ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1421953
`03/17/2025
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Entity
`
`Address
`
`e.l.f. Cosmetics, Inc.
`
`Corporation
`
`570 10TH STREET
`OAKLAND, CA 94607
`UNITED STATES
`
`Incorporated or
`registered in
`
`DE
`
`Attorney informa-
`tion
`
`DANIEL MICHAEL NUZZACI
`AMSTER ROTHSTEIN & EBENSTEIN, LLP
`405 LEXINGTON AVENUE
`FLOOR 48
`NEW YORK, NY 10174
`UNITED STATES
`Primary email: dnuzzaci@arelaw.com
`Secondary email(s): dnuzzaci@gmail.com
`2123368045
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`98652647
`
`Opposition filing
`date
`
`Applicant
`
`03/17/2025
`
`Publication date
`
`02/25/2025
`
`Opposition period
`ends
`
`03/27/2025
`
`Lin, Dongyan
`RONGDONGXILIN VLG, RONGCHENG DIST
`NO.16-16, ZHONGXINWEI
`JIEYANG, GUANGDONG, 522000
`China
`
`Goods/services affected by opposition
`
`Class 003. First Use: May 10, 2024 First Use In Commerce: May 10, 2024
`All goods and services in the class are opposed, namely: Cotton wool for cosmetic purposes; Ethere-
`al oils; Hair lotion; Hair lotions; Make-up preparations; Make-up removing preparations; Nail varnish;
`Nail varnish for cosmetic purposes; Nail varnishes
`
`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
`
`
`
`Filing date:
`
`ESTTA1421953
`03/17/2025
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Entity
`
`Address
`
`e.l.f. Cosmetics, Inc.
`
`Corporation
`
`570 10TH STREET
`OAKLAND, CA 94607
`UNITED STATES
`
`Incorporated or
`registered in
`
`DE
`
`Attorney informa-
`tion
`
`DANIEL MICHAEL NUZZACI
`AMSTER ROTHSTEIN & EBENSTEIN, LLP
`405 LEXINGTON AVENUE
`FLOOR 48
`NEW YORK, NY 10174
`UNITED STATES
`Primary email: dnuzzaci@arelaw.com
`Secondary email(s): dnuzzaci@gmail.com
`2123368045
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`98652647
`
`Opposition filing
`date
`
`Applicant
`
`03/17/2025
`
`Publication date
`
`02/25/2025
`
`Opposition period
`ends
`
`03/27/2025
`
`Lin, Dongyan
`RONGDONGXILIN VLG, RONGCHENG DIST
`NO.16-16, ZHONGXINWEI
`JIEYANG, GUANGDONG, 522000
`China
`
`Goods/services affected by opposition
`
`Class 003. First Use: May 10, 2024 First Use In Commerce: May 10, 2024
`All goods and services in the class are opposed, namely: Cotton wool for cosmetic purposes; Ethere-
`al oils; Hair lotion; Hair lotions; Make-up preparations; Make-up removing preparations; Nail varnish;
`Nail varnish for cosmetic purposes; Nail varnishes
`
`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
`
`
`
`Marks cited by opposer as basis for opposition
`
`1938 (Fed. Cir. 2009)
`
`U.S. registration
`no.
`
`6511960
`
`Register
`
`Principal
`
`Registration date
`
`10/05/2021
`
`Word mark
`
`Design mark
`
`E.L.F.ING AMAZING
`
`Application date
`
`06/19/2019
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Class 003. First use: First Use: Aug 2019 First Use In Commerce: Aug 2019
`Cosmetics; cosmetics and personal care products, namely, eye pencils, eye-
`liners, eye shadows, blush, lip gloss, lipstick, lip balm, lip pencils, lip liner, mas-
`caras, nail polish, face and body glitter, face and body lotions, face and body
`creams, face powder, facial moisturizers, concealers, soaps; essential oils; hair
`lotions; make-up kits comprised primarily of lipstick, lip gloss, nail polish, blush,
`eyeliner, eye shadow primer, face make-up primer, false eyelashes and also
`containing make-up brushes and eyebrow stencils
`Class 008. First use: First Use: Aug 2019 First Use In Commerce: Aug 2019
`Eyelash curlers; tweezers; manicure implements, namely, nail files, orange
`sticks, nail clippers, cuticle pushers, nail and cuticle scissors; manicure sets;
`pedicure sets; emery boards
`Class 018. First use: First Use: Aug 2019 First Use In Commerce: Aug 2019
`Cosmetic carrying cases sold empty
`Class 021. First use: First Use: Aug 2019 First Use In Commerce: Aug 2019
`Cosmetic brushes; applicator sticks for applying make-up
`
`U.S. registration
`no.
