ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1367545
`06/26/2024
`
`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
`
`Palm Beach Tan, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`06/26/2024
`
`6321 CAMPUS CIRCLE, DR. EAST
`IRVING, TX 75063
`UNITED STATES
`
`/CATHRYN ANNE BERRYMAN/
`WINSTEAD, P.C.
`2728 N. HARWOOD STREET
`SUITE 500
`DALLAS, TX 75201
`UNITED STATES
`Primary email: cberryman@winstead.com
`Secondary email(s): NGRAHAM@WINSTEAD.COM, TMDOCK-
`ET@WINSTEAD.COM
`12147455172
`
`Applicant information
`
`Application no.
`
`97434896
`
`06/26/2024
`
`Opposition filing
`date
`
`Applicant
`
`Publication date
`
`02/27/2024
`
`Opposition period
`ends
`
`06/26/2024
`
`PBT Biotechnology Ltd.
`RM.1006-1009,F3 BLDG,PHASE II INNOVATION
`INDUSTRIAL PARK, HIGH-TECH ZONE,
`HEFEI, ANHUI, 231283
`CHINA
`
`Goods/services affected by opposition
`
`Class 005. First Use: Jan 1, 2022 First Use In Commerce: Jan 1, 2022
`All goods and services in the class are opposed, namely: Dietary and nutritional supplements
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`COMMON LAW TRADEMARK RIGHTS
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`7159926
`
`Register
`
`Principal
`
`Application date
`
`04/27/2021
`
`

`

`Registration date
`
`09/12/2023
`
`Word mark
`
`Design mark
`
`PBT
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Jan 19, 2015 First Use In Commerce: Jan 19,
`2015
`Providing incentive award program for customers through membership upgrades
`in the nature of loyalty points for purchase of a company's goods and services,
`all in the field of tanning salons for the purpose of promoting and rewarding loy-
`alty; membership club services providing incentives to members in the form of
`discounts in the field of tanning salons; franchise services, namely, offering con-
`sultation and assistance in business management, organization and promotion
`in the establishment and operation of tanning salons
`Class 044. First use: First Use: Jan 19, 2015 First Use In Commerce: Jan 19,
`2015
`Tanning salon services
`
`U.S. application
`no.
`
`97603153
`
`Application date
`
`09/22/2022
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`PBT PERSONALIZED BEAUTY THERAPY
`
`NONE
`
`Class 003. First use: First Use: None First Use In Commerce: None
`Cosmetic tanning preparations, namely, tanning sprays, creams, lotions and
`gels; cosmetic tanning preparations, namely, tanning skin creams, tanning
`sprays, lotions and tanning gels for accelerating, enhancing, intensifying and ex-
`tending tans; cosmetic tanning preparations, namely, after-tanning sprays and
`gels; body and facial bronzers for the skin
`Class 005. First use: First Use: None First Use In Commerce: None
`Dietary supplements
`Class 044. First use: First Use: None First Use In Commerce: None
`Providing health spa services, namely, cosmetic body care services; hydromas-
`sage services; alternative medicine detoxification services and stress relief ser-
`vices being massage services, and anti-inflammatory services being deep tissue
`massage services; health spa services for health and wellness of the body and
`spirit, namely, providing facial and body treatment services; sauna services; cos-
`metic body care services in the nature of non-surgical body contouring services,
`namely, cellulite reduction services and skin tightening services; collagen build-
`ing being cosmetic skin care therapy services; wellness services, namely, ultra-
`sound, radio frequency, infrared, and LED light therapies infrared sauna ser-
`vices and cosmetic skin care services; health care services, namely, whole body
`vibrational therapy services; providing information about dietary supplements
`and nutrition; tanning salon services
`
`

