Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA141434
`ESTTA Tracking number:
`05/18/2007
`
`Filing date:
`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
`Granted to Date
`of previous
`extension
`Address
`
`Cosmetic Warriors Limited
`05/20/2007
`
`29 High Street, Poole
`Dorset BH15 1AB,
`UNITED KINGDOM
`
`Domestic
`Representative
`
`John A. Clifford
`Merchant & Gould P.C.
`P.O. Box 2910
`Minneapolis, MN 55402
`UNITED STATES
`dockmpls@merchantgould.com, jclifford@merchantgould.com,
`dmattessich@merchantgould.com Phone:(612) 332-5300
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78856184
`05/18/2007
`
`Publication date
`Opposition
`Period Ends
`
`11/21/2006
`05/20/2007
`
`JKA,Inc.
`128 Singleton St
`Woonsocket, RI 02895
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 008.
`All goods and sevices in the class are opposed, namely: Electric hair trimmers; Eyelash curlers;
`Fingernail clippers; Hair cutting scissors; Manicure implements, namely, cuticle pushers, tweezers,
`files and clippers; Manicure sets; Nail clippers; Nail files; Nail nippers; Nail scissors; Nail skin
`treatment trimmers; Pedicure implements, namely, cuticle pushers, tweezers, files and clippers;
`Pedicure sets
`
`Grounds for Opposition
`
`Deceptiveness
`Priority and likelihood of confusion
`
`Trademark Act section 2(a)
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2282428
`
`Application Date
`
`02/25/1997
`
`

`
`Registration Date
`
`10/05/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`LUSH
`
`NONE
`
`Class 003. First use: First Use: 1995/04/10 First Use In Commerce: 1996/06/00
`perfumes; non-medicated toilet and cosmetic preparations, namely, lotions,
`powders and creams for use on the skin, dentifrices, cosmetic depilatory
`creams, personal deodorants, preparations for the care of the hair, shampoos,
`soaps, and essential oils for personal use
`Class 005. First use: First Use: 1995/04/10 First Use In Commerce: 1996/06/00
`[medicated hair care, skin care, teeth care and nail care preparations]
`
`3102767
`
`Application Date
`
`01/06/2005
`
`06/13/2006
`
`Foreign Priority
`Date
`LUSH FRESH HANDMADE COSMETICS
`
`NONE
`
`NONE
`
`Class 003. First use: First Use: 1996/06/00 First Use In Commerce: 2002/12/00
`Perfumes; non-medicated toilet and cosmetic preparations, namely lotions,
`powders and creams for use on the skin; preparations for cleansing and care of
`the skin; bath oils in solid and liquid form; personal deodorants; hair care
`preparations; oil based massage bars that melt on contact with the skin; solid
`moisturizers and skin conditioners in the form of a paste or face mask; bath bars
`that melt on contact with hot water to produce a soapy or oily suspension;
`soaps; and essential oils for personal use
`
`U.S. Registration
`No.
`Registration Date
`
`3001303
`
`09/27/2005
`
`Application Date
`
`04/27/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`LUSH
`
`NONE
`
`Class 016. First use: First Use: 1996/05/00 First Use In Commerce: 1996/06/00
`Catalogues listing and illustrating cosmetics and toiletry products; printed
`product lists featuring cosmetic products and toiletry products; printed point of
`sales display in the nature of signs and display boards; and paper bags
`
`U.S. Registration
`No.
