ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1325445
`11/29/2023
`
`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
`
`Kylie Jenner, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`11/29/2023
`
`9255 SUNSET BLVD., FLOOR 2
`WEST HOLLYWOOD, CA 90069
`UNITED STATES
`
`JOHN L. KRIEGER
`DICKINSON WRIGHT PLLC
`3883 HOWARD HUGHES PARKWAY, SUITE 800
`LAS VEGAS, NV 89169
`UNITED STATES
`Primary email: trademarkslv@dickinson-wright.com
`Secondary email(s): jkrieger@dickinson-wright.com, amor-
`etto@dickinson-wright.com, jcraft@dickinson-wright.com
`702-550-4400
`
`Docket no.
`
`66170-30017
`
`Applicant information
`
`Application no.
`
`88435263
`
`11/29/2023
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`08/01/2023
`
`Opposition period
`ends
`
`11/29/2023
`
`NCG eCommerce Holdings
`3911 CONCORD PIKE #8030, SMB 3919
`WILMINGTON, DE 19803
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 005. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Dietary supplement
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols
`
`Trademark Act Sections 2 and 43(c)
`
`Trademark Act Section 2(a)
`
`Marks cited by opposer as basis for opposition
`
`

`

`U.S. registration
`no.
`
`5246500
`
`Register
`
`Principal
`
`Registration date
`
`07/18/2017
`
`Application date
`
`02/06/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE
`
`NONE
`
`Class 003. First use: First Use: Nov 30, 2015 First Use In Commerce: Nov 30,
`2015
`Cosmetics
`
`U.S. registration
`no.
`
`5401125
`
`Register
`
`Principal
`
`Registration date
`
`02/13/2018
`
`Application date
`
`07/21/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE KYLIE JENNER
`
`NONE
`
`Class 003. First use: First Use: Jan 2017 First Use In Commerce: Jan 2017
`Cosmetics
`
`U.S. registration
`no.
`
`6136540
`
`Register
`
`Principal
`
`Registration date
`
`08/25/2020
`
`Application date
`
`12/07/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE
`
`NONE
`
`Class 035. First use: First Use: Dec 9, 2016 First Use In Commerce: Dec 9,
`2016
`Retail store services featuring gifts, general consumer merchandise, apparel,
`apparel accessories, calendars, gift wrap, phone cases, pins and buttons
`
`U.S. registration
`no.
`
`5351328
`
`Register
`
`Principal
`
`Registration date
`
`12/05/2017
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`KYLIE JENNER
`
`NONE
`
`Application date
`
`11/05/2015
`
`Foreign priority
`date
`
`NONE
`
`Goods/services
`
`Class 003. First use: First Use: Feb 24, 2017 First Use In Commerce: Feb 24,
`
`

