Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA428760
`ESTTA Tracking number:
`09/06/2011
`
`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
`
`ReNew Life Formulas, Inc.
`09/07/2011
`
`2076 Sunnydale Blvd.
`Clearwater, FL 33765
`UNITED STATES
`
`Attorney
`information
`
`James B. Lake
`Thomas & LoCicero PL
`PO Box 2602
`Tampa, FL 33601
`UNITED STATES
`trademarks@tlolawfirm.com Phone:813-984-3060
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`85211191
`09/06/2011
`
`Publication date
`Opposition
`Period Ends
`
`05/10/2011
`09/07/2011
`
`IML US Trademark Ltd.
`381 North Service Road West
`Oakville, Ontario, L6M0H4
`CANADA
`Goods/Services Affected by Opposition
`
`Class 005.
`All goods and services in the class are opposed, namely: Nutritional and dietary supplements
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`CLEANSESMART
`dietary supplement
`
`

`
`Attachments
`
`Notice of Opposition re SMART CLEANSE.pdf ( 8 pages )(528352 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/james b. lake/
`James B. Lake
`09/06/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`RENEW LIFE FORMULAS, INC.,
`a Florida corporation,
`
`Opposer,
`
`V.
`
`Opposition No:
`
`IML US TRADEMARK LTD.,
`
`Applicant.
`
`/
`
`NOTICE OF OPPOSITION
`
`Renew Life Formulas, Inc. (“Renew Life”) believes it will be damaged by registration to
`
`IML US Trademark Ltd. (“IML”) of the mark SMART CLEANSE (Serial No. 85/211,191) for
`
`all goods listed in that application (i.e., nutritional and dietary supplements). Accordingly, Renew Life
`
`hereby opposes registration of SMART CLEANSE for those goods. As grounds for this opposition,
`
`Renew Life alleges as follows:
`
`Introduction
`
`1.
`
`Renew Life has marketed, distributed, and sold a dietary supplement under the
`
`mark CleanseSMART since at least as early as March 1999. Renew Life is the owner of
`
`common—law trademark rights in the CleanseSMART mark.
`
`2.
`
`SMART CLEANSE is confusingly similar to CleanseSMART. Accordingly,
`
`Renew Life opposes lML’s plans for this confusingly similar mark and the application for
`
`registration of SMART CLEANSE.
`
`3.
`
`The proposed SMART CLEANSE mark was published in the Ofiicial Gazette on
`
`May 10, 2011. Renew Life requested an extension of time to oppose that application. Renew
`
`

`
`Life’s extension request was granted through September 7, 2011. This opposition notice,
`
`therefore, is timely.
`
`Renew Life’s Smart Products
`
`4.
`
`Renew Life is in the business of manufacturing, selling, distributing, advertising
`
`and promoting natural health products throughout the United States and Canada.
`
`5.
`
`Renew Life’s natural health products, including supplements, vitamins, minerals,
`
`herbals, amino acids, and other nutraceuticals, are rigorously tested to ensure potency, efficacy
`
`and safety and provide the best natural health products for consumers. They are sold in retail
`
`stores and to health—care practitioners throughout Canada and the Untied States, who in turn pass
`
`on Renew Life’s natural health products to customers and patients. Renew Life’s products also
`
`are sold online.
`
`6.
`
`Since at least as early as March 1999, Renew Life has been marketing and selling
`
`a natural health product under the CleanseSMART mark. The mark has appeared in magazine
`
`advertising, in radio advertising, in newsletters, and online. The mark is well—establislied and
`
`well-known.
`
`7.
`
`8.
`
`As a result, Renew Life is the owner of the CleanseSMART mark.
`
`The CleanseSMART product has received numerous industry awards. For
`
`example, the CleanseSMART product has received Vitamin Retaz'Zer’s VITY award for the “best
`
`internal cleanse” for the past eight years (ie, from 2004 through 2011). The CleanseSMART
`
`product also received the “Best of Supplements” award from Better Nutrition magazine in 2009
`
`and 2010.
`
`9.
`
`Renew Life’s sales of the CleanseSMART product since March 1999 have totaled
`
`more than $22 million.
`
`

