ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1342690
`02/27/2024
`
`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
`
`Marriott International, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`02/28/2024
`
`7750 WISCONSIN AVENUE
`BETHESDA, MD 20814
`UNITED STATES
`
`SARA K. STADLER
`KILPATRICK TOWNSEND & STOCKTON LLP
`1114 AVENUE OF THE AMERICAS, 21ST FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`Primary email: sstadler@kilpatricktownsend.com
`Secondary email(s): sstadler@kilpatricktownsend.com, LKa-
`plan@kilpatricktownsend.com, agarcia@kilpatricktownsend.com, tmad-
`min@kilpatricktownsend.com
`212-775-8700
`
`Docket no.
`
`1307265
`
`Applicant information
`
`Application no.
`
`97423038
`
`Opposition filing
`date
`
`Applicant
`
`02/27/2024
`
`Publication date
`
`10/31/2023
`
`Opposition period
`ends
`
`02/28/2024
`
`Angrow Company Limited
`SUITE B 1675 SOUTH STATE STREET
`DOVER, DE 19901
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 003. First Use: Feb 1, 2022 First Use In Commerce: Feb 1, 2022
`All goods and services in the class are opposed, namely: Cosmetics; Dentifrices; Lipstick; Perfumes;
`Shampoos; Aromatic essential oils; Bath gel; Beauty masks; Cakes of toilet soap; Cleansing milk for
`cosmetic purposes; Cleansing milk for toilet purposes; Cosmetic creams; Ethereal oils; Hair lotion;
`Lotions for cosmetic purposes; Oils for cosmetic purposes; Scented linen water; Tissues impregnated
`with cosmetic lotions;all of the foregoing being non-medicated and containing ingredients derived
`solely from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 per-
`cent on a dry weight basis
`
`Applicant information
`
`Application no.
`
`97512635
`
`Publication date
`
`10/31/2023
`
`Opposition filing
`
`02/27/2024
`
`Opposition period
`
`

`

`date
`
`Applicant
`
`ends
`
`Angrow Company Limited
`SUITE B 1675 SOUTH STATE STREET
`DOVER, DE 19901
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 003. First Use: Sep 1, 2021 First Use In Commerce: Sep 1, 2021
`All goods and services in the class are opposed, namely: Cosmetics; Dentifrices; Lipstick; Perfumes;
`Shampoos; Aromatic essential oils; Bath gel; Beauty masks; Cakes of toilet soap; Cleansing milk for
`cosmetic purposes; Cleansing milk for toilet purposes; Cosmetic creams; Ethereal oils; Hair lotion;
`Lotions for cosmetic purposes; Make-up sets; Oils for cosmetic purposes; Scented linen water; Tis-
`sues impregnated with cosmetic lotions;all of the foregoing being non-medicated and containing in-
`gredients derived solely from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not
`more than 0.3 percent on a dry weight basis
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Section 1(a) and (c)
`
`Dilution by blurring
`
`Fraud on the USPTO
`
`Trademark Act Sections 2 and 43(c)
`
`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.
`
`6148202
`
`Register
`
`Principal
`
`Registration date
`
`09/08/2020
`
`Application date
`
`10/30/2018
`
`Foreign priority
`date
`
`04/30/2018
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MARRIOTT BONVOY
`
`NONE
`
`Class 035. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`Advertising, business management, business administration; incentive award
`programs, namely, programs to promote hotel, resort, airline, car rental, time
`share, travel, and vacation services of others; business administration of con-
`sumer loyalty programs
`Class 036. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`Real estate timesharing services featuring an incentive award program; real es-
`tate listing, rental and leasing services for residential housing, apartments,
`rooms in homes, vacation homes, and villas featuring an incentive award pro-
`gram; credit card services
`Class 043. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`Services for providing food and drink; temporary accommodation; hotel services
`featuring an incentive award program; hotel reservations
`
`