`
`7157898
`
`Register
`
`Principal
`
`Registration date
`
`09/05/2023
`
`Word mark
`
`Design mark
`
`E.L.F. SKIN
`
`Application date
`
`12/18/2020
`
`Foreign priority
`date
`
`NONE
`
`
`
`Description of
`mark
`
`Goods/services
`
`Class 003. First use: First Use: May 24, 2021 First Use In Commerce: May 24,
`2021
`Lip balm; face, body, eye, and hand lotions; face, body, eye, and hand creams;
`face, body, eye, and hand moisturizers; skin cleansers; exfoliators, namely, ex-
`foliating creams and scrubs for cosmetic purposes; skin care scrubs, namely, fa-
`cial scrubs; toners, namely, skin toners; beauty serums; non-medicated personal
`care products, namely, skin lotions, skin cream, skin moisturizers, exfoliating
`scrubs for cosmetic purposes, skin mists, beauty serums, skin toners
`
`U.S. registration
`no.
`
`3106703
`
`Register
`
`Principal
`
`Registration date
`
`06/20/2006
`
`Word mark
`
`Design mark
`
`E.L.F.
`
`Application date
`
`07/06/2005
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Class 003. First use: First Use: Jun 15, 2004 First Use In Commerce: Jun 15,
`2004
`COSMETICS AND PERSONAL CARE PRODUCTS, NAMELY, EYE PENCIL,
`EYE SHADOW, BLUSH, LIP GLOSS, LIPSTICK, LIP BALM, NAIL POLISH, FA-
`CIAL MOISTURIZER, CONCEALER
`Class 018. First use: First Use: Dec 1, 2004 First Use In Commerce: Dec 1,
`2004
`COSMETIC BAGS SOLD EMPTY
`Class 021. First use: First Use: Apr 1, 2005 First Use In Commerce: Apr 1, 2005
`COSMETIC BRUSHES; APPLICATOR STICKS FOR APPLYING MAKEUP
`
`U.S. registration
`no.
`
`6752261
`
`Register
`
`Principal
`
`Registration date
`
`06/07/2022
`
`Application date
`
`05/28/2021
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`E.L.F. IS FOR EVERY EYE, LIP AND FACE
`
`
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`Class 003. First use: First Use: Jun 4, 2019 First Use In Commerce: Jun 4, 2019
`COSMETICS; COSMETICS AND PERSONAL CARE PRODUCTS, namely,
`EYE PENCILS, EYELINERS, EYE SHADOWS, BLUSH, LIP GLOSS, LIP-
`STICK, LIP BALM, LIP PENCILS, LIP LINER, MASCARAS, NAIL POLISH,
`FACE AND BODY GLITTER, FACE AND BODY LOTIONS, FACE AND BODY
`CREAMS, FACE POWDER, FACIAL MOISTURIZERS, CONCEALERS, MAKE-
`UP KITS COMPRISED PRIMARILY OF LIPSTICK, LIP GLOSS, NAIL POLISH,
`BLUSH, EYELINER, EYE SHADOW PRIMER, FACE MAKE-UP PRIMER,
`FALSE EYELASHES AND ALSO CONTAINING MAKE-UP BRUSHES AND
`EYEBROW STENCILS
`
`U.S. registration
`no.
`
`4889008
`
`Register
`
`Principal
`
`Registration date
`
`01/19/2016
`
`Word mark
`
`Design mark
`
`E.L.F.
`
`Application date
`
`06/09/2015
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Class 003. First use: First Use: Jun 2004 First Use In Commerce: Jun 2004
`COSMETICS; COSMETICS AND PERSONAL CARE PRODUCTS, NAMELY,
`EYE PENCILS, EYELINERS, EYE SHADOWS, BLUSH, LIP GLOSS, LIP-
`STICK, LIP BALM, LIP PENCILS, LIP LINER, MASCARAS, NAIL POLISH,
`EMERY BOARDS, FACE AND BODY GLITTER, FACE AND BODY LOTIONS,
`FACE AND BODY CREAMS, FACE POWDER, FACIAL MOISTURIZERS,
`CONCEALERS, SOAPS; ESSENTIAL OILS; HAIR LOTIONS; MAKE-UP KITS
`COMPRISED PRIMARILY OF LIPSTICK, LIP GLOSS, NAIL POLISH, BLUSH,
`EYELINER, EYE SHADOW PRIMER, FACE MAKE-UP PRIMER, FALSE EYE-
`LASHES AND ALSO CONTAINING MAKE-UP BRUSHES AND EYEBROW
`STENCILS
`Class 008. First use: First Use: Jun 30, 2004 First Use In Commerce: Jun 30,
`2004
`EYELASH CURLERS; TWEEZERS; MANICURE IMPLEMENTS, NAMELY,
`NAIL FILES, ORANGE STICKS, NAIL CLIPPERS, CUTICLE PUSHERS, NAIL
`AND CUTICLE SCISSORS; MANICURE SETS; PEDICURE SETS
`
`
`
`Class 018. First use: First Use: Dec 1, 2004 First Use In Commerce: Dec 1,
`2004
`COSMETIC CARRYING CASES SOLD EMPTY
`Class 021. First use: First Use: Apr 1, 2005 First Use In Commerce: Apr 1, 2005
`COSMETIC BRUSHES; APPLICATOR STICKS FOR APPLYING MAKE-UP
`Class 035. First use: First Use: Apr 2013 First Use In Commerce: Apr 2013
`RETAIL STORE SERVICES AND ON-LINE RETAIL STORE SERVICES FEA-
`TURING COSMETICS, PERSONAL CARE PRODUCTS AND BEAUTY
`PRODUCTS, MANICURE IMPLEMENTS, MANICURE SETS, PEDICURE
`SETS, EYELASH CURLERS, TWEEZERS, COSMETIC BRUSHES, APPLICAT-
`OR STICKS FOR APPLYING MAKE-UP
`
`U.S. registration
`no.
