`ESTTA Tracking number:
`ESTTA1256802
`12/28/2022
`
`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
`
`Attorney informa-
`tion
`
`Docket no.
`
`Palm Beach Tan, Inc.
`12/28/2022
`
`6321 CAMPUS CIRCLE DRIVE EAST
`IRVING, TX 75063
`UNITED STATES
`
`/CATHRYN ANNE BERRYMAN/
`WINSTEAD, P.C.
`2728 N. HARWOOD STREET
`SUITE 500
`DALLAS, TX 75201
`UNITED STATES
`Primary email: cberryman@winstead.com
`Secondary email(s): tmdocket@winstead.com, ngraham@winstead.com
`2147455172
`47226-15
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`International re-
`gistration no.
`Applicant
`
`79312312
`12/28/2022
`
`1594439
`
`Publication date
`Opposition period
`ends
`International re-
`gistration date
`
`08/30/2022
`12/28/2022
`
`04/12/2021
`
`BIOMIMETIC, S.L.
`CALLE FILá VERDS, 19
`E-03801 ALCOY - ALICANTE
`SPAIN
`
`Goods/services affected by opposition
`
`Class 003. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: non-medicinal toiletry preparations and cos-
`metic preparations, namely, facial cleansers and treatment creams for moisturizing, anti-aging, firm-
`ing and lightening of the skin, and eye contour treatment creams, non-medicinal dentifrices; per-
`fumery products, namely, essential oils; bleaching preparations and other substances in the nature of
`detergents and soaps for laundry use; cleaning, polishing, degreasing and abrasive preparations for
`household use
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: pharmaceutical products, preparations for
`medical and veterinary use, all for treating viral infections; hygienic and sanitary products for medical
`
`
`
`use, namely, sanitary sterilizing preparations; dietetic food and beverages for medical or veterinary
`use, food for babies; food supplements for humans or animals; medical plasters being material for
`dressings; material for dental fillings and impressions; disinfectants; products for destroying vermin;
`fungicides, herbicides
`Class 035. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: commercial business management; com-
`mercial administration of the licensing of the goods and services of others; office functions, and
`wholesale and retail store services featuring non-medicinal facial cleansers and treatments for mois-
`turizing, anti-aging, firming and lightening of the skin, eye contour treatments, also provided via global
`computer networks
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act Section 2(d)
`COMMON LAW RIGHTS
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`
`Goods/services
`
`U.S. registration
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`
`Description of
`mark
`Goods/services
`
`5078519
`
`Application date
`
`11/21/2014
`
`Principal
`11/08/2016
`
`Foreign priority
`date
`PBT A BETTER SHADE OF YOU
`
`NONE
`
`The mark consists of bolded, lower case letters "PBT" with a stylized palm tree
`to the left of "PBT". Underneath the letters and palm tree are the words "A BET-
`TER SHADE OF YOU".
`Class 044. First use: First Use: Jan 2015 First Use In Commerce: Jan 2015
`Tanning salon services
`
`Application date
`
`08/24/2017
`
`Foreign priority
`date
`
`NONE
`
`5447369
`
`Principal
`04/17/2018
`
`PBT ONE
`
`NONE
`
`Class 035. First use: First Use: Aug 1, 2017 First Use In Commerce: Aug 1,
`2017
`Providing incentive award program for customers through membership upgrades
`
`
`
`U.S. application
`no.
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`in the field of tanning salons for the purpose of promoting and rewarding loyalty;
`membership club services providing incentives to members in the form of dis-
`counts in the field of tanning salons
`
`90674071
`
`Application date
`
`04/27/2021
`
`NONE
`
`PBT
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Class 035. First use: First Use: Jan 19, 2015 First Use In Commerce: Jan 19,
`2015
`Providing incentive award program for customers through membership upgrades
`in the nature of loyalty points for purchase of a company's goods and services,
`all in the field of tanning salons for the purpose of promoting and rewarding loy-
`alty; membership club services providing incentives to members in the form of
`discounts in the field of tanning salons; franchise services, namely, offering con-
`sultation and assistance in business management, organization and promotion
`in the establishment and operation of tanning salons
`Class 040. First use: First Use: Jan 19, 2015 First Use In Commerce: Jan 19,
`2015
`Air brushing services
`Class 044. First use: First Use: Jan 19, 2015 First Use In Commerce: Jan 19,
`2015
`Tanning salon services
`
`U.S. application
`no.