`
`10.
`
`Retailers and the public have come to recognize the CleanseSMART mark as
`
`identifying high—quality natural health products. As a result, Renew Life’s CleanseSMART
`
`products are highly regarded, and the CleanseSMART mark has developed extensive goodwill
`
`and a substantial reputation in the United States and elsewhere. Consequently, the
`
`CleanseSMART mark is strong and famous.
`
`11.
`
`By virtue of the reputation and goodwill associated with the CleanseSMART
`
`mark, Renew Life has the right to preclude others from using CleanseSMART or any other
`
`marks or names likely to be confusing therewith.
`
`lML’s plans and actions
`
`12.
`
`On or about January 5, 2011, IML caused an application for registration of the
`
`mark SMART CLEANSE to be filed with the Patent & Trademark Office.
`
`13.
`
`lML’s application alleged an intent—to—use the word mark SMART CLEANSE for
`
`nutritional and dietary supplements.
`
`14.
`
`IML’s application was signed by attorney Howard J. Shire of the law firm
`
`Kenyon & Kenyon LLP on behalf of IML.
`
`15.
`
`IML’s application alleged (among other things) a belief that IML is entitled to use
`
`the SMART CLEANSE word mark in commerce, and that, to the best of lML’s knowledge and
`
`belief, no other person, firm, corporation, or association has the right to use the mark in
`
`commerce, either in the identical form thereof or in such near resemblance thereto as to be likely,
`
`when used on or in connection with the goods/services of such other person, to cause confusion,
`
`or to cause mistake, or to deceive.
`
`16.
`
`In fact, a basic internet search for the proposed SMART CLEANSE word mark
`
`would have revealed the prominence of the CleanseSMART mark. _S§e Exhibit A.
`
`

`
`The threatened injury to Renew Life
`
`l7.
`
`Contrary to the claims in the SMART CLEANSE application, the mark SMART
`
`CLEANSE is confusingly similar to CleanseSMART.
`
`l8.
`
`SMART CLEANSE is similar to CleanseSMART in sight, sound, and meaning.
`
`l9.
`
`In addition, the parties’ goods are sufficiently similar to cause confusion.
`
`SMART CLEANSE is said to identify nutritional and dietary supplements. Renew Life’s
`
`CleanseSMART mark likewise identifies a dietary supplement.
`
`20.
`
`Renew Life’s CleanseSMART product is advertised and sold via the Internet,
`
`direct mail, and in health and nutrition stores. If and insofar as SMART CLEANSE products are
`
`advertised or sold in the United States through these same channels, the parties’ competing
`
`products will be advertised or sold under confusingly similar marks through the same channels.
`
`2l.
`
`lML’s plans, therefore, impede and threaten Renew Lifc’s legitimate business
`
`interests and objectives, thereby constituting actual harm and injury to Renew Life.
`
`22.
`
`Confusion of the public will inevitably follow use of SMART CLEANSE in
`
`association with the sale, distribution and promotion of nutritional and dietary supplements.
`
`Such will cause irreparable harm to Renew Life’s business and to the extensive goodwill and
`
`famous reputation associated with Renew Life and, in particular, CleanseSMART.
`
`23.
`
`Moreover, registration of SMART CLEANSE will cause an unquantifiable loss of
`
`brand equity. Products carrying SMART CLEANSE might not deliver the same qualities and
`
`associations as Renew Life’s natural health products, such as CleanseSMART. The loss of brand
`
`equity is likely to harm Renew Life’s sales and profits.
`
`24.
`
`Registration of SMART CLEANSE will dilute Renew Life’s CleanseSMART
`
`mark, diminish brand equity, and cause a loss of distinctiveness of Renew Life°s
`
`

