and extensive marketing and advertising
`
`have become widely recognized, and widely and favorably known, and are therefore of
`
`significant value to Opposer.
`
`14. On information and belief, Applicant is a New York limited liability company having an
`
`address of 90-25 138th Place, C5 New York, New York United States 11435.
`
`15. On July 14, 2021, Applicant filed a use-based application, Serial No. 90,828,662, to
`
`register the mark ZULLYHAIRSKINCARE for “On-line retail store services featuring
`
`Natural cosmetics, Non medicated skin toners, Non-foaming cosmetic preparations for
`
`skin, face, body, Non-medicated cosmetic soap, Non-medicated cosmetics, Non-
`
`medicated facial and eye serum containing antioxidants, Non-medicated skin care
`
`preparations, Non-medicated skin care preparations, namely, creams, lotions, gels,
`
`toners, cleaners and peels, Non-medicated skin care preparations, namely, creams,
`
`lotions, gels, toners, cleaners and peels, Non-medicated skin creams, Non-medicated
`
`skin serums; On-line retail store services featuring Non-medicated skin toners, Non-
`
`medicated cleansers for personal use, namely, creams, lotions, gels, toners, cleaners and
`
`peels, Non-medicated cleansers, namely, skin cleansers, facial cleansers, Non-medicated
`
`cosmetic skin care preparations consisting of organic coconut virgin oil, Non-medicated
`
`exfoliating preparations for skin, face, body, Non-medicated lotions for skin, face, body,
`
`Non-medicated preparations all for the care of skin, hair and scalp, Non-medicated
`
`serums for use on skin, face, body, Non-medicated skin, face, body care preparations,
`
`Oils for cosmetic purposes, Organic cosmetics, Skin and body topical lotions, creams
`
`and oils for cosmetic use, Skin moisturizers used as cosmetics; On-line retail store
`
`services featuring Hair products, namely, shampoo, gel, shampoo, conditioner, deep
`
`
`
`6
`
`

`

`conditioner, hair oil, hair serum, scalp oil, hair mask; On-line retail store services
`
`featuring Hair accessories, combs, blowdryer, brushes, bonnet, hair pins, satin scarf,
`
`bonnet, satin bonnet; On-line retail store services featuring Anti-acne face cleanser,
`
`beard oil, organic conditioner, express hair growth oil, ginger and moringa hair tonic,
`
`growth lash serum, intimate scrub, intimate soap, rejuvenating rose face oil, turmeric and
`
`ginger scrub” in class 035 with a October 20, 2020, claimed first use date. A true and
`
`correct copy of the Opposed Application is attached as Exhibit 8.
`
`16. The Opposed ZULLYHAIRSKINCARE Application was published in the Official
`
`Gazette on May 17, 2022. See True and correct copies of TSDR printouts showing the
`
`publication date of May 17, 2022, at Exhibit 9.
`
`17. Each of the filings dates of Opposer’s ZULILY Marks pre-date Applicant’s filing date
`
`of July 14, 2021. Further, several of Opposer’s ZULILY Marks were first used in
`
`commerce by Opposer prior to the Applicant’s claimed first use date of October 20,
`
`2020. Finally, Opposer’s common law rights in Opposer’s ZULILY word marks and
`
`Opposer’s ZULILY and design marks, predate Applicant’s first use date.
`
`COUNT I
`
`LIKELIHOOD OF CONFUSION
`
`
`18. Opposer realleges and incorporates herein by reference the allegations in paragraphs 1
`
`through 17 of this Notice of Opposition.
`
`19. The mark shown in the Opposed Application so resembles Opposer’s ZULILY Marks
`
`that it is confusingly similar in sight, sound, connotation, and commercial impression.
`
`Specifically, Applicant’s ZULLYHAIRSKINCARE mark is substantially similar to
`
`Opposer’s ZULILY Marks in whole or in part combining a mark almost identical to
`
`ZULILY with the generic terms “hair,” “skin,” and “care.” With the virtually identical
`
`
`
`7
`
`

