throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA144549
`ESTTA Tracking number:
`06/06/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92045070
`Plaintiff
`Gapardis Health & Beauty, Inc.
`Gapardis Health & Beauty, Inc.
`7494 NW 54th Street
`Miami, FL 33166
`
`DAVID M. ROGERO
`DAVID M. ROGERO, P.A.
`2625 Ponce de Leon Boulevard, Suite 280
`CORAL GABLES, FL 33134
`UNITED STATES
`dmrogero@dmrpa.com
`Motion to Suspend for Civil Action
`David M. Rogero
`dmrogero@dmrpa.com
`/s/David M. Rogero/
`06/06/2007
`Motion to suspend 060607.pdf ( 30 pages )(988861 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`GAPARDIS HEALTH &
`
`BEAUTY, INC.
`
`Petitioner,
`
`V.
`
`NOUVELLE PARFUMERIE
`
`GANDOUR,
`
`Registrant.
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`Cancellation No. 92045070
`
`Reg. No. 2992131
`Mark: MAXI LIGHT
`
`PETITIONERS’ MOTION TO SUSPEND PROCEEDINGS
`
`Petitioner, GAPARDIS HEALTH & BEAUTY,
`
`INC., by and through
`
`undersigned counsel and pursuant to 37 C.F.R. § 2.117 and TBMP 510.02(a) hereby
`
`requests that proceedings before this Board be suspended until final determination of a
`
`civil action now pending in the United States District Court for the Southern District of
`
`Florida, and states:
`
`1.
`
`As of May 3, 2007, proceedings in this matter have been suspended
`
`pending disposition of Registrant’s Motion for Involuntary Dismissal.
`
`2.
`
`Petitioner has now filed a civil action in the United States District Court
`
`for the Southern District of Florida, Gapardis Health & Beauty, Inc. and Xavier Pierre
`
`Tancogne v. Nouvelle Parfumerie Gandour, Case No. 07-21441—Civ—Martinez/Bandstra.
`
`See Complaint, attached as Exhibit A.
`
`3.
`
`A central issue of the federal court case is whether Nouvelle Parfumerie
`
`Gandour’s use of the mark MAXI LIGHT violates Plaintiff’s trademark rights under its
`
`registered MAXI WHITE trademark. The issues raised in the civil action are the same as
`
`

`
`those underlying this cancellation proceeding, and the complaint seeks, among other
`
`things, the cancellation of the registration of MAXI LIGHT.
`
`4.
`
`The outcome of the federal court case is likely to have a bearing on the
`
`case before the Board.
`
`Accordingly, Petitioner requests that proceedings before this Board, including
`
`consideration of Registrant’s Motion for Involuntary Dismissal, be suspended until final
`
`determination of the civil action.
`
`/s/David M. Rogero/
`David M. Rogero
`DAVID M. ROGERO, P.A.
`
`2625 Ponce de Leon Boulevard, Suite 280
`
`Coral Gables, FL 33134
`
`Telephone (305) 441-0200
`Fax (305) 460-4099
`
`Attorney for Petitioner
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Petitioner’s Motion
`
`to Suspend Proceedings was served upon counsel listed below by fax and U.S. Mail on
`
`the 6th day of June, 2007:
`
`Barry M. Boren, Esq.
`Law Offices of Barry M. Boren, P.A.
`9350 South Dixie Highway, PH—2
`Mian1i, FL 33156
`
`Scott R. Austin, Esq.
`McDonald Hopkins LLC
`505 S. Flagler Drive, Suite 300
`West Palm Beach, FL 33401
`
`/s/DaVid M. Rogero/
`
`

`
`Exhibit A
`
`

`
`Case 1:07—ev—2t44t—JEM Deeument 1
`
`Entered on FLSD Docket 0%/O4..’2{3€37
`
`Page 1 of 26
`
` ‘ ‘mwmfiv
`FILED by
`1
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`JUN 0 It 2007
`
`Case No.
`
`.
`
`S 7‘ OF FLA-- MiA~n'
`
`0 7 W 2 1 4 E
`
`‘
`
`cammrmzz
`MAGISTRATE JUDGE
`BANDSTRA
`
`GAPARDIS HEALTH AND
`
`Plaintiffs,
`
`V.
`
`NOUVELLE PARFUMERIE
`
`GANDOUR.
`
`Defendant.
`
`)
`
`3
`3
`)
`)
`
`1
`
`)
`
`)
`
`COMPLAINT
`
`Plaintiffs, Gapardis Health & Beauty,
`
`Inc.
`
`(“Gapardis”), and Xavier Pierre
`
`Tancogne (“Tancogne”) (collectively “Plaintiffs”), by their undersigned attorney, for
`
`their Complaint against the Defendant, alleges as follows:
`
`I. The Nature of the Action
`
`1.
`
`This
`
`action seeks
`
`injunctive
`
`and monetary relief
`
`for
`
`trademark
`
`infringement in violation of Sections 32 and 43 of the Lanham Trademark Act (15 U.S.C.
`
`§§ 1114 and 1125), trade dress infringement and federal unfair competition, in violation
`
`of Section 43(a) of the Lanham Trademark Act (15 U.S.C. § l125(a)), cancellation of the
`
`federal registration of a trademark pursuant to 15 U.S.C. §§ 1064 and 1119, declaratory
`
`relief pursuant to 28 U.S.C. § 2201, compensatory and punitive damages for unfair
`
`competition under Florida common law and for violation of Florida’s Deceptive and
`
`

