ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1340861
`02/16/2024
`
`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
`
`02/17/2024
`
`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@DICKINSONWRIGHT.COM
`Secondary email(s): JKrieger@dickinsonwright.com,
`jcraft@dickinson-wright.com, amoretto@dickinson-wright.com
`702-550-4400
`
`Docket no.
`
`072468-00001
`
`Applicant information
`
`Application no.
`
`97790716
`
`02/16/2024
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`12/19/2023
`
`Opposition period
`ends
`
`02/17/2024
`
`Shenzhen Kelaiyi Electronic Commerce Co., Ltd.
`RM 9C11, BUILDING C, WANCHANG APARTMENT
`YUEHU BUILDING, MINZHI STREET
`LONGHUA DIST, SHENZHEN, 518000
`CHINA
`
`Goods/services affected by opposition
`
`Class 003. First Use: May 1, 2019 First Use In Commerce: May 1, 2019
`All goods and services in the class are opposed, namely: Cosmetics; Lipstick; Perfumes; Shampoos;
`Beauty masks; Ethereal oils; Eyebrow pencils; Facial cleansers; False eyelashes; Hand cream;
`Shower gels
`
`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)
`
`

`

`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`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
`
`KYLIE JENNER
`
`Application date
`
`11/05/2015
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 003. First use: First Use: Feb 24, 2017 First Use In Commerce: Feb 24,
`2017
`Cosmetics
`
`U.S. registration
`no.
`
`6262162
`
`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
`
`Application date
`
`09/14/2015
`
`

`

`Register
`
`Principal
`
`Registration date
`
`09/11/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE COSMETICS
`
`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
`
`KYLIE LIP KIT BY KYLIE JENNER
`
`NONE
`
`

`

`Goods/services
`
`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
`
`Application date
`
`07/19/2017
`
`

`

`Registration date
`
`02/27/2018
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`KYLIE COSMETICS BY KYLIE JENNER
`
`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
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`KYLIE SKIN
`
`NONE
`
`Application date
`
`09/27/2018
`
`Foreign priority
`date
`
`NONE
`
`

`

`Goods/services
`
`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
`
`Register
`
`Principal
`
`Registration date
`
`11/28/2023
`
`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: 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
`
`2024-02-16 Notice of Opposition - KLIEYEE.pdf(132238 bytes )
`
`