`Registration Date
`
`3008685
`
`10/25/2005
`
`Word Mark
`Design Mark
`Description of
`
`LUSH
`
`NONE
`
`Application Date
`
`04/27/2004
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`Class 003. First use: First Use: 1995/04/10 First Use In Commerce: 1996/06/00
`Perfumes; non-medicated toilet and cosmetic preparations, namely lotions,
`powders and creams for use on the skin; preparations for cleansing and care of
`the skin; bath oils in solid and liquid form; personal deodorants; hair care
`preparations; oil based massage bars that melt on contact with the skin; solid
`skin moisturizers and skin conditioners in the form of a paste or face mask; bath
`bars that melt on contact with hot water to produce a soapy or oily suspension;
`soaps; and essential oils for personal use
`
`78747180
`
`Application Date
`
`11/04/2005
`
`NONE
`
`LUSH
`
`NONE
`
`Foreign Priority
`Date
`
`06/21/2005
`
`Class 044. First use:
`Hair salon services, namely, hair styling, coloring, washing, shampooing,
`conditioning, applying hair masks, head massages, and scalp massages;
`Beauty salon therapy services, namely, cleansing of the skin, applying face
`masks, applying back pack masks, skin peelers, steam treatments, toning,
`shaving, exfoliation treatments, treatments using creams and lotions against
`problem skin or older skin, and facial and body treatments consisting of a
`combination of creams/lotions and massage; Beauty salon services;
`Aromatherapy services; Skin care salon services; Massage services; Nail care
`and manicure services; Trichology services, namely, providing advice and
`consultancy relating to hair disorders in the nature of greasy hair, lank hair, dry
`hair, dandruff and split hairs; Counseling, advisory and information services in
`the field of beauty and cosmetics, and providing information about beauty by
`way of beauty demonstrations
`
`Attachments
`
`75247408#TMSN.gif ( 1 page )( bytes )
`76627078#TMSN.jpeg ( 1 page )( bytes )
`78408741#TMSN.jpeg ( 1 page )( bytes )
`78408752#TMSN.jpeg ( 1 page )( bytes )
`78747180#TMSN.jpeg ( 1 page )( bytes )
`LUSH JKA.pdf ( 6 pages )(352485 bytes )
`
`Signature
`Name
`Date
`
`/daniellemattessich/
`Danielle I. Mattessich
`05/18/2007
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`M&G 148 l 6.0005USAI
`
`Opposition No.
`Application No. 78/856184
`Mark: LUSH
`
`)
`)
`)
`)
`)
`)
`)
`
`) )
`
`Cosmetic Warriors Ltd,
`
`V
`
`JKA,lnc.,
`
`Opposer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`Cosmetic Warriors Ltd, a corporation duly organized and existing under the laws of the
`
`United Kingdom, with a mailing address of 29 High Street Poole, Dorset BH15 lAB, United
`
`Kingdom, believes that it will be damaged by the registration of the Mark shown in application Serial
`
`No. 78/856184, filed on April 6, 2006 by IKA, Inc., an Rhode Island corporation with a mailing
`
`address of 128 Singleton Street, Woonsocket, RI 02895, and hereby opposes registration of the Mark.
`
`The grounds for opposition are as follows:
`
`1. By the application herein opposed, Applicant is seeking to obtain under the provisions of the
`
`Trademark Act of 1946 as amended, registration on the Principal Register of the trademark
`
`LUSH for "electric hair trimmers; eyelash curlers;
`
`fingernail clippers; hair cutting
`
`scissors; manicure implements, namely, cuticle pushers,
`
`tweezers, files and clippers;
`
`manicure sets; nail clippers; nail files; nail nippers; nail scissors; nail skin treatment
`
`trimmers; pedicure implements, namely, cuticle pushers, tweezers, files and clippers;
`
`pedicure sets" in International Class 8. The application is based on Applicant's intention to
`
`use the mark in commerce.
`
`2. Applicant's Mark published for opposition on November 21, 2006. Opposer was granted a 90-
`
`day extension of time to oppose by the Trademark Trial and Appeal Board on December 12,
`
`

`
`2006, and an additional 60-day extension of time to oppose on March 19, 2007. This Notice of
`
`Opposition is timely filed.
`
`Opposer
`
`is
`
`the owner of the following U.S. Trademark Registrations and pending
`
`application(s):
`
`LUSH, U.S. Reg. No. 2,282,428, used in connection with perfumes; non— medicated
`toilet and cosmetic preparations, namely, lotions, powders and creams for use on the
`skin, dentifiices, cosmetic depilatory creams, personal deodorants, preparations for
`the care of the hair, shampoos, soaps, and essential oils for personal use,
`in
`International Class 3. Said registration was registered on the Principal Register on
`October 5, 1999 and was based on an application filed in the US. Patent and
`Trademark Office on February 25, 1997 alleging a date of first use of April 10, 1995,
`which is a date prior to the date offiling of Applicant's application.