`
`Case 1 :{37—ev—2t44t—JEF\Ii
`
`Deeument 1
`‘mt
`
`Entered on FLSD Decker O6/O4..’2{3€37
`‘av’
`
`Page 2 0f 26
`
`Unfair Trade Practices Act, FLA. STAT. §501.204, , and compensatory damages under
`
`F1orida’s common law for unjust enrichment.
`
`II. The Parties
`
`2.
`
`Plaintiff Gapardis was, at all
`
`times pertinent, and is, a corporation
`
`organized under the laws of Florida with its principal place of business in Miami, Florida,
`
`which does business as “The Mitchell Group.”
`
`3.
`
`4.
`
`Plaintiff Tancogne is an individual who resides in La Teste, France.
`
`Defendant Nouvelle Parfumerie Gandour
`
`(“NPG”)
`
`is a corporation
`
`organized and existing under the laws of the Ivory Coast, having its principal place of
`
`business in the Ivory Coast. NPG imports and distributes cosmetic products in the United
`
`States. According to testimony given by Ghandour Ghandour, the managing director of
`
`NPG, NPG has participated in the creation, manufacture, and sale of “cosmetics and
`
`parfumerie items” including products for “[t]he whole range of hair care and body care.”
`
`5.
`
`NPG carries out certain functions in the United States through Gapardis,
`
`Inc., which not a party to this action, and which maintains its principal office at 7494
`
`N.W. 54th Street Miami, Florida 33166. Gapardis, Inc. is a separate and distinct entity
`
`from Plaintiff Gapardis. Pursuant to 15 U.S.C. § l051(e), Defendant NPG has designated
`
`Corporate Creations P.L., located at 6001 W. Palmer Lane, Suite 370-157, Austin, Texas
`
`78727 as its domestic representative.
`
`III. Jurisdiction and Venue
`
`6.
`
`This Court has jurisdiction over the subj ect matter of this action pursuant
`
`to 28 U.S.C.§§ 1331,1338 and 1367.
`
`

`
`Case 1 :{37—ev—2t44t—JEM
`
`Deeument 1
`‘\ov'
`
`Entered on ELSE) Docket 0%/O4./2007’
`Va’
`
`Page 3 cf 26
`
`7
`
`The Defendant is subject to personal jurisdiction in that it transacts or does
`
`business in Florida and it distributes the infringing products which are the subject of this
`
`action in Florida.
`
`8.
`
`Venue is proper in this judicial district, pursuant to 28 U.S.C. 139l(b)(2),
`
`because a substantial part of the events giving rise to the claims occurred in this district,
`
`and because a substantial part of the property that is the subject matter of the action is
`
`situated within this district, and pursuant to 28 U.S.C. § 1391(0) because Defendant is a
`
`corporation which is presently subject to personal jurisdiction in this judicial district.
`
`IV. Background Facts
`
`9.
`
`Tancogne conducts business in commerce as a distributor of beauty and
`
`skin care products,
`
`including the importation and wholesale and retail sales of such
`
`products. Among other products, Tancogne distributes and sells soaps, lotions, milks,
`
`creams, and gels for the face and body bearing the trademarks FAIR & WHITE, PARIS
`
`FAIR & WHITE, and FAIR & WHITE HEALTH SECURITY LABO DERMA PARIS.
`
`10.
`
`Tancogne is the owner of the following trademarks, registered with the
`
`United States Patent and Trademark Office:
`
`
`
`Trademark
`FAIR & WHITE
`
`
`
`Registration No.
`2,839,374
`
`Date of Registration
`May 11, 2004
`
`
`
`Date of first use
`
`in commerce
`February 1990
`
`
`
`PARIS FAIR & WHITE
`
`
`
`
`
`2,497,918
`
`October 16, 2001
`
`February 1990
`
`2,934,710
`
`March 22, 2005
`
`March 2003
`
`FAIR & WHITE
`HEALTH SECURITY
`
`LABO DERMA PARIS
`
`
`
`
`
`Each of Tancogne’s registrations set forth above is for products in International Class 3,
`
`and each includes “beauty and skin care products, namely, soaps, lotions, milks, creams
`
`[and] gel for the face and body.”
`
`