`

`U.S. registration
`no.
`
`7198721
`
`Register
`
`Principal
`
`Registration date
`
`10/24/2023
`
`Word mark
`
`Design mark
`
`MY PBT
`
`Application date
`
`12/08/2021
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the stylized design of a palm tree with six palm fronds sur-
`rounded by an incomplete circle that begins with the line that forms the right side
`of the trunk of the palm tree; to the left of the palm tree and circle is the italicized
`word "my" in lower case lettering, to the right of the palm tree and circle are the
`italicized lower case letters "pbt.".
`
`Class 009. First use: First Use: Mar 6, 2020 First Use In Commerce: Mar 6,
`2020
`Downloadable computer applications for use on mobile phones for managing
`personal tanning account information; Downloadable computer applications for
`use on mobile phones for updating and monitoring account billing information,
`scheduling appointments, viewing account rewards and balances, managing
`membership offers including free tanning services, tanning membership and
`product discounts and cash credits and finding salon locations
`Class 035. First use: First Use: Apr 9, 2018 First Use In Commerce: Apr 9, 2018
`Providing a website featuring management of personal tanning account informa-
`tion; Providing a website featuring updating and monitoring account billing in-
`formation, scheduling appointments, viewing account rewards and balances,
`managing membership offers including free services, discounts and cash cred-
`its, and finding salon locations
`
`U.S. registration
`no.
`
`5447369
`
`Register
`
`Principal
`
`Registration date
`
`04/17/2018
`
`Word mark
`
`Design mark
`
`PBT ONE
`
`Application date
`
`08/24/2017
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 035. First use: First Use: Aug 1, 2017 First Use In Commerce: Aug 1,
`2017
`Providing incentive award program for customers through membership upgrades
`in the field of tanning salons for the purpose of promoting and rewarding loyalty;
`membership club services providing incentives to members in the form of dis-
`counts in the field of tanning salons
`
`U.S. registration
`no.
`
`5078519
`
`Register
`
`Principal
`
`Registration date
`
`11/08/2016
`
`Application date
`
`11/21/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Word mark
`
`Design mark
`
`PBT A BETTER SHADE OF YOU
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of bolded, lower case letters "PBT" with a stylized palm tree
`to the left of "PBT". Underneath the letters and palm tree are the words "A BET-
`TER SHADE OF YOU".
`
`Class 044. First use: First Use: Jan 2015 First Use In Commerce: Jan 2015
`Tanning salon services
`
`U.S. registration
`no.
`
`6606691
`
`Register
`
`Principal
`
`Registration date
`
`01/04/2022
`
`Word mark
`
`Design mark
`
`PREMIER COLLECTION
`
`Application date
`
`02/10/2021
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 003. First use: First Use: Apr 2015 First Use In Commerce: Apr 2015
`Tanning creams, lotions and gels; skin creams, lotions and gels for accelerating,
`enhancing, intensifying and extending tans; after tanning gels, creams and lo-
`tions; body and cosmetic creams, lotions and gels; body and facial bronzers
`
`U.S. registration
`no.
`
`7281532
`
`Register
`
`Supplemental
`
`Registration date
`
`01/16/2024
`
`Word mark
`
`Design mark
`
`PREMIER COLLECTION
`
`Application date
`
`07/08/2022
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 005. First use: First Use: Nov 2022 First Use In Commerce: Nov 2022
`Dietary supplements
`
`U.S. registration
`no.
`
`4896368
`
`Register
`
`Principal
`
`Registration date
`
`02/02/2016
`
`Word mark
`
`PREMIER COLLECTION
`
`Application date
`
`11/17/2014
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the words "PREMIER COLLECTION". Centered above the
`words is a palm tree design with the left side of the trunk circling above the palm
`tree.
`
`Class 003. First use: First Use: Apr 2015 First Use In Commerce: Apr 2015
`Tanning creams, lotions and gels; skin creams, lotions and gels for accelerating,
`enhancing, intensifying and extending tans; after tanning gels, creams and lo-
`tions; body and cosmetic creams, lotions and gels; body and facial bronzers
`
`U.S. application
`no.
`
`98600435
`
`Application date
`
`06/13/2024
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of a stylized palm tree wherein the trunk of the tree forms an
`incomplete oval that surrounds the rest of the tree.
`
`Class 003. First use: First Use: Mar 1, 2015 First Use In Commerce: Mar 15,
`2015
`Tanning sprays, creams, mousses, lotions and gels; tanning skin creams, tan-
`ning sprays, lotions, and tanning gels for accelerating, enhancing, intensifying,
`and extending tans; after tanning creams, mousses, lotions and gels; body and
`facial bronzers; tanning sprays; tanning bronzer sprays mousses and gels: tan-
`ning solution to be used in spray tanning booths
`
`U.S. registration
`no.
`
`6945471
`
`Register
`
`Principal
`
`Registration date
`
`01/10/2023
`
`Application date
`
`08/06/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`AMETHYST PREMIER COLLECTION
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "AMETHYST" in stylized lettering written vertic-
`ally above a palm tree design with the right side of the trunk circling above the
`palm tree to the left of the words "PREMIER COLLECTION".
`
`Class 003. First use: First Use: Mar 28, 2022 First Use In Commerce: Mar 28,
`2022
`Tanning creams, lotions and gels; tanning skin creams, tanning lotions and tan-
`ning gels for accelerating, enhancing, intensifying and extending tans; after tan-
`
`