`

`U.S. registration
`no.
`
`6131145
`
`Register
`
`Principal
`
`Registration date
`
`08/18/2020
`
`Application date
`
`02/07/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MARRIOTT BONVOY
`
`The mark consists of the stylized wording "MARRIOTT BONVOY" with a line be-
`neath the last "O" in "BONVOY".
`
`Class 035. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`administration of an incentive award program that allows members to redeem
`points for accommodations and travel-related goods, services, and experiences;
`administration of an incentive award program that allows members to redeem
`points for awards offered by other loyalty programs; promoting hotel, resort, air-
`line, car rental, time share, travel, and vacation services through an incentive
`award program; business organization, operation and supervision of loyalty pro-
`grams
`Class 036. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`real estate timesharing services featuring an incentive award program; real es-
`tate listing, rental and leasing services for residential housing, apartments,
`rooms in homes, vacation homes, and villas featuring an incentive award pro-
`gram; issuance of credit cards; credit card authorization, verification, payment
`processing, and transaction processing services
`Class 043. First use: First Use: Feb 13, 2019 First Use In Commerce: Feb 13,
`2019
`hotel services featuring an incentive award program; hotel reservation services
`for others
`
`U.S. registration
`no.
`
`6479592
`
`Register
`
`Principal
`
`Registration date
`
`09/07/2021
`
`Application date
`
`08/14/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`MARRIOTT BONVOY BOUTIQUES
`
`NONE
`
`Class 003. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`personal care products, namely, bath soaps, shampoo, hair conditioner, body lo-
`tion and shower gel
`Class 020. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`mattresses; box springs; pillows; mattress toppers
`Class 024. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`bed sheets; pillowcases; duvets; duvet covers; bed blankets; blanket throws;
`mattress pads; towels
`Class 025. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`robes
`Class 035. First use: First Use: Dec 2019 First Use In Commerce: Dec 2019
`
`

`

`online retail store services featuring linens, bedding products, towels, personal
`care products, apparel and accessories, interior furnishings, and household
`goods
`
`U.S. application
`no.
`
`97312695
`
`Application date
`
`03/15/2022
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`ALL-INCLUSIVE BY MARRIOTT BONVOY
`
`NONE
`
`Class 039. First use: First Use: None First Use In Commerce: None
`Transport of passengers and of goods; packaging and storage of goods; ground
`transportation services, namely, bicycle rental, car rental, and ground transport-
`ation of passengers by car, limousine, van and bus; cruise services, namely,
`making reservations and bookings for cruises; cruise ship services; travel
`agency services, namely, making reservations for and taking bookings for trans-
`portation of passengers and goods, cruise ship services; providing transport for
`excursions; providing transport for sightseeing tours; providing transport for
`guided tours; organizing the transportation of travelers for excursions, tours, hol-
`idays and cruises; travel guide and travel information services; event planning
`and management services, namely, organization of trips
`Class 041. First use: First Use: None First Use In Commerce: None
`Educational services, namely, arranging and conducting seminars, workshops,
`classes, conferences, and symposiums in the fields of leadership development,
`human resources, customer service, customer and employee satisfaction and
`loyalty, employee recruitment, and employee orientation, training, and develop-
`ment, cooking, art, foreign languages, etiquette, arts and crafts, nature, and con-
`servation; providing entertainment, sporting and cultural activities, namely, or-
`ganizing community sporting and cultural events; arranging for ticket reserva-
`tions for shows and other entertainment events; health and fitness club services,
`namely, providing fitness and exercise facilities, instruction and equipment in the
`fields of fitness and physical exercise; providing recreational services in the
`nature of facilities, instruction and equipment for swimming pools, bicycling, golf,
`water sports, horseback riding, skiing and beach sports access; golf club, golf
`course and golf instruction services; providing tennis court facilities, rental of
`tennis courts and tennis instruction; providing amusement arcade services; wed-
`ding reception planning services; event planning and management services,
`namely, arranging and conducting special events for social entertainment pur-
`poses; arranging conferences in the field of education and entertainment and or-
`ganizing exhibitions for cultural and educational purposes; casino services; gam-
`ing services in the nature of casino gambling, conducting online computer game
`tournaments; cabaret services; nightclub services; providing hotel guests with
`educational and entertainment information about local attractions and points of
`interest within the vicinity of hotel properties and distributing materials in connec-
`tion therewith; art exhibitions
`Class 043. First use: First Use: None First Use In Commerce: None
`Hotel accommodation services; restaurant, catering, bar and cocktail lounge ser-
`vices; provision of general purpose facilities for meetings, conferences and ex-
`hibitions; provision of banquet and social function facilities for special occasions;
`and reservation services for hotel accommodations for others, namely, making
`hotel reservation for others
`Class 044. First use: First Use: None First Use In Commerce: None
`Spa services, namely, providing facials, hair salon services, skin care salon ser-
`vices and cosmetic body care treatments, manicure and pedicure services, mas-
`
`