`
`7001044
`
`Register
`
`Principal
`
`Registration date
`
`03/14/2023
`
`Word mark
`
`Design mark
`
`E.L.F.
`
`Application date
`
`09/17/2020
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Class 014. First use: First Use: Oct 2020 First Use In Commerce: Oct 2020
`Adhesive face and body jewelry
`
`U.S. registration
`no.
`
`7398730
`
`Register
`
`Principal
`
`Registration date
`
`05/28/2024
`
`Word mark
`
`Design mark
`
`E.L.F. SKIN
`
`Application date
`
`05/04/2023
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Class 005. First use: First Use: May 2022 First Use In Commerce: May 2022
`Acne treatment preparations; Medicated skin care preparations
`
`
`
`U.S. registration
`no.
`
`4087106
`
`Register
`
`Principal
`
`Registration date
`
`01/17/2012
`
`Word mark
`
`Design mark
`
`E.L.F. EYES LIPS FACE
`
`Application date
`
`05/20/2011
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Class 008. First use: First Use: Jun 30, 2004 First Use In Commerce: Jun 30,
`2004
`Eyelash curlers, tweezers; manicure implements, namely, [nail files,] orange
`sticks,[ nail clippers, cuticle pushers, nail and cuticle scissors; manicure sets;
`pedicure sets]
`Class 021. First use: First Use: Apr 1, 2005 First Use In Commerce: Apr 1, 2005
`Cosmetic brushes; applicator sticks for applying makeup
`
`U.S. registration
`no.
`
`5191864
`
`Register
`
`Principal
`
`Registration date
`
`04/25/2017
`
`Word mark
`
`Design mark
`
`E.L.F. EYES LIPS FACE
`
`Application date
`
`06/09/2015
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`Class 003. First use: First Use: Jun 2004 First Use In Commerce: Jun 2004
`COSMETICS; COSMETICS AND PERSONAL CARE PRODUCTS, NAMELY,
`EYE PENCILS, EYELINERS, EYE SHADOWS, BLUSH, LIP GLOSS, LIP-
`STICK, LIP BALM, LIP PENCILS, LIP LINER, MASCARAS, NAIL POLISH,
`EMERY BOARDS, FACE AND BODY GLITTER, FACE AND BODY LOTIONS,
`FACE AND BODY CREAMS, FACE POWDER, FACIAL MOISTURIZERS,
`CONCEALERS, SOAPS; ESSENTIAL OILS; HAIR LOTIONS; MAKE-UP KITS
`COMPRISED PRIMARILY OF LIPSTICK, LIP GLOSS, NAIL POLISH, BLUSH,
`EYELINER, EYE SHADOW PRIMER, FACE MAKE-UP PRIMER, FALSE EYE-
`LASHES AND ALSO CONTAINING MAKE-UP BRUSHES AND EYEBROW
`STENCILS
`
`
`
`Class 018. First use: First Use: Dec 1, 2004 First Use In Commerce: Dec 1,
`2004
`COSMETIC CARRYING CASES SOLD EMPTY
`Class 035. First use: First Use: Apr 2013 First Use In Commerce: Apr 2013
`RETAIL STORE SERVICES AND ON-LINE RETAIL STORE SERVICES FEA-
`TURING COSMETICS, PERSONAL CARE PRODUCTS AND BEAUTY
`PRODUCTS, MANICURE IMPLEMENTS, MANICURE SETS, PEDICURE
`SETS, EYELASH CURLERS, TWEEZERS, COSMETIC BRUSHES, APPLICAT-
`OR STICKS FOR APPLYING MAKE-UP
`
`Attachments
`
`88479455#TMSN.png( bytes )
`90392610#TMSN.png( bytes )
`78664823#TMSN.png( bytes )
`90741742#TMSN.png( bytes )
`86656853#TMSN.png( bytes )
`90188051#TMSN.png( bytes )
`97921107#TMSN.png( bytes )
`85325813#TMSN.png( bytes )
`86656868#TMSN.png( bytes )
`Notice of Opposition ELG.pdf(160592 bytes )
`
`Signature
`
`/Jamie Zipper/
`
`Name
`
`Date
`
`Jamie Zipper
`
`03/17/2025
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of:
`Mark: ELG
`Application Serial No.: 98652647
`Published in the Official Gazette: February 25, 2025
`
`
`
`
`
`
`
`
`Opposition No. __________________
`
`e.l.f. COSMETICS, INC.,
`
`
`
`
`
`
`
`Opposer,
`
`
`
`-against-
`
`
`
`DONGYAN LIN,
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposer e.l.f. Cosmetics, Inc. (“Opposer”) believes that it will be damaged by the
`
`issuance of a registration to Applicant Dongyan Lin (“Applicant”) for the mark ELG
`
`(“Applicant’s Mark”) as shown in U.S. Trademark Application Serial No. 98652647 (the
`
`“Subject Application”), and therefore opposes the same pursuant to Section 13 of the Lanham
`
`Act, 15 U.S.C. § 1063. As grounds for the opposition, Opposer states as follows:
`
`A.