`
`Case 1 :{37—ev—2t44t—JElvl
`
`Document 1
`‘nut
`
`Entered on FLSD Docket 0%/O4..’2{3€37
`SI
`
`Page 4 of 26
`
`11.
`
`Tancogne’s registration for PARIS FAIR & WHITE has achieved
`
`incontestable status pursuant to 15 U.S.C. § 1065.
`
`12.
`
`Gapardis is the exclusive licensee of Tancogne regarding the sale and
`
`distribution of FAIR & WHITE, PARIS FAIR & WHITE, and FAIR & WHITE
`
`HEALTH SECURITY LABO DERMA PARIS products in the United States.
`
`13.
`
`Gapardis is the owner of the following trademark, registered with the
`
`
`
`Date of first use
`
`November 2, 2004
`
`April 1, 2000
`
`United States Patent and Trademark Office:
`
`
`
`MAXI WHITE
`
`2,898,496
`
`
`
`Gapardis’ registration set forth above is for products in International Class 3, and
`
`includes “beauty and skin care products, namely soaps, lotions, milks, creams, gels, and
`
`serums for the face and body; and depigmentary products, namely lotions, milks, creams,
`
`gels, and serums for the face and body.”
`
`14.
`
`The trade dress of Plaintiffs’ products sold in connection with the marks,
`
`MAXI WHITE, FAIR & WHITE, PARIS FAIR & WHITE, and FAIR & WHITE
`
`HEALTH SECURITY LABO DERMA PARIS, has distinctive features which consumers
`
`have come to associate with Plaintiffs’ products.
`
`15.
`
`Specifically, with respect to Plaintiffs’ FAIR & WHITE marks, Plaintiffs
`
`generally employ each of the following design elements:
`
`a.
`
`b.
`
`The words “FAIR” and “WHITE” are in all capital letters.
`
`The word “FAIR” is positioned directly above the word “WHITE,”
`
`with both words being displayed in the same size font, and with the first
`
`letters of each word vertically aligned.
`
`

`
`Case 1 :{37—cv—21441—JEM
`
`Decument 1
`VCV
`
`Entered er: ELSE) Decker 0%/O4..’2{3€37’
`‘id’
`
`Page 5 cf 26
`
`c.
`
`The letters of the words “FAIR” and “WHITE” are presented in a
`
`metallic gold color.
`
`d.
`
`The ampersand character (“&”) is displayed to the right side of the
`
`words in the mark, in a dark blue color.
`
`e.
`
`The majority of product information on the packaging is printed in
`
`the same dark blue shade as the ampersand.
`
`f.
`
`The majority of product information on the packaging is printed in
`
`French, followed by a translation of the French text into English.
`
`16.
`
`With respect to certain of Plaintiffs’ PARIS FAIR & WHITE branded
`
`products, specifically including Plaintiffs’ PARIS FAIR & WHITE branded body
`
`clearing milk, Plaintiffs’ PARIS FAIR & WHITE branded exfoliating soap, and
`
`Plaintiffs’ PARIS FAIR & WHITE branded gel creme, Plaintiffs additionally employ
`
`each of the following design elements:
`
`a.
`
`A background design featuring very light blue imagery on a white
`
`background.
`
`b.
`
`A “splash” of red in the form of a seal, which contains text
`
`including the word “original.”
`
`c.
`
`Bordering around the text on the package presented in a metallic
`
`color on the packaging for Plaintiffs’ PARIS FAIR & WHITE branded
`
`body clearing milk, Plaintiffs’ PARIS FAIR & WHITE branded
`
`exfoliating soap.
`
`(1.
`
`The word “PARIS” in all capital letters, in a dark blue font,
`
`i11
`
`close proximity to the mark, “FAIR & WHITE.”
`
`

`
`Case 1 :{37—ev—2t441—JEF\Il
`
`Deeument 1
`‘Q!
`
`Entered on FLSD Docket 0%/O4..’2{3€37’
`‘i
`
`Page 6 cf 26
`
`17. With respect to certain of Plaintiffs’ PARIS FAIR & WHITE branded
`
`products, specifically including Plaintiffs’ PARIS FAIR & WHITE branded body
`
`clearing milk, Plaintiffs additionally employ each of the following design elements:
`
`a.
`
`An opaque, white, oval-shaped plastic bottle having a width that is
`
`between two and three times the thickness of the bottle, and having a
`
`height that is between 1 ‘A and l ‘/2 times the width of the bottle.
`
`b.
`
`A base that curves inward and is narrower than the body of the
`
`bottle.
`
`c.
`
`A label than covers most of the space between the top of the bottle
`
`and the bottom of the bottle where the base begins to narrow.
`
`d.
`
`One stripe formed by an indentation of the plastic that goes around
`
`the bottle above the label, and two stripes formed by an indentation of the
`
`plastic that goes around the bottle below the label of the bottle
`
`e.
`
`An opaque oval-shaped cap of uniform color that is approximately
`
`2 ‘A3 inches wide, 1 Vs inches thick, and 1 ‘/2 inches high.
`
`18. With respect to one of Plaintiffs’ FAIR & WHITE branded products,
`
`specifically Plaintiffs’ FAIR & WHITE branded fade cream, Plaintiffs additionally
`
`employ each of the following design elements:
`
`a.
`
`A smooth, round container, the body of which is completely white
`
`and lacking in any background images or designs.
`
`b.
`
`A smooth, dark blue twist-on cap of the same diameter as the body
`
`of the container.
`
`