`

`sage services, body waxing services and beauty salon services
`Class 045. First use: First Use: None First Use In Commerce: None
`Planning and arranging of wedding ceremonies; Physical security services,
`namely, providing the protection of tangible property and individuals; personal
`and social services rendered to meet the needs of individuals, namely, personal
`concierge services for others comprising making requested personal arrange-
`ments and reservations and providing customer-specific information to meet in-
`dividual needs; personalized and customized concierge services for others com-
`prising making requested personal arrangements and reservations and provid-
`ing customer-specific information to meet individual needs for social events;
`Hotel concierge services; Providing hotel concierge information services; conci-
`erge services for others by making requested personal arrangements to meet in-
`dividual needs; social escort services; clothing rental services; caretaker ser-
`vices for property and individuals, namely, personal concierge services for oth-
`ers comprising making requested care of property and personal arrangements to
`meet individual needs; house sitting services; baby-sitting services; provision of
`information, advisory and consultancy services in the field of hotel concierge
`services
`
`Attachments
`
`Consolidated Notice of Opposition - VOIBON Marks.pdf(527412 bytes )
`Exhibits to Consolidated Notice of Opposition - VOIBON Marks_Part1.pd
`f(5093553 bytes )
`Exhibits to Consolidated Notice of Opposition - VOIBON Marks_Part2.pd
`f(5193620 bytes )
`Exhibits to Consolidated Notice of Opposition - VOIBON Marks_Part3.pd
`f(4922294 bytes )
`Exhibits to Consolidated Notice of Opposition - VOIBON Marks_Part4.pd
`f(2976921 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Sara K. Stadler/
`
`Sara K. Stadler
`
`02/27/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re Application Serial Nos.:
`
`
`97423038
`
`97512635 VOIBON
`
`Filing Dates: May 22, 2022, and July 20, 2022
`Publication Date: October 31, 2023
`
`
`MARRIOTT INTERNATIONAL, INC.,
`
`
`
`
`Opposer,
`
`
`
`v.
`
`
`ANGROW COMPANY LIMITED,
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`Opposition No. _______________
`
`
`CONSOLIDATED NOTICE OF OPPOSITION
`
`Opposer Marriott International, Inc. (“Marriott”), a Delaware corporation with a principal
`
`place of business at 7750 Wisconsin Avenue, Bethesda, Maryland 20814, will be damaged by
`
`registration of the marks shown in Application Serial Nos. 97423038 and 97512635 (the
`
`“Applications”) and published in the Official Gazette on October 31, 2023, and accordingly,
`
`Opposer opposes the Applications. This Consolidated Notice of Opposition (“Notice”) is
`
`appropriate because Marriott’s claims against the Applications involve a single Applicant,
`
`Angrow Company Limited (“Applicant”), and those claims involve common questions of law
`
`and fact. TBMP § 305.01.
`
`As grounds for this Notice, Marriott alleges as follows:
`
`
`
`1
`
`