`
`Opposer and Opposer’s e.l.f. Trademark
`
`FACTS
`
`1.
`
`Opposer is a corporation organized and existing under the laws of the State of
`
`Delaware with its principal place of business at 570 10th Street, Oakland, California 94607.
`
`2.
`
`Opposer is a global beauty company offering cosmetics, beauty, and personal care
`
`products, which are sold under the e.l.f. trademark and various other marks that include the term
`
`
`4928-3748-1751v.1
`
`
`
`
`
`e.l.f., including, but not limited to, e.l.f. SKIN, e.l.f. IS FOR EVERY EYE, LIP, AND FACE,
`
`e.l.f.ING AMAZING, and e.l.f. BEAUTY (collectively and individually, the “e.l.f. Mark”).
`
`3.
`
`Opposer is the owner of all rights, title, and interest in and to the e.l.f. Mark and
`
`has continuously used the e.l.f. Mark in connection with cosmetics and related goods and
`
`services since at least 2004, which is prior to any date upon which Applicant can rely.
`
`4.
`
`Opposer’s goods and services offered under the e.l.f. Mark are sold in the United
`
`States and throughout the world. In the United States, consumers can purchase Opposer’s e.l.f.-
`
`branded goods and services in thousands of brick-and-mortar mass, drug store, food, and
`
`specialty retail stores across the country (including, but not limited, to Target, Kmart, Dollar
`
`General, Walmart, CVS, Walgreens, and Ulta) as well as online through, inter alia, Opposer’s e-
`
`commerce website at www.elfcosmetics.com and various third-party retailers (including, but not
`
`limited to, www.amazon.com).
`
`5.
`
`Opposer’s goods and services offered under the e.l.f. Mark have been widely
`
`advertised to the purchasing public in the United States through its significant online social
`
`media presence in addition to other marketing channels. Opposer’s goods and services have also
`
`been reviewed by dozens of national publications, including, but not limited to, Glamour, Allure,
`
`Self, InStyle, and Good Housekeeping.
`
`6.
`
`As a result of Opposer’s extensive use, marketing, and promotion of the e.l.f.
`
`Mark – and the success and popularity of the goods and services offered thereunder – Opposer
`
`has developed strong trademark rights and enormous goodwill in the e.l.f. Mark. Moreover, the
`
`mark has become synonymous with the highest quality goods and services and has developed
`
`secondary meaning and significance in the minds of the purchasing public as identifying goods
`
`and services emanating exclusively from a single source – namely, Opposer.
`
`
`4928-3748-1751v.1
`
`2
`
`
`
`
`
`7.
`
`Due to Opposer’s reputation, use, substantial sales success, inestimable
`
`popularity, and significant investment in advertising, the e.l.f. Mark also has become a famous
`
`trademark – i.e., it is widely recognized by the general consuming as a designation of source –
`
`and became famous prior to any date upon which Applicant can rely.
`
`8.
`
`In addition to its strong common law trademark rights, Opposer owns numerous
`
`federal registrations for the e.l.f. Mark, including but not limited to the following:
`
`Mark
`
`Reg. No. Reg. Date
`
`Class and Goods/Services
`
`IC 003: COSMETICS AND PERSONAL CARE
`PRODUCTS, NAMELY, EYE PENCIL, EYE
`SHADOW, BLUSH, LIP GLOSS, LIPSTICK, LIP
`BALM, NAIL POLISH, FACIAL MOISTURIZER,
`CONCEALER
`
`IC 018: COSMETIC BAGS SOLD EMPTY
`
`IC 021: COSMETIC BRUSHES; APPLICATOR
`STICKS FOR APPLYING MAKEUP
`IC 008: EYELASH CURLERS, TWEEZERS;
`MANICURE IMPLEMENTS, NAMELY,
`ORANGE STICKS
`
`IC 021: COSMETIC BRUSHES; APPLICATOR
`STICKS FOR APPLYING MAKEUP
`IC 003: COSMETICS; COSMETICS AND
`PERSONAL CARE PRODUCTS, NAMELY, EYE
`PENCILS, EYELINERS, EYE SHADOWS,
`BLUSH, LIP GLOSS, LIPSTICK, LIP BALM, LIP
`PENCILS, LIP LINER, MASCARAS, NAIL
`POLISH, EMERY BOARDS, FACE AND BODY
`GLITTER, FACE AND BODY LOTIONS, FACE
`AND BODY CREAMS, FACE POWDER,
`FACIAL MOISTURIZERS, CONCEALERS,
`SOAPS; ESSENTIAL OILS; HAIR LOTIONS;
`MAKE-UP KITS COMPRISED PRIMARILY OF
`LIPSTICK, LIP GLOSS, NAIL POLISH, BLUSH,
`EYELINER, EYE SHADOW PRIMER, FACE
`MAKE-UP PRIMER, FALSE EYELASHES AND
`ALSO CONTAINING MAKE-UP BRUSHES AND
`EYEBROW STENCILS
`
`3
`
`e.l.f.
