Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1288328
`05/31/2023
`
`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
`Entity
`Address
`
`Symrise AG
`AG
`MüHLENFELDSTRAÃ#E 1
`HOLZMINDEN, 37603
`GERMANY
`
`Citizenship
`
`Germany
`
`Attorney informa-
`tion
`
`Docket no.
`
`STEPHEN R. BARRESE
`DILWORTH & BARRESE, LLP
`1000 WOODBURY ROAD, SUITE 405
`WOODBURY, NY 11797
`UNITED STATES
`Primary email: sbarrese@dilworthbarrese.com
`Secondary email(s): lforsythe@dilworthbarrese.com, rdur-
`an@dilworthbarrese.com
`5162288484
`1507-233A
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97498271
`05/31/2023
`
`Publication date
`Opposition period
`ends
`
`05/30/2023
`06/29/2023
`
`Sixbright Shea Butter LLC
`5900 BALCONES DRIVE, STE 4872
`AUSTIN, TX 78731
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 003. First Use: May 2, 2022 First Use In Commerce: May 2, 2022
`All goods and services in the class are opposed, namely: Cosmetic creams; Cosmetic creams for
`skin care; Shea butter for cosmetic purposes; Body butter; Body cream; Hair butter
`
`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.
`Register
`Registration date
`
`5557879
`
`Principal
`09/11/2018
`
`Application date
`
`10/06/2017
`
`Foreign priority
`
`NONE
`
`
`ESTTA Tracking number:
`ESTTA1288328
`05/31/2023
`
`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
`Entity
`Address
`
`Symrise AG
`AG
`MüHLENFELDSTRAÃ#E 1
`HOLZMINDEN, 37603
`GERMANY
`
`Citizenship
`
`Germany
`
`Attorney informa-
`tion
`
`Docket no.
`
`STEPHEN R. BARRESE
`DILWORTH & BARRESE, LLP
`1000 WOODBURY ROAD, SUITE 405
`WOODBURY, NY 11797
`UNITED STATES
`Primary email: sbarrese@dilworthbarrese.com
`Secondary email(s): lforsythe@dilworthbarrese.com, rdur-
`an@dilworthbarrese.com
`5162288484
`1507-233A
`
`Applicant information
`
`Application no.
`Opposition filing
`date
`Applicant
`
`97498271
`05/31/2023
`
`Publication date
`Opposition period
`ends
`
`05/30/2023
`06/29/2023
`
`Sixbright Shea Butter LLC
`5900 BALCONES DRIVE, STE 4872
`AUSTIN, TX 78731
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 003. First Use: May 2, 2022 First Use In Commerce: May 2, 2022
`All goods and services in the class are opposed, namely: Cosmetic creams; Cosmetic creams for
`skin care; Shea butter for cosmetic purposes; Body butter; Body cream; Hair butter
`
`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.
`Register
`Registration date
`
`5557879
`
`Principal
`09/11/2018
`
`Application date
`
`10/06/2017
`
`Foreign priority
`
`NONE
`
`
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`date
`
`SYMBRIGHT
`
`NONE
`
`Class 001. First use: First Use: None First Use In Commerce: None
`Chemical compositions and materials, namely, soothing agents, anti-
`inflammatory agents, skin lightening agents, and skin conditioning agents for
`use in cosmetics; chemical substances for use in the manufacture of scented
`cosmetics
`Class 003. First use: First Use: None First Use In Commerce: None
`Cosmetics; non-medicated body cleaning and beauty care preparations; non-
`medicated skin care preparations; non-medicated skin care creams; skin care
`lotions for cosmetic use; skin whitening preparations
`
`Attachments
`
`Opposition.pdf(97168 bytes )
`
`Signature
`Name
`Date
`
`/SRB/
`Stephen R. Barrese
`05/31/2023
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`97498271
`Serial No.
`
`
`
`Mark: SIXBRIGHT
`
`
`
`
`
`Publication Date: May 30, 2023
`
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`SYMRISE AG
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`Opposer
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`Sixbright Shea Butter LLC.,
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`Applicant
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`
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer, SYMRISE AG ("Opposer'1) believes that it will be damaged by
`
`registration of the mark shown in U.S. Trademark Application Serial No. 97498271
`SIXBRIGHT (Applicant's Mark) and hereby opposes the same. As grounds for
`opposition, Opposer alleges as follows:
`
`1. Opposer is AG organized under the laws of Germany, with a principal place
`of business at Mühlenfeldstraße 1, Holzminden, Germany 37603.
`
`2. Opposer engages in the business of creating fragrances, flavors, natural
`nutrition and cosmetic ingredients solutions.