`

`ning gels; body and facial bronzers; all the foregoing containing amethyst
`
`U.S. registration
`no.
`
`5925077
`
`Register
`
`Principal
`
`Registration date
`
`12/03/2019
`
`Application date
`
`04/16/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`EMERALD PREMIER COLLECTION
`
`Description of
`mark
`
`Goods/services
`
`The mark consists of the word "EMERALD" in stylized lettering stacked above a
`palm tree design with the right side of the trunk circling above the palm tree and
`the words "PREMIER COLLECTION" written below.
`
`Class 003. First use: First Use: Apr 10, 2019 First Use In Commerce: Apr 10,
`2019
`Tanning creams, lotions and gels; skin creams, lotions and gels for accelerating,
`enhancing, intensifying and extending tans; after tanning gels, creams and lo-
`tions; body and cosmetic creams, lotions and gels; body and facial bronzers
`
`Attachments
`
`90674071#TMSN.png( bytes )
`97603153#TMSN.png( bytes )
`97162431#TMSN.png( bytes )
`87582840#TMSN.png( bytes )
`86461868#TMSN.png( bytes )
`90523188#TMSN.png( bytes )
`97495325#TMSN.png( bytes )
`86456808#TMSN.png( bytes )
`98600435#TMSN.png( bytes )
`90097980#TMSN.png( bytes )
`88388414#TMSN.png( bytes )
`47226-B00004 - Notice of Petition for Opposition - PBT Biotechnology Ltd. -
`Zhirong Liu FILED 6.26.2024.pdf(209297 bytes )
`EXHIBIT A 97603153 suspension letter 4894-4377-3644 v.1.pdf(40327 bytes )
`EXHIBIT B 97434896 PBT BIOTECH TESS 4855-5277-0252 v.1.pdf(2514502
`bytes )
`EXHIBIT C 79312312 PBT BIOMIMETIC DERMOCOSMETICS 4874-4787-4764
`v.2.p df(3704090 bytes )
`EXHIBIT D ttabvue-91282604-OPP-5 ORDER OF DEFAULT JUDG-
`MENT.pdf(71196 bytes )
`EXHIBIT E ttabvue-91282604-OPP-1 PBT Notice of Petition to Oppose PBT
`BIOMIMETRIC DERMACOSMETICS 4853-4882-2220 v.1.pdf(6044494 bytes )
`EXHIBIT F 97434891 TESS Records for PBT BIOTECH Aban-
`doned.pdf(1381214 bytes )
`
`Signature
`
`/Cathryn A. Berryman/
`
`Name
`
`Date
`
`Cathryn Anne Berryman, Attorney of Record, Texas Bar member
`
`06/26/2024
`
`

