IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Our Docket: Tl1867USO
`
`Jafer Limited
`
`) Opposition No.
`
`) )
`
`In the matter of Application
`) Serial No. 76/058,231
`
`) Mark: AROMASPORT and Design
`) Published in the Oflicial Gazette on
`) September 7, 2004.
`)
`)
`)
`
`vs.
`
`Aromasport Limited
`.
`Box TTAB
`
`FEE
`
`Commissioner for Trademarks
`P.O. BOX 1451
`
`Alexandria, Virginia 22313-1451
`
`NOTICE OF OPPOSITION
`
`Opposer, Jafer Limited, a Bermuda corporation, located and doing business at Cedar
`
`House, 41 Cedar Avenue, Hamilton HMl2, Bermuda, believes that it will be damaged by
`
`registration of the mark shown in Application Serial No. 76/058,231, and hereby opposes same.
`
`Applicant's application for AROMASPORT and Design was filed on May 25, 2000 for
`
`perfumes; soaps; essential oils for personal use; hair lotions; non-medicated body oils, balms and
`
`lotions in International Class 3. It was published for Opposition in the Oflicial Gazette on
`
`September 7, 2004. Opposer filed a 90-day Request for Extension of Time to File Notice of
`
`Opposition, which was granted on September 16, 2004. Opposer has, therefore, until January 5,
`
`2005 to file this Notice of Opposition and has filed it timely.
`
`

`
`
`
`OPPOSER’S STANDING
`
`1.
`
`Opposer is, and for many years prior to the filing of the application here
`
`opposed has been, engaged in the business of developing, marketing and selling a wide range of
`
`consumer products, particularly cosmetics and skin and body care preparations.
`
`2.
`
`Opposer is the owner of U.S. Trademark Registration No. 2,251,818 for
`
`the mark AROM. (See Exhibit A) Said registration issued on June 8, 1999 and lists a date of
`
`first use of September 24, 1998. The goods listed in the registration are: makeup removers,
`
`incense, facial cleansers, eye makeup removers, soap, beauty masks, body masks, facial masks
`
`and skin masks, foundations, concealers, baby powder, bath powder, body powder, face powder,
`
`non-medicated foot powder and talcum powder, blusher, eye shadows, eye liners, eye pencils,
`
`mascara, lipsticks, non-medicated lip balm, lip pencils, nail enamel, nail enamel remover, nail
`
`strengthener, perfume, cologne, eau de toilette, eau de parfum, aftershave lotion, after sun gel,
`
`body lotion, deodorant for personal use, antiperspirant, hair shampoo, hair conditioners, baby
`
`shampoo, baby talc, baby cologne, bust cream, astringents for cosmetic purpose, bubble bath,
`
`cosmetic, namely, compacts, emery boards, hair dressing, artificial eyelashes, artificial
`
`fingernails, hair color, potpourri, bath oil, bath salts, baby oil, hair bleaching preparations, body
`
`oil, breath freshener, face cleansing lotions and body cleansing lotions, cold creams, cosmetic
`
`pencils, cosmetic cotton, cotton puffs for cosmetic purpose, cotton sticks for cosmetic purpose,
`
`cotton swabs for cosmetic purpose, eye cream, hair removing cream, hand cream, night cream,
`
`skin cream, vanishing cream, curl papers, cuticle removing preparations, deodorant soap,
`
`depilatory cream, hair dyes, hair gel, hydrogen peroxide for use on the hair, essential oils, facial
`
`scrubs, bath gel, tooth gel, hair care preparations, hair relaxing preparations, hair rinses, hair
`
`spray, lip gloss, massage oil, facial make-up, foundation make-up, eye make-up, skin
`
`moisturizer, face moisturizer and body moisturizer, nail care preparations, nail grooming
`
`products, namely, tips, glue, lacquer and glitter, nail hardeners, nail polish, nail polish base coat,
`
`nail polish remover, nail polish top coat, oils for personal use, petroleum jelly for cosmetic
`
`purposes, pre-moistened cosmetic tissues, pre-moistened cosmetic towelettes, pre-moistened
`
`cosmetic wipes, rouge, sachets, saddle soap, shaving balm, shaving cream, shaving gel, shaving
`
`-2-
`
`