`

`1.
`
`Marriott operates, franchises, and licenses nearly 8,700 hotel, residential,
`
`timeshare, and other lodging properties under more than 30 brands and across 139 countries and
`
`territories, giving people more ways to connect, experience and expand their world. Founded by
`
`J. Willard and Alice Marriott, and guided by family leadership and ethical values since 1927,
`
`their principles remain embedded in the company’s culture and in everything Marriott does
`
`today.
`
`2.
`
`Marriott launched its Marriott Bonvoy® loyalty program on February 13, 2019.
`
`Marriott Bonvoy® is a loyalty rewards program that enables its members to earn points for hotel
`
`stays, tours and activities, shopping with the Marriott Bonvoy® credit cards, and offerings from
`
`Marriott’s travel partners. Members can use their points to redeem hotel stays, flights, car rentals,
`
`gift cards, shopping, and unforgettable Marriott Bonvoy Moments® experiences.
`
`3.
`
`Following the successful launch of the Marriott Bonvoy® loyalty program,
`
`Marriott expanded its offerings under the Bonvoy and Marriott Bonvoy names and marks to a
`
`range of additional goods and services, including as the overall branding for Marriott’s entire
`
`portfolio of brands on marriott.com, as well as branding for retail offerings under the
`
`MARRIOTT BONVOY BOUTIQUES mark; hotel and hospitality in partnerships such as
`
`offerings with Uber and with MGM; as part of some of Marriott’s own brands such as HOMES
`
`& VILLAS BY MARRIOTT BONVOY; as the name of the Marriott mobile app, BONVOY;
`
`travel entertainment and information under marks such as MARRIOTT BONVOY TRAVELER;
`
`and a family of MARRIOTT BONVOY credit cards, among other uses.
`
`4.
`
`Marriott owns the following United States trademark registrations of marks
`
`containing BONVOY (the “BONVOY Marks”), among many others:
`
`
`
`2
`
`

`

`Mark
`
`Reg. No. /
`
`Ser. No.
`
`MARRIOTT BONVOY
`
`6148202
`
`Dates
`
`Selected Goods and Services
`
`Priority date:
`Apr. 30, 2018
`
`Registration date:
`Sept. 8, 2020
`
`Class 35: . . . Incentive award
`programs, namely, programs to
`promote hotel, resort, airline, car
`rental, time share, travel, and vacation
`services of others . . . .
`
`6131145
`
`
`
`Filing date:
`Feb. 7, 2019
`
`Registration date:
`Aug. 18, 2020
`
`MARRIOTT BONVOY
`BOUTIQUES
`
`6479592
`
`Filing date:
`Aug. 14, 2019
`
`Registration date:
`Sept. 7, 2021
`
`ALL-INCLUSIVE BY
`MARRIOTT BONVOY
`
`97312695
`
`Filing date:
`Mar. 15, 2022
`
`
`
`
`3
`
`Class 43: Services for providing food
`and drink; temporary accommodation;
`hotel services featuring an incentive
`award program; hotel reservations
`
`Class 35: Administration of an
`incentive award program that allows
`members to redeem points for
`accommodations and travel-related
`goods, services, and experiences; . . .
`promoting hotel, resort, airline, car
`rental, time share, travel, and vacation
`services through an incentive award
`program . . . .
`
`Class 43: Hotel services featuring an
`incentive award program; hotel
`reservation services for others
`
`Class 3: Personal care products,
`namely, bath soaps, shampoo, hair
`conditioner, body lotion and shower
`gel
`
`Class 20: Mattresses; box springs;
`pillows; mattress toppers
`
`Class 24: Bed sheets; pillowcases;
`duvets; duvet covers; bed blankets;
`blanket throws; mattress pads; towels
`
`Class 25: Robes
`
`Class 35: Online retail store services
`featuring linens, bedding products,
`towels, personal care products,
`apparel and accessories, interior
`furnishings, and household goods
`
`Class 41: . . . Health and fitness club
`services, namely, providing fitness
`and exercise facilities, instruction and
`equipment in the fields of fitness and
`physical exercise . . . .
`
`Class 43: Hotel accommodation
`services; restaurant, catering, bar and
`
`