`
`Case 1 :{37—ev—2t441—JEF\Ii
`
`Document 1
`‘fiuf
`
`Entered en FLSD Docket 0%/O4..’2{307
`V-J
`
`Page ?’ 0f 26
`
`c.
`
`The phrase “PURITY Creme,” with only the word “purity” in all
`
`capital letters in close proximity and to the right of Plaintiffs’ FAIR &
`
`WHITE mark, in the same dark blue shade as the ampersand character in
`
`Plaintiffs’ FAIR & WHITE mark.
`
`d.
`
`The phrase, “FADE CREAM” in all capital
`
`letters in close
`
`_ proximity and to the right of Plaintiffs’ FAIR & WHITE mark, in the same
`
`dark blue shade as the ampersand character in Plaintiffs’ FAIR & WHITE
`
`mark.
`
`e.
`The phrase “+ Purifying effect,” beginning with a plus sign, and
`with only the first
`letter of the word “Purifying” capitalized and the
`
`remaining letters in lowercase,
`
`in close proximity and to the right of
`
`Plaintiffs’ FAIR & WHITE mark, and in the same dark blue shade as the
`
`ampersand character in Plaintiffs’ FAIR & WHITE mark.
`
`f.
`
`A block of text to the left of the Plaintiffs’ FAIR & WHITE mark,
`
`in the same dark blue shade as the ampersand character in Plaintiffs’ FAIR
`
`& WHITE mark; this block of text states:
`
`The new innovation Fade Cream contains a purifying ingredient
`which purifies the epidermis (eliminates pimples and dark spots),
`as well as afading agent which fights blemishes.
`Results: a pure skin, a clearer and smoother complexion, blemishes
`free. Ideal care for combined to greasy skins.
`
`19.
`
`Plaintiffs have used these design elements in connection with FAIR &
`
`WHITE branded fade cream since at least as early as 2000.
`
`20.
`
`The MAXI WHITE, FAIR & WHITE, PARIS FAIR & WHITE, and
`
`FAIR & WHITE HEALTH SECURITY LABO DERMA PARIS health and beauty
`
`

`
`Case 1 :{37—ev—2t44t—JEM
`
`Deeumertt 1
`‘cf
`
`Entered en FLSD Docket 0%/O4..’2{3€37’
`T’
`
`Page 8 cf 26
`
`products are marketed to an ethnic market which includes persons of African and
`
`Caribbean heritage. Gapardis has devoted considerable efforts and resources to the
`
`marketing and promotion of MAXI WHITE, FAIR & WHITE, PARIS FAIR & WHITE,
`
`and FAIR & WHITE HEALTH SECURITY LABO DERMA PARIS health and beauty
`
`products in such ethnic market in various locations in the United States.
`
`21.
`
`Net sales of MAXI WHITE, FAIR & WHITE, PARIS FAIR & WHITE,
`
`and FAIR & WHITE HEALTH SECURITY LABO DERMA PARIS products in the U.S.
`
`have been substantial. As the unit cost for these products is small, these sales represent a
`
`considerable quantity of product.
`
`22.
`
`Products bearing the MAXI WHITE, FAIR & WHITE, PARIS FAIR &
`
`WHITE, and FAIR & WHITE HEALTH SECURITY LABO DERMA PARIS
`
`trademarks and trade dress have come to be known by the African and Caribbean ethnic
`
`markets throughout the United States as health and beauty aids of the highest quality.
`
`Therefore, the MAXI WHITE, FAIR & WHITE, PARIS FAIR & WHITE, and FAIR &
`
`WHITE HEALTH SECURITY LABO DERMA PARIS trademarks and trade dress and
`
`the good will associated with them are of inestimable value to Plaintiffs.
`
`V. Infringements by NPG
`
`23.
`
`NPG is marketing products under the names of MAXI LIGHT, BODY
`
`WHITE, and PURE & FAIR, (hereinafter collectively “Infringing Products”) using
`
`marks, packaging and imagery that are confusingly similar to Plaintiffs’ MAXI WHITE,
`
`FAIR & WHITE, PARIS FAIR & WHITE, and FAIR & WHITE HEALTH SECURITY
`
`LABO DERMA PARIS trademarks and the associated trade dress.
`
`