`

`2017
`Cosmetics
`
`6262162
`
`U.S. registration
`no.
`
`Register
`
`Principal
`
`Registration date
`
`02/02/2021
`
`Application date
`
`11/05/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE JENNER
`
`NONE
`
`Class 025. First use: First Use: Dec 20, 2016 First Use In Commerce: Dec 20,
`2016
`Bottoms; Coats; Headwear; Jackets; Loungewear; Socks; Swimwear; Tops; Un-
`dergarments
`
`U.S. registration
`no.
`
`4649500
`
`Register
`
`Principal
`
`Registration date
`
`12/02/2014
`
`Application date
`
`09/15/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE JENNER
`
`NONE
`
`Class 035. First use: First Use: Oct 2007 First Use In Commerce: Oct 2007
`Advertising services, namely, promoting the brands, goods and services of oth-
`ers; endorsement services, namely, promoting the goods and services of others
`
`U.S. registration
`no.
`
`5595981
`
`Register
`
`Principal
`
`Registration date
`
`10/30/2018
`
`Application date
`
`04/01/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE
`
`NONE
`
`Class 035. First use: First Use: Aug 15, 2014 First Use In Commerce: Aug 15,
`2014
`Advertising services, namely, promoting the brands, goods and services of oth-
`ers; endorsement services, namely, promoting the goods and services of others
`
`U.S. registration
`no.
`
`5561416
`
`Register
`
`Principal
`
`Registration date
`
`09/11/2018
`
`Word mark
`
`KYLIE COSMETICS
`
`Application date
`
`09/14/2015
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 003. First use: First Use: Jan 21, 2016 First Use In Commerce: Jan 21,
`2016
`Cosmetics
`
`U.S. registration
`no.
`
`5921185
`
`Register
`
`Principal
`
`Registration date
`
`11/26/2019
`
`Application date
`
`11/05/2015
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE JENNER
`
`NONE
`
`Class 003. First use: First Use: Aug 23, 2019 First Use In Commerce: Aug 23,
`2019
`eau de parfum; eau de toilette; solid perfumes; hair care products, namely, hair
`shampoos, hair conditioners and hair care preparations; skin soap; bath and
`shower gels; bath powders; skin lotions; skin creams; massage oils; false eye
`lashes; nail polish; after shave lotions; after shave balms; after shave tonics;
`after shave gels; and personal deodorant
`
`U.S. registration
`no.
`
`5536206
`
`Register
`
`Principal
`
`Registration date
`
`08/07/2018
`
`Application date
`
`02/29/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE COSMETICS
`
`NONE
`
`Class 035. First use: First Use: May 18, 2018 First Use In Commerce: May 18,
`2018
`Retail store services featuring cosmetics and beauty products
`
`U.S. registration
`no.
`
`5085603
`
`Register
`
`Principal
`
`Registration date
`
`11/22/2016
`
`Application date
`
`03/17/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE LIP KIT BY KYLIE JENNER
`
`NONE
`
`Class 003. First use: First Use: Nov 30, 2015 First Use In Commerce: Nov 30,
`2015
`Cosmetics; Lip gloss; Lipsticks; Make-up kits comprised of lip gloss; Make-up
`kits comprised of lipstick
`
`

`

`U.S. registration
`no.
`
`6091276
`
`Register
`
`Principal
`
`Registration date
`
`06/30/2020
`
`Application date
`
`12/07/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE JENNER MERCH
`
`NONE
`
`Class 035. First use: First Use: Jul 20, 2019 First Use In Commerce: Jul 20,
`2019
`Retail store services featuring gifts, general consumer merchandise, apparel,
`apparel accessories, calendars, gift wrap, phone cases, pins and buttons
`
`U.S. registration
`no.
`
`6091277
`
`Register
`
`Principal
`
`Registration date
`
`06/30/2020
`
`Application date
`
`12/07/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE MERCH
`
`NONE
`
`Class 035. First use: First Use: Jul 20, 2019 First Use In Commerce: Jul 20,
`2019
`Retail store services featuring gifts, general consumer merchandise, apparel,
`apparel accessories, calendars, gift wrap, phone cases, pins and buttons
`
`U.S. registration
`no.
`
`6147721
`
`Register
`
`Principal
`
`Registration date
`
`09/08/2020
`
`Application date
`
`12/07/2016
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE POP-UP
`
`NONE
`
`Class 035. First use: First Use: Dec 9, 2016 First Use In Commerce: Dec 9,
`2016
`Retail store services featuring gifts, general consumer merchandise, apparel,
`apparel accessories, calendars, gift wrap, phone cases, pins and buttons
`
`U.S. registration
`no.
`
`5411971
`
`Register
`
`Principal
`
`Registration date
`
`02/27/2018
`
`Application date
`
`07/19/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`KYLIE COSMETICS BY KYLIE JENNER
`
`

