IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) ) ) ) )
`
`Opposition No. 91 16221 1
`) Serial No. 78326702
`
`SALVATORE FERRAGAMO ITALIA
`
`S .p.A.,
`
`Opposer,
`
`VS.
`
`) ) ) )
`
`PARIS PRESENTS INCORPORATED,
`
`Applicant.
`
`ANSWER TO NOTICE OF OPPOSITION
`
`Paris Presents Incorporated (“Paris Presents”), by and through its undersigned
`
`counsel, hereby Answers Opposer Salvatore Ferragamo Italia S.p.A.’s Notice of Opposition
`
`as follows:
`
`1.
`
`an Illinois
`is
`Incorporation,
`Applicant, Paris Presents
`corporation with an address of 3800 Swanson Court, Gumee,
`Illinois 60031.
`
`ANSWER:
`
`Paris Presents
`
`states
`
`that
`
`its correct
`
`legal name is Paris Presents
`
`Incorporated. Paris Presents admits the remainder of Paragraph 1.
`
`2.
`
`On November 12, 2003, Applicant filed an application to
`register
`the mark "THE FOOT DIVA" based upon an
`intention to use the mark on, inter alia, "antibacterial scented
`foot sprays, non-medicated foot soothing gels, leg after-bath
`gels, foot scrubs, non-medicated foot lotions, skin sloughing
`lotions, non-medicated foot soaks, non-medicated scented
`foot sprays, pumice stones for personal use, emery boards and
`professional emery boards" (in International Class 3). The
`mark was published for opposition in the August 24, 2004
`edition of the Official Gazette.
`
`ANSWER:
`
`Admitted.
`
`Opposer is the owner, by assignment, of incontestable U.S.
`Registrations No. 1,372,041 - DIVA, No. 1,367,262 - DIVA
`UNGARO & Design, and No. 1,366,196 - DIVA UNGARO
`& Design, for "perfume and eau de parfum" in International
`Class 3, all of which claim a date of first use in interstate
`
`# 448477.v0l 11/2/04 1:39 PM 9MlP0l !.DOC
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`4351.008
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`

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`-
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`commerce‘ of March 12, 1984; Opposer is also the owner, by
`assignment, of incontestable U.S. Registration No. 1,457,922
`- DIVA, for "bath soap, bath gel, body lotion, body creme,
`dusting powder" in International Class 3, which claims a date
`of first use
`in interstate commerce of June 3,
`1985;
`
`additionally, Opposer is the owner of U.S. Registration No.
`2,534,401 - FLEUR DE DIVA & Design, which was
`adopted and first used by Opposer in interstate commerce on
`"perfiames, eau de parfum, cologne, toilet water, soaps, bath
`soaps, toilet soaps; bath and shower gel; body lotions and skin
`lotions" in International Class 3 at least as early as March
`1998. The aforesaid registrations are valid and subsisting,
`have been neither revoked nor cancelled, and have not expired
`(hereinafter referred to collectively as "the DIVA Marks").
`Copies of the details of these registrations (from the database
`of the U.S. Patent and Trademark Office) are attached hereto
`as Exhibits 1-5, respectively. Opposer will
`rely on these
`registrations, which are in full force and effect, and a Notice
`of Reliance will be filed during Opposer's testimony period
`pursuant to 37 C.F.R. § 2.122(d)(2).
`
`ANSWER:
`
`Paris Presents is without knowledge or information sufficient to Answer the
`
`allegations contained in Paragraph 3 and on that basis denies them.
`
`4.
`
`For the foregoing reasons, Opposer has a substantial interest
`in the outcome of this case that is both personal and beyond
`that of the general public.
`
`ANSWER:
`
`Paris Presents is without knowledge or information sufficient to Answer the
`
`allegations contained in Paragraph 4 and on that basis denies them.
`
`5.
`
`Opposer has applied to register, registered and used the DIVA
`Marks on its fragrances and personal care products, including
`bath and shower gels, body lotions and skin lotions, since
`long prior to Applicant's filing date.
`
`ANSWER:
`
`Paris Presents is without knowledge or information sufficient to Answer the
`
`allegations contained in Paragraph 5 and on that basis denies them.
`
`6.
`
`in
`Opposer's DIVA Marks have been in continuous use,
`interstate commerce, on fragrances and personal care products
`for over twenty (20) years. Through such long and continuous
`use, Opposer's DIVA Marks have become well-known to
`consumers. Moreover, Opposer has built up a high degree of
`distinctiveness and valuable goodwill
`in its DIVA Marks
`
`-2-
`
`