`

`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`May 30, 2022
`
`PBT BIOTECH
`
`
`In the Matter of Serial No. 97434896
`
`Date of Filing:
`
`Mark In Issue:
`
`
`
`PALM BEACH TAN, INC.
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`PBT BIOTECHNOLOGY, LTD.
`
`
`
`
`
`
`Respondent
`
`
`
`
`Box TTAB
`Commission for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§ Opposition No. __________
`§
`§ ESTTA Tracking No.
`§ ESTTA1343016
`§
`§
`§
`
`NOTICE OF PETITION FOR OPPOSITION
`
`
`
`
`Petitioner, Palm Beach Tan, Inc., a Texas corporation, with a place of business at
`
`6321 Campus Circle Dr. East, Irving, Texas 75063, believes that it is or will be damaged
`
`by the registration of the mark sought in Application Serial No. 97434896 (the
`
`“Respondent’s Application”) for the mark PBT BIOTECH and hereby petitions to oppose
`
`same.
`
`
`
`The applicant of the mark in issue is shown as the Respondent, PBT
`
`Biotechnology, Ltd. (“Respondent”), a limited company under the laws of China, with a
`
`place of business at Rm. 1006-1009, F3 Bldg. Phase II Innovation, Industrial Park, High-
`
`tech Zone, Hefei, Anhui, China 231283. The domestic representative for Respondent is
`
`Zhirong Liu, 61-35 98th Street, Apt. 6L, Rego Park, New York USA 11374.
`
`
`
`
`
`1
`
`

`

`
`
`
`
`As grounds for this petition, it is alleged that:
`
`1.
`
`Petitioner is the owner of common law and statutory rights in and to a
`
`family of marks containing PBT (collectively the “PBT Marks”) used in interstate
`
`commerce within the United States for cosmetic skincare goods and services and tanning
`
`and sunless tanning-related goods and services classified in multiple classes, including
`
`International Classes 003, 005, 009, 035 and 044 (the “Subject Classes”). The PBT
`
`Marks are subject to the following active United States registrations and applications for
`
`goods and services in the Subject Classes, which are valid and subsisting as of the filing
`
`date and which are owned in the name of Petitioner (collectively, the “PBT Mark
`
`Registrations/Application”):
`
`(a)
`
`US Registration No. 7159926, registered Sept. 12, 2023, US Ser.
`
`No. 90/674071, filed April 27, 2021, for the mark PBT (the “PBT Mark
`
`Application”) under Section 1(a) basis for “IC 035. US 100 101 102. G & S:
`
`Providing incentive award program for customers through membership upgrades
`
`in the nature of loyalty points for purchase of a company's goods and services, all
`
`in the field of tanning salons for the purpose of promoting and rewarding loyalty;
`
`membership club services providing incentives to members in the form of
`
`discounts in the field of tanning salons; franchise services, namely, offering
`
`consultation and assistance in business management, organization and promotion
`
`in the establishment and operation of tanning salons. FIRST USE: 20150119.
`
`FIRST USE IN COMMERCE: 20150119”, “IC 040. US 100 103 106. G & S: Air
`
`brushing services. FIRST USE: 20150119. FIRST USE IN COMMERCE:
`
`20150119”, and “IC 044. US 100 101. G & S: Tanning salon services. FIRST
`
`USE: 20150119. FIRST USE IN COMMERCE: 20150119.”
`
`(b)
`
`US Ser. No. 97603153 filed September 22, 2022, for the mark PBT
`
`PERSONALIZED BEAUTY THERAPY, under Section 1(b) basis for “IC 003.
`
`US 001 004 006 050 051 052. G & S: Tanning sprays, creams, lotions and gels;
`
`tanning skin creams, tanning sprays, lotions and tanning gels for accelerating,
`
`enhancing, intensifying and extending tans; after tanning sprays and gels; body
`
`and facial bronzers,” “IC 005. US 005 006 018 044 046 051 052. G & S: Dietary
`
`supplements,” and “IC 044. US 100 101. G & S: Providing health spa services,
`
`
`
`2
`
`