`

`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Jul 13, 2017 First Use In Commerce: Jul 13,
`2017
`Retail store services featuring cosmetics and beauty products
`
`U.S. registration
`no.
`
`5629247
`
`Register
`
`Principal
`
`Registration date
`
`12/11/2018
`
`Application date
`
`11/16/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE TRUCK
`
`NONE
`
`Class 035. First use: First Use: Dec 8, 2017 First Use In Commerce: Dec 8,
`2017
`Retail store services featuring cosmetics, merchandise and gifts
`
`U.S. registration
`no.
`
`5952888
`
`Register
`
`Principal
`
`Registration date
`
`01/07/2020
`
`Application date
`
`09/27/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE SKIN
`
`NONE
`
`Class 003. First use: First Use: Jul 27, 2019 First Use In Commerce: Jul 27,
`2019
`Non-medicated skin care preparations; Skin moisturizers; Skin lotions; Skin
`creams; Skin cleansers; Skin toners; Facial scrub; Body scrubs; Non-medicated
`skin care preparation, namely, facial mists; Non-medicated skin care prepara-
`tion, namely, skin serums; Skin masks; Non-medicated skin care preparation,
`namely, facial balms; Facial oils; Body oils; Skin care preparations, namely, skin
`peels; Body powders; Cosmetics; Cosmetic preparations
`
`U.S. registration
`no.
`
`5952889
`
`Register
`
`Principal
`
`Registration date
`
`01/07/2020
`
`Application date
`
`09/27/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE SKIN
`
`NONE
`
`Class 035. First use: First Use: Jul 20, 2019 First Use In Commerce: Jul 20,
`2019
`Retail store services featuring skin care products, skin care preparation
`products, cosmetics, cosmetic preparations and gifts
`
`

`

`U.S. registration
`no.
`
`5952890
`
`Register
`
`Principal
`
`Registration date
`
`01/07/2020
`
`Application date
`
`09/27/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE SKIN BY KYLIE JENNER
`
`NONE
`
`Class 003. First use: First Use: May 22, 2019 First Use In Commerce: May 22,
`2019
`Non-medicated skin care preparations; Skin moisturizers; Skin lotions; Skin
`creams; Skin cleansers; Skin toners; Facial scrub; Body scrubs; Non-medicated
`skin care preparation, namely, facial mists; Non-medicated skin care prepara-
`tion, namely, skin serums; Skin masks; Non-medicated skin care preparation,
`namely, facial balms; Facial oils; Body oils; Skin care preparations, namely, skin
`peels; Body powders; Cosmetics; Cosmetic preparations
`
`U.S. registration
`no.
`
`6609272
`
`Register
`
`Principal
`
`Registration date
`
`01/04/2022
`
`Application date
`
`05/09/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE BABY
`
`NONE
`
`Class 003. First use: First Use: Sep 28, 2021 First Use In Commerce: Sep 28,
`2021
`Non-medicated skin care preparations; skin moisturizers; skin lotions; skin
`creams; skin cleansers; bubble bath; hair shampoos, hair conditioners, hair care
`preparations
`
`U.S. registration
`no.
`
`6609269
`
`Register
`
`Principal
`
`Registration date
`
`01/04/2022
`
`Application date
`
`05/09/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE BABY
`
`NONE
`
`Class 035. First use: First Use: Sep 28, 2021 First Use In Commerce: Sep 28,
`2021
`Providing information about commercial business and commercial information
`via the global computer network; retail store services featuring gifts, general
`consumer merchandise, baby and infant products, skincare, bath and shower
`products, hair care and hair styling products, bags and linens
`
`U.S. registration
`no.
`
`7231012
`
`Application date
`
`05/09/2019
`
`