`
`3. Opposer owns all right, title and interest in and to the mark SYMBRIGHT,
`U.S. Trademark Registration No. 5557879 (Opposer’s Mark), which is registered on the
`U.S. Trademark Office Principal Register, for use in association with chemical
`compositions and materials, namely, soothing agents, anti-inflammatory agents, skin
`lightening agents, and skin conditioning agents for use in cosmetics; chemical
`substances in Class 1 and cosmetics non-medicated body cleaning and beauty care
`preparations; non-medicated skin care preparations; non-medicated skin care creams;
`
`
`
`skin care lotions for cosmetic use; skin whitening preparations in Class 3, based on
`International Registration No. 1379141, which registered on October 6, 2017.
`
`4. Notwithstanding Opposer’s prior rights in and to the mark SYMBRIGHT,
`Applicant, on information and belief, on July 11, 2022, filed an application for
`registration of the trademark SIXBRIGHT for "Cosmetic creams; Cosmetic creams for
`skin care; Shea butter for cosmetic purposes; Body butter; Body cream; Hair butter " in
`Class 3, on a use basis.
`
`5. Opposer's Mark registered on September 11, 2018, based on International
`Trademark Registration No. 1379141, which registered on October 6, 2017, both dates
`preceding Applicant's date of first use, i.e., May 2, 2022, thereby establishing Opposer's
`Mark’s prior use.
`
`FIRST CLAIM FOR RELIEF
`
`(Likelihood of Confusion)
`
`6. Opposer repeats and realleges the allegations in preceding paragraphs 1
`through 5, inclusive, as if fully set forth herein.
`
`7. As a result of Opposer's long use of Opposer's mark, Opposer has
`developed substantial goodwill in its mark, and the public has come to associate this
`mark with the goods of Opposer.
`
`8. Opposer's use of Opposer's Mark, is long prior to the filing dates
`associated with Applicant's Mark, and long prior to any use by Applicant of the
`Petitioned Mark.
`
`9. Opposer enjoys priority of use over Applicant in this case.
`
`10. Applicant’s Mark is confusingly similar to Opposer’s Mark.
`
`11. Opposer’s Goods and Applicant’s Goods travel or exist in the same or
`related channels of trade.
`
`12. Applicant’s use and continued registration of the opposed Mark will
`inevitably lead, and may have already lead, to confusion, to mistake, or to deception of
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`-2-
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`the public within the meaning of Section 2(d) of the Lanham Act, 15 USC §1052(d), all
`to Opposer’s grave and irreparable damage.
`
`13. Applicant’s Mark should be refused registration based on likelihood of
`confusion with Opposer’s Mark, in violation of the Lanham Act, 15 USC §1052(d).
`
`SECOND CLAIM FOR RELIEF
`
`(Likelihood of Confusion with Previously-Used Trademark)
`
`14. Opposer repeats and realleges the allegations in preceding paragraphs 1
`through 13, inclusive, as if fully set forth herein.
`
`The Applicant’s Mark shown in the Opposed Application so resembles
`15.
`Opposer's previously used and not abandoned Opposer's Mark as to be likely, when
`used on or in connection with the goods identified in the Opposed Application, to cause
`confusion, to cause mistake, or to deceive, and Applicant's mark is thus unregistrable
`under Section 2(d) of the United States Trademark Act, 15 U.S.C. 1052(d).
`
`16. Opposer will be damaged by registration of the mark shown in the
`Opposed Application because registration will give Applicant prima facie evidence of its
`ownership of, and its exclusive nationwide right to use, a mark that is confusingly
`similar to Opposer's previously used and not abandoned Marks.
`
`THIRD CLAIM FOR RELIEF
`
`(Likelihood of Dilution)
`
`17. Opposer repeats and realleges the allegations in preceding paragraphs 1
`through 16, inclusive, as if fully set forth herein.
`
`The Applicant’s Mark shown in the Opposed Application so resembles
`18.
`Opposer's previously used and not abandoned Mark as to be likely to blur the
`distinctiveness of Opposer's Mark and Applicant's mark is thus unregistrable under
`Section 43(c) of the United States Trademark Act, 15 U.S.C. 1125(c).
`
`19. Opposer will be damaged by registration of the mark shown in the
`Opposed Application because registration will give Applicant prima facie evidence of its
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`-3-
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`ownership of, and its exclusive nationwide right to use, a mark that is likely to impair the
`distinctiveness of Opposer's Mark.
`
`WHEREFORE, Opposer prays for judgment sustaining this opposition and
`
`refusing registration to Applicant of the mark shown in the Opposed Application.
`
`Please charge any deficiency or credit any overpayment related to this Opposition
`
`to Deposit Account No. 04-1121, and direct all correspondence in connection with this
`opposition to the undersigned.
`
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`Dated: May 31, 2023
`
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`Respectfully submitted,
`
`By:
`
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`Stephen R. Barrese
`Attorney for Opposer
`Dilworth & Barrese, LLP
`1000 Woodbury Road
`Woodbury, New York 11797
`
`-4-
`
`
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