`

`Signature
`
`/John L. Krieger/
`
`Name
`
`Date
`
`JOHN L. KRIEGER
`
`02/16/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Kylie Jenner, Inc.,
`
`
`
`
`
`Shenzhen Kelaiyi Electronic Commerce Co.,
`Ltd.,
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`Mark: KLIEYEE
`Ser. No.: 97/790716
`Published: December 19, 2023
`Class: 03
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`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 the registration of the above-
`
`referenced mark in International Class 03 for “Cosmetics; Lipstick; Perfumes; Shampoos; Beauty
`
`masks; Ethereal oils; Eyebrow pencils; Facial cleansers; False eyelashes; Hand cream; Shower
`
`gels” (Serial No. 97/790716) (such application, the “Opposed Application,” and such mark, the
`
`“Opposed Mark”), which was published on December 19, 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 involvement 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
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`endorsements, and fashion choices. She has appeared in numerous fashion and cosmetics
`
`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.
`
`Opposer currently owns almost 200 pending applications and registrations for
`
`KYLIE and KYLIE-formative marks in the United States alone.
`
`6.
`
`For example, Opposer owns the following KYLIE and KYLIE-formative
`
`applications and registrations (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”;
`
`• 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”;
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`• 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,
`
`calendars, gift wrap, phone cases, pins and buttons”;
`
`• KYLIE MERCH (Reg. No. 6,091,277) 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 POP-UP (Reg. No. 6,147,721) 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 COSMETICS BY KYLIE JENNER (Reg. No. 5,411,971) in Class 35 for
`
`“[r]etail store services featuring cosmetics and beauty products”;
`
`• KYLIE TRUCK (Reg. No. 5,629,247) in Class 35 for “[r]etail store services
`
`featuring cosmetics, merchandise and gifts”;
`
`• KYLIE SKIN (Reg. No. 5,952,888) in Class 3 for “[n]on-medicated skin care
`
`preparations; Skin moisturizers; Skin lotions; Skin creams; Skin cleansers; Skin
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`toners; Facial scrub; Body scrubs; Non-medicated skin care preparation, namely,
`
`facial mists; Non-medicated skin care preparation, 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”;
`
`• KYLIE SKIN (Reg. No. 5,952,889) in Class 35 for “[r]etail store services featuring
`
`skin care products, skin care preparation products, cosmetics, cosmetic preparations
`
`and gifts”;
`
`• KYLIE SKIN BY KYLIE JENNER (Reg. No. 5,952,890) in Class 3 for “[n]on-
`
`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 preparation, 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”;
`
`• KYLIE BABY (Reg. No. 6,609,272) in Class 3 for “[n]on-medicated skin care
`
`preparations; skin moisturizers; skin lotions; skin creams; skin cleansers; bubble
`
`bath; hair shampoos, hair conditioners, hair care preparations”;
`
`• KYLIE BABY (Reg. No. 6,609,269) in Class 35 for “[p]roviding 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”;
`
`• KYLIE BABY BY KYLIE JENNER (Reg. No. 7,231,012) in Class 3 for “[f]acial
`
`oils; body oils”;
`
`• KYLIE BABY BY KYLIE JENNER (Reg. No. 6,609,268) in Class 3 for “[n]on-
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`medicated skin care preparations; skin moisturizers; skin lotions; skin creams; skin
`
`cleansers; bubble bath; hair shampoos, hair conditioners, hair care preparations”;
`
`and
`
`• KYLIE BABY KYLIE JENNER (Reg. No. 6,804,618) in Class 35 for “[p]roviding
`
`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”.
`
`7.
`
`Opposer owns prior common law rights in the KYLIE Marks in connection with
`
`beauty, cosmetics and other personal care products and services that predate the filing date of the
`
`Opposed Application, as well as Applicant’s claimed date of first use of May 1, 2019.
`
`8.
`
`Opposer has spent substantial resources protecting, enforcing, marketing,
`
`advertising, and promoting the KYLIE Marks in the United States and around the world, and has
`
`developed significant goodwill and fame in the KYLIE Marks.
`
`9.
`
`As a result of Opposer’s extensive and exclusive use, the KYLIE Marks have
`
`become widely recognized by the consuming public as identifying the high quality goods and
`
`services that Opposer provides. In fact, the marks KYLIE and KYLIE JENNER have become
`
`household names.
`
`10.
`
`Upon information and belief, Shenzhen Kelaiyi Electronic Commerce Co., Ltd.
`
`(“Applicant”) is a China limited company located at Rm 9C11, Building C, Wanchang Apartment,
`
`Yuehu Building, Minzhi Street, Longhua Dist, Shenzhen China 51800.
`
`11.
`
`The USPTO published the Opposed Application for opposition in the USPTO’s
`
`Official Gazette on December 19, 2023.
`
`12.
`
`On January 18, 2024, Opposer filed a 30-day Request for Extension of Time to
`
`Oppose the Opposed Application.
`
`13.
`
`After a reasonable investigation, and upon information and belief, it appears
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`Applicant began using the Opposed Mark in connection with false eyelashes being sold and/or
`
`offered
`
`for sale
`
`in
`
`the “LinLin” online store powered by Shopify,
`
`located at
`
`https://www.swxzjl.com/products/klieyee-cat-eye-fake-lashes-dramatic-false-eyelashes-faux-
`
`mink-lashes-extension-wispy-fluffy-natural-look-7-pairs-pack-fox-eye-lash-8d-volume-thick-
`
`long-reusable-light-cruelty-free.
`
`14.
`
`Opposer has priority of use over Applicant in the KYLIE Marks for similar or
`
`related goods and services.
`
`15.
`
`Accordingly, Opposer will suffer damage, including irreparable injury to its
`
`reputation and goodwill if Applicant is permitted to register the Opposed Mark, and therefore, has
`
`established its entitlement to a statutory cause of action to bring this Opposition.
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`16.
`
` Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`17.
`
`Opposer’s date of first use in commerce of the KYLIE Marks predates the filing
`
`date of the Opposed Application and Applicant’s alleged date of first use.
`
`18.
`
`Upon information and belief, Applicant is using the Opposed Mark in connection
`
`with false eyelashes.
`
`19.
`
`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.
`
`20.
`
`The Opposed Mark is highly similar to the KYLIE Marks in sight and sound.
`
`21.
`
`The Opposed Mark conveys the same commercial impression as the KYLIE Marks.
`
`22.
`
`The Opposed Mark is confusingly similar to the KYLIE Marks.
`
`23.
`
`Opposer offers a wide variety of personal care-related goods and services.