`
`CleanseSMART mark. The CleanseSMART mark will no longer uniquely evoke the same high
`
`quality and high performance associated with Renew Life’s products.
`
`25.
`
`ll\/lL’s actions have occurred without the consent, leave, license or authority of
`
`Renew Life.
`
`26.
`
`Because IML has filed an intent—-to—use application, a lack of actual confusion at
`
`this point would not be significant. The Patent & Trademark Office is not required to wait for
`
`confusion to occur before rejecting a proposed confusing mark.
`
`27.
`
`For all of these reasons, SMART CLEANSE is likely to cause confusion with
`
`Renew Life’s CleanseSMART mark and to dilute that senior mark. Because registration would
`
`provide prima facie evidence of the validity of SMART CLEANSE and of lML’s ownership of
`
`them, Renew Life will be damaged by registration.
`
`

`
`Conclusion
`
`Renew Life will be damaged by registration of SMART CLEANSE and opposes registration
`
`thereof. Registration should be denied. This notice is being filed with the appropriate filing fee
`
`required in Section 2.6 of the Rules of Practice.
`
`Respectfully submitted,
`
`THOMAS & LOCICERO PL
`
`s/ James B. Lake
`
`James B. Lake
`
`Florida Bar No. 0023477
`
`James J. McGuire
`
`Florida Bar No. 0187798
`
`Post Office Box 2602
`
`Tampa, Florida 33601-2602
`(813) 984-3060
`Fax: (813) 984-3070
`
`Attorneys for Renew Life Formulas, Inc.
`
`CERTIFICATE OF SERVICE
`
`I certify that on September 6, 2011, a true and correct copy of the foregoing notice with
`
`the attached exhibit is being sent by overnight delivery service to Howard J. Shire, Esq., Kenyon
`
`& Kenyon LLP, One Broadway, New York, New York 10004.
`
`s/ James B. Lake
`
`