`

`namely, cosmetic body care services; hydromassage services; wellness services;
`
`detoxification and stress relief services, massage services, anti-inflammatory
`
`services; facial and body treatment services; sauna services; body contouring
`
`services, namely, cellulite
`
`reduction services, skin
`
`tightening services;
`
`nonsurgical fat elimination services; collagen building skin therapy services; anti-
`
`aging therapy services; wellness services, namely, ultrasound, radio frequency,
`
`infrared, led and red light therapies; skin care services; whole body vibrational
`
`therapy services; providing information about dietary supplements and nutrition;
`
`tanning salon services.” (“PBT Mark Application”)
`
`(c)
`
`US Reg. No. 7198721, registered Oct. 24, 2023, US Ser. No.
`
`97162431 filed December 8, 2021, for the design mark
`
`, under
`
`Section 1(a) basis, for “IC 009. US 021 023 026 036 038. G & S: Downloadable
`
`mobile applications portable electronic devices for management of personal
`
`tanning account
`
`information; Downloadable mobile applications portable
`
`electronic devices for updating and monitoring account billing information,
`
`scheduling appointments, viewing account rewards and balances, managing
`
`membership offers including free services, discounts and cash credits, and finding
`
`salon locations. FIRST USE: 20200306. FIRST USE IN COMMERCE:
`
`20200306,” and “IC 035. US 100 101 102. G & S: Providing an online portal for
`
`management of personal tanning account information; Providing an online portal
`
`for updating and monitoring account billing
`
`information,
`
`scheduling
`
`appointments, viewing account rewards and balances, managing membership
`
`offers including free services, discounts and cash credits, and finding salon
`
`locations. FIRST USE: 20180409. FIRST USE IN COMMERCE: 20180409.”
`
`(d)
`
`US Reg. No. 5447369, registered April 17, 2018, US Ser. No.
`
`87582840 filed August 24, 2017, for the mark PBT ONE, under Section 1(a)
`
`basis, for “IC 035. US 100 101 102. G & S: Providing incentive award program
`
`for customers through membership upgrades in the field of tanning salons for the
`
`purpose of promoting and rewarding loyalty; membership club services providing
`
`incentives to members in the form of discounts in the field of tanning salons.
`
`FIRST USE: 20170801. FIRST USE IN COMMERCE: 20170801.” This
`
`
`
`3
`
`

`

`registration has been renewed effective as of April 27, 2023 and this mark has
`
`become incontestable pursuant to the Board’s acceptance of Section 15
`
`declaration.
`
`(e)
`
`US Reg. No. 5078519, registered Nov. 8, 2016, US Ser. No.
`
`86/461868, filed November 21, 2014, for the design mark
`
`, under
`
`Section 1(a) basis, for “IC 044. US 100 101. G & S: Tanning salon services.
`
`FIRST USE: 20150100. FIRST USE IN COMMERCE: 20150100.” This
`
`registration has been renewed effective as of April 27, 2023 and this mark has
`
`become incontestable pursuant to the Board’s acceptance of Section 15
`
`declaration.
`
`2.
`
`Petitioner has cobranded its cosmetic skincare goods and services and
`
`tanning and sunless tanning-related goods and services skin care offered to the public
`
`under the PBT Marks with other registered marks, including the marks PALM BEACH
`
`TAN and PREMIER COLLECTION and the design mark
`
` , and variations
`
`thereof (“PBT Co-Branded Marks”), which have been used in interstate commerce within
`
`the United States for cosmetic skincare goods and tanning and sunless tanning-related
`
`goods in International Classes 003 and 005 since as early as 2015. The PBT Co-Branded
`
`Marks are subject in part to the following active United States registrations and
`
`applications, which are valid and subsisting as of the filing date and which are owned in
`
`the name of Petitioner:
`
`(a)
`
`US Reg. No. 6606691, registered Jan. 4, 2022, US Ser. No.
`
`90523188, filed Feb. 10, 2021, for the mark PREMIER COLLECTION, under
`
`Section 1(a) basis for “IC003 Tanning creams, lotions and gels; skin creams,
`
`lotions and gels for accelerating, enhancing, intensifying and extending tans; after
`
`tanning gels, creams and lotions; body and cosmetic creams, lotions and gels;
`
`body and facial bronzers. FIRST USE: 20150400. FIRST USE IN COMMERCE:
`
`20150400.
`
`(b)
`
`US Reg. No. 7281532, registered Feb. 16, 2024, US Ser. No.
`
`97495325, filed July 8, 2022, for the mark PREMIER COLLECTION, under
`
`
`
`4
`
`