`Registration date
`
`97604785
`
`NONE
`
`Application date
`
`09/23/2022
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`PBT LIGHT THERAPY
`
`NONE
`
`Class 044. First use: First Use: None First Use In Commerce: None
`Providing health spa services, namely, cosmetic body care services; hydromas-
`sage services; wellness services; detoxification and stress relief services, mas-
`sage services, anti-inflammatory services; facial and body treatment services;
`sauna services; body contouring services, namely, cellulite reduction services,
`skin tightening services; nonsurgical fat elimination services; collagen building
`skin therapy services; anti-aging therapy services; wellness services, namely, ul-
`trasound, radio frequency, infrared, led and red light therapies; skin care ser-
`vices; whole body vibrational therapy services; providing information about diet-
`ary supplements and nutrition; tanning salon services
`
`U.S. application
`no.
`Registration date
`
`Word mark
`
`97603153
`
`Application date
`
`09/22/2022
`
`NONE
`
`Foreign priority
`date
`PBT PERSONALIZED BEAUTY THERAPY
`
`NONE
`
`
`
`Design mark
`
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 003. First use: First Use: None First Use In Commerce: None
`Tanning sprays, creams, lotions and gels; tanning skin creams, tanning sprays,
`lotions and tanning gels for accelerating, enhancing, intensifying and extending
`tans; after tanning sprays and gels; body and facial bronzers
`Class 005. First use: First Use: None First Use In Commerce: None
`Dietary supplements
`Class 044. First use: First Use: None First Use In Commerce: None
`Providing health spa services, namely, cosmetic body care services; hydromas-
`sage services; wellness services; detoxification and stress relief services, mas-
`sage services, anti-inflammatory services; facial and body treatment services;
`sauna services; body contouring services, namely, cellulite reduction services,
`skin tightening services; nonsurgical fat elimination services; collagen building
`skin therapy services; anti-aging therapy services; wellness services, namely, ul-
`trasound, radio frequency, infrared, led and red light therapies; skin care ser-
`vices; whole body vibrational therapy services; providing information about diet-
`ary supplements and nutrition; tanning salon services
`
`U.S. application
`no.
`Registration date
`
`Word mark
`Design mark
`
`97162431
`
`NONE
`
`MY PBT
`
`Application date
`
`12/08/2021
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of The mark consists of the stylized design of a palm tree
`with six palm fronds surrounded by an incomplete circle that begins with the line
`that forms the right side of the trunk of the palm tree; to the left of the palm tree
`and circle is the italicized word "my" in lower case lettering, to the right of the
`palm tree and circle are the italicized lower case letters "pbt.".
`Class 009. First use: First Use: Mar 6, 2020 First Use In Commerce: Mar 6,
`2020
`Downloadable computer applications for use on mobile phones for managing
`personal tanning account information; Downloadable computer applications for
`use on mobile phones for updating and monitoring account billing information,
`scheduling appointments, viewing account rewards and balances, managing
`
`
`
`membership offers including free tanning services, tanning membership and
`product discounts and cash credits and finding salon locations
`Class 035. First use: First Use: Apr 9, 2018 First Use In Commerce: Apr 9, 2018
`Providing an online portal for management of personal tanning account informa-
`tion; Providing an online portal for updating and monitoring account billing in-
`formation, scheduling appointments, viewing account rewards and balances,
`managing membership offers including free services, discounts and cash cred-
`its, and finding salon locations
`
`Attachments
`
`87582840#TMSN.png( bytes )
`97603153#TMSN.png( bytes )
`97162431#TMSN.png( bytes )
`47226-38 - Notice of Petition for Opposition - PBT BIOMIMETIC DERMOCO
`SMETICS - FILED.pdf(161972 bytes )
`Exhibit A - 90674071 Suspension Letter 4.6.2022 PBT
`(REDUCED).pdf(2074910 bytes )
`EXHIBIT B - 79312312 RESPONSE TO OFFICE ACTION
`7.14.2022.pdf(4871072 bytes )
`
`Signature
`Name
`Date
`
`/Cathryn A. Berryman/
`/CATHRYN ANNE BERRYMAN/
`12/28/2022
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`April 12, 2021
`
`PBT BIOMIMETIC DERMOCOSMETICS
`
`
`In the Matter of Serial No. 79312312
`
`Date of Filing:
`
`Mark In Issue:
`
`
`PALM BEACH TAN, INC.