`
`SMART CLEANSE - Yahoo! Search Results
`
`Hi, Guest
`
`Sign in
`
`Help
`
`SMART CLEANSE
`
`WEB
`
`lMAGES
`
`MORE
`
`Also try: colon smart cleanse, smart cleanse detoxification, more...
`
`the smart cleanse
`5% Off All ReNew Life Products. Limited Time Free Shipping Offer.
`www.Ret\£ewLife.cern
`
`Cleanse Smart at iHerb
`Providing the best overall value through e—simplicity Fast Shipping.
`iHerb.(:om
`
`More Sponsors: SMART CLEANSE, colon cleansers, cleanse smart, colon cancer
`
`C|eanseSMART Herbal Cleanse & Body Detox Herbal Bowel
`if you want to cleanse the body, CleanseSMART is a natural 30-day herbal cleanse &
`body detox that supports natural detoxification processes — includes an herbal bowel
`www.renewlife,com/cleansesmart.html -
`
`Cleanse SMART
`When you order ONLlNE Cleanse SMART is item 40a 053007 Now $ 32.95 When you
`order ONLlNE
`www.merc-buyersicom/CLEANSE-D ETOX~Pl_l.}S.htm -
`
`Smart Colon Cleanse
`What is Smart Colon Cleanse? Smart Colon Cleanse is a VERY EFFECTIVE, yet VERY
`GENTLE propietary formula containing proven ingredients that eliminate the harmful
`toxins ..
`sntartcleansepiuscom - 3;
`
`Cleanse Smart Reviewed : Does Cleanse Smart Work?
`Cleanse Smart is one of many health products offered by Renew Life, Based in Florida,
`the company was co-founded by Brenda Watson, a colon therapist, who developed the
`www.colonheaEthinagazine.com!...Icleanse—srnart,html — ;i'_‘~.s
`
`
`CleanseSMART Advanced Herbal Cleansing System Natural Detox
`The CleanseSMART Advanced Herbal Cleansing System | Cleansesmart, FiberSMART &
`FishSMART to support the health of the digestive system - natural herbal bowel cleanse
`and
`www.cieansesmartsystem.com -
`
`j
`
`
`Cleanse Smart Review - Does it Really Work
`Does Cleanse Smart really work for cleansing your colon and flushing out toxins? Read
`our honest Cleanse Smart review and see if this product actually works, orjust a
`wwwcoloncleanseadvlcecom/cleansers/cleanse»smart,.. ~*
`‘
`*-
`
`Cleanse Smart”" - gorawcafe
`Renew Life Cleanse Smartm Part of Renew Life's Complete Cleansing System 50 Part l
`Capsules & 80 Part ll Capsules (30 Day Supply) An advanced herbal detoxification and
`store.gorawcate.com/rl—clsmrthtml - g
`
`Cleanse Smart by Renew Life - RW—1007 - at The Vitamin Shoppe
`Product Label. Cleansesmart Advanced Cleanse is a comprehensive and effective total
`internal cleanse. its formula synergistically blends 22 concentrated herbs and minerals
`wwwvitaminshoppeeom/store. 1/browselsl<u_detail j$p’?id='=-v‘... —1’fj;
`
`Cleanse Smart Review - Cleanse Smart Customer Reviews
`Cleanse Smart is a colon cleanser specifically meant to cleanse not only the colon, but
`also the liver, skin, hair, lungs, kidney, lymphatic system, blood,
`www coloncleansingorg/cleanse-smart-
`.
`, s
`
`Review of Smart Cleanse el-lowcom — eHow How to Videos
`Cleanse Smart is a colon cleanser that offers a 30«day cleansing program. The program
`involves only two steps to carry out the detoxification process, taking a
`__
`www ehow.com/way“5750633__review»vsmartcleanse lltml «
`
`
`Renew Life
`Save up to 23% on Renew Life. Shop & Save Now!
`Vitacostcom/RenewLife
`
`Free CleanseSMART Promo
`
`Page 1 of 2
`
`3 Mail
`
`Yahool
`
`Search
`
`Renew Life
`Save up to 23% on Renew Life.
`Shop & Save Nowl
`Vitacost.corn/Renewtife
`
`Free CleanseSMART Promo
`Free Fiber Smart with Purchase of
`Cleasnesmait - Get SMART
`vmw.$tvtARTbomb.com
`
`Buy ReNew Life Products
`Buy ReNew Life Cleansesmart Get
`Free Shipping On Orders > $100!
`»wvw.LuckyVitamin.com
`
`Smart Cleanse
`Feel Strong, Be Healthy. Save on
`Smart Cleanse!
`Vitamins.BizRate.com
`
`Smart Cleanse at Amazon
`Save on Smart Cleanse. Free 2-
`Day Shipping w/Amazon Prime.
`www Amazomcorn/health
`
`Cleanse Smart Alert
`Do Not Try Cleanse Smart Until
`You Get The Facts About It First
`ConstxmerHeaithAnswers.com
`
`Smart Cleanse
`Find Smart Cleanses at Great
`Prices.
`www Prontocom
`
`Renew Life — Huge Sale
`+ Free Shipping Buy Renew Life
`Products on Sale
`www.livamed.corn
`
`More Sponsors:
`SMART CLEANSE
`colon cleansers
`cleanse smart
`colon cancer
`cleanse
`
`See your message here...
`
`Exhibit A
`
`http://Search.yahoo.com/search;_ylt=Aj CVS9sVewawd.5 8Fpd750WbvZx4?p=SMART+CLEANSE&...
`
`

`
`SMART CLEANSE - Yahoo! Search Results
`
`Page 2 of 2
`
`A
`
`.
`"""'""
`"Em day
`Past Week
`Past month
`
`SMART CLEANSE re|ated
`Free Fiber Smart with Purchase of Cleasnesmarb Get SMART
`~ SMARTb
`b
`Searches:
`www.
`om .com
`More Sponsors: . . , , smart cleanse detoxification
`.¢_'§3'i3:
`Yahoo! Search Assist
`
`1
`
`"
`
`3
`
`4
`
`E
`
`3
`
`7
`
`9,
`
`‘3
`
`1'3
`
`Next >
`
`SMART CLEAN$E
`
`V
`
`7
`
`Search
`
`2011 Yahoo! Help ~ Paqe Tour - Privacy (Ugdated)/ Leqal — About Our Ads — Submit Your Sole
`Powered by Bing"-‘
`
`ht1p://search.yah00.c0m/search;_y1t=Aj CVS9sVewawd.5 8Fpd750WbvZx4?p=SMART+CLEANSE&...