`

`ZULLY mark as the primary and only distinctive term of ZULLYHAIRSKINCARE
`
`mark, consumers are likely to be confused as to the source of the companies’ respective
`
`goods/services and as to affiliation is likely to occur.
`
`20. The services covered by the Opposed Application are identical or highly similar,
`
`commercially related and travel in the same or similar trade channels as the goods and
`
`services covered by Opposer’s ZULILY Marks.
`
`21. Upon information and belief, Applicant purports to use the proposed mark
`
`ZULLYHAIRSKINCARE in connection with certain services specified in the Opposed
`
`ZULLYHAIRSKINCARE Application, which include: “On-line retail store services
`
`featuring Natural cosmetics, Non medicated skin toners, Non-foaming cosmetic
`
`preparations for skin, face, body, Non-medicated cosmetic soap, Non-medicated
`
`cosmetics, Non-medicated facial and eye serum containing antioxidants, Non-medicated
`
`skin care preparations, Non-medicated skin care preparations, namely, creams, lotions,
`
`gels, toners, cleaners and peels, Non-medicated skin care preparations, namely, creams,
`
`lotions, gels, toners, cleaners and peels, Non-medicated skin creams, Non-medicated
`
`skin serums; On-line retail store services featuring Non-medicated skin toners, Non-
`
`medicated cleansers for personal use, namely, creams, lotions, gels, toners, cleaners and
`
`peels, Non-medicated cleansers, namely, skin cleansers, facial cleansers, Non-medicated
`
`cosmetic skin care preparations consisting of organic coconut virgin oil, Non-medicated
`
`exfoliating preparations for skin, face, body, Non-medicated lotions for skin, face, body,
`
`Non-medicated preparations all for the care of skin, hair and scalp, Non-medicated
`
`serums for use on skin, face, body, Non-medicated skin, face, body care preparations,
`
`Oils for cosmetic purposes, Organic cosmetics, Skin and body topical lotions, creams
`
`
`
`8
`
`

`

`and oils for cosmetic use, Skin moisturizers used as cosmetics; On-line retail store
`
`services featuring Hair products, namely, shampoo, gel, shampoo, conditioner, deep
`
`conditioner, hair oil, hair serum, scalp oil, hair mask; On-line retail store services
`
`featuring Hair accessories, combs, blowdryer, brushes, bonnet, hair pins, satin scarf,
`
`bonnet, satin bonnet; On-line retail store services featuring Anti-acne face cleanser,
`
`beard oil, organic conditioner, express hair growth oil, ginger and moringa hair tonic,
`
`growth lash serum, intimate scrub, intimate soap, rejuvenating rose face oil, turmeric and
`
`ginger scrub” in International Class 35.
`
`22. Opposer’s ZULILY Marks are for goods and services that overlap with services for
`
`which Applicant has applied for in its Opposed Application.
`
`23. In addition, the channels of trade and target markets of Opposer’s and Applicant’s
`
`respective goods and services are identical or overlap.
`
`24. Also, Applicant has adopted the opposed mark in bad faith. Such bad faith is evidenced
`
`by Zulily’s prior long and extensive use of the Zulily Marks long before Applicant’s use,
`
`and by Applicant’s adoption and use of the ZULLY mark (standing alone) and the
`
`ZULLY mark with a flower petal design, which marks are virtually identical to Zulily’s
`
`marks, for identical or highly similar goods and services. See Exhibit 10.
`
`25. Further, the same or overlapping classes of purchasers are likely to purchase both
`
`Opposer’s goods/services and Applicant’s services.
`
`26. Applicant’s proposed ZULLYHAIRSKINCARE mark is substantially similar to the
`
`Opposer’s ZULILY Marks, the goods and services are identical or related, and the
`
`channels of trade and target markets are identical Accordingly, consumers are likely to
`
`be confused, mistaken, or deceived within the meaning of § 2(d) of the Lanham Act, 15
`
`
`
`9
`
`