`

`Section 1(a) basis for “IC005 dietary supplements. FIRST USE: 20221100.
`
`FIRST USE IN COMMERCE: 20221100.”
`
`(c)
`
`US Reg. No. 4896368, registered Feb. 2, 2016, US Ser. No.
`
`86456808, filed Nov. 17, 2014, for the design mark
`
` under
`
`Section 1(a) basis for “IC 003: Tanning creams, lotions and gels; skin creams,
`
`lotions and gels for accelerating, enhancing, intensifying and extending tans; after
`
`tanning gels, creams and lotions; body and cosmetic creams, lotions and gels;
`
`body and facial bronzers. FIRST USE: 20150400. FIRST USE IN COMMERCE:
`
`20150400.” This registration has been renewed effective as of Aug. 19, 2021 and
`
`this mark has become incontestable pursuant to the Board’s acceptance of Section
`
`15 declaration.
`
`(d) US Ser. No. 98600435, filed on June 13, 2024, for the design mark
`
` , under Section 1(a) basis for “ IC003 Tanning sprays, creams, mousses,
`
`lotions and gels; tanning skin creams, tanning sprays, lotions, and tanning gels for
`
`accelerating, enhancing, intensifying, and extending tans; after tanning creams,
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`mousses, lotions and gels; body and facial bronzers; tanning sprays; tanning
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`bronzer sprays mousses and gels: tanning solution to be used in spray tanning
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`booths. FIRST USE: 20150301. FIRST USE IN COMMERCE: 20150301.
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`(e)
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`US Reg. No. 6945471, registered Jan. 10, 2023, US Ser. No.
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`90097980,
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`filed
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`Aug.
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`6,
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`2020,
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`for
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`the
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`design
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`mark
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`
`
`
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`5
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`

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`under Section 1(a) basis, for “IC 003: Tanning creams, lotions and gels; tanning
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`skin creams, tanning lotions and tanning gels for accelerating, enhancing,
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`intensifying and extending tans; after tanning gels; body and facial bronzers; all
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`the foregoing containing amethyst. FIRST USE: 20220328. FIRST USE IN
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`COMMERCE: 20220328.
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`
`
`(f)
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`US Reg. No. 5925077, registered Dec. 3, 2019, US Ser. No.
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`88388414, filed April 16, 2019, for the design mark
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`
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`under Section 1(a) basis, for “IC 003: Tanning creams, lotions and gels; skin
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`creams, lotions and tanning gels for accelerating, enhancing, intensifying and
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`extending tans; after tanning gels, creams and lotions; body and cosmetic creams,
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`lotions and gels; body and facial bronzers. FIRST USE: 20190410. FIRST USE
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`IN COMMERCE: 20190410.
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`3.
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`Petitioner has adopted and used the acronym and abbreviation PBT in
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`connection with its business and related goods and services, including cosmetic skincare
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`goods and tanning and sunless tanning goods and services in the Subject Classes for
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`decades in the United States. PBT, the PBT Marks and the PBT Co-Branded Marks are
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`recognized as cosmetic skin care goods and tanning and sunless tanning goods and
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`services manufactured and sold or offered for sale by Petitioner among consumers and
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`the general public in the United States. Goods and services bearing PBT and certain of
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`the PBT Marks and the PBT Co-Branded Marks are marketed and sold, and have been
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`6
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`