`
`
`
`through the investment of a great deal of time, effort and
`money. As a result, Opposer's DIVA Marks are well-known
`and recognized as identifying Opposer and its fragrances and
`personal care products, and distinguishing them from like or
`similar products of others.
`
`ANSWER:
`
`Paris Presents is without knowledge or information sufficient to Answer the
`
`allegations contained in Paragraph 6 and on that basis denies them.
`
`7.
`
`Applicant's mark is extremely similar in sight, sound and
`connotation
`to Opposer's DIVA Marks,
`and wholly
`incorporates Opposer's DIVA Mark; the dominant feature of
`Applicant's mark is the word "DIVA," which is identical to
`Opposer's DIVA Marks,
`and pronounced the same as
`Opposer's DIVA Marks. In fact, Applicant has disclaimed the
`word "FOOT."
`
`ANSWER:
`
`Paris presents denies the allegations contained in the first sentence of
`
`Paragraph 7. Paris Presents admits the allegations contained in the second sentence of
`
`Paragraph 7.
`
`8.
`
`Applicant's goods in International Class 3 are either identical
`or closely related to the fragrances and personal care products,
`including bath and shower gels, body lotions and skin lotions,
`sold by Opposer under its DIVA Marks. In this regard, many
`of Opposer's products sold under its DIVA Marks are used on
`the foot.
`
`ANSWER:
`
`Denied.
`
`9.
`
`Opposer has not authorized Applicant to use or register the
`mark "THE FOOT DIVA" mark, nor does Opposer exercise
`any control over Applicant's use of the mark.
`
`ANSWER:
`
`Admitted.
`
`10.
`
`Registration and use of Applicant's mark in International
`Class 3 will reduce the value of the goodwill associated with
`Opposer's DIVA Marks.
`
`ANSWER:
`
`Denied.
`
`11.
`
`Registration and use of Applicant's mark in International
`Class 3 is likely to damage Opposer's business reputation and
`to injure and impair Opposer's rights in its DIVA Marks by
`
`-3-
`
`

`
`causing confusion, mistake and/or deception as to the source
`of those products marketed and sold by Applicant. Persons
`familiar with Opposer's DIVA Marks will be likely to
`purchase Applicant's products in International Class 3 in the
`mistaken belief that they are marketed by, or in some way
`affiliated with or endorsed by, Opposer, possibly causing loss
`of sales to Opposer. In addition, any defect, failure, or fault
`with respect
`to products offered by Applicant under the
`proposed mark in International Class 3 will erode the valuable
`goodwill associated with Opposer and its DIVA Marks.
`
`ANSWER:
`
`Denied.
`
`12.
`
`Registration and use of Applicant's mark in International
`Class 3 will result in dilution of Opposer's DIVA Marks, as it
`would lessen the capacity of those famous marks to identify
`and distinguish Opposer's goods.
`
`ANSWER:
`
`Denied.
`
`13.
`
`its mark in
`If Applicant were granted registration of
`International Class 3, its would thereby obtain a prima facie
`exclusive right to use the mark on those goods described in its
`application in International Class 3, contributing to the
`damage and injury that would be suffered by Opposer.
`
`ANSWER:
`
`Paris Presents admits that if it were granted registration of its FOOT DIVA
`
`mark in International Class 3, it would thereby obtain a prima facie exclusive right to use the
`
`mark on those goods described in its application in International Class 3. Paris Presents
`
`denies the remaining allegations contained in Paragraph 13.
`
`14.
`
`For these reasons, Opposer expressly alleges and asserts that
`registration of the mark "THE FOOT DIVA" by Applicant for
`the referenced goods would be inconsistent with the standards
`for registration set forth in 15 U.S.C.§ 1052, 1063 and other
`applicable authority.
`
`ANSWER:
`
`Paris Presents admits that Opposer expressly alleges and asserts that
`
`registration of the mark "THE FOOT DIVA" by Paris Presents for the referenced goods
`
`would be inconsistent with the standards for registration set forth in 15 U.S.C.§ 1052, 1063
`
`

`
`and other applicable authority.
`
`Paris Presents denies that Opposer’s allegations and
`
`assertions have merit.
`
`DATED:
`
`November 2 2004.
`
`Respectfully Submitted,
`
`Paris Presents Incorporated
`
`By One of Its A omeys
`
`Oscar L. Alcantara
`
`Michael K. Hendershot
`
`GOLDBERG, KOHN, BELL, BLACK,
`
`ROSENBLOOM & MORITZ, LTD.
`55 East Monroe Street
`
`Suite 3700
`
`Chicago, Illinois 60603
`(312) 201-4000
`Firm Code No. 24139
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned, an attorney, certifies that on November 2, 2004 he caused a
`
`true copy of ANSWER TO NOTICE OF OPPOSITION to be served upon the following
`
`individuals before the hour of 5:00 p.m.:
`
`VIA CERTIFIED MAIL
`
`James L. Bickoff LLP, Esq.
`Silverberg Goldman & Bikoff LLP
`1101 30"‘ St. NW
`
`Washington DC 20007
`
`%
`
`

`
`GOLDBERG KOHN BELL BLACK ROSENBLOOM & MORITZ, LTD
`
`November 2, 2004
`
`michael.hendershot@goldbergkohn.com
`direct phone: 312.201.3886
`direct fax: 312.863.7886
`
`VIA EXPRESS MAIL
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Re:
`
`THE FOOT DIVA, Opposition No. 91162211
`
`Dear Sir or Madam:
`
`Enclosed is Paris Presents Incorporated's Answer to the notice of opposition in the above matter.
`
`Best Regards,
`
`Michael K. Hendershot
`
`MKH/dmo
`Enclosure
`
`cc:
`
`Oscar L. Alcantara, Esq. (w/enclosure)
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`1 1-02-2004
`U.S. Patent & "MOfcITl‘.1 Mail Rrzpt Dt. #11313
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`4351-008
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`TEL 312.201.4000 FAX 312.332.2196 WEB WWW.GOLDBERGKOHN.COM
`55 EAST MONROE STREET sum 37oo CHICAGO ILLINOIS 60603-5802
`‘IIII MERITAS LAW FIRMS WORLDWIDE