`

`Register
`
`Principal
`
`Registration date
`
`11/28/2023
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE BABY BY KYLIE JENNER
`
`NONE
`
`Class 003. First use: First Use: Jul 13, 2022 First Use In Commerce: Jul 13,
`2022
`facial oils; body oils
`
`U.S. registration
`no.
`
`6609268
`
`Register
`
`Principal
`
`Registration date
`
`01/04/2022
`
`Application date
`
`05/09/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE BABY BY KYLIE JENNER
`
`NONE
`
`Class 003. First use: First Use: Sep 28, 2021 First Use In Commerce: Sep 28,
`2021
`Non-medicated skin care preparations; skin moisturizers; skin lotions; skin
`creams; skin cleansers; bubble bath; hair shampoos, hair conditioners, hair care
`preparations
`
`U.S. registration
`no.
`
`6804618
`
`Register
`
`Principal
`
`Registration date
`
`07/26/2022
`
`Application date
`
`05/09/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE BABY KYLIE JENNER
`
`NONE
`
`Class 035. First use: First Use: Sep 28, 2021 First Use In Commerce: Sep 28,
`2021
`Providing information about commercial business and commercial information
`via the global computer network; retail store services featuring gifts, general
`consumer merchandise, baby and infant products, skincare, bath and shower
`products, hair care and hair styling products, bags, and linens
`
`Attachments
`
`2023-11-29 Notice of Opposition - KYLIE KETO.pdf(150778 bytes )
`
`Signature
`
`/John L. Krieger/
`
`Name
`
`Date
`
`JOHN L. KRIEGER
`
`11/29/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Kylie Jenner, Inc.,
`
`
`
`
`
`NCG eCommerce Holdings,
`
`
`
`
`
`Mark: KYLIE KETO
`Ser. No.: 88/435,263
`Published: August 1, 2023
`Class: 05
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Pursuant to 15 U.S.C. § 1063 and 37 C.F.R. §§ 2.101 and 2.104(a), Kylie Jenner, Inc., a
`
`California Corporation, with its principal place of business at 9255 Sunset Blvd., FL 2, West
`
`Hollywood, CA 90069 (“Opposer”), believes it will be damaged by registration of the above-
`
`referenced mark in International Class 05 for “Dietary supplement” (Serial No. 88/435,263) (such
`
`application, the “Opposed Application,” and such mark, the “Opposed Mark”), which was
`
`published on August 1, 2023, and hereby opposes the same.
`
`As grounds for its opposition, Opposer alleges as follows:
`
`FACTS COMMON TO ALL CLAIMS
`
`1.
`
`Opposer is owned by globally renowned beauty expert, media personality, model,
`
`fashion icon, and entrepreneur, Ms. Kylie Jenner (“Ms. Jenner”).
`
`2.
`
`Ms. Jenner is well-known by consumers through her activity in the fashion, beauty,
`
`cosmetics, and entertainment industries, including, but not limited to, appearances on television
`
`programs such as “Keeping up with the Kardashians” (broadcast since 2007) and “The
`
`Kardashians” (broadcast since 2022).
`
`3.
`
`Ms. Jenner’s reach is worldwide, with almost 400 million followers on Instagram
`
`alone. Millions of followers watch Ms. Jenner to see her latest product releases, product
`
`endorsements, and fashion choices. She has appeared in numerous fashion and cosmetics
`
`