`
`Case 1 :{37—ev—21441—JElvl
`
`Document 1
`‘Nov’
`
`Entered on FLSD Docket 0%/O4./2{3€37’
`No’
`
`Page 9 of 26
`
`24.
`
`According to the testimony of Ghandour Ghandour, NPG sells its “skin
`
`lightening products” which are “designed for people with darker skin” in several
`
`locations in the United States, including in Miami.
`
`25.
`
`Through its past business relationship with Gapardis and as a competitor
`
`dealing in the same kinds of products through the same distributors and identical retail
`
`outlets, NPG is and was familiar with Gapardis’ products, marks, and trade dress at the
`
`time NPG adopted and began using NPG’s infringing marks.
`
`A.
`
`Infringement of the Plaintiffs’ FAIR & WHITE marks and trade dress by
`NPG’s PURE & FAIR branded fade lotion and trade dress.
`
`26.
`
`NPG is presently manufacturing and selling at least one skin care product
`
`under the name PURE & FAIR, this product being a “fade lotion.”
`
`27.
`
`NPG’s PURE & FAIR mark and the trade dress used by NPG for products
`
`it distributes under this mark are confusingly similar to Plaintiffs’ registered trademarks
`
`for FAIR & WHITE and to the trade dress used for Plaintiffs’ FAIR & WHITE branded
`
`fade cream. The similarities include the following:
`
`a.
`
`Both marks contain two words separated by an ampersand
`
`character (“&”), with one of the words in each mark being “FAIR”.
`
`b.
`
`As with Plaintiffs’ design, NPG’s packaging features the words
`
`used in the mark in all capital letters.
`
`c.
`
`As with Plaintiffs’ design, NPG’s packaging features the first word
`
`in its mark positioned directly above the second word, with both words
`
`being displayed in the same size font, and with the first letters of each
`
`word aligned Vertically.
`
`

`
`Case t:O7—cv~2t441—JEM Docuam-“mt 1
`V-1
`
`Entered on FLSD Docket DES/'04/260?
`NJ
`
`Page 10 of 26
`
`(1.
`
`As with Plaintiffs’ design, NPG’s presents the letters of the words
`
`in NPG’s mark in a shade of gold.
`
`e.
`
`As with Plaintiffs’ design,
`
`the ampersand character (“&”)
`
`in
`
`NPG’s packaging is displayed toward the right side of the words in the
`
`mark, in a dark blue color virtually identical to the shade of dark blue used
`
`in Plaintiffs’ packaging.
`
`f.
`
`As with Plaintiffs’ design, the majority of product information on
`
`the packaging is printed in the same dark blue shade as the ampersand.
`
`g.
`
`As with Plaintiffs’ design, the majority of product information on
`
`the packaging is printed first in French, followed by a translation of the
`
`French text into English.
`
`h.
`
`As with Plaintiffs’ design, NPG’s packaging features a smooth,
`
`round container, the body of which is completely white and lacking in any
`
`background images or designs.
`
`i.
`
`As with Plaintiffs’ design, NPG’s packaging features a smooth,
`
`twist-on cap of the same diameter as the body of the container in a shade
`
`of dark blue virtually identical to the shade of dark blue on Plaintiffs’
`
`twist-on cap.
`
`j.
`
`As with Plaintiffs’ design, NPG’s packagingvfeatures the word
`
`“PURITY” in all capital letters, in close proximity and to the right of
`
`NPG’s PURE & FAIR mark,
`
`in the same dark blue shade as the
`
`ampersand character in Plaintiffs’ FAIR & WHITE mark.
`
`10
`
`

`
`Case t:O7—ev~2t44t—JEM Document 1
`‘J
`
`Entered on FLSD Docket DES/'04/260?
`‘S1
`
`Page 1‘: of 26
`
`k.
`
`Similarly to Plaintiffs’ use of the phrase “FADE CREAM” in
`
`Plaintiffs’ design, NPG’s packaging features the phrase “FADE LOTION”
`
`in all capital letters in close proximity and to the right of NPG’s PURE &
`
`FAIR mark.
`
`1.
`
`As with Plaintiffs’ design, NPG’s packaging features the exact
`
`phrase “+ Purifying effect,” beginning with a plus sign, and having only
`
`the first letter of the word “Purifying” capitalized and the remaining letters
`
`in lowercase, in close proximity and to the right of Plaintiffs’ FAIR &
`
`WHITE mark, and in the same dark blue shade as the ampersand character
`
`in Plaintiffs’ FAIR & WHITE mark.
`
`m.
`
`NPG’s packaging features a block of text to the left of the NPG’s
`
`PURE & FAIR mark,
`
`in the same dark blue shade as the ampersand
`
`character in NPG’s PURE & FAIR mark; this block of text states:
`
`The new innovation fade cream Pure & Fair contains a purifying
`ingredient wich [sic] purifies the epidermis by eliminating [sic]
`pinples [sic] and dark spots. It also contains a fading agent which
`fights blemishes.
`The result is a pure skin, a clearer and smoother complexion,
`blemiches [sic] free.
`
`Other than spelling errors and differences in punctuation, the wording of
`
`this passage is so similar to the block of text located at the comparable part
`
`of packaging of Plaintiffs’ FAIR & WHITE branded fade cream so that
`
`there is no reasonable possibility that this resemblance is the result of
`
`anything other than direct copying.
`
`11
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`