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`BIOMIMETIC, S.L.
`
`
`
`
`
`
`Respondent
`
`
`
`Box TTAB
`Commission for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§ Opposition No. __________
`§
`§ ESTTA Tracking No.
`§ ESTTA1232689
`§
`§
`§
`
`NOTICE OF PETITION FOR OPPOSITION
`
`
`
`
`Petitioner, Palm Beach Tan, Inc., a Texas corporation, with a place of business at
`
`6321 Campus Circle Dr. East, Irving, Texas 75063, believes that it is or will be damaged
`
`by the registration of the mark sought in Application Serial No. 79312312 (the
`
`“Respondent’s Application”) for the mark PBT BIOMIMETIC DERMOCOSMETICS
`
`and hereby petitions to oppose same.
`
`
`
`The applicant of the mark in issue is shown as the Respondent, Biomimetic, S.L.,
`
`a Sociedad Limitada under the laws of Spain, with a place of business at Calle Fila Verds,
`
`19, E-03801 Alcoy-Alicante, Spain.
`
`
`
`
`
`As grounds for this petition, it is alleged that:
`
`1.
`
`Petitioner is the owner of common law and statutory rights in and to a
`
`family of marks containing PBT (collectively the “PBT Marks”) used in interstate
`
`commerce within the United States for cosmetic skincare goods and services and tanning
`
`
`
`and sunless tanning-related goods and services classified in multiple classes, including
`
`International Classes 003, 005, 009, 035 and 044 (the “Subject Classes”). The PBT
`
`Marks are subject to the following active United States registrations and applications,
`
`which are valid and subsisting as of the filing date and which are owned in the name of
`
`Petitioner (collectively, the “PBT Mark Registrations/Applications”):
`
`
`
`
`
`(a)
`
`US Ser. No. 90/674071, filed April 27, 2021, for the mark PBT
`
`(the “PBT Mark Application”) under Section 1(a) basis for “IC 035. US 100 101 102. G
`
`& S: Providing incentive award program for customers through membership upgrades in
`
`the nature of loyalty points for purchase of a company's goods and services, all in the
`
`field of tanning salons for the purpose of promoting and rewarding loyalty; membership
`
`club services providing incentives to members in the form of discounts in the field of
`
`tanning salons; franchise services, namely, offering consultation and assistance in
`
`business management, organization and promotion in the establishment and operation of
`
`tanning salons. FIRST USE: 20150119. FIRST USE IN COMMERCE: 20150119”, “IC
`
`040. US 100 103 106. G & S: Air brushing services. FIRST USE: 20150119. FIRST USE
`
`IN COMMERCE: 20150119”, and “IC 044. US 100 101. G & S: Tanning salon services.
`
`FIRST USE: 20150119. FIRST USE IN COMMERCE: 20150119.”
`
`
`
`
`
`(b)
`
`US Ser. No. 97604785, filed September 23, 2022, for the mark
`
`PBT LIGHT THERAPY, under Section 1(b) basis for “IC 044. US 100 101. G & S:
`
`Providing health spa services, namely, cosmetic body care services; hydromassage
`
`services; wellness services; detoxification and stress relief services, massage services,
`
`anti-inflammatory services; facial and body treatment services; sauna services; body
`
`contouring services, namely, cellulite reduction services, skin tightening services;
`
`nonsurgical fat elimination services; collagen building skin therapy services; anti-aging
`
`therapy services; wellness services, namely, ultrasound, radio frequency, infrared, led and
`
`red light therapies; skin care services; whole body vibrational therapy services; providing
`
`information about dietary supplements and nutrition; tanning salon services.”
`
`
`
`
`
`(c)
`
`US Ser. No. 97603153 filed September 22, 2022, for the mark PBT
`
`PERSONALIZED BEAUTY THERAPY, under Section 1(b) basis for “IC 003. US 001
`
`004 006 050 051 052. G & S: Tanning sprays, creams, lotions and gels; tanning skin
`
`creams, tanning sprays, lotions and tanning gels for accelerating, enhancing, intensifying
`
`
`
`and extending tans; after tanning sprays and gels; body and facial bronzers,” “IC 005. US
`
`005 006 018 044 046 051 052. G & S: Dietary supplements,” and “IC 044. US 100 101.