`
`3,106,703 6/20/2006
`
`e.l.f. EYES
`LIPS FACE
`
`4,087,106 1/17/2012
`
`e.l.f.
`
`4,889,008 1/19/2016
`
`
`4928-3748-1751v.1
`
`
`
`
`
`Mark
`
`Reg. No. Reg. Date
`
`Class and Goods/Services
`
`
`IC 008: EYELASH CURLERS; TWEEZERS;
`MANICURE IMPLEMENTS, NAMELY, NAIL
`FILES, ORANGE STICKS, NAIL CLIPPERS,
`CUTICLE PUSHERS, NAIL AND CUTICLE
`SCISSORS; MANICURE SETS; PEDICURE SETS
`
`IC 018: COSMETIC CARRYING CASES SOLD
`EMPTY
`
`IC 021: COSMETIC BRUSHES; APPLICATOR
`STICKS FOR APPLYING MAKE-UP
`
`IC 035: RETAIL STORE SERVICES AND ON-
`LINE RETAIL STORE SERVICES FEATURING
`COSMETICS, PERSONAL CARE PRODUCTS
`AND BEAUTY PRODUCTS, MANICURE
`IMPLEMENTS, MANICURE SETS, PEDICURE
`SETS, EYELASH CURLERS, TWEEZERS,
`COSMETIC BRUSHES, APPLICATOR STICKS
`FOR APPLYING MAKE-UP
`IC 003: COSMETICS; COSMETICS AND
`PERSONAL CARE PRODUCTS, NAMELY, EYE
`PENCILS, EYELINERS, EYE SHADOWS,
`BLUSH, LIP GLOSS, LIPSTICK, LIP BALM, LIP
`PENCILS, LIP LINER, MASCARAS, NAIL
`POLISH, EMERY BOARDS, FACE AND BODY
`GLITTER, FACE AND BODY LOTIONS, FACE
`AND BODY CREAMS, FACE POWDER,
`FACIAL MOISTURIZERS, CONCEALERS,
`SOAPS; ESSENTIAL OILS; HAIR LOTIONS;
`MAKE-UP KITS COMPRISED PRIMARILY OF
`LIPSTICK, LIP GLOSS, NAIL POLISH, BLUSH,
`EYELINER, EYE SHADOW PRIMER, FACE
`MAKE-UP PRIMER, FALSE EYELASHES AND
`ALSO CONTAINING MAKE-UP BRUSHES AND
`EYEBROW STENCILS
`
`IC 018: COSMETIC CARRYING CASES SOLD
`EMPTY
`
`IC 035: RETAIL STORE SERVICES AND ON-
`LINE RETAIL STORE SERVICES FEATURING
`COSMETICS, PERSONAL CARE PRODUCTS
`
`4
`
`e.l.f. EYES
`LIPS FACE
`
`5,191,864 4/25/2017
`
`
`4928-3748-1751v.1
`
`
`
`
`
`Mark
`
`Reg. No. Reg. Date
`
`Class and Goods/Services
`
`AND BEAUTY PRODUCTS, MANICURE
`IMPLEMENTS, MANICURE SETS, PEDICURE
`SETS, EYELASH CURLERS, TWEEZERS,
`COSMETIC BRUSHES, APPLICATOR STICKS
`FOR APPLYING MAKE-UP
`IC 003: COSMETICS; COSMETICS AND
`PERSONAL CARE PRODUCTS, NAMELY, EYE
`PENCILS, EYELINERS, EYE SHADOWS,
`BLUSH, LIP GLOSS, LIPSTICK, LIP BALM, LIP
`PENCILS, LIP LINER, MASCARAS, NAIL
`POLISH, FACE AND BODY GLITTER, FACE
`AND BODY LOTIONS, FACE AND BODY
`CREAMS, FACE POWDER, FACIAL
`MOISTURIZERS, CONCEALERS, SOAPS;
`ESSENTIAL OILS; HAIR LOTIONS; MAKE-UP
`KITS COMPRISED PRIMARILY OF LIPSTICK,
`LIP GLOSS, NAIL POLISH, BLUSH, EYELINER,
`EYE SHADOW PRIMER, FACE MAKE-UP
`PRIMER, FALSE EYELASHES AND ALSO
`CONTAINING MAKE-UP BRUSHES AND
`EYEBROW STENCILS
`
`IC 008: EYELASH CURLERS; TWEEZERS;
`MANICURE IMPLEMENTS, NAMELY, NAIL
`FILES, ORANGE STICKS, NAIL CLIPPERS,
`CUTICLE PUSHERS, NAIL AND CUTICLE
`SCISSORS; MANICURE SETS; PEDICURE
`SETS; EMERY BOARDS
`
`IC 018: COSMETIC CARRYING CASES SOLD
`EMPTY
`
`IC 021: COSMETIC BRUSHES; APPLICATOR
`STICKS FOR APPLYING MAKE-UP
`IC 003: COSMETICS; COSMETICS AND
`PERSONAL CARE PRODUCTS, NAMELY, EYE
`PENCILS, EYELINERS, EYE SHADOWS,