`

`Commissioner for Trademarks
`Application No. 88/435,263
`
`
`magazines, including, among other others, Vogue, Harper’s Bazaar, Cosmopolitan, and Elle, and
`
`has parlayed her fame as a fashion, beauty, and make-up icon into a successful enterprise. Her
`
`products have generated hundreds of millions of dollars in gross sales.
`
`4.
`
`Since at least as early as 2015, Ms. Jenner, through Opposer, provides beauty,
`
`cosmetics, skincare and other personal care products and services under the trademarks KYLIE,
`
`KYLIE JENNER, and multiple variations thereof.
`
`5.
`
`Moreover, Ms. Jenner has a long history of endorsing and selling various products,
`
`including dietary and/or nutritional supplements.
`
`6.
`
`Ms. Jenner’s journey to lose weight with a keto diet was also well-publicized after
`
`the births of her children.
`
`7.
`
`Opposer currently owns almost 200 pending applications and registrations for
`
`KYLIE and KYLIE-formative marks in the United States alone.
`
`8.
`
`For example, Opposer owns the following relevant KYLIE and KYLIE-formative
`
`applications and registrations, including two pending applications covering dietary and nutritional
`
`supplements (collectively, the “KYLIE Marks”):
`
`• KYLIE (Reg. No. 5,246,500) in Class 3 for “[c]osmetics”;
`
`• KYLIE KYLIE JENNER (Reg. No. 5,401,125) in Class 3 for “[c]osmetics”;
`
`• KYLIE (Reg. No. 6,136,540) in Class 35 for “[r]etail store services featuring gifts,
`
`general consumer merchandise, apparel, apparel accessories, calendars, gift wrap,
`
`phone cases, pins and buttons;
`
`• KYLIE JENNER (Reg. No. 5,351,328) in Class 3 for “[c]osmetics”;
`
`• KYLIE JENNER (Reg. No. 6,262,162) in Class 25 for “[b]ottoms; Coats;
`
`Headwear; Jackets; Loungewear; Socks; Swimwear; Tops; Undergarments”;
`
`• KYLIE JENNER (Reg. No. 4,649,500) in Class 35 for “[a]dvertising services,
`
`namely, promoting the brands, goods and services of others; endorsement services,
`
`namely, promoting the goods and services of others”;
`
`