`
`G & S: Providing health spa services, namely, cosmetic body care services;
`
`hydromassage services; wellness services; detoxification and stress relief services,
`
`massage services, anti-inflammatory services; facial and body treatment services; sauna
`
`services; body contouring services, namely, cellulite reduction services, skin tightening
`
`services; nonsurgical fat elimination services; collagen building skin therapy services;
`
`anti-aging therapy services; wellness services, namely, ultrasound, radio frequency,
`
`infrared, led and red light therapies; skin care services; whole body vibrational therapy
`
`services; providing information about dietary supplements and nutrition; tanning salon
`
`services.”
`
`
`
`
`
`(d)
`
`US Ser. No. 97162431 filed December 8, 2021, for the design
`
`mark
`
`, under Section 1(a) basis, for “IC 009. US 021 023 026
`
`036 038. G & S: Downloadable mobile applications portable electronic devices for
`
`management of personal tanning account information; Downloadable mobile applications
`
`portable electronic devices for updating and monitoring account billing information,
`
`scheduling appointments, viewing account rewards and balances, managing membership
`
`offers including free services, discounts and cash credits, and finding salon locations.
`
`FIRST USE: 20200306. FIRST USE IN COMMERCE: 20200306,” and “IC 035. US 100
`
`101 102. G & S: Providing an online portal for management of personal tanning account
`
`information; Providing an online portal for updating and monitoring account billing
`
`information, scheduling appointments, viewing account rewards and balances, managing
`
`membership offers including free services, discounts and cash credits, and finding salon
`
`locations. FIRST USE: 20180409. FIRST USE IN COMMERCE: 20180409.”
`
`
`
`
`
`(e)
`
`US Ser. No. 87582840 filed August 24, 2017, US Reg. No.
`
`5447369 registered April 17, 2018, for the mark PBT ONE, under Section 1(a) basis, for
`
`“IC 035. US 100 101 102. G & S: Providing incentive award program for customers
`
`through membership upgrades in the field of tanning salons for the purpose of promoting
`
`and rewarding loyalty; membership club services providing incentives to members in the
`
`
`
`form of discounts in the field of tanning salons. FIRST USE: 20170801. FIRST USE IN
`
`COMMERCE: 20170801.”
`
`
`
`
`
`(f)
`
`US Ser. No. 86/461868, filed November 21, 2014, US Reg. No.
`
`5078519 registered November 8, 2016, for the design mark
`
`,
`
`under Section 1(a) basis, for “IC 044. US 100 101. G & S: Tanning salon services. FIRST
`
`USE: 20150100. FIRST USE IN COMMERCE: 20150100.”
`
`2.
`
`Petitioner has adopted and used the acronym and abbreviation PBT in
`
`connection with its business and related goods and services, including cosmetic skincare
`
`goods and tanning and sunless tanning goods and services in the Subject Classes for
`
`decades in the United States. PBT and the PBT Marks are recognized as cosmetic skin
`
`care goods and tanning and sunless tanning goods and services manufactured and sold or
`
`offered for sale by Petitioner among consumers and the general public in the United
`
`States. Goods and services bearing PBT and certain of the PBT Marks are marketed and
`
`sold, and have been continuously marketed and sold, in interstate commerce in the United
`
`States since as early as 2015.
`
`3.
`
`By virtue of extensive marketing and advertising expenditures for several
`
`decades, Petitioner has established significant goodwill associated with PBT and certain
`
`of the PBT Marks for its cosmetic skincare goods and tanning and sunless tanning goods
`
`and services in the Subject Classes in the United States. PBT and certain of the PBT
`
`Marks are widely recognized in the general consuming public within the United States.
`
`4.
`
` Petitioner is likely to be damaged by the registration on the Principal
`
`Register and the issuance of a certificate of registration of the mark in issue and
`
`Petitioner's legal rights to obtain and use trademark applications for Petitioner’s PBT
`
`Marks, including the pending PBT Mark Application, are likely to be impaired thereby. A
`
`copy of the Office Action dated April 6, 2022, issued in Petitioner’s pending PBT Mark
`
`Application currently pending in which Respondent’s Application and Respondent’s
`
`mark at issue is cited as the basis for rejection of the mark PBT on grounds of priority
`
`
`
`and likelihood of confusion by the USPTO examiner, is found in the TESS record
`
`attached hereto as Exhibit A.