`BLUSH, LIP GLOSS, LIPSTICK, LIP BALM, LIP
`PENCILS, LIP LINER, MASCARAS, NAIL
`POLISH, FACE AND BODY GLITTER, FACE
`AND BODY LOTIONS, FACE AND BODY
`CREAMS, FACE POWDER, FACIAL
`MOISTURIZERS, CONCEALERS, MAKE-UP
`KITS COMPRISED PRIMARILY OF LIPSTICK,
`
`5
`
`e.l.f.ing
`AMAZING
`
`6,511,960 10/5/2021
`
`e.l.f. IS FOR
`EVERY EYE,
`LIP AND
`FACE
`
`6,752,261
`
`6/7/2022
`
`
`4928-3748-1751v.1
`
`
`
`
`
`Mark
`
`Reg. No. Reg. Date
`
`Class and Goods/Services
`
`LIP GLOSS, NAIL POLISH, BLUSH, EYELINER,
`EYE SHADOW PRIMER, FACE MAKE-UP
`PRIMER, FALSE EYELASHES AND ALSO
`CONTAINING MAKE-UP BRUSHES AND
`EYEBROW STENCILS
`IC 014: ADHESIVE FACE AND BODY
`JEWELRY
`IC 003: LIP BALM; FACE, BODY, EYE, AND
`HAND LOTIONS; FACE, BODY, EYE, AND
`HAND CREAMS; FACE, BODY, EYE, AND
`HAND MOISTURIZERS; SKIN CLEANSERS;
`EXFOLIATORS, NAMELY, EXFOLIATING
`CREAMS AND SCRUBS FOR COSMETIC
`PURPOSES; SKIN CARE SCRUBS, NAMELY,
`FACIAL SCRUBS; TONERS, NAMELY, SKIN
`TONERS; BEAUTY SERUMS; NON-
`MEDICATED PERSONAL CARE PRODUCTS,
`NAMELY, SKIN LOTIONS, SKIN CREAM, SKIN
`MOISTURIZERS, EXFOLIATING SCRUBS FOR
`COSMETIC PURPOSES, SKIN MISTS, BEAUTY
`SERUMS, SKIN TONERS
`IC 005: ACNE TREATMENT PREPARATIONS;
`MEDICATED SKIN CARE PREPARATIONS
`
`e.l.f.
`
`7,001,044 3/14/2023
`
`e.l.f. SKIN
`
`7,157,898
`
`9/5/2023
`
`e.l.f. SKIN
`
`7,398,730 5/28/2024
`
`
`9.
`
`The above registrations are valid, subsisting, and in full force and effect, and
`
`serve as evidence of the validity of the marks, of Opposer’s ownership of the marks, and of
`
`Opposer’s exclusive right to use the marks in connection with the goods and services identified
`
`in the registrations. See 15 U.S.C. § 1115(a) and (b). Opposer’s trademark registrations also
`
`place others, including Applicant, on constructive notice of its rights. See 15 U.S.C. § 1072.
`
`B.
`
`Applicant and the Subject Application for ELG
`
`10.
`
`Upon information and belief, Applicant is an individual of Chinese citizenship
`
`with an address at Rongdongxilin Vlg, Rongcheng District, No.16-16, Zhongxinwei, Jieyang,
`
`Guangdong CHINA 522000.
`
`
`4928-3748-1751v.1
`
`6
`
`
`
`
`
`11.
`
`Upon information and belief, on July 17, 2024, Applicant filed the Subject
`
`Application to register Applicant’s Mark in connection with “Cotton wool for cosmetic purposes;
`
`Ethereal oils; Hair lotion; Hair lotions; Make-up preparations; Make-up removing preparations;
`
`Nail varnish; Nail varnish for cosmetic purposes; Nail varnishes” in International Class 3.
`
`12.
`
`The Subject Application was filed pursuant to Section 1(a) of the Lanham Act, 15
`
`U.S.C. § 1051(a), based on an alleged first use in commerce date of May 10, 2024.
`
`13.
`
`Applicant is not connected to Opposer in any way, and Applicant has not been
`
`authorized by Opposer to register or use Applicant’s Mark.