`

`Commissioner for Trademarks
`Application No. 88/435,263
`
`
`• KYLIE (Reg. No. 5,595,981) in Class 35 for “[a]dvertising services, namely,
`
`promoting the brands, goods and services of others; endorsement services, namely,
`
`promoting the goods and services of others”;
`
`• KYLIE COSMETICS (Reg. No. 5,561,416) in Class 3 for “[c]osmetics”;
`
`• KYLIE JENNER (Reg. No. 5,921,185) in Class 3 for “[e]au de parfum; eau de
`
`toilette; solid perfumes; hair care products, namely, hair shampoos, hair
`
`conditioners and hair care preparations; skin soap; bath and shower gels; bath
`
`powders; skin lotions; skin creams; massage oils; false eye lashes; nail polish; after
`
`shave lotions; after shave balms; after shave tonics; after shave gels; and personal
`
`deodorant”;
`
`• KYLIE COSMETICS (Reg. No. 5,536,206) in Class 35 for “[r]etail store services
`
`featuring cosmetics and beauty products”;
`
`• KYLIE LIP KIT BY KYLIE JENNER (Reg. No. 5,085,603) in Class 3 for
`
`“[c]osmetics; Lip gloss; Lipsticks; Make-up kits comprised of lip gloss; Make-up
`
`kits comprised of lipstick”;
`
`• KYLIE JENNER MERCH (Reg. No. 6,091,276) in Class 35 “[r]etail store services
`
`featuring gifts, general consumer merchandise, apparel, apparel accessories,
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`calendars, gift wrap, phone cases, pins and buttons”;
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`• KYLIE MERCH (Reg. No. 6,091,277) in Class 35 for “[r]etail store services
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`featuring gifts, general consumer merchandise, apparel, apparel accessories,
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`calendars, gift wrap, phone cases, pins and buttons”;
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`• KYLIE POP-UP (Reg. No. 6,147,721) in Class 35 for “[r]etail store services
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`featuring gifts, general consumer merchandise, apparel, apparel accessories,
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`calendars, gift wrap, phone cases, pins and buttons”;
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`• KYLIE COSMETICS BY KYLIE JENNER (Reg. No. 5,411,971) in Class 35 for
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`“[r]etail store services featuring cosmetics and beauty products”;
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`Commissioner for Trademarks
`Application No. 88/435,263
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`• KYLIE TRUCK (Reg. No. 5,629,247) in Class 35 for “[r]etail store services
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`featuring cosmetics, merchandise and gifts”;
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`• KYLIE SKIN (Reg. No. 5,952,888) in Class 3 for “[n]on-medicated skin care
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`preparations; Skin moisturizers; Skin lotions; Skin creams; Skin cleansers; Skin
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`toners; Facial scrub; Body scrubs; Non-medicated skin care preparation, namely,
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`facial mists; Non-medicated skin care preparation, namely, skin serums; Skin
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`masks; Non-medicated skin care preparation, namely, facial balms; Facial oils;
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`Body oils; Skin care preparations, namely, skin peels; Body powders; Cosmetics;
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`Cosmetic preparations”;
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`• KYLIE SKIN (Reg. No. 5,952,889) in Class 35 for “[r]etail store services featuring
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`skin care products, skin care preparation products, cosmetics, cosmetic preparations
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`and gifts”;
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`• KYLIE SKIN BY KYLIE JENNER (Reg. No. 5,952,890) in Class 3 for “[n]on-
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`medicated skin care preparations; Skin moisturizers; Skin lotions; Skin creams;
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`Skin cleansers; Skin toners; Facial scrub; Body scrubs; Non-medicated skin care
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`preparation, namely, facial mists; Non-medicated skin care preparation, namely,
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`skin serums; Skin masks; Non-medicated skin care preparation, namely, facial
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`balms; Facial oils; Body oils; Skin care preparations, namely, skin peels; Body
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`powders; Cosmetics; Cosmetic preparations”;
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`• KYLIE BABY (Reg. No. 6,609,272) in Class 3 for “[n]on-medicated skin care
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`preparations; skin moisturizers; skin lotions; skin creams; skin cleansers; bubble
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`bath; hair shampoos, hair conditioners, hair care preparations”;
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`• KYLIE BABY (Reg. No. 6,609,269) in Class 35 for “[p]roviding information about
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`commercial business and commercial information via the global computer network;
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`retail store services featuring gifts, general consumer merchandise, baby and infant
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`products, skincare, bath and shower products, hair care and hair styling products,
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`Commissioner for Trademarks
`Application No. 88/435,263
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`bags, and linens”;
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`• KYLIE BABY BY KYLIE JENNER (Reg. No. 7,231,012) in Class 3 for “[f]acial
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`oils; body oils”;
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`• KYLIE BABY BY KYLIE JENNER (Reg. No. 6,609,268) in Class 3 for “[n]on-
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`medicated skin care preparations; skin moisturizers; skin lotions; skin creams; skin
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`cleansers; bubble bath; hair shampoos, hair conditioners, hair care preparations”;
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`and
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`• KYLIE BABY KYLIE JENNER (Reg. No. 6,804,618) in Class 35 for “[p]roviding
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`information about commercial business and commercial information via the global
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`computer network; retail store services featuring gifts, general consumer
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`merchandise, baby and infant products, skincare, bath and shower products, hair
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`care and hair styling products, bags, and linens”.
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`9.
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`Opposer owns prior common law rights in the KYLIE Marks in connection with
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`beauty, cosmetics and other personal care products and services that predate the filing date of the
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`Opposed Application.