`
`24.
`
`The goods identified in the Opposed Application are identical and/or highly related
`
`to the goods and services covered by Opposer’s applications and registrations for its KYLIE and
`
`KYLIE-formative marks.
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`25.
`
`Applicant adopted the Opposed Mark with a deliberate intention to profit from the
`
`goodwill and popularity of Ms. Jenner and the KYLIE Marks.
`
`26.
`
`Applicant purposely chose a mark confusingly similar to the KYLIE Marks, and
`
`thus intended to infringe Applicant’s rights in the same, falsely associate itself and its goods with
`
`Ms. Jenner and seek to profit from the goodwill and popularity of Opposer and Ms. Jenner.
`
`27.
`
`Because: (1) Opposer is the senior user; (2) the Opposed Mark is confusingly
`
`similar to the KYLIE Marks; and (3) Applicant seeks registration for the Opposed Mark for goods
`
`that are identical or related to Opposer’s goods and services, the Opposed Mark is likely to cause
`
`confusion, or to cause mistake, or to deceive consumers.
`
`28.
`
`Opposer will be damaged by the registration of the Opposed Mark.
`
`29.
`
`Based on the foregoing, the Opposed Mark should not be allowed to register.
`
`COUNT II
`DILUTION
`
`30.
`
`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`31.
`
`The Opposed Mark dilutes the distinctiveness of the KYLIE Marks.
`
`32.
`
`Opposer’s KYLIE Marks are famous and distinctive.
`
`33.
`
`Opposer’s KYLIE and KYLIE-formative marks were famous and distinctive before
`
`Applicant filed the Opposed Application on February 11, 2023 and long before Applicant’s
`
`claimed date of first use of May 1, 2019.
`
`34.
`
`The Opposed Mark is identical and/or substantially similar to the KYLIE Marks.
`
`35. Without Opposer’s consent, and after the KYLIE Marks became famous and
`
`distinctive, Applicant adopted and sought to register the Opposed Mark for goods that are identical
`
`and/or related to the goods and services Opposer offers under the KYLIE Marks.
`
`36.
`
`Consumers encountering the Opposed Mark will immediately associate it with
`
`Opposer’s KYLIE Marks.
`
`37.
`
`Even if consumers identify the goods bearing the Opposed Mark as originating
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`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.
`
`38.
`
`Opposer has no control over Applicant’s use of the Opposed Mark.
`
`39.
`
`Opposer will suffer damages including irreparable injury to reputation and goodwill
`
`if the Opposed Mark is allowed to register.
`
`40.
`
`Opposer requests that the Opposed Mark be refused registration because Opposer’s
`
`trademark rights are prior and senior to Applicant’s rights in the Opposed Mark and the Opposed
`
`Mark dilutes the distinctiveness of the KYLIE Marks.
`
`COUNT III
`FALSE CONNECTION
`
`41.
`
`Opposer hereby re-adopts and re-alleges the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`42. Most people when they see or hear the word “Kylie” immediately think of Ms.
`
`Jenner.
`
`43.
`
`Since long before the filing date of the Opposed Application and any earlier date of
`
`first use that may be claimed by Applicant, 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.
`
`44.
`
`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.
`
`45.
`
`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
`
`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).
`
`
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`COUNT IV
`FRAUD IN THE PROCUREMENT
`
`46.
`
`Opposer incorporates the foregoing paragraphs as though set forth fully herein.
`
`47.
`
`Opposer is informed and believes and thereupon alleges Applicant made material
`
`misrepresentations of fact to the USPTO in connection with the Opposed Application, which
`
`Applicant knew were false and its misrepresentations were made with the intent to deceive the
`
`USPTO.
`
`48.
`
`Opposer is informed and believes and thereupon alleges that Applicant had not used
`
`the Opposed Mark on all of the goods identified in the Opposed Application “in commerce” (as
`
`defined by the Trademark Act) on the date indicated in the application or as of the application
`
`filing date and thus, made false representations to the USPTO for the purpose of obtaining
`
`registration.
`
`49.
`
`Opposer is informed and believes and thereupon alleges that Applicant knowingly
`
`made false, material misrepresentations of fact in the Opposed Application that the Opposed Mark
`
`has been used “in commerce” in connection with all goods identified when in fact, it had not, with
`
`the willful intent to deceive the USPTO for the purposes of obtaining a registration.
`
`50.
`
`Opposer is informed and believes and thereupon alleges that Applicant made such
`
`false, material misrepresentations to the USPTO regarding use of the Opposed Mark in commerce
`
`in a declaration signed by Applicant and submitted in support of the Opposed Application.
`
`51.
`
`Based on its own investigation, Opposer has been unable to identify any current
`
`actual use and/or continuous use of all the goods identified in the Opposed Application.
`
`52.
`
`Opposer is informed and believes and thereupon alleges that Applicant knew it was
`
`not using the Opposed Mark in commerce for all the goods identified when Applicant filed the
`
`Opposed Application.
`
`53.
`
`Opposer is informed and believes and thereupon alleges that Applicant’s fraudulent
`
`declaration regarding use of the Opposed Mark was made in bad faith for ulterior purposes, namely
`
`to trade off Applicant’s goodwill and deceive the USPTO.
`
`

`

`Commissioner for Trademarks
`Application No. 97/790716
`
`
`54.
`
`Opposer is informed and believes and thereupon alleges that Applicant’s false
`
`statements made under the penalty of perjury that Applicant had used the Opposed Mark in
`
`commerce for all the goods identified was a material misrepresentation, because an application
`
`made under Section 1(a) of the Trademark Act requires that the Mark be in use for all goods
`
`identified in the application. Without such use in commerce on all goods identified, the Opposed
`
`Mark is not entitled to registration.
`
`55.
`
`Based on the foregoing, Opposer is informed and believes and thereupon alleges
`
`the false representations of “use” included in the Opposed Application constitutes a fraud on the
`
`USPTO and the application should be refused.
`
`56.
`
`Opposer has suffered and will continue to suffer damage if the Opposed
`
`Application is not refused.
`
`RELIEF REQUESTED
`
`WHEREFORE, Opposer prays that the Opposed Application (Ser. No. 97/790716) be
`
`rejected in its entirety, and that registration of the Opposed Mark for the specified goods be denied
`
`and refused.
`
`Dated: February 16, 2024.
`
`Respectfully submitted,
`
`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
`
`