IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/186,343
`Published in the Official Gazette on July 15, 2003
`
`___________________________________________________ _-X
`
`Elizabeth Arden, Inc.
`
`Opposer,
`
`vs.
`
`Supre, Inc.,
`
`Applicant.
`
`'
`
`_____________________________________________________X
`
`Box TTAB - FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`OPPOSITION NO.:
`
`\7I\\
`~— _
`//////////////7
`//l///l//I///l///I
`I/I///W
`
`us’ Patent; more TM 3
`/ Mall ncmot #78
`
`NOTICE OF OPPOSITION
`
`Elizabeth Arden, Inc., a Florida corporation having its principal place of business at
`
`14100 NW 60”‘ Avenue, Miami Lakes, Florida 33014, believes that it will be damaged by
`
`registration of the mark shown in Serial No. 78/ 186,343 in Class 3 and hereby opposes the same.
`
`This Notice of Opposition has been timely filed.
`
`As grounds of opposition, it is alleged that:
`
`1.
`
`The Applicant seeks to register the word and design CAFE BRONZER as a
`
`trademark for skin care preparations, namely, non-medicated indoor and outdoor tanning
`
`preparations and moisturizers in Class 3, as evidenced by the publication of said mark in the
`
`Official Gazette at page TM 271, Volume 1272, No. 3, of the July 15, 2003 issue.
`10/22/2003 ZCLIFT01 00000072 502639
`78186343
`
`01 FC:6402
`
`300.00 DR
`
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/186,343
`Published in the Official Gazette on July 15, 2003
`
`___________________________________________________ _-X
`
`Elizabeth Arden, Inc.
`
`Opposer,
`
`vs.
`
`Supre, Inc.,
`
`Applicant.
`
`'
`
`_____________________________________________________X
`
`Box TTAB - FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`OPPOSITION NO.:
`
`\7I\\
`~— _
`//////////////7
`//l///l//I///l///I
`I/I///W
`
`us’ Patent; more TM 3
`/ Mall ncmot #78
`
`NOTICE OF OPPOSITION
`
`Elizabeth Arden, Inc., a Florida corporation having its principal place of business at
`
`14100 NW 60”‘ Avenue, Miami Lakes, Florida 33014, believes that it will be damaged by
`
`registration of the mark shown in Serial No. 78/ 186,343 in Class 3 and hereby opposes the same.
`
`This Notice of Opposition has been timely filed.
`
`As grounds of opposition, it is alleged that:
`
`1.
`
`The Applicant seeks to register the word and design CAFE BRONZER as a
`
`trademark for skin care preparations, namely, non-medicated indoor and outdoor tanning
`
`preparations and moisturizers in Class 3, as evidenced by the publication of said mark in the
`
`Official Gazette at page TM 271, Volume 1272, No. 3, of the July 15, 2003 issue.
`10/22/2003 ZCLIFT01 00000072 502639
`78186343
`
`01 FC:6402
`
`300.00 DR
`
`
`
`
`
`2.
`
`The Opposer and its predecessors in title have since at least November 17, 1981
`
`used the mark CAFE & Design on perfumes and toilet waters.
`
`Opposer is submitting herewith as part hereof and marked as Exhibit A, copy of
`
`Registration No. 1,177,730 issued November 17, 1981.
`
`3.
`
`There is no issue as to priority. Applicant’s date of first use and first use in
`
`commerce, namely December 1, 2000 is subsequent to the issuance date of Opposer’s
`
`Registration No. 1,177,730.
`
`4.
`
`Opposer has sold its goods and services listed in the aforesaid registration under
`
`the aforesaid mark as hereinbefore referred to throughout the United States. Opposer has
`
`developed an exceedingly valuable goodwill in respect to the mark covered by the aforesaid
`
`registration.
`
`5.
`
`By virtue of its efforts, and the expenditure of considerable sums for promotional
`
`activities, and by virtue of the excellence of its products, the Opposer has gained for its above-
`
`identified mark a most valuable reputation.
`
`6.
`
`The trademark proposed for registration by the Applicant, namely, CAFE
`
`BRONZER is partially incorporated in and is confusingly similar to Opposer’s previously used
`
`and registered mark CAFE & Design and is applied to substantially similar goods as those sold
`
`by Opposer and so nearly resembles the Opposer’s mark as to be likely to be confused therewith
`
`and mistaken therefor. The Applicant’s mark_is deceptively similar to Opposer’s mark so as to
`
`cause confusion and lead to deception as to the origin of Applicant’s goods bearing the
`
`Applicant’s mark.
`
`7.
`
`If the Applicant is permitted to use and register its mark for its goods, as specified
`
`in the application herein opposed, confusion in trade resulting in damage and injury to the
`
`
`
`
`
`Opposer would be caused and would result by reason of the similarity between Applicant’s and
`
`Opposer's mark. Persons familiar with Opposer's mark would be likely to buy App1icant’s goods
`
`as and for a product made and sold by the Opposer. Any such confusion in trade inevitably
`
`would result in loss of sales to Opposer. Furthermore, any defect, objection or fault found with
`
`Applicant’s products marketed under its mark would necessarily reflect upon and seriously injure
`
`the reputation which the Opposer has established for its products merchandised under its mark.