`
`5.
`
`Petitioner is likely to be damaged by the registration on the Principal
`
`Register and the issuance of a certificate of registration of the mark in issue in
`
`Respondent’s Application, and Petitioner's legal rights to obtain any trademark
`
`application for marks containing PBT, including the PBT Marks, for any cosmetic skin
`
`care goods and services or related goods and services in International Classes 003 and
`
`035 and to license the use of PBT and the PBT Marks for the same or related goods
`
`offered to the public in connection with any cosmetic skin care goods and services are
`
`likely to be impaired by the issuance of a certificate of registration for the mark in issue
`
`in Respondent’s Application by Respondent.
`
`
`
`6.
`
`Petitioner seeks opposition of the registration of the mark at issue on the
`
`Principal Register on
`
`the grounds
`
`that
`
`the mark PBT BIOMIMETIC
`
`DERMOCOSMETICS is nearly identical and confusingly similar in appearance, sound,
`
`connotation and meaning to PBT and the PBT Marks previously used and/or registered in
`
`the United States on or in conjunction with Petitioner’s goods and services at least as
`
`early as 2015, as to be likely, when used on or in connection with cosmetic skin care
`
`goods and services, as currently listed on Respondent’s Application, to cause confusion
`
`or to cause mistake to deceive. Petitioner’s goods and services and Respondent’s goods
`
`and services are related because the cosmetic skin care goods and services offered or
`
`intended to be offered for sale in Respondent’s online and retail stores are the same or
`
`similar to Petitioner’s cosmetic skincare goods and services, and related to tanning and
`
`sunless tanning related goods and services, offered for sale or intended to be offered for
`
`sale to consumers in Petitioner’s corporate and franchised salons. Petitioner’s goods and
`
`services and Respondent’s goods and services are related because their skin care products
`
`(as well as tanning and sunless tanning products) are classified in the same International
`
`Class 003 and both parties target the same consumers seeking cosmetic skin care goods
`
`and services. Such confusion is heightened since the primary portion of Respondent’s
`
`mark at issue PBT is identical to PBT and the primary portion of the PBT Marks used by
`
`Petitioner. In fact,
`
`the
`
`terms BIOMIMETIC DERMOCOSMETICS are merely
`
`descriptive of Respondent’s goods and services, thus carrying less weight in a
`
`
`
`determination of likelihood of confusion, and Respondent has disclaimed any claim of
`
`exclusive rights in and to those terms apart from the mark at issue, as shown. See true and
`
`correct copy of the Respondent’s response to office action dated July 14, 2022 attached
`
`as Exhibit B hereto. Notably Respondent also amended its goods in International Class
`
`003 to claim non-medical cosmetic preparations and skin treatments before Respondent
`
`argued to the USPTO examiner that there was no likelihood of confusion with the cited
`
`marks PBT ONE and PBT A BETTER SHADE OF YOU owned by Petitioner because
`
`Respondent’s goods and services consisted of facial skin cleansers and treatments. In
`
`contrast, however, unlike as proffered to the USPTO examiner by Respondent in its
`
`arguments made in this response to office action, PBT in fact does offer the same or
`
`related cosmetic skin care products to consumers using PBT and certain of the PBT
`
`Marks, and thus its channels of trade are overlapping (or at a least closely related).
`
`Further, adding merely descriptive terms to PBT will not serve to distinguish
`
`Respondent’s mark at issue from Petitioner’s PBT and PBT Marks in the minds of the
`
`consuming public. In view of the nearly identical appearance, connotation and sound of
`
`Respondent’s mark in issue and Petitioner’s PBT and the PBT Mark sand the related
`
`nature of Petitioner’s goods and services and Respondent’s goods and services,
`
`Respondent’s mark in issue so closely resembles PBT and the PBT Marks previously
`
`registered and/or used so as to cause a likelihood of confusion, or to cause mistake, or to
`
`deceive, in violation of Section 2(d), 15 U.S.C. Section 1502(d). Accordingly,
`
`Respondent’s Application
`
`for
`
`the mark
`
`in
`
`issue PBT BIOMIMETIC
`
`DERMOCOSMETICS should be refused on the basis of a likelihood of confusion.
