Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA184446
`ESTTA Tracking number:
`01/03/2008
`
`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
`
`SkinMedica, Inc.
`01/05/2008
`
`5909 Sea Lion Place, Suite H
`Carlsbad, CA 92010
`UNITED STATES
`
`Attorney
`information
`
`F.T. Alexandra Mahaney
`Wilson Sonsini Goodrich & Rosati
`12235 El Camino Real, Suite 200
`San Diego, CA 92130
`UNITED STATES
`amahaney@wsgr.com Phone:8583502300
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International
`Registration No.
`Applicant
`
`79038515
`01/03/2008
`
`0924256
`
`Publication date
`Opposition
`Period Ends
`International
`Registration Date
`
`11/06/2007
`01/05/2008
`
`12/22/2006
`
`davinder panacer
`5 Tamar Road, Oadby
`Leicester, LE2 4GN
`UNITED KINGDOM
`Goods/Services Affected by Opposition
`
`Class 003.
`All goods and services in the class are opposed, namely: Cosmetics, perfumery, non medicated skin
`care preparations, hair care preparations
`Class 044.
`All goods and services in the class are opposed, namely: Health services namely health care and
`advice and consultancy sevices relating thereto;beauty services namely beauty salons and spas,
`advice and consultancy services relating thereto
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`3188953
`
`12/26/2006
`
`Application Date
`
`07/14/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SKINMEDICA
`
`NONE
`
`Class 003. First use: First Use: 1999/06/30 First Use In Commerce: 1999/06/30
`Body and facial beauty care and skin-preparations, namely, facial cleansers;
`moisturizing creams and lotions; skin tone, texture and firming creams and
`lotions; after sun creams; sun damage repair creams; age-retardant creams;
`age spot reducing creams; sunscreens; exfoliant creams; chemical skin peeling
`solutions; skin firming creams, hydrating creams and skin toners; body and
`facial mists and sprays; eye creams and serums; and beauty masks
`
`U.S. Registration
`No.
`Registration Date
`
`2757644
`
`08/26/2003
`
`Application Date
`
`06/10/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SKINMEDICA
`
`NONE
`
`Class 005. First use: First Use: 1999/05/01 First Use In Commerce: 1999/05/15
`Pharmaceuticals and cosmeceuticals, namely, medicated skin cleansers, toners,
`moisturizers, rejuvenators, rehydrating creams, and lotions for the face and body
`
`U.S. Registration
`No.
`Registration Date
`
`3341250
`
`11/20/2007
`
`Application Date
`
`07/21/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SKINMEDICA <&gt;
`
`The mark consists of the less than/great than symbols, side-by-side above the
`word SKINMEDICA. Color is not claimed as a feature of the mark.
`Class 003. First use: First Use: 2005/07/31 First Use In Commerce: 2005/07/21
`Body and beauty care cosmetics; Face and body beauty creams; Face and body
`lotions
`Class 005. First use: First Use: 2005/07/31 First Use In Commerce: 2005/07/31
`Pharmaceutical preparations for the treatment of hirsutism and hair growth
`retardation, acne, hyperpigmentation disorders, eczema, dermatitis, rosacea,
`psoriasis and onychomycosis; Pharmaceutical preparations for treating skin
`disorders; Pharmaceutical preparations for use in dermatology
`
`U.S. Application
`No.
`Registration Date
`
`78670920
`
`NONE
`
`Word Mark
`Design Mark
`
`SKINMEDICA
`
`Application Date
`
`07/14/2005
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use:
`Body and facial beauty and skin-care products, namely, body cleansers, freckle
`reducing creams and non-medicated acne prevention creams
`
`Attachments
`
`78670479#TMSN.jpeg ( 1 page )( bytes )
`78675180#TMSN.jpeg ( 1 page )( bytes )
`78670920#TMSN.jpeg ( 1 page )( bytes )
`Opposition SKINMEDICS.pdf ( 4 pages )(32942 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/alexandra mahaney/
`F.T. Alexandra Mahaney
`01/03/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 79/038,515
`Published in the Oflicial Gazette on November 6, 2007
`Trademark: SKINMEDICS
`
`SkinMedica, Inc.
`
`Opposer
`
`V.
`
`Davinder Panacer,
`
`Applicant.
`
`NOTICE OF OPPOSITION
`
`SkinMedica, Inc. (“Opposer”), a Delaware corporation having a principal place of business at
`
`5909 Sea Lion Place, Suite H, Carlsbad, CA 92010, believes it will be damaged by registration of
`
`the mark SKINMEDICS shown in Serial No. 79/038,515 in International Class 3 and International
`
`Class 44 and hereby opposes the same.
`
`As grounds for opposition, Opposer alleges:
`
`l.
`
`Opposer has obtained all necessary extensions of time in which to oppose the
`
`challenged trademark following publication.
`
`2.
`
`Davinder Panacer (“Applicant”) has filed an application to register the mark
`
`SKINMEDICS for “cosmetics, perfumery, non medicated skin care preparations, hair care
`
`preparations” in International Class 3, and for “health services namely health care and advice and
`
`consultancy services relating thereto; beauty services namely beauty salons and spas, advice and
`
`consultancy services relating thereto” in International Class 44, as evidenced by the publication of
`
`such mark in the Oflicial Gazette on November 6, 2007.
`
`C :\NrPortb1\PALIB l\KBLU\325 2962_3 .DOC (5 5 20)
`
`