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`continuously marketed and sold, in interstate commerce in the United States since as
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`early as 2015.
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`4.
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`By virtue of extensive marketing and advertising expenditures for several
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`decades, Petitioner has established significant goodwill associated with PBT and certain
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`of the PBT Marks and the PBT Co-Branded Marks for its cosmetic skincare goods and
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`tanning and sunless tanning goods and services in the Subject Classes in the United
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`States. PBT and certain of the PBT Marks and the PBT Co-Branded Marks are widely
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`recognized in the general consuming public within the United States.
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`5.
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` Petitioner is likely to be damaged by the registration on the Principal
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`Register and the issuance of a certificate of registration of the mark in issue and
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`Petitioner's legal rights to obtain and use trademark applications for Petitioner’s PBT
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`Marks, including the pending PBT Mark Application, are likely to be impaired thereby. A
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`copy of the Office Action dated August 22, 2023, issued in Petitioner’s pending PBT
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`Mark Application currently pending
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`in which Respondent’s Application and
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`Respondent’s mark at issue is cited as the basis for rejection of the mark PBT on grounds
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`of priority and likelihood of confusion by the USPTO examiner, is found in the TESS
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`record attached hereto as Exhibit A.
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`6.
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`Petitioner is likely to be damaged by the registration on the Principal
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`Register and the issuance of a certificate of registration of the mark in issue in
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`Respondent’s Application, and Petitioner's legal rights to obtain any trademark
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`application for marks containing PBT, including the PBT Marks, for any cosmetic skin
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`care goods and dietary supplements or related goods and services in International Classes
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`003 and 005 and to license the use of PBT and the PBT Marks for the same or related
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`goods offered to the public in connection with any cosmetic skin care goods and dietary
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`supplements are likely to be impaired by the issuance of a certificate of registration for
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`the mark in issue in Respondent’s Application by Respondent.
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`
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`7.
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`Petitioner seeks opposition of the registration of the mark at issue on the
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`Principal Register on the grounds that the mark PBT BIOTECH is nearly identical and
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`confusingly similar in appearance, sound, connotation and meaning to PBT and the PBT
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`Marks previously used and/or registered in the United States on or in conjunction with
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`Petitioner’s goods and services at least as early as 2015, as to be likely, when used on or
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`7
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`in connection with dietary and nutritional supplements in International Class 005, as
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`currently listed on Respondent’s Application, to cause confusion or to cause mistake to
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`deceive.
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`8.
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`Petitioner’s goods and services and Respondent’s goods are related
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`because the goods offered or intended to be offered for sale by Respondent are the same
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`or related to Petitioner’s cosmetic skincare goods and dietary supplements, and related to
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`tanning and sunless tanning related goods and services, offered for sale or intended to be
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`offered for sale to consumers in Petitioner’s corporate and franchised salons. Petitioner’s
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`goods and Respondent’s goods are related because dietary supplements are classified in
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`the same International Class 005, which goods PBT offers under its PBT Co-Branded
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`Marks, such that consumers would expect to see the same goods offered by the same
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`source (i.e., retail and online stores, salons and spas). Petitioner’s goods and skin care
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`products (as well as tanning and sunless tanning products) and Respondent’s goods are
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`related because both parties target the same consumers seeking wellness and spa-related
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`goods and services. Notably PBT in fact does offer the same or similar dietary
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`supplements to consumers using certain of the PBT Co-Branded Marks, and thus its
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`channels of trade are overlapping (or at a least closely related).
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`9.
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`Such likelihood of confusion is heightened since the primary portion of
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`Respondent’s mark at issue PBT is identical to PBT and the primary portion of the PBT
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`Marks used by Petitioner. In fact, the term BIOTECH is merely descriptive of
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`Respondent’s goods, thus carrying less weight in a determination of likelihood of
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`confusion, and Respondent has disclaimed any claim of exclusive rights in and to the
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`term BIOTECH apart from the mark at issue, as shown. See true and correct copy of the
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`TESS records for Respondent’s Application in part showing Respondent’s disclaimer
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`attached as Exhibit B hereto. Adding merely descriptive terms to PBT will not serve to
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`distinguish Respondent’s mark at issue from Petitioner’s PBT and PBT Marks in the
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`minds of the consuming public.
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`10.
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`A finding of a likelihood of confusion between Petitioner’s PBT and
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`Respondent’s Mark is supported by several Section 2(d) refusals and suspension actions
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`of different USPTO examiners who have reviewed Petitioner’s PBT Mark Application
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`and Respondent’s Application as well as Respondent’s now abandoned US Ser. No.
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`
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`8
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`