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`10.
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`Opposer has spent substantial resources protecting, enforcing, marketing,
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`advertising, and promoting the KYLIE Marks in the United States and around the world, and has
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`developed significant goodwill and fame in the KYLIE Marks.
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`11.
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`As a result of Opposer’s extensive and exclusive use, the KYLIE Marks have
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`become widely recognized by the consuming public as identifying the high quality goods and
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`services that Opposer provides. In fact, the marks KYLIE and KYLIE JENNER have become
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`household names.
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`12.
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`Upon information and belief, NCG eCommerce Holdings (“Applicant”) is a
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`Delaware limited liability company located at 3911 Concord Pike #8030, SMB, Wilmington, DE
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`19803.
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`13.
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`The USPTO published the Opposed Application for opposition in the USPTO’s
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`Commissioner for Trademarks
`Application No. 88/435,263
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`Official Gazette on August 1, 2023.
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`14.
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`On August 29, 2023, Opposer filed a 90-day Request for Extension of Time to
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`Oppose the Opposed Application.
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`15.
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`After a reasonable investigation, and upon information and belief, Applicant has
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`not made any actual use in commerce of the Opposed Mark.
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`16.
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`Opposer has priority of use over Applicant in the KYLIE Marks for similar or
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`related goods and services.
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`17.
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`The USPTO has suspended Opposer’s pending applications for KYLIE (Serial No.
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`88/485,705) in Class 5 for “[v]itamins; dietary and nutritional supplements; nutritional supplement
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`drinks and powdered nutritional supplement and dietary drink mixes; meal replacement nutrition
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`bars for weight loss and nutritional supplement purposes; nutritional meal replacement shakes for
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`weight loss and nutritional supplement purposes; medicated cosmetics; medicated lotions and
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`creams for treating dermatological conditions; medicated dermatological preparations and
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`substances; medicated hair care preparations; medicated mouthwashes and toothpaste” and KYLIE
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`JENNER (Serial No. 88/486,059) in Class 5 for “[v]itamins; dietary and nutritional supplements;
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`nutritional supplement drinks and powdered nutritional supplement and dietary drink mixes; meal
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`replacement nutrition bars for weight loss and nutritional supplement purposes; nutritional meal
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`replacement shakes for weight loss and nutritional supplement purposes; medicated cosmetics;
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`medicated lotions and creams for treating dermatological conditions; medicated dermatological
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`preparations and substances; medicated hair care preparations; medicated mouthwashes and
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`toothpaste” based on a perceived likelihood of confusion with the Opposed Mark.
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`18.
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`Accordingly, Opposer will suffer damage, including irreparable injury to its
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`reputation and goodwill if Applicant is permitted to register the Opposed Mark, and therefore, has
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`established its entitlement to a statutory cause of action to bring this Opposition.
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`Commissioner for Trademarks
`Application No. 88/435,263
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`COUNT I
`LIKELIHOOD OF CONFUSION
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`19.
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` Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
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`paragraphs as though fully set forth herein.
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`20.
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`Opposer’s date of first use in commerce of the KYLIE Marks predates the filing
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`date of the Opposed Application.
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`21.
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`Upon information and belief, Applicant has not made any actual use in commerce
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`of the Opposed Mark.
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`22.
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`Based on its prior-filed applications, registrations, and prior common law rights in
`
`the KYLIE Marks, Opposer owns senior rights in the KYLIE Marks over Applicant.
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`23.
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`The Opposed Mark is identical to or highly similar to the KYLIE Marks.
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`24.
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`The Opposed Mark conveys the same commercial impression as the KYLIE Marks.
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`25.
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`The Opposed Mark is confusingly similar to the KYLIE Marks.
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`26.
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`Opposer offers a wide variety of personal care-related goods and services, and has
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`endorsed dietary and nutritional supplements.
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`27. Ms. Jenner has also been widely associated with the “keto” style diet after the birth
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`of her children.
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`28.