`

`Mark
`
`Reg. No. /
`
`Ser. No.
`
`Dates
`
`Selected Goods and Services
`
`cocktail lounge services; provision of
`general purpose facilities for
`meetings, conferences and
`exhibitions; provision of banquet and
`social function facilities for special
`occasions; and reservation services
`for hotel accommodations for others,
`namely, making hotel reservation for
`others
`
`Class 44: Spa services, namely,
`providing facials, hair salon services,
`skin care salon services and cosmetic
`body care treatments, manicure and
`pedicure services, massage services,
`body waxing services and beauty
`salon services
`
`
`These registrations (collectively, the “BONVOY Registrations”) are valid and in full force and
`
`effect. Marriott’s BONVOY Registrations constitute prima facie evidence of Marriott’s
`
`exclusive right to use the registered marks in connection with the goods and services specified in
`
`the registrations. Pursuant to 37 C.F.R. § 2.122(d), printouts from the United States Patent and
`
`Trademark Office’s electronic TSDR database showing the current status and title for each of the
`
`BONVOY Registrations, as well as Application Serial No. 97312695 (collectively, the
`
`“BONVOY Registrations and Application”) are attached as Exhibit A.
`
`5.
`
`In addition to Marriott’s BONVOY Registrations and Application, Marriott owns
`
`common-law rights in its BONVOY Marks and its BONVOY word mark for retail store services
`
`offering personal care products such as bath soaps, shampoo, hair conditioner, body lotion and
`
`shower gel, all by virtue of Marriott’s extensive use and promotion of its BONVOY Marks and
`
`its BONVOY word mark in connection with these services, among many other goods and
`
`services. Marriott has enjoyed these common-law rights since before the filing date of the
`
`Applications and any date of first use that Applicant may be able to establish.
`
`
`
`4
`
`

`

`6.
`
`As a result of Marriott’s extensive sales, offering for sale, and promotion of these
`
`goods and services under its BONVOY Marks and its BONVOY word mark, as well as
`
`unsolicited media attention, the general consuming public of the United States associates
`
`Marriott’s BONVOY word mark exclusively with Marriott and has done so since prior to the
`
`filing date of the Applications. Marriott’s BONVOY mark is famous.
`
`7.
`
`Notwithstanding Marriott’s prior rights, Applicant filed the Applications on May
`
`22, 2022 and July 20, 2022, under Section 1(a), 15 U.S.C. § 1051(a), to register the
`
` composite mark and VOIBON word mark (together, “Applicant’s VOIBON
`
`Marks”) for the following goods in Class 3 (“Applicant’s Goods”):
`
`App. Ser. No. 97423038:
`
`Cosmetics; Dentifrices; Lipstick; Perfumes; Shampoos; Aromatic essential oils;
`Bath gel; Beauty masks; Cakes of toilet soap; Cleansing milk for cosmetic
`purposes; Cleansing milk for toilet purposes; Cosmetic creams; Ethereal oils; Hair
`lotion; Lotions for cosmetic purposes; Oils for cosmetic purposes; Scented linen
`water; Tissues impregnated with cosmetic lotions; all of the foregoing being non-
`medicated and containing ingredients derived solely from hemp with a delta-9
`tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry
`weight basis
`
`App. Ser. No. 97512635:
`
`Cosmetics; Dentifrices; Lipstick; Perfumes; Shampoos; Aromatic essential oils;
`Bath gel; Beauty masks; Cakes of toilet soap; Cleansing milk for cosmetic
`purposes; Cleansing milk for toilet purposes; Cosmetic creams; Ethereal oils; Hair
`lotion; Lotions for cosmetic purposes; Make-up sets; Oils for cosmetic purposes;
`Scented linen water; Tissues impregnated with cosmetic lotions; all of the
`foregoing being non-medicated and containing ingredients derived solely from
`hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than
`0.3 percent on a dry weight basis
`
`The only difference between the descriptions of goods in the Applications is Applicant’s addition
`
`of “Make-up sets” to the identification in Application Serial No. 97512635 (underlined above).
`
`
`
`5
`
`