`
`8.
`
`If the Applicant were granted the registration herein opposed, it would thereby
`
`obtain at least a 1)_ri_rn3 31$ exclusive right to the use of its mark. Such registration would be a
`
`source of damage and injury to the Opposer.
`
`WHEREFORE, the Opposer prays that the Application Serial No. 78/186,343 be rejected
`
`and that the mark therein sought for the goods herein specified in International Class 3 be denied
`
`and refused.
`
`Opposer hereby gives notice under Rule 2.122(d) of the Rules of Practice that it will rely
`
`on its above-mentioned registration as evidence in its behalf in this proceeding, and a status copy
`
`thereof showing title will be introduced into evidence during Opposer's testimony period.
`
`
`
`
`
`This Notice of Opposition is herewith submitted in duplicate copies along with
`
`authorization to charge Opposer’s counsel’s deposit account $300.00 for the filing fee.
`
`Dated: New York, New York
`
`October 10, 2003
`
`Respectfully Submitted,
`
`MCCARTER & ENGLISH, LLP
`
`
`
`300 Park Avenue
`
`New York, New York 10022
`
`(212) 609-6800
`
`CERTIFICATE OF EXPRESS MAIL
`UNDER 37 CFR 1.10
`
`“Express Mail” mailing label number: ER402434535US
`
`Date of Deposit: October 10, 2003
`
`I hereby certify that the original and two copies of the foregoing Notice of
`Opposition to Application Serial No. 78/186,343, along with authorization to charge our deposit
`account $300.00 for the filing fee, is being deposited with the United States Postal Service
`“Express Mail Post Office to Addressee” service under CFR 1.10 on the date indicated above,
`addressed to: BOX TTAB - FEE, Assistant Commissioner for Trademarks, 2900 Crystal Drive,
`
`Arlington, V.A. 22202-3513.
`
`(amt
`Vi
`Kimberly A. Kno
`
`Date: October 10, 2003
`
`NY1: 50984.01
`
`
`
`
`
`Page 1 of 3
`
`DT
`
`.rademark.com - SN__73-243476
`-1‘-
`
` Home Sea rah Heip
`
`© 2002 trademark.com
`
`Record 1 of 1
`
`Reference: 95211/00004 - dd - title history ghf
`Database(s): Federal
`Registration No.: 1177730
`
`Mark
`
`Status
`
`Status Date
`Register
`
`CAFE
`
`(and Design)
`
`Renewed
`
`Apr 2, 2002
`Principal
`
`73-243476
`Ser./App. No.
`Registration No. 1177730
`
`Int'l Class
`Goods/Services
`U.S. Class
`
`3 - Cosmetics and Cleaning Preparations
`PERFUMES — TOILET WATERS
`51
`
`Dec 19, 1979
`Filing Date
`Published (Last) Jun 30, 1981
`Registered
`Nov 17, 1981
`Renewed
`Nov 17, 2001
`
`Affidavits
`
`Sec.
`
`8 accepted; Sec. 15 acknowledged
`
`Country
`Appln. No.
`Filing Date
`Reg. No.
`Reg. Date
`Expir. Date
`
`Translation
`
`FRANCE
`533,787
`Nov 12, 1979
`1,113,073
`Nov 12, 1979
`Nov 12, 1989
`
`THE ENGLISH TRANSLATION OF THE TERM "CAFE"
`"COFFEE".
`
`IS
`
`http://wvvw.trademark.com/cgi-bin/tmlist
`
`10/10/2003
`
`
`
`
`
`Trademarkcom - SN_73-243476
`-.'v
`.
`
`Design Codes
`
`050325 — Leaf or leaves, other
`050703 — Coffee beans, cocoa beans
`
`TTAB Proceeding
`Defendant
`Serial No.
`
`Correspondt
`
`Opposition 97362
`JEAN PHILIPPE FRAGRANCES,
`74-546066
`MARTIN W. SCHIFFMILLER, KIRSCHSTEIN,
`ISRAEL,
`& SCHIFFMILLER, P.C., 551 FIFTH AVENUE, NEW YORK,
`10176-0024
`
`OTTINGER,
`
`INC.
`
`Page 2 of 3
`
`NY
`
`Filed
`Status
`Decision
`
`Apr 24, 1995
`Terminated Nov 8, 1995
`Sustained
`
`TTAB Proceeding
`Defendant
`Serial No.
`
`Correspondt
`
`Filed
`Status
`Decision
`
`Correspondent
`
`Domestic Rep.