`
`
`
`lotion, shower gel, skin clarifiers, skin cleansing cream, skin cleansing lotions, skin emollients,
`
`skin lighteners, skin lotions, skin soaps, skin toners, toilet soap, liquid soap for face, liquid soap
`
`for hands and liquid soap for body, sunblock preparations, sunscreen preparations, sun taming
`
`preparations, cotton wipes for cosmetic purposes, wrinkle removing skin care preparations in
`
`Class 3.
`
`3.
`
`Opposer is the owner of U.S. Trademark Application Serial No.
`
`78/306,384 for the mark AROM SPORT. (See Exhibit B) Said application was filed on
`
`September 27, 2003 and lists the following goods: cologne, perfume, eau de toilette, eau de
`
`parfum, after shave lotion, toilet soap, talcum powder, body powder, deodorant for personal use,
`
`antiperspirant, body lotion, body gel, bath salts, skin cream, hair shampoo, hair conditioners,
`
`shower gel, liquid facial soap, liquid hand soap, liquid body soap; hand cream, facial cream, body
`
`cream; cosmetic creams, facial soap, cosmetics, facial moisturizers, skin and facial masks,
`
`makeup removers, facial cleaners, eye makeup removers, eyelashes makeup remover, eyebrow
`
`makeup remover, facial makeup removers, astringents for cosmetic purpose, skin cleansing
`
`lotions, cold creams, night cream, skin cleansing cream, vanishing cream, skin moisturizer,
`
`wrinkle removing skin care preparations, skin clarifiers, skin cleansing lotions, skin lighteners,
`
`skin lotions, skin toner; cosmetics creams, lotions and gels in Class 3. Opposer has received an
`
`Office Action dated April 5, 2004 refusing registration based on a likelihood of confusion with
`
`Registrant’s mark AROMASPORT and Design.
`
`GROUNDS FOR OPPOSITION
`
`4.
`
`The alleged mark AROMASPORT and Design intended to be registered
`
`by the Applicant is nearly identical and confusingly similar to Opposer’s above listed mark
`
`AROM. Applicant’s alleged mark incorporates Opposer’s entire registered mark at the very
`
`beginning, most visible portion of the alleged mark. Thus, consumers are highly likely to be
`
`lconfused when confronted by Applicant’s alleged mark and will believe it is related to Opposer.
`
`

`
`
`
`5.
`
`Consumers are even more likely to be confused because Applicant's
`
`alleged mark and Opponent's marks are used in the same industry, the skin care industry.
`
`Applicant's proposed goods and Opposer’s goods are often sold by the same companies and are
`
`likely to be marketed in similar ways through the same channels of trade, to the same consumers.
`
`6.
`
`Use and registration of Applicant's alleged mark AROMASPORT and
`
`Design will cause confusion, mistake or deception. The public is likely to be deceived as to the
`
`source of Applicant's goods and/or falsely infer a connection with or endorsement by Opposer.
`
`In view of the similarity of the respective marks and the related nature of the goods of the
`
`respective parties, it is alleged that Applicant's mark so resembles Opposer’s marks as to be likely
`
`to cause confusion, or to cause mistake, or to deceive.
`
`7.
`
`Registration of Applicant's alleged mark would deprive Opposer of the
`
`exclusive use of its trademarks, would infringe said trademarks, would violate Opposer’s rights
`
`therein, would expose Opposer to further violation of its trademarks by others, and would
`
`diminish the commercial value of the trademarks to Opposer in various ways both in the United
`
`States and foreign countries where Opposer plans to use the marks. In addition, such registration
`
`would be a source of damage and injury to Opposer’s customers.
`
`8.
`
`Consequently, Applicant's alleged mark does not and cannot exclusively
`
`identify goods on which it is used as the goods of the Applicant, nor can it serve as an indication
`
`of the source of origin of such goods. Therefore, Applicant should not be entitled to registration
`
`of its alleged mark.
`
`9.
`
`Opposer’s date of first use of its mark as verified in its Certification of
`
`Registration was on September 24, 1998, over a year and a half before Applicant filed its
`
`application. Thus, Opposer has clear priority.
`
`10.
`
`Opposer’s registration for the mark AROM issued on June 8, 1999, nearly
`
`one year prior to the filing date of Applicant’s alleged mark. Applicant was on constructive
`
`l
`
`-4-
`
`