`

`The Applications cite February 1, 2022 (‘038), and September 1, 2021 (‘635) as Applicant’s
`
`dates of first use anywhere and in commerce.
`
`8.
`
`On July 20, 2022, Applicant submitted a specimen of use for Application Serial
`
`No. 97512635 containing product
`
`listings
`
`for “VOIBON Cosmetics, CLARIFYING
`
`CONCENTRATE” and “VOIBON Cosmetics, TOTAL REPAIR CREAM,” photographs of
`
`packaging purporting to contain these products, and redacted sales records for these products,
`
`each purportedly offered for sale at the website https://angrowcompanylimited.shop/. See
`
`Exhibit B.
`
`9.
`
`Before filing its Applications, Applicant had already filed several other VOIBON
`
`applications containing specimens that depicted other parties’ products but apparently were
`
`digitally altered to add Applicant’s VOIBON Marks. For example, Applicant’s original
`
`December 22, 2021, specimen for Application Serial No. 97183884 to register VOIBON in Class
`
`3 purported to depict a product listing for “Voibon ethereal” clove leaf oil at the website
`
`https://www.worldonlinevip.com/, see Exhibit C, when in fact, those photos apparently were
`
`copied from a different seller’s listing on Amazon.com:
`
`/ /
`
`/ /
`
`/ /
`
`/ /
`
`/ /
`
`/ /
`
`/ /
`
`/ /
`
`
`
`6
`
`

`

`
`
`Applicant’s Specimen for
`App. Ser. No. 97183884:
`
`https://www.amazon.com/UpNature-Essential-
`Undiluted-Unfiltered-
`Toothaches/dp/B01NALXB4X:
`
`
`See Exhibit D. Indeed, Applicant conceded in an opposition proceeding in the United Kingdom
`
`
`
`
`
`that in the United States, it “only provided some images of a digital model for the purpose of
`
`registering the U.S. trademark.” See Exhibit E (emphasis added).
`
`10.
`
`To test Applicant’s claims of use, Marriott retained an investigator in August
`
`2022 to purchase products from two websites associated with Applicant (https://angrowcompany
`
`limited.shop/ and http://www.voibon.com/shop/), each of which purported to offer personal care
`
`products for sale under Applicant’s VOIBON Marks. While both websites allowed the
`
`investigator to add items to a cart, neither website was configured to receive payments. The
`
`investigator sent several emails to Applicant inquiring how to complete a purchase, but
`
`Applicant did not respond to those inquiries. Thus, the products shown in Applicant’s specimens
`
`bearing Applicant’s VOIBON Marks were not actually available for purchase as of the filing
`
`date of the Applications.
`
`
`
`7
`
`