`
`
`
`7.
`
`Petitioner further seeks to oppose the registration of the mark at issue on
`
`the grounds that, under common law, trademark rights within a certain territory are based
`
`on a priority of use of a mark within that territory. Based on information and belief,
`
`Petitioner has a priority of use within interstate commerce in the United States arising
`
`from its common law rights in PBT and certain of the PBT Marks for goods and services
`
`in the Subject Classes, including those listed in the PBT Mark Registrations/Applications.
`
`To Petitioner’s knowledge, Respondent’s Application at issue has been filed on a 66(a)
`
`basis without any claim of use in commerce in the United States several years after
`
`Petitioner’s first use and/or registration of PBT and certain of the PBT Marks. Petitioner
`
`
`
`asserts that there is a likelihood of confusion between Petitioner’s use of PBT and the
`
`PBT Marks and Respondent’s use of the mark at issue in part because, on information
`
`and belief, Petitioner’s goods and services and Respondent’s goods and services are
`
`overlapping, related or similar, likely to be marketed or sold together and likely to be
`
`used together, and offered or may be offered in similar channels of trade and to similar
`
`customers and the channels of trade of Petitioner’s goods and services and Respondents’
`
`goods and services are related and overlapping, and to the extent that Respondent’s goods
`
`and services do not overlap Petitioner’s goods and services, they represent a natural
`
`product expansion for Petitioner. Petitioner has not consented to Respondent’s use of the
`
`mark at issue for the applied-for goods and services in the Subject Classes. As a result of
`
`the confusing similarity between Petitioner’s PBT and PBT Marks and Respondent’s
`
`mark at issue, the similar nature of the relevant goods and/or services, and the similar or
`
`identical channels of trade and classes of purchasers, registration of the mark at issue in
`
`Respondent’s application in connection with Respondent’s goods and services is likely to
`
`deceive purchasers, cause confusion, or cause mistake as to the source or sponsorship of
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`such goods and services, and on information and belief, with such confusion resulting in
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`loss of revenue and damage to goodwill acquired by Petitioner in PBT and the PBT
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`Marks.
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`8.
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`Petitioner is likely to be damaged if Respondent’s application for the mark
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`in issue is permitted to register the mark at issue on the Principal Register. Further, the
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`continued existence of Respondent’s application of the mark in issue casts a cloud upon
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`Petitioner’s own right to continue to use, develop and expand the use of PBT and the
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`PBT Marks and any other marks containing PBT, as well as prevents Petitioner from
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`proceeding to obtain registrations for marks containing PBT for goods and/or services
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`that are the same or related to Respondent’s goods and services in the application at issue.
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`Thus, Respondent’s application for the mark in issue is a source of damage injury to
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`Petitioner.
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`WHEREFORE, Petitioner prays that the application cited in this Petition be
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`refused and that this Petition for Opposition be sustained in favor of Petitioner. Petitioner
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`authorizes the Commission to charge the filing fees to Winstead Deposit Account No. 23-
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`2426.
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`Dated on December 28, 2022.
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`Respectfully submitted,
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`PALM BEACH TAN, INC.
`
`
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`
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`/s/Cathryn A. Berryman/
`
`Cathryn A. Berryman
`Texas Bar Member
`Attorneys for Petitioner
`WINSTEAD PC
`2728 North Harwood Street, Suite 500
`Dallas, Texas 75201
`cberryman@winstead.com
`tmdocket@winstead.com
`(214) 745-5172
`
`
`
`Generated on: This page was generated by TSDR on 2022-11-29 15:31:50 EST
`
`Mark: PBT
`
`EXHIBIT A
`
`US Serial Number: 90674071
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Apr. 27, 2021
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: Suspension check completed. Application remains suspended.