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`The goods identified in the Opposed Application, namely, dietary supplement, are
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`highly related to the goods and services covered by Opposer’s applications and registrations for
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`its KYLIE and KYLIE-formative marks.
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`29.
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`Applicant adopted the Opposed Mark with a deliberate intention to profit from the
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`goodwill and popularity of Ms. Jenner and the KYLIE Marks.
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`30.
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`Applicant purposely chose a mark confusingly similar to the KYLIE Marks, and
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`thus intended to infringe Applicant’s rights in the same, falsely associate itself and its services
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`with Ms. Jenner and seek to profit from the goodwill and popularity of Opposer and Ms. Jenner.
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`31.
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`Because: (1) Opposer is the senior user; (2) the Opposed Mark is identical and/or
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`Commissioner for Trademarks
`Application No. 88/435,263
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`confusingly similar to the KYLIE Marks; and (3) Applicant seeks registration for the Opposed
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`Mark for goods that are related to Opposer’s goods and services, the Opposed Mark is likely to
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`cause confusion, or to cause mistake, or to deceive consumers.
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`32.
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`Opposer will be damaged by the registration of the Opposed Mark.
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`33.
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`Based on the foregoing, the Opposed Mark should not be allowed to register.
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`COUNT II
`DILUTION
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`34.
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`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
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`35.
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`The Opposed Mark dilutes the distinctiveness of the KYLIE Marks.
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`36.
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`Opposer’s KYLIE Marks are famous and distinctive.
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`37.
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`Opposer’s KYLIE and KYLIE-formative marks were famous and distinctive before
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`Applicant filed the Opposed Application on May 19, 2019.
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`38.
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`The Opposed Mark is identical and/or substantially similar to the KYLIE Marks.
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`39. Without Opposer’s consent, and after the KYLIE Marks became famous and
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`distinctive, Applicant sought to register the Opposed Mark for goods that are related to the goods
`
`and services Opposer offers under the KYLIE Marks.
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`40.
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`Consumers encountering the Opposed Mark will immediately associate it with
`
`Opposer’s KYLIE Marks.
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`41.
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`Even if consumers identify the goods bearing the Opposed Mark as originating
`
`from Applicant, they are likely to mistakenly believe Applicant is affiliated with or endorsed by
`
`Opposer or its president, Ms. Jenner, which it is not.
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`42.
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`Opposer has no control over Applicant’s use of the Opposed Mark.
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`43.
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`Opposer will suffer damages including irreparable injury to reputation and goodwill
`
`if the Opposed Mark is allowed to register.
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`44.
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`Opposer requests that the Opposed Mark be refused registration because Opposer’s
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`Commissioner for Trademarks
`Application No. 88/435,263
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`trademark rights are prior and senior to Applicant’s rights in the Opposed Mark and the Opposed
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`Mark dilutes the distinctiveness of the KYLIE Marks.
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`COUNT III
`FALSE CONNECTION
`
`
`45.
`
`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
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`46. Most people when they see or hear the word “Kylie” immediately think of Ms.
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`Jenner.
`
`47.
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`Since long before the filing date of the Opposed Application and by virtue of
`
`Opposer’s extensive use, advertising, and promotion of the KYLIE Marks in connection with
`
`various goods and services, the KYLIE Marks have become uniquely and extremely well-known
`
`and closely identified with Ms. Jenner by consumers.
`
`48.
`
`The Opposed Mark is likely to be understood by consumers as referring to Ms.
`
`Jenner, and consumers will erroneously believe that the Opposed Mark, and the goods sold in
`
`connection with the mark, are associated with or authorized by Ms. Jenner or Opposer.
`
`49.
`
`Any use of the Opposed Mark in connection with the goods covered by the Opposed
`
`Application falsely suggests a connection with Ms. Jenner in violation of Section 2(a) of the
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`Lanham Act, 15 U.S.C. § 1052(a), with consequent damage to Opposer and the public within the
`
`meaning of 15 U.S.C. § 1063(a).
`
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`Commissioner for Trademarks
`Application No. 88/435,263
`
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`RELIEF REQUESTED
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`WHEREFORE, Opposer prays that the Opposed Application (Ser. No. 88/435,263) be
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`rejected in its entirety, and that registration of the Opposed Mark for the specified goods be denied
`
`and refused.
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`Dated: November 29, 2023.
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`Respectfully submitted,
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`DICKINSON WRIGHT PLLC
`
`
`
`
`/John L. Krieger/
`John L. Krieger, Esq.
`Jennifer Ko Craft, Esq.
`jkrieger@dickinsonwright.com
`jcraft@dickinsonwright.com
`trademarkslv@dickinsonwright.com
`3883 Howard Hughes Parkway, Suite 800
`Las Vegas, Nevada 89169
`(702) 550-4400 (phone)
`(844) 670-6009 (fax)
`Attorneys for Opposer
`
`