`
`
`
`, U.S. Reg. No. 3,102,767, used in connection with perfumes; non~
`medicated toilet and cosmetic preparations, namely lotions, powders and creams for
`use on the skin; preparations for cleansing and care of the skin; bath oils in solid and
`liquid form; personal deodorants; hair care preparations; oil based massage bars that
`melt on contact with the skin; solid moisturizers and skin conditioners in the form of
`
`a paste or face mask; bath bars that melt on contact with hot water to produce a soapy
`or oily suspension; soaps; and essential oils for personal use, in Intemational Class 3.
`Said registration registered on the Principal Register on June 13, 2006 and was based
`on an application filed in the U.S. Patent and Trademark Office on January 6, 2005
`alleging a date of first use of June 1996, which is a date prior to the date of filing of
`Applicant's application.
`
`LUSH, U.S. Reg. No. 3,001,303, used in connection with catalogues listing and
`illustrating cosmetics and toiletry products; printed product lists featuring cosmetic
`products and toiletry products; printed point of sales display in the nature of signs and
`display boards; and paper bags, in International Class 16. Said registration registered
`on the Principal Register on September 27, 2005 and was based on an application
`filed in the U.S. Patent and Trademark Office on April 27, 2004 alleging a date of
`first use of May 1996, which is a date prior to the date of filing of Applicant's
`application.
`
`LUSH, U.S. Reg. No. 3,008,685, used in connection with perfumes; non-inedicated
`toilet and cosmetic preparations, namely lotions, powders and creams for use on the
`skin; preparations for cleansing and care of the skin; bath oils in solid and liquid
`form; personal deodorants; hair care preparations; oil based massage bars that melt on
`contact with the skin; solid skin moisturizers and skin conditioners in the form of a
`paste or face mask; bath bars that melt on contact with hot water to produce a soapy
`or oily suspension; soaps; and essential oils for personal use, in International Class 3.
`Said registration registered on the Principal Register on October 25, 2005 and was
`
`

`
`based on an application filed in the U.S. Patent and Trademark Office on April 27,
`2004 alleging a date of first use of April l0, 1995, which is a date prior to the date of
`filing of Applicant's application.
`
`LUSH, U.S. Application Serial No. 78/747180, intended to be used on hair salon
`services, namely, hair styling, coloring, washing, shampooing, conditioning,
`applying hair masks, head massages, and scalp massages; beauty salon therapy
`services, namely, cleansing of the skin, applying face masks, applying back pack
`masks, skin peelers, steam treatments,
`toning, shaving, exfoliation treatments,
`treatments using creams and lotions against problem skin or older skin, and facial
`and body treatments consisting of a combination of creams/lotions and massage;
`beauty salon services; aromatherapy services; skin care salon services; massage
`services; nail care and manicure services; trichology services, namely, providing
`advice and consultancy relating to hair disorders in the nature of greasy hair, lank
`hair, dry hair, dandruff and split hairs; counseling, advisory and information
`services in the field of beauty and cosmetics, and providing information about
`beauty by way of beauty demonstrations, in International Class 44. Said application
`is based on Opposer's intention to use the mark in U.S. commerce and was filed on
`November 4, 2005, which is a date prior to the date of filing of Applicant's
`application.
`
`4. Opposer's registered marks are valid and subsisting, and are prima facie evidence of
`
`Opposer's exclusive right to use said mark in commerce on the goods specified in each
`
`registration.
`
`In View of the identical nature of the marks and the highly related goods of the
`
`respective parties,
`
`it
`
`is alleged that Applicant's mark so resembles Opposer's registered
`
`marks, as to be likely to cause confusion, or to cause mistake, or to deceive.
`
`5. Since at least as early as April 10, 1995, Opposer has used the LUSH mark in the United States.
`
`Said use has been continuous since the date of first use and has not been abandoned.