`

`U.S.C. § 1052(d), as
`
`to whether
`
`the services offered under
`
`the proposed
`
`ZULLYHAIRSKINCARE mark emanate from or are affiliated with, sponsored by, or
`
`approved by the Opposer, resulting in injury to the Opposer, the consuming public, and
`
`the trade.
`
`27. Opposer will be damaged by the registration of the proposed mark shown in the Opposed
`
`ZULLYHAIRSKINCARE Application because such registration will facilitate
`
`Applicant’s continued confusing and misleading use of the ZULLYHAIRSKINCARE
`
`mark sought to be registered, and will give color of exclusive statutory rights to
`
`Applicant in violation and derogation of the prior and superior rights of Opposer.
`
`28. Applicant’s
`
`use
`
`and
`
`registration
`
`of
`
`registration
`
`of
`
`the
`
`applied-for
`
`ZULLYHAIRSKINCARE mark is likely to cause confusion, mistake, or deception as to
`
`the source of origin of Applicant’s services in that consumers and others are likely to
`
`believe that Applicant’s services are provided by, sponsored by, approved by, licensed
`
`by, affiliated with or in some other way authorized by Opposer and Opposer’s ZULILY
`
`Marks. Accordingly, Opposer hereby respectfully requests that registration of said mark
`
`be refused pursuant to Section 2(d) of the U.S. Trademark Act.
`
`WHEREFORE, Opposer believes that it will be damaged by the registration of
`
`Applicant’s proposed mark and requests that this opposition be sustained and that
`
`registration of Applicant’s proposed ZULLYHAIRSKINCARE mark as shown in
`
`Application Serial No. 90/828662 be refused.
`
`
`
`10
`
`

`

`
`
`
`Date: August 16, 2022
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/s/ David J. Byer
`David J. Byer (BBO# 544411)
`RiKaleigh C. Johnson
`Attorneys for Opposer
`K&L Gates LLP
`State Street Financial Center
`One Lincoln Street
`Boston, MA 02111-2950
`Tel.: 617.261.3100
`Fax: 617.261.3175
`David.Byer@klgates.com
`RiKaleigh.Johnson@klgates.com
`
`
`
`
`
`
`
`Certificate
`
`
`
`I, RiKaleigh C. Johnson, hereby certify that the
`foregoing Notice of Opposition is being filed
`through the Electronic System for Trademark
`Trials and Appeals (“ESTTA”) on this 16th day
`of August 2022.
`
`/s/RiKaleigh C. Johnson
`
`
`
`
`
`(Signature)
`
`
`
`11
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`
`
`

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`EXHIBIT 2
`EXHIBIT 2
`
`
`
`

`

`oNited States of Amery,
`Antted States Patent and Trademark Office
`lly
`
`ZULILY
`
`
`
`ZULILY, INC. (DELAWARE CORPORATION)
`
`505 - STH AVENUE SOUTH
`
`SEATTLE, WA 98104
`
`
`
`
`
`FOR: ON-LINE RETAIL STORE SERVICES FEATURINGA WIDEVARIETY OF CONSUMI
`
`
`GOODSOF OTTERS, IN CLASS 35 (U.S. CLS. 100, 101 AND 102).
`
`FIRST USE 1-27-2010; INCOMMERCE1-27-2010.
`
`
`
` (7R
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`
`
`SN 77-898,115, FILED 12-21-2009.
`
`INGA ERVIN, EXAMINING ATTORNEY
`
`Reg. No. 3,868,643
`Registered Oct. 26, 2010
`
`Int. CL: 35
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`
`
`Director ofthe United States Patent and ‘l'sademarkOffice
`
`

`

`EXHIBIT 3
`
`

`

`ited States of Amer
`Anited States Patent and Trademark Cffice
`
`lta
`
`ZULILY
`
`Reg. No. 5,800,608
`
`Registered Jul. 09, 2019
`
`zulily, Ile (DELAWARE LIMITED LIABILITY COMPANY)
`2