`
`3.
`
`Applicant is, upon information and belief, an individual having a principal place of
`
`business and/or residence at 5 Tamar Road, Oadby, Leicester LE2, 4GN, United Kingdom.
`
`4.
`
`Opposer has, since at least as early as May 15, 1999, used the mark SKINMEDICA in
`
`connection with a wide Variety of skin care preparations. Opposer is the owner of registrations and
`
`pending applications for the trademarks SKINMEDICA and SKINMEDICA & DESIGN:
`
`0 U.S. Registration No. 3,188,953 for SKINMEDICA for “body and facial beauty care
`
`and skin—preparations, namely, facial cleansers; moisturizing creams and lotions; skin
`
`tone, texture & firming creams and lotions; after sun creams; sun damage repair
`
`creams; age—retardant creams; age spot reducing creams; sunscreens; exfoliant;
`
`chemical skin peeling solutions; skin firming creams, hydrating creams, and toners;
`
`body and facial mists and sprays; eye creams and serums; and beauty masks” in class
`
`3. This application was filed July 14, 2005, with a date of first use of at least by June
`
`30, 1999.
`
`0 U.S. Registration No. 2,757,644 for SKINMEDICA for “pharmaceuticals and
`
`cosmeceuticals, namely, medicated skin cleansers, toners, moisturizers, rejuvenators,
`
`re—hydrating creams, and lotions for the face and body” in class 5. This application
`
`was filed June 10, 2002, with a date of first use of at least by May 15, 1999.
`
`0 U.S. Registration No. 3,341,250 for the SKINMEDICA logo for “body and beauty
`
`care cosmetics; face and body beauty creams; face and body lotions” in class 3, and
`
`“Pharmaceutical preparations for the treatment of hirsutism and hair growth
`
`retardation, acne, hyperpigmentation disorders, eczema, dermatitis, rosacea, psoriasis
`
`and onychomycosis; Pharmaceutical preparations for treating skin disorders;
`
`Pharmaceutical preparations for use in dermatology” in class 5.
`
`C:\NrPortb1\PALIB l\KBLU\3252962_3 .DOC (5520)
`
`-2-
`
`

`
`0 U.S. Application No. 78/670,920 for SKINMEDICA, filed July 14, 2005, for “body
`
`and facial beauty and skin—care products, namely, body cleansers, freckle reducing
`
`creams and non—medicated acne prevention creams” in class 3.
`
`5.
`
`There is no issue as to priority. Upon information and belief, Applicant has not used
`
`the mark on its goods prior to December 22, 2006, as evidenced by Applicant’s Intent—to—Use
`
`application filed on December 22, 2006. Opposer has used the mark in commerce since 1999, Well
`
`before the filing of Applicant’s application for SKINMEDICS. Thus, Opposer’s SKINMEDICA
`
`mark has priority over Applicant’s SKINMEDICS mark.
`
`6.
`
`Opposer has sold its goods under the mark SKINMEDICA throughout the United
`
`States and has developed exceedingly valuable goodwill with respect to the mark SKINMEDICA.
`
`7.
`
`By virtue of its efforts and the expenditure of considerable sums for promotional and
`
`advertising activities and by virtue of the excellence of its goods, Opposer has gained for its mark
`
`SKINMEDICA a most valuable reputation and has created, in the minds of the buying public, an
`
`exclusive association between SKINMEDICA and its goods.
`
`8.
`
`The trademark proposed for registration by Applicant, namely SKINMEDICS, is
`
`likely to be confused with Opposer’s mark, SKINMEDICA, because the marks are similar in
`
`appearance, sound and overall commercial impression.
`
`9.
`
`Applicant seeks to register SKINMEDICS as a mark in connection with goods and
`
`services that are substantially similar to the goods of Opposer and such use so nearly resembles
`
`Opposer’s use as likely to cause confusion, to cause mistake or to deceive within the meaning of 15
`
`U.S.C. § l052(d).
`
`10.
`
`If Applicant is permitted to use and register the SKINMEDICS mark for its goods and
`
`services as specified in the opposed application, confusion in trade resulting in damage and injury to
`
`C:\NrPortb1\PALIB1\KBLU\3252962_3.DOC (5520)
`
`-3-
`
`

`
`Opposer would be caused and would result by reason of the fact that Applicant’s mark is confusingly
`
`similar to Opposer’s mark. Persons familiar with Opposer’s SKINMEDICA mark would be likely to
`
`buy Applicant’s SKINMEDICS goods and services as goods and services offered and sold by
`
`Opposer. Furthermore, any defect, objection, or fault found with Applicant’s goods and services
`
`marketed under its SKINMEDICS mark would be likely to reflect upon and seriously injure the
`
`reputation that Opposer has established for its goods offered under its SKINMEDICA mark.
`
`ll.
`
`The mark SKINMEDICA is distinctive and well—known throughout the United States,
`
`and has become closely associated with the goods of Opposer. The SKINMEDICA mark became
`
`Well—known prior to the filing of Applicant’s intent—to—use application for SKINMEDICS.
`
`12.
`
`The trademark proposed for registration by Applicant, namely SKINMEDICS, is
`
`likely to dilute and actually dilutes Opposer’s SKINMEDICA mark and reduces the capacity of the
`
`Well—knoWn SKINMEDICA mark to identify the goods of Opposer.
`
`13.
`
`If Applicant is granted the registration herein opposed, such registration would be a
`
`source of damage and injury to Opposer.
`
`WHEREFORE, Opposer prays that the opposition be sustained and that the application be
`
`refused for registration.
`
`Dated: January 3, 2008
`
`C:\NrPortb1\PALIB l\KBLU\3252962_3 .DOC (5520)
`
`Respectfully submitted,
`
`WILSON SONSINI GOODRICH & ROSATI
`
`By: /alexandra mahaney/
`F.T. Alexandra Mahaney
`Attorneys for SkinMedica, Inc.
`12235 El Camino Real, Suite 200
`
`San Diego, CA 92130
`(858) 350-2300