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`Case t:O7—cv~2t441—JEM Docurm-mt 1
`\-I
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`Entered on FLSD Docket DES/'04/260?
`Va!
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`Page 12 of 26
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`B.
`
`Infringement of Plaintiffs’ FAIR & WHITE mark and trade dress by NPG’s
`BODY WHITE mark and trade dress.
`
`28.
`
`According to the testimony of Ghandour Ghandour, NPG began
`
`manufacturing and selling skin care products under the mark, BODY WHITE in he
`
`United States in early in 2005.
`
`29.
`
`NPG’s BODY WHITE mark and the trade dress used by NPG for products
`
`it distributes under this mark are confusingly similar to Plaintiffs’ registered trademark
`
`for FAIR & WHITE and PARIS FAIR & WHITE, and to the trade dress used for
`
`Plaintiffs’ PARIS FAIR & WHITE branded body clearing milk and PARIS FAIR &
`
`WHITE branded exfoliating soap. The similarities include the following:
`
`a.
`
`Both Plaintiffs’ FAIR & WHITE mark and NPG’s BODY WHITE
`
`mark contain two words (the ampersand character not being a word), with
`
`the second word being “WHITE”;
`
`b.
`
`Both Plaintiffs’ FAIR & WHITE mark and NPG’s BODY WHITE
`
`mark are enunciated with three syllables
`
`c.
`
`As with Plaintiffs’ design, NPG’s packaging features the first word
`
`in its mark positioned directly above the second word, with the first letters
`
`of each word vertically aligned.
`
`d.
`
`As with Plaintiffs’ design, NPG’s packaging features a background
`
`design featuring very light blue imagery on a white background.
`
`e.
`
`As with Plaintiffs’ design, NPG’s packaging features a “splash” of
`
`red in the form of a seal, which contains text
`
`including the word
`
`“original.”
`
`

`
`Case t:O7—ov~2t44t—JEM Docuam-“mt 1
`‘V
`
`Entered on FLSD Docket DES/'04/260?
`‘I5
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`Page 13 of 26
`
`f.
`
`As with Plaintiffs’ design, NPG’s packaging features a bordering
`
`around the text on the package presented in a metallic color.
`
`g.
`
`As with Plaintiffs’ design, NPG’s packaging features a word
`
`“PARIS” in all capital letters, in a dark blue font, in close proximity to the
`
`mark, “BODY WHITE,” despite the fact
`
`that NPG’s product
`
`is not
`
`formulated, designed, manufactured, or bottled in Paris, and despite the
`
`complete lack of any other connection between Paris and any products
`
`sold under NPG’s “BODY WHITE” mark in the United States.
`
`30.
`
`In addition to the similarities listed above, the packaging of NPG’s BODY
`
`WHITE branded body clearing gel is specifically confusingly similar to Plaintiffs’ FAIR
`
`& WHITE branded body clearing milk in the following additional respects:
`
`a.
`
`As with Plaintiffs’ design, NPG’s packaging features an opaque,
`
`white, oval—shaped plastic bottle having a width that is between two and
`
`three times the thickness of the bottle, and having a height that is between
`
`1 ‘/4 and 1 ‘/2 times the width of the bottle.
`
`b.
`
`As with Plaintiffs’ design, NPG’s packaging features a base that
`
`curves inward and is narrower than the body of the bottle.
`
`c.
`
`As with Plaintiffs’ design, NPG’s packaging features a label than
`
`covers most of the space between the top of the bottle and the bottom of
`
`the bottle where the base begins to narrow.
`
`(1.
`
`As with Plaintiffs’ design, NPG’s packaging features one stripe
`
`formed by an indentation of the plastic that goes around the bottle above
`
`13
`
`

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`Case t:O7—ev~2t44t—JEM Doeurm-mt 1
`Q
`
`Entered on FLSD Docket DES/'04/260?
`‘N0’
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`Page 14 of 26
`
`the label, and two stripes formed by an indentation of the plastic that goes
`
`around the bottle below the label of the bottle
`
`e.
`
`As with Plaintiffs’ design, NPG’s packaging features an opaque
`
`oval-shaped cap of uniform color that is approximately 2 ‘A; inches wide, 1
`
`3/3 inches thick, and 1 ‘/2 inches high.
`
`31.
`
`Defendant NPG caused to be filed with the U.S. Patent and Trademark
`
`Office an application for registration of the mark BODY WHITE, application no.
`
`78/421,417, based upon a stated intent to use the mark on beauty and skin care products
`
`in International Class 003. A proceeding in opposition to the registration of Defendant’s
`
`mark, brought by Tancogne, is pending before the Trademark Trial and Appeals Board,
`
`Opposition No. 91167087.
`
`Infringement of Plaintiff Gapardis’ MAXI WHITE mark by NPG’s MAXI
`C.
`LIGHT mark.
`
`32.
`
`NPG is selling various skin care products under the mark MAXI LIGHT.
`
`33.
`
`NPG’s MAXI LIGHT mark is confusingly similar to Plaintiff’ s registered
`
`trademark for MAXI WHITE. The similarities include the following:
`
`a.
`
`Both marks contain two words, with the first word in each mark
`
`being “MAXI.”
`
`b.
`
`The
`
`second word in each mark, “LIGHT” and “WHITE”
`
`respectively, are each five letter words, which exactly rhyme with one
`
`another.
`
`c.
`
`The phrases MAXI WHITE and MAXI LIGHT have the same
`
`connotation within the context of skin care products, that of doing the
`
`most effective (“MAXI”) job of making the skin less dark.
`
`14
`
`