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`97434891 for the same mark PBT BIOTECH (the “Respondent’s Abandoned Mark”) and
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`the now abandoned US Ser. No. 79312312 for the cited mark PBT BIOMIMETIC
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`DERMOCOSMETICS (the “Cited Mark”), and in the case of the Cited Mark, an order of
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`abandonment entered by the Board in the Opposition No. 91282604 filed by Petitioner on
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`or about December 29, 2022, and terminated by the entry of the Board’s order to sustain
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`such opposition on or about March 31, 2023 (the “Cited Mark Opposition”).
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`11.
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`In the prosecution of Respondent’s Application, the USPTO Examiner
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`suspended this application because her search of the USPTO database of registered and
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`pending mark found the then prior-filed pending application for the Cited Mark and the
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`Cited Mark would bar registration under Trademark Act Section 2(d) for likelihood of
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`confusion. Such likelihood of confusion was heightened since the primary portion of
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`Respondent’s mark at issue PBT is identical to the primary portion of the Cited Mark
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`PBT since that Cited Mark applicant disclaimed any claim of exclusive rights in and to
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`the term BIOMIMETIC DERMOCOSMETICS apart from the mark at issue as shown.
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`The Cited Mark also covered the same or related goods, including facial cleansers and
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`treatments, dietary food, and food supplements in International Classes 003 and 005. See
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`Suspension Notice dated March 22, 2023 in Exhibit B. Respondent’s Application was
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`removed from suspension by Respondent’s notice of abandonment of the Cited Mark and
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`approved for publication. See Respondent’s Response to Suspension Inquiry dated
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`September 27, 2023. dated March 22, 2023 in Exhibit B. However, such abandonment
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`did not result from Respondent’s opposition of the Cited Mark; instead, such
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`abandonment occurred after PBT successfully opposed the Cited Mark application on the
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`ground of priority of the PBT Marks and likelihood of confusion. See true and correct
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`copies of the judgement of default and Petitioner’s notice of opposition from the TTAB
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`records for the Cited Mark Opposition attached as Exhibit D and E hereto.
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`12. Likewise, in prosecution of the Cited Mark, the USPTO Examiner issue a
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`partial refusal on the grounds that three of the PBT Marks would bar registration under
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`Trademark Act Section 2(d) for likelihood of confusion. The USTO Examiner found that
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`the Cited Mark PBT BIOMIMETIC DERMOCOSTMETICS and Petitioner’s PBT ONE
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`mark, PBT A BETTER SHADE OF YOU design mark and PBT mark were so similar
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`and the goods were the same or related that it was likely consumer would be confused,
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`
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`9
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`mistaken or deceived as to the commercial source of the goods and services offered under
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`the Cited Mark and Petitioner’s PBT Marks, respectively. See true and correct copy of
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`the TESS records for the Cited Mark in part showing Office Action dated December 6,
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`2021, attached as Exhibit C hereto. While the Cited Mark’s applicant initially overcame
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`the examiner’s rejection, the Board entered a judgement of default refusing to register the
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`Cited Mark and sustaining Petitioner’s opposition thereof based on priority and
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`likelihood of confusion between the Cited Mark and Petitioner’s PBT Marks. See true
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`and correct copies of the judgement of default and Petitioner’s notice of opposition from
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`the TTAB records for the Cited Mark Opposition in Exhibit D and E hereto. This Board
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`order in effect affirms Petitioner’s stated claims in its petition to opposed, namely the
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`likelihood of confusion between the Cited Mark and Petitioner’s PBT Marks based upon
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`(a) the marks being nearly identical and confusingly similar in appearance, sound,
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`connotation and meaning, when used with cosmetic skin care goods, (b) the goods being
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`the same or related, (c) the goods being offered or intended to be offered for sale in the
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`same channels of trade, and (d) the parties targeting the same customers seeking cosmetic
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`skin care goods, with such confusion being heightened by the primary portion of the
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`marks PBT being identical (despite other descriptive terms), and the likely damages to be
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`incurred by PBT, including its ability to continue to use, develop and expand the PBT
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`Marks and any other marks containing PBT, if the Cited Mark issued to registration. See
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`the default judgement order entered March 31, 2023, and Petitioner’s claims in its notice
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`of opposition set forth in Exhibit D and E hereto. This ruling supports a similar finding
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`of a likelihood of confusion between Respondent’s Mark and Petitioner’s Mark in the
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`opposition at issue.
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`13.
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`Likewise, in the prosecution of Respondent’s Abandoned Mark, the
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`USPTO Examiner rejected Respondent’s application for the same mark at issue PBT
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`BIOTECH for anti-aging serums in International Class 003 because her search of the
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`USPTO database of registered and pending mark found the four registrations of the PBT
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`Marks, namely PBT A BETTER SHADE OF YOU des