`
`FIRST GROUND FOR RELIEF
`PRIORITY AND LIKELIHOOD OF CONFUSION UNDER 15 U.S.C. § 1052(d)
`
`14.
`
`Opposer repeats and re-alleges the assertions and allegations made in Paragraphs
`
`1 to 13 above as if fully set forth herein.
`
`15.
`
`Upon information and belief, the earliest date upon which Applicant can rely in
`
`support of Applicant’s Mark is long after the use, registration, and acquisition of rights in the
`
`e.l.f. Mark by Opposer. As such, Opposer’s rights in the e.l.f. Mark in the United States are prior
`
`and superior to any rights that Applicant may claim in Applicant’s Mark.
`
`16.
`
`Upon information and belief, at the time Applicant filed the Subject Application
`
`to register Applicant’s Mark, Applicant had actual notice of Opposer’s prior and exclusive rights
`
`in the e.l.f. Mark. At the very least, Applicant was on constructive notice of Opposer’s prior and
`
`exclusive rights in the e.l.f. Mark by virtue of Opposer’s federal trademark registrations therefor,
`
`pursuant to Section 22 of the Lanham Act, 15 U.S.C. § 1072.
`
`17.
`
`Applicant’s Mark is highly similar to the e.l.f. Mark in appearance, sound, and
`
`overall commercial impression. In particular, Applicant’s Mark is virtually identical to the e.l.f.
`
`Mark except for the substitution of the letter “f” with the letter “g.”
`
`
`4928-3748-1751v.1
`
`7
`
`
`
`
`
`18.
`
`The goods identified in the Subject Application are identical and/or highly related
`
`to the goods identified in Opposer’s registrations for the e.l.f. Mark and to the goods actually
`
`offered by Opposer under the e.l.f. Mark.
`
`19.
`
`The Subject Application is unrestricted as to consumers and trade channels for the
`
`identified goods. Given that the goods identified in the Subject Application are identical and/or
`
`highly related to the goods identified in Opposer’s registrations for the e.l.f Mark, it is presumed
`
`as a matter of law that the consumers and trade channels for the parties’ goods overlap.
`
`20.
`
`Based on Opposer’s prior rights in the e.l.f. Mark, the strength and fame of the
`
`e.l.f. Mark, the similarity of the parties’ marks, the identity and/or relatedness of the parties’
`
`goods, and the presumption of overlapping consumers and trade channels for the parties’ goods,
`
`the issuance of a registration for Applicant’s Mark as shown in the Subject Application is likely
`
`to cause consumers to be deceived into falsely believing that the goods offered by Applicant
`
`under Applicant’s Mark originate from or are affiliated, sponsored, or endorsed by Opposer – or
`
`that there is some relationship between Applicant and Opposer or the goods of Applicant and
`
`Opposer – all to Opposer’s injury and harm.
`
`21.
`
`Thus, the issuance of a registration for Applicant’s Mark as shown in the Subject
`
`Application is likely to cause confusion, to cause mistake, or to deceive the public in violation of
`
`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`22.
`
`By reason of the foregoing, Opposer is likely to be harmed by the issuance of a
`
`registration for Applicant’s Mark as shown in the Subject Application.
`
`SECOND GROUND FOR RELIEF
`DILUTION UNDER 15 U.S.C. §§ 1052(f) AND 1125(c)
`
`23.
`
`Opposer repeats and re-alleges the assertions and allegations made in Paragraphs
`
`1 to 13 above as if fully set forth herein.
`
`
`4928-3748-1751v.1
`
`8
`
`
`
`
`
`24.
`
`Opposer’s e.l.f Mark is inherently distinctive and/or has acquired distinctiveness
`
`by becoming one of the best-known cosmetics brands in the United States through decades of
`
`use, sales, advertising, and promotion to millions of consumers in the United States. As a result
`
`of the foregoing, the e.l.f Mark has become famous by acquiring extensive actual recognition
`
`among consumers as a designation of goods and services emanating from Opposer.
`
`25.
`
`Prior to any date that Applicant can rely upon for its claim of rights in Applicant’s
`
`Mark, Opposer’s e.l.f. Mark had become famous by virtue of generating millions of dollars in
`
`revenue through sales to hundreds of millions of consumers nationwide.
`
`26.
`
`Applicant’s Mark is highly similar to the e.l.f. Mark, as further described in
`
`Paragraph 17 above.
`
`27.
`
`By virtue of the fame of the e.l.f. Mark, the similarity between Applicant’s Mark
`
`and the e.l.f Mark, and the exclusive association between the e.l.f. Mark and Opposer, the
`
`issuance of a registration for Applicant’s Mark as shown in the Subject Application would dilute
`
`and/or is likely to dilute Opposer’s famous e.l.f. Mark by impairing its distinctiveness and ability
`
`to identify exclusively goods deriving from Opposer in violation of Sections 2(f) and 43(c) of the
`
`Lanham Act, 15 U.S.C. §§ 1052(f) and 1125(c).
`
`28.