`
`Case t:O7—cv~2t441—JEM Docurm-mt 1
`\-v
`
`Entered on FLSD Docket 03/'04/200?
`V-4
`
`Page 15 of 26
`
`34.
`
`Plaintiffs’ MAXI WHITE products and NPG’s MAXI LIGHT products
`
`are sold in at least some of the same retail outlets.
`
`35.
`
`Defendant NPG caused to be filed with the US. Patent and Trademark
`
`Office an application for registration of the mark MAXI LIGHT, application no.
`
`78/421,408, asserting a date of first use in commerce of January 23, 2002 in connection
`
`with “Fragrances for personal use, perfume, cologne, body sprays, body creams, body
`
`moisturizers, body lotions,” in International Class 003. This application matured to
`
`registration no. 2,992,131.
`
`A proceeding for cancellation of the registration of
`
`Defendant’s mark, brought by Tancogne,
`
`is pending before the Trademark Trial and
`
`Appeals Board, Cancellation No. 92045070.
`
`D.
`
`Damage to Plaintiffs due to NPG’s Infringing Products.
`
`36.
`
`The sale and distribution of the products bearing the PURE & FAIR,
`
`BODY WHITE, and MAXI LIGHT (the “Infringing Products”) by Defendant has caused
`
`and will cause substantial and irreparable damage to Plaintiffs in at least the following
`
`respects:
`
`a.
`
`The infringement by Defendant of Plaintiffs’ registered trademarks
`
`and trade dress has mislead and confused consumers, and will continue to
`
`mislead and confuse consumers as to the origin and source of the products;
`
`b.
`
`The distribution and sale by Defendant of the Infringing Products
`
`will cause irreparable damage to the invaluable reputation and goodwill
`
`that Plaintiffs have built for their trademarks and trade dress;
`
`c.
`
`When the consumer purchases
`
`the Infringing Products,
`
`the
`
`consumer will be misled into believing that he is purchasing Plaintiffs’
`
`15
`
`

`
`Case t:O7—cv~2t44t—JEM Documt-mt 1
`‘j
`
`Entered on FLSD Docket DES/'04/260?
`‘u’
`
`Page 16 of 26
`
`products. However,
`
`the Infringing Products potentially exposes the
`
`consumer to, among other things, the hazards of contaminated ingredients,
`
`defective manufacture or negligent handling; and
`
`d.
`
`The infringement by NPG of Plaintiffs’ trademarks and trade dress
`
`will dilute the distinctive quality of the trademarks and trade dress.
`
`37.
`
`The labeling of certain of NPG’s products indicates that those products
`
`contain the ingredient hydroquinone, which is
`
`regulated by the Food and Drug
`
`Administration pursuant to the Fair Packaging and Labeling Act (“FPLA”), l5 U.S.C. §
`
`1451 et seq., but these products are not properly labeled in compliance with the FPLA
`
`and regulations promulgated thereunder. To the extent that NPG has failed to label
`
`certain of its packaging in compliance with the federal law, NPG’s products threaten the
`
`safety of consumers, and thereby threaten to damage Plaintiffs’ reputation with respect to
`
`consumers who are misled or deceived into associating NPG’s products with Plaintiffs.
`
`38.
`
`Following the introduction of NPG’s infringing MAXI LIGHT products to
`
`the market, Plaintiff Gapardis has suffered tens of thousands of dollars of damage from
`
`diminished sales of Plaintiff’ s MAXI WHITE line of products.
`
`COUNT I: INFRINGEMENT OF REGISTERED
`
`TRADEMARKS UNDER 15 U.S.C. § 1114(1)(a)
`
`39.
`
`Plaintiffs repeat and reallege paragraphs 1 through 38 as if fully set forth
`
`herein.
`
`40.
`
`In Violation of 15 U.S.C. § 11l4(1)(a), Defendant used in commerce,
`
`without Plaintiffs’ consent, either a reproduction, counterfeit, copy or colorable imitation
`
`of Plaintiffs’ trademarks and trade dress in connection with the sale, offering for sale,
`
`16
`
`