`
`Registrant
`
`Last Owner
`
`ASSIGNMENTS
`
`Reel/Frame
`Assignor(s)
`
`Assignee(s)
`
`Date Sgnd/Ack
`Date Recorded
`Brief
`
`Reel/Frame
`Assignor(s)
`Assignee(s)
`
`Date Sgnd/Ack
`Date Recorded
`Brief
`
`Reel/Frame
`Assignor(s)
`
`Opposition 98991
`PAVION LTD.
`
`_
`74—507384
`LESLIE BERTAGNOLLI, ONE PRUDENTIAL PLAZA, 130 EAST
`RANDOLPH DRIVE, CHICAGO,
`IL. 60601
`Sep 25, 1995
`Terminated Aug 24, 1999
`Sustained
`
`JAMES T. PERRY, ESQ.
`ELIZABETH ARDEN,
`INC.
`200 PARK AVENUE SOUTH
`NEW YORK NY 10003
`LIDDY, SULLIVAN, GALWAY & BEGLER
`
`COMPAGNIE FRANCAISE DE COMMERCE INTERNATIONAL COFCI
`(FRANCE CORP.)
`6 RUE ANATOLE DE LA FORGE
`75017 PARIS, FRANCE
`
`COFINLUXE (FRANCE CORP.)
`6 RUE ANATOLE DE LA FORGE
`PARIS, FRANCE 75017
`
`0454/0837
`COMPAGNIE FRANCAISE DE COMMERCE INTERNATIONAL COFCI
`(FRX CORP.)
`BRIGADE DISTRIBUTORS, LTD.
`ST., NEW YORK, NY, 10021
`Nov 18, 1983
`Dec 8, 1983
`Assigns the entire interest and goodwill
`
`(NY CORP.), 153 EAST 61ST
`
`0552/0651
`BRIGADE DISTRIBUTORS LIMITED (NY CORP.)
`COMPAGNIE FRANCAISE DE COMMERCE INTERNATIONAL COFCI
`(FRX CORP.)
`Aug 15, 1985
`Feb 9, 1987
`Assigns the entire interest and goodwill
`
`0718/0893
`COMPAGNIE FRANCAISE DE COMMERCE INTERNATIONAL COFCI
`(FRX CORP.)
`
`http://wvvw.trademark.com/cgi-bin/tmlist
`
`10/10/2003
`
`
`
`
`s
`
`Page 3 of 3
`
`Trademark.com - SN_73-243476
`5" .
`
`Assignee(s)
`
`Correspondt
`
`Date Sgnd/Ack
`Date Recorded
`
`Brief
`
`(DE CORP.), 15595 N.W. 15TH
`INC.
`FINE FRANGRANCES,
`AVENUE, MIAMI, FL, 33269
`FIDDLER & LEVINE, SUITE 7814, 350 FIFTH AVENUE, NEW
`YORK, NY 10118
`May 3, 1990
`Jun 18, 1990
`Assigns the entire interest and goodwill
`
`Reel/Frame
`Assignor(s)
`
`Assignee(s)
`
`Correspondt
`
`Date Sgnd/Ack
`Date Recorded
`Brief
`
`2319/0554
`COMPAGNIE FRANCAISE DE COMMERCE INTERNATIONAL-COFCI
`(FRX CORP.)
`COFINLUXE (FRX CORP.),
`PARIS, FRX, 75017
`DENNISON, SCHEINER, SCHULTZ & WAKEMAN, DONALD L.
`1745 JEFFERSON DAVIS HIGHWAY,
`DENNISON, SUITE 612,
`ARLINGTON, VA 22202
`Sep 10, 1998
`Jun 19, 2001
`Change of name
`
`6 RUE ANATOLE DE LA FORGE,
`
`
`
`Home Search Hetp
`
`List
`
`http://www.trademark.com/cgi-bin/tmlist
`
`10/10/2003
`
`
`
`
`
`Mccaner & English, LLP
`300 Park Avenue
`New York, NY 10022-7402
`212.609.6800
`fax 212.609.6921
`www.mccarter.com
`
`MCCARTER
`ENGLISH
`ATTORNEYS AT LAW
`\\
`
`October 10, 2003
`
`VIA EXPRESS MAIL
`
`Re:
`
`Opposition to Trademark Application for CAFE BRONZER & Design,
`Serial No. 78/186 343
`
`BOX TTAB - FEE
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Dear Sir or Madam:
`
`We enclose an original and two (2) copies of a Notice of Opposition and
`Certificate of Express Mailing on behalf of Opposer, Elizabeth Arden, Inc. for use in connection
`with opposition to the CAFE BRONZER & Design trademark registration application:
`
`Please charge our Deposit Account, No. 502639, the required $300.00 filing fee
`for this opposition.
`
`Kindly indicate receipt of this Notice of Opposition by stamping the enclosed pre-
`paid postage postcard, and return it to us.
`
`Thank you for your consideration.
`
`GHF:kk
`Enclosures
`
`ery truly yours,
`
`ht - F2 avozzg
`
`' Gary H.
`
`NWK2: l03l958.0l
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