`
`By reason of the foregoing, Opposer is likely to be harmed by the issuance of a
`
`registration for Applicant’s Mark as shown in the Subject Application.
`
`THIRD GROUND FOR RELIEF
`VOID AB INITIO FOR NON-USE UNDER 15 U.S.C. § 1051(a)
`
`29.
`
`Opposer repeats and re-alleges the assertions and allegations made in Paragraphs
`
`1 to 13 above as if fully set forth herein.
`
`30.
`
`Upon information and belief and based on Opposer’s investigation, Applicant was
`
`not using Applicant’s Mark in United States commerce in connection with any or some of the
`
`
`4928-3748-1751v.1
`
`9
`
`
`
`
`
`goods identified in the Subject Application at the time Applicant filed the application for
`
`Applicant’s Mark pursuant to Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a).
`
`31.
`
`Upon information and belief and based on Opposer’s investigation, Applicant is
`
`not presently using Applicant’s Mark in United States commerce in connection with any or some
`
`of the goods identified in the Subject Application.
`
`32.
`
`Because Applicant was not using Applicant’s Mark in United States commerce in
`
`connection with any or some of the goods identified in the Subject Application on or before the
`
`filing date of the use-based application for Applicant’s Mark, the Subject Application is void ab
`
`initio with respect to such goods under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a).
`
`33.
`
`By reason of the foregoing, Opposer is likely to be harmed by the issuance of a
`
`registration for Applicant’s Mark as shown in the Subject Application.
`
`FOURTH GROUND FOR RELIEF
`FRAUD BASED ON FALSE DECLARATION OF USE
`
`34.
`
`Opposer repeats and re-alleges the assertions and allegations made in Paragraphs
`
`1 to 13 above as if fully set forth herein.
`
`35.
`
`Contemporaneously with Applicant’s filing of the Subject Application, Applicant
`
`signed a Declaration stating, inter alia, “the mark is in use in commerce and was in use in
`
`commerce as of the filing date of the application on or in connection with the goods/services in
`
`the application.”
`
`36.
`
`Based on Opposer’s investigation, the specimen submitted in connection with the
`
`Subject Application is suspect and, in fact, Applicant was not using Applicant’s Mark in United
`
`States commerce in connection with any or some of the goods identified in the Subject
`
`Application at the time Applicant filed the Subject Application pursuant to Section 1(a) of the
`
`Lanham Act, 15 U.S.C. § 1051(a).
`
`
`4928-3748-1751v.1
`
`10
`
`
`
`
`
`37.
`
`Because, on information and belief and based on Opposer’s investigation,
`
`Applicant was not using Applicant’s Mark in United States commerce in connection with any or
`
`some of the goods set forth in the Subject Application at the time Applicant filed the Subject
`
`Application pursuant to Section 1(a) of the Lanham Act, the Declaration submitted in support of
`
`the application was false.
`
`38.
`
`Applicant knew at the time it filed the Subject Application that it was not using
`
`Applicant’s Mark in United States commerce in connection with any of the goods specified in
`
`the Subject Application and that the Declaration submitted in support thereof was false.
`
`39.
`
`By falsely asserting that it was using Applicant’s Mark in United States
`
`commerce in connection with the goods specified in the Subject Application as of the filing date,
`
`Applicant intended to deceive the U.S. Patent and Trademark Office (“USPTO”). Indeed,
`
`Applicant’s false statement was made for the purpose of obtaining a registration for Applicant’s
`
`Mark to which Applicant was not entitled.
`
`40.
`
`The USPTO would not have approved the Subject Application for publication but
`
`for the false statement that Applicant was using Applicant’s Mark in United States commerce in
`
`connection with the goods identified in the Subject Application at the time Applicant filed the
`
`Subject Application pursuant to Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a). Thus, the
`
`falsehood was a material misstatement.
`
`41.
`
`As a result of Applicant’s willful and materially false statement made in
`
`connection with the Subject Application, Applicant has committed fraud against the USPTO,
`
`which invalidates the Subject Application.
`
`42.
`
`By reason of the foregoing, Opposer is likely to be harmed by the issuance of a
`
`registration for Applicant’s Mark as shown in the Subject Application.
`
`
`4928-3748-1751v.1
`
`11
`
`
`
`
`
`***
`
`WHEREFORE, it is respectfully requested that this opposition be sustained and that the
`
`Subject Application for Applicant’s Mark be refused registration in its entirety.
`
`Dated: New York, New York
`March 17, 2025
`
`
`
`
`
`Respectfully submitted,
`
`AMSTER ROTHSTEIN & EBENSTEIN LLP
`
`
`By: /Chester Rothstein/
`Chester Rothstein (crothstein@arelaw.com)
`Daniel M. Nuzzaci (dnuzzaci@arelaw.com)
`405 Lexington Avenue, Floor 48
`New York, New York 10174
`Telephone: (212) 336-8000
`
`Counsel for Opposer e.l.f. Cosmetics, Inc.
`
`
`4928-3748-1751v.1
`
`12
`
`
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