`

`11.
`
`Applicant’s VOIBON Marks comprise or consist of the term “VOIBON,” which
`
`is highly similar to Marriott’s BONVOY Marks and its BONVOY word mark visually, aurally,
`
`and conceptually. Further, Marriott has used its BONVOY Marks and its BONVOY word mark
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`in connection with goods and services that are identical, closely related, or complementary to
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`Applicant’s Goods.
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`12.
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`On information and belief, Applicant selected VOIBON to traffic on Marriott’s
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`goodwill in its BONVOY Marks and cause consumers to associate Applicant’s VOIBON Marks
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`with Marriott.
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`
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`FIRST GROUND FOR OPPOSITION
`FRAUD IN THE PROSECUTION OF THE APPLICATION
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`13. Marriott incorporates each of the preceding paragraphs as if fully set forth here.
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`14.
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`Applicant filed with the Applications sworn declarations stating that it “is using
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`the mark in commerce on or in connection with the identified goods/services” and its specimen
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`“show[s] the mark as used in commerce on or in connection with any item in the class of listed
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`goods/services.”
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`15.
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`In fact, however, as Marriott has alleged with particularity, (a) the products shown
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`in Applicant’s specimens bearing Applicant’s VOIBON Marks were not actually available for
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`purchase as of the filing dates of the Applications, and (b) Applicant has established a pattern or
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`practice of submitting specimens to the Office consisting of digital mockups using third parties’
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`photographs to which Applicant added Applicant’s VOIBON Marks. See Exhibits C, D. Indeed,
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`Applicant has acknowledged having submitted such “images of a digital model” as specimens
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`“for the purpose of registering the U.S. trademark,” i.e., to support its claims to registration
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`under 15 U.S.C. § 1051(a). See Exhibit E.
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`16.
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`Applicant’s declarations swearing to its bona fide use of Applicant’s VOIBON
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`Marks in United States commerce in connection with Applicant’s Goods was false when made.
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`As of the filing date of the Applications, Applicant knew it had not made any bona fide use of
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`Applicant’s VOIBON Marks in United States commerce.
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`17.
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`Applicant made these false statements to the Office intentionally and with a
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`reckless disregard of the truth to induce the Office to approve the Applications for publication.
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`18.
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`Applicant’s false statements in fact induced the Office to approve the
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`Applications for publication. The Office reasonably relied upon the truth of Applicant’s false
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`statements in examining and deciding to publish the Applications, and given the requirements of
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`15 U.S.C. § 1051(a), the Office would not have done so but for the misrepresentations contained
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`in Applicant’s knowing and intentionally false statements. These false statements therefore were
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`material to the Office’s examination and approval of the Applications for publication.
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`19.
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`Accordingly, Applicant has obtained publication of
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`the Applications
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`fraudulently—that is, by knowingly and intentionally making false, material misrepresentations
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`of fact with an intent to deceive the Office and secure publications to which Applicant is not
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`entitled.
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`
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`SECOND GROUND FOR OPPOSITION
`LACK OF BONA FIDE USE IN COMMERCE
`15 U.S.C. § 1051(a)
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`20. Marriott incorporates each of the preceding paragraphs as if fully set forth here.
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`21.
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`The Applications cite February 1, 2022 (‘038), and September 1, 2021 (‘635),
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`respectively, as Applicant’s dates of first use in United States commerce.
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`22.
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`Applicant was not using Applicant’s VOIBON Marks in United States commerce
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`in connection with any of Applicant’s Goods at the time Applicant filed the Applications. As
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`
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`Marriott has alleged with particularity, the products shown in Applicant’s specimens bearing
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`Applicant’s VOIBON Marks were not actually available for purchase as of the filing dates of the
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`Applications.
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`23.
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`Accordingly, Applicant’s description of goods in the Applications extends beyond
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`any actual, bona fide use of Applicant’s VOIBON Marks in United States commerce in violation
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`of 15 U.S.C. § 1051(a), and the Applications are therefore void ab initio.
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`24.
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`Alternatively, Applicant was not using Applicant’s VOIBON Marks in United
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`States commerce in connection with all of Applicant’s Goods at the time Applicant filed the
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`Applications. Because registration under 15 U.S.C. § 1051(a) is allowed only as to goods in