`
`Case t:O7—ev~2t441—JEM Doeurm-mt 1
`in:
`
`Entered on FLSD Docket DES/'04/260?
`\.v
`
`Page 1? of 26
`
`distribution, or advertising of products in exactly the same class of goods, which use is
`
`likely to cause confusion, or to cause mistake or to deceive.
`
`41.
`
`Plaintiffs have been and continue to be damaged by the Defendant above-
`
`stated activities and conduct. Defendant has profited thereby and, unless Defendant is
`
`enjoined, Plaintiffs’ business, goodwill and reputation will suffer irreparable injury which
`
`cannot be adequately calculated or compensated for solely by money damages.
`
`COUNT 11: TRADEMARK AND TRADE DRESS
`
`INFRINGEMENT UNDER 15 U.S.C. § 1114(1)(b)
`
`42.
`
`Plaintiffs repeat and reallege paragraphs 1 through 38 as if fully set forth
`
`herein.
`
`43.
`
`In violation of
`
`15 U.S.C.
`
`§
`
`lll4(l)(b), Defendant
`
`reproduced,
`
`counterfeited, copied or colorably imitated Plaintiffs’
`
`registered trademarks and
`
`Plaintiffs’ trade dress and applied such reproduction, counterfeit, copy or colorable
`
`imitation to labels and packages intended to be used in commerce upon or in connection
`
`with the offering for sale, distribution or advertising of products in exactly the same class
`
`of goods, which use is likely to cause confusion, to cause mistake or to deceive.
`
`44.
`
`Plaintiffs have been and continue to be damaged by the Defendant’s
`
`activities and conduct stated above. The Defendant has profited thereby and, unless
`
`Defendant is enjoined, Plaintiffs’ business, goodwill and reputation will suffer irreparable
`
`injury which cannot be adequately calculated or compensated for solely by money
`
`damages.
`
`17
`
`

`
`Case t:O7—ov~2t441—JEM Doeuam-ant 1
`W
`
`Entered on FLSD Docket DES/'04/260?
`V
`
`Page 18 of 26
`
`COUNT III: TRADEMARK INFRINGEMENT
`
`UNDER 15 U.S.C. §1125(a)(1)(A)
`
`45.
`
`Plaintiffs repeat and reallege paragraphs 1 through 38 as if fully set forth
`
`herein.
`
`46.
`
`In violation of 15 U.S.C. §1l25(a)(l)(A), Defendant, in connection with
`
`the Infringing Products, used in commerce a word, term, name, symbol, or device, or
`
`combination thereof, or a false designation of origin, false or misleading description of
`
`fact or false or misleading representation of fact, which was likely to cause confusion or
`
`to cause mistake, or to deceive as to the approval of the Defendant’s goods by Plaintiffs.
`
`47.
`
`Plaintiffs have been and continue to be damaged by the Defendant’s
`
`activities and conduct stated above. The Defendant has profited thereby and, unless the
`
`Defendant is enjoined, Plaintiffs’ business, goodwill and reputation will suffer irreparable
`
`injury which cannot be adequately calculated or compensated for solely by money
`
`damages.
`
`COUNT IV: TRADEMARK INFRINGEMENT
`
`UNDER 15 U.S.C. §1125(a)(1)(B)
`
`48.
`
`Plaintiffs repeat and reallege paragraphs 1 through 38 as if fully set forth
`
`herein.
`
`49.
`
`In violation of 15 U.S.C. § 1l25(a)(1)(B), NPG, in connection with the
`
`sale of the Infringing Products, used a word,
`
`term, name, symbol, or device or
`
`combination thereof, or a false designation of origin, false or misleading description of
`
`fact or false or misleading representation of fact, which in commercial advertising or
`
`18
`
`

`
`Case t:O7—ev~2t44t—JEM Doeuam-ant 1
`5.4
`
`Entered on FLSD Docket DES/'04/260?
`‘Van?
`
`Page 19 of 26
`
`promotion, misrepresented the nature, characteristics, qualities or geographic origin of
`
`the Infringing Products.
`
`50.
`
`Plaintiffs have been and continue to be damaged by the NPG’s activities
`
`and conduct stated above. NPG has profited thereby and, unless NPG is enjoined,
`
`Plaintiffs’ business, goodwill and reputation will suffer irreparable injury which cannot
`
`be adequately calculated or compensated for solely by money damages.
`
`COUNT V: CANCELLATION OF REGISTRATION OF MAXI LIGHT
`
`PURSUANT TO 15 U.S.C. § 1064 and 15 U.S.C. § 1119
`
`51.
`
`Plaintiffs repeat and reallege paragraphs 1 through 38 as if fully set forth
`
`herein.
`
`52.
`
`NPG’s registration for MAXI LIGHT was issued within the past five
`
`years, on September 6, 2005.
`
`53.
`
`Plaintiff Gapardis has

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