`
`6. Opposer has advertised and promoted its LUSH mark extensively. Opposer has also made
`
`substantial sales under said mark. As a result of such use and promotion, Opposer's mark has
`
`developed and represents valuable goodwill inuring to the benefit of Opposer. Opposer
`
`operates over twenty nine retail stores in over fifteen states under its LUSH trademark in the
`
`United States, and will soon open more stores. Opposer sells a wide variety of products for
`
`grooming and personal care, including hair care, facial care, and hand/body care products.
`
`

`
`7.
`
`Opposer has priority with respect to the mark at issue in this opposition. Opposer has had
`
`priority of use of the LUSH mark long before the November 23, 2005 filing date noted in
`
`Applicant's application.
`
`Applicant's mark is confusingly and deceptively similar to Opposer's marks. The marks have
`
`a confiisingly similar meaning, and the goods of the parties are also highly related grooming,
`
`body care and personal hygiene products.
`
`Due to the identical nature of Applicant's claimed mark and Opposer's previously used
`
`marks, and the closely related nature of the goods of the respective parties, consumers and
`
`potential consumers are likely to believe that Applicant’s goods originate from Opposer,
`
`resulting in a likelihood of confusion in the marketplace, and damage to Opposer.
`
`Upon information and belief, the goods provided by Opposer under its LUSH marks and the
`
`goods intended to be provided by Applicant under its LUSH mark will be promoted and sold
`
`in the same channels of trade to the same consumers or class of consumers.
`
`Applicant's LUSH mark is confusingly similar in sight, sound and commercial impression to
`
`Opposer’s LUSH marks.
`
`The use and registration by Applicant of the mark LUSH for Applicant's goods is likely to
`
`cause confusion or to cause mistake or deception among consumers and potential consumers,
`
`with Opposer's previously used LUSH marks, again resulting in damage to Opposer.
`
`Applicant's mark dilutes and weakens Opposer's marks in violation of Opposer‘s rights,
`
`causing dilution of the distinctive qualities of the Opposer‘s marks.
`
`Because of the related nature of the goods, and the identical nature of the marks in
`
`appearance, sound, meaning and commercial impression, use and registration of the term
`
`LUSH by Applicant is likely to cause confusion, mistake, or deception that Applicant's goods
`
`are those of Opposer, or are otherwise endorsed, sponsored, or approved by Opposer causing
`
`10.
`
`ll.
`
`l2.
`
`13.
`
`14.
`
`

`
`further damage to Opposer. Applicant's product will look like a line extension of Opposer's
`
`product line to consumers.
`
`15. If Applicant is granted registration of the mark herein opposed, it would thereby obtain at
`
`least a primafacie exclusive right to the use of its alleged mark. Such registration would be a
`
`source of further damage and injury to Opposer.
`
`16. Registration of the mark shown in Application Serial No. 78/856184 will result in damage to
`
`Opposer under the provisions of §2 (a) and §2 (d) and §43 (c) (1) of the U.S. Trademark Act,
`
`15 U.S.C. § 1052, §1125 pursuant to the allegations stated above.
`
`WHEREFORE, Opposer asks that its opposition to this application be sustained and
`
`that the registration of the proposed mark LUSH set forth therein be refused. Please direct all
`
`correspondence to the attention of:
`
`John A. Clifford
`Merchant & Gould P.C.
`P.O. Box 2910
`
`Minneapolis, MN 55402-0910
`Tel: 612—336-4616 Fax: 612-332-9081
`
`

`
`Opposer hereby appoints:
`
`John A. Clifford, Reg. No. 30,247; Danielle I. Mattessich; Scott
`
`M. Oslickg Brian H. Batzli, Reg. No. 32,960; Gregory C. Golla; Scott W. Johnston, Reg. No. 39,721;
`
`D. Randall King; Andrew S. Ehard; and Christopher J. Schulte and as its attorneys with the full
`
`power to represent the Opposer in connection with this proceeding.
`
`Respectfully submitted,
`
`COSMETIC WARRIORS LTD,
`
`By its attorneys,
`
`Date:
`
`gmfiluli ggéfii ‘
`
`elle I. Mattessich
`1 RCHANT & GOULD P.C.
`’
`PO. BOX 2910
`
`Minneapolis, MN 55402-0910
`612.336.4616