`
`notice of Opposer’s prior rights in the mark prior to its filing date of May 25, 2000. Thus,
`
`Opposer contends on information and belief that Applicant's alleged mark AROMASPORT and
`
`Design was adopted in bad faith with knowledge, or constructive knowledge, of Opposer's prior
`
`and superior rights in the mark AROM. Applicant knew or should have known it was not
`
`entitled to the mark for which it seeks registration, but nevertheless alleged ownership of the
`
`mark and swore that no one else had the right to use the same or similar mark in commerce.
`
`Applicant should, therefore, not be entitled to registration of its alleged mark.
`
`11.
`
`Opposer has invested a substantial amount of money in the development
`
`of product packaging and advertising for the mark AROM. Therefore, under the principles of
`
`equity Applicant should choose a new mark, one which is not nearly identical and confusingly
`
`similar to Opposer’s, one which does not dilute the distinctiveness of Opposer’s coined mark,
`
`and one that is not an unfair attempt to take advantage of Opposer's work and financial
`
`investment.
`
`12.
`
`Opposer hereby gives notice under 37 C.F.R. §2.122 that at any hearing
`
`and on any appeal of this opposition proceeding it will rely on any existing trademark and
`
`copyright registrations, common law trademark rights, and pending trademark applications.
`
`

`
`EXHIBIT B
`
`

`
`
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`Typed Drawing
`
`Word Mark AROM SPORT
`
`ods and
`ervices
`
`IC 003. US 001 004 006 O50 051 052. G & S: Cologne, perfume, eau de toilette, eau de
`parfum, after shave lotion, toilet soap, talcum powder, body powder, deodorant for
`personal use, antiperspirant, body lotion, body gel, bath salts, skin cream, hair shampoo,
`hair conditioners, shower gel, liquid facial soap, liquid hand soap, liquid body soap;
`hand cream, facial cream, body cream; cosmetic creams, facial soap, cosmetics, facial
`moisturizers, skin and facial masks, makeup removers, facial cleaners, eye makeup
`removers, eyelashes makeup remover, eyebrow makeup remover, facial makeup
`removers, astringents for cosmetic purpose, skin cleansing lotions, cold creams, night
`cream, skin cleansing cream, vanishing cream, skin moisturizer, wrinkle removing skin
`care preparations, skin clarifiers, skin cleansing lotions, skin lighteners, skin lotions,
`skin toner; cosmetics creams, lotions and gels
`
`
`
`(1) TYPED DRAWING
`
`78306384
`
`September 27, 2003
`
`1B
`
`1B
`
`(APPLICANT) Jafer Limited CORPORATION BERMUDA Cedar House, 41 Cedar
`Avenue Hamilton BERMUDA HMl2
`
`Attorn y of
`
`Marnie Wright Bamhorst
`
`2.251818
`
`.uspto.gov/bin/showf1eld?%doc&state=7m0u8g.2.1
`
`1/5/2005
`
`
`
`

`
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`/“"
`
`1754 [5
`
`Our Docket: T1 l867USO
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application
`Serial No. 76/058,231
`Mark: AROMASPORT and
`
`Design
`Published in the Oflicial Gazette on
`September 7, 2004.
`CERTIFICATION UNDER 37 CFR§ 1.8
`
`%/\y\J%\/\/%\/
`
`I hereby cenify that the documents referred to as enclosed herein are being
`,—
`) deposited yvith the Urtig States Postal Service as first class mail on this date
`' '3 6
`.
`in an envelope addressed 10' Box TTAB,
`) FEE. Commissioner for Trademarks, PO. Box 1451, Alexandria, VA 22313-
`) l45l.
`) Mamie Wright Bamhorsl
`(Name of person mailing paper)
`L/IA/2,4/£3’.
`Signature
`
`Jafer Limited
`
`VS.
`
`Aromasport Limited
`
`Box
`
`TTAB
`
`FEE
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`\
`
`l Alexandria, VA 22313-1451
`
`l
`
`lDear Sir:
`
`TRANSMITTAL OF NOTICE OF OPPOSITION
`
`Enclosed are the following documents:
`
`l
`ll.
`
`Notice of Opposition.
`
`Our Check Number
`
`Z CZ Z3 in the amount of $300.00 to cover the Notice of Opposition
`
`filing fee.
`
`A duplicate copy of the Notice of Opposition including exhibits.
`
`The Commissioner is hereby authorized to charge any additional fees which may be
`
`required, or credit any overpayment to Deposit Account No. 500-405. A duplicate copy of
`this sheet is enclosed.
`
`l
`
`l
`
`01-1 0-2005
`US. Patent It TMO1cITM Mail Rcpt DI. #64
`
`

`
`
`
`5.
`
`Postcard verifying receipt at TTAB.
`
`ii‘
`
`Dated:
`
`/ -15"- C
`
`.1
`‘em
`
`5
`\
`
`The Trademark Group, APLC
`7850 Ivanhoe Avenue
`La Jolla, California 92037
`Telephone:
`(858) 456-4801
`Facsimile:
`(85 8) 456-4802
`
`0
`j
`
`Respectfully submitted,
`
`L//law/@166
`
`Marnie Wright Barnhorst
`Registration No. 36,740
`
`

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