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`connection with which the applied-for mark is actually being used, registration should be refused
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`as to those goods for which Applicant had not used Applicant’s VOIBON Marks in United States
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`commerce as of the filing dates of the Application, namely, May 22, 2022, and July 20, 2022.
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`THIRD GROUND FOR OPPOSITION
`LIKELIHOOD OF CONFUSION
`15 U.S.C. § 1052(d)
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`25. Marriott incorporates each of the preceding paragraphs as if fully set forth here.
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`26.
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`Applicant’s VOIBON Marks are confusingly similar in appearance, sound, and
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`commercial impression to Marriott’s BONVOY Marks.
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`27. Marriott’s BONVOY word mark is a coined term lacking any dictionary
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`definition, see Exhibit F, and the “VOIBON” element of Applicant’s VOIBON Marks merely
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`flips the two components of Marriott’s BONVOY word mark, substituting the aurally equivalent
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`and visually similar “VOI” for “VOY.” See Exhibit G.
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`28.
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`In addition, Applicant’s Goods are identical, closely related, or complementary to
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`the goods and services in Marriott’s BONVOY Registrations and Application. As one example,
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`the services in Marriott’s registration of the mark MARRIOTT BONVOY BOUTIQUES include
`
`
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`“Online retail store services featuring . . . personal care products”; and the Applications list
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`personal care products, namely, “Shampoos,” “Hair lotion,” “Lotions for cosmetic purposes,”
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`and “Bath gel.” As another example, Marriott’s application to register ALL-INCLUSIVE BY
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`MARRIOTT BONVOY includes “cosmetic body care treatments” and “beauty salon services,”
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`which are closely related to the Applicant’s personal care products.
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`29.
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`Applicant’s use of marks highly similar to Marriott’s BONVOY Marks and
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`BONVOY word mark for goods that are identical, closely related, or complementary to goods
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`and services offered by Marriott under those marks is likely to lead consumers mistakenly to
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`believe that Applicant’s Goods are associated with, licensed or endorsed by, connected with, or
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`affiliated with Marriott.
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`30. Marriott will be damaged by the registration of Applicant’s VOIBON Marks
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`because Applicant’s VOIBON Marks so closely resemble Marriott’s previously used and
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`registered BONVOY Marks and BONVOY word mark as to be likely to (a) cause confusion,
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`mistake, or deception in the minds of consumers as to the origin or source of Applicant’s Goods
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`or the affiliation between Applicant and Marriott, and (b) cause consumers to withhold trade
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`from Marriott, all in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
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`Marriott’s interests therefore fall within the zone of interests protected by Section 13, 15 U.S.C.
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`§ 1063, and Marriott is entitled to bring this statutory cause of action.
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`FOURTH GROUND FOR OPPOSITION
`LIKELIHOOD OF DILUTION
`15 U.S.C. § 1125(c)
`
`
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`31. Marriott incorporates each of the preceding paragraphs as if fully set forth here.
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`32. Marriott’s BONVOY word mark is distinctive in relation to Marriott’s goods and
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`services under the mark.
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`
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`33.
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`The general consuming public of the United States also widely recognizes
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`Marriott’s BONVOY word mark as designating Marriott as the source of its goods and services
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`under the mark. Marriott’s BONVOY word mark therefore is famous and distinctive within the
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`meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
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`34. Marriott’s BONVOY word mark has been famous within the meaning of 15
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`U.S.C. § 1125(c) since prior to the filing date of the Applications and any first date of bona fide
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`use in United States commerce that Applicant may be able to establish.
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`35. Marriott also has engaged in substantially exclusive use of its BONVOY word
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`mark.
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`36.
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`Applicant’s VOIBON Marks are highly similar to Marriott’s BONVOY word
`
`mark. The “VOIBON” element of Applicant’s VOIBON Marks merely flips the two components
`
`of Marriott’s BONVOY word mark, substituting the aurally equivalent and visually similar
`
`“VOI” for “VOY.”
`
`37.
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`Applicant’s use of Applicant’s VOIBON Marks in connection with Applicant’s
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`Goods likely would cause consumers to associate Applicant’s VOIBON Marks with Marriott’s
`
`BONVOY word mark.
`
`38.
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`Applicant’s VOIBON Marks therefore are likely to dilute the distinctiveness of
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`Marriott’s BONVOY word mark by eroding consumers’ identification of that mark with
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`Marriott, and by otherwise lessening the capacity of that mark to identify and distinguish
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`Marriott’s goods and services, in violation of 15 U.S.C. § 1125(c)(1).
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`39.
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`If the Applications matured into registrations, Applicant would obtain a