`
`Status Date: Nov. 18, 2022
`
`
`
`Mark Literal
`Elements:
`
`PBT
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Providing incentive award program for customers through membership upgrades in the nature of loyalty points for purchase of a
`company's goods and services, all in the field of tanning salons for the purpose of promoting and rewarding loyalty; membership club
`services providing incentives to members in the form of discounts in the field of tanning salons; franchise services, namely, offering
`consultation and assistance in business management, organization and promotion in the establishment and operation of tanning salons
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jan. 19, 2015
`
`For: Air brushing services
`
`International
`Class(es):
`
`040 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jan. 19, 2015
`
`For: Tanning salon services
`
`International
`Class(es):
`
`044 - Primary Class
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: Jan. 19, 2015
`
`U.S Class(es): 100, 103, 106
`
`Use in Commerce: Jan. 19, 2015
`
`U.S Class(es): 100, 101
`
`
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jan. 19, 2015
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Use in Commerce: Jan. 19, 2015
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Palm Beach Tan, Inc.
`
`Owner Address: 6321 Campus Circle Dr. East
`Irving, TEXAS UNITED STATES 75063
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`TEXAS
`
`Attorney/Correspondence Information
`
`Attorney Name: Cathryn A. Berryman
`
`Docket Number: 47226-K081US
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`cberryman@winstead.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Cathryn A. Berryman
`WINSTEAD PC
`2728 N. HARWOOD STREET
`SUITE 500
`DALLAS, TEXAS UNITED STATES 75201
`
`Phone: 214-745-5172
`
`Fax:
`
`(214) 745-5390
`
`Correspondent e-
`mail:
`
`cberryman@winstead.com ngraham@winstead.c
`om tmdocket@winstead.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Nov. 18, 2022
`Jun. 17, 2022
`Jun. 17, 2022
`Jun. 17, 2022
`Apr. 06, 2022
`Apr. 06, 2022
`Apr. 06, 2022
`Apr. 06, 2022
`Apr. 06, 2022
`Apr. 06, 2022
`Apr. 06, 2022
`Mar. 09, 2022
`Mar. 08, 2022
`Mar. 08, 2022
`Sep. 14, 2021
`Sep. 14, 2021
`
`REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`CORRESPONDENCE E-MAILED
`SUSPENSION LETTER WRITTEN
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`
`Proceeding
`Number
`
`88889
`88888
`
`92562
`88888
`
`88889
`88889
`
`6325
`6325
`
`
`
`Sep. 14, 2021
`Sep. 04, 2021
`Aug. 02, 2021
`Apr. 30, 2021
`
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`92562
`92562
`
`TM Attorney: HILLIARD, JESSICA LYNN
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 120
`
`File Location
`
`Current Location: TMO LAW OFFICE 120
`
`Date in Location: Nov. 18, 2022
`
`
`
`To:
`
`Palm Beach Tan, Inc. (cberryman@winstead.com)
`
`Subject:
`
`U.S. Trademark Application Serial No. 90674071 - PBT - 47226-K081US
`
`Sent:
`
`April 06, 2022 07:03:58 PM
`
`Sent As:
`
`ecom120@uspto.gov
`
`Attachments:
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`Attachment - 5
`Attachment - 6
`Attachment - 7
`Attachment - 8
`Attachment - 9
`Attachment - 10
`Attachment - 11
`Attachment - 12
`Attachment - 13
`Attachment - 14
`Attachment - 15
`Attachment - 16
`Attachment - 17
`Attachment - 18
`Attachment - 19
`Attachment - 20
`Attachment - 21
`Attachment - 22
`Attachment - 23
`Attachment - 24
`Attachment - 25
`Attachment - 26
`Attachment - 27
`Attachment - 28
`Attachment - 29
`
`
`
`
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 90674071
`
`Mark: PBT
`
`Correspondence Address:
` Cathryn A. Berryman
` WINSTEAD PC
` SUITE 500
` 2728 NORTH HARWOOD STREET
` DALLAS TX 75201
`Applicant: Palm Beach Tan, Inc.
`
`
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`
`
`Reference/Docket No. 47226-K081US
`
`Correspondence Email Address:
` cberryman@winstead.com
`
`
`
`
`
`
`SUSPENSION NOTICE
`No Response Required
`
`
`
`Issue date: April 06, 2022
`
`
`Introduction. This suspension notice is in response to applicant’s communication filed on March 8, 2022.
`
`In a previous Office action dated September 14, 2021, the trademark examining attorney refused registration of the applied-for mark based on the
`following: specimen refusal failure to show the applied-for mark in use in commerce with any of the specified Class 40 services (partial refusal
`limited to Class 40). In addition, applicant was required to satisfy the following requirement: amend the identification of goods
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