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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA587398
`ESTTA Tracking number:
`02/14/2014
`
`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
`Entity
`Address
`
`DIFFULICE SARL
`Société de droit suisse
`Rue Sigismond-Thalberg 2
`Geneve, 1201
`SWITZERLAND
`
`Citizenship
`
`SWITZERLAND
`
`Attorney
`information
`
`Rebeccah Gan
`YOUNG & THOMPSON
`209 Madison Street, Suite 500
`Alexandria, VA 22314
`UNITED STATES
`trademarks@young-thompson.com Phone:703-521-2297
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86056017
`02/14/2014
`
`Publication date
`Opposition
`Period Ends
`
`01/21/2014
`02/20/2014
`
`Colorescience, Inc.
`6005 Hidden Valley Rd Suite 180
`Carlsbad, CA 92011
`GERMANY
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Body and beauty care cosmetics; Cosmetic
`preparations; Cosmetic sunscreen preparations; Make-up primer; Natural mineralmake-up; Non-
`medicated skin care preparations; Topical skin sprays for cosmeticpurposes
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application
`No.
`Registration Date
`
`79075687
`
`NONE
`
`Word Mark
`
`SKIN MINUTE
`
`Application Date
`
`09/24/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Soaps; perfumes; perfumery; essential oils; hair lotions; dentifrices; cosmetics;
`nail care preparations
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Hygiene and beauty care for humans; beauty salons; hairdressing salons;
`massages
`
`U.S. Application
`No.
`Registration Date
`
`79132249
`
`NONE
`
`Word Mark
`Design Mark
`
`FLASH MINUTE
`
`Application Date
`
`05/31/2013
`
`Foreign Priority
`Date
`
`12/06/2012
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Soaps for personal use; perfumes; perfumery products; essential oils; hair
`lotions; dentifrices; cosmetics; cosmetics for use on the skin; cosmetic products
`for depilation; nail care products
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Hygienic and beauty care for human beings; beauty salons; hairdressing salons;
`massage services; manicure services; body hair removal by means of wax for
`humans
`
`U.S. Registration
`No.
`Registration Date
`
`3251978
`
`06/12/2007
`
`Word Mark
`Design Mark
`
`BODY MINUTE
`
`Application Date
`
`01/11/2006
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Cosmetic preparations for depilation [ ; nail care preparations ]
`
`

`
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Manicure service, depilation service
`
`U.S. Registration
`No.
`Registration Date
`
`3885574
`
`12/07/2010
`
`Word Mark
`Design Mark
`
`EPIL' MINUTE
`
`Application Date
`
`06/08/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`The mark consists of the wording "EPIL'MINUTE" in white lettering appearing
`ona blue shaded circle.
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Cosmetic depilatory preparations, nail care products, namely, nail care
`preparations, depilatory cream, depilatory wax,nail cream, nail polish, nail
`varnish, nail glitter, varnish removing preparations, nail-polish removers, false
`nails, adhesives for artificial nails, nail softeners, nail hardeners, nail repair
`products, namely, nail wraps
`Class 008. First use: First Use: 0 First Use In Commerce: 0
`Electric and non-electric depilatory apparatus; tweezers, nail nippers and
`nailfiles, nail clippers being electric andnon-electric
`Class 042. First use: First Use: 0 First Use In Commerce: 0
`Beauty care services, manicure services, depilation services
`
`U.S. Registration
`No.
`Registration Date
`
`3746997
`
`02/09/2010
`
`Application Date
`
`01/20/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`RELAX MINUTE
`
`NONE
`
`Class 044. First use: First Use: 0 First Use In Commerce: 0
`Beauty services, namely, cosmetic body care, manicure services, non-
`permanent hair removal
`
`U.S. Registration
`No.
`Registration Date
`
`4137415
`
`05/08/2012
`
`Word Mark
`
`HAND MINUTE
`
`Application Date
`
`03/31/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Soap; perfumes; perfumery products, namely, cologne, eau de parfum and
`perfumery; essential oils; hair lotions; dentifrices; cosmetics; cosmetic products
`for depilation, namely, depilatory creams; nail care products, namely, cuticle
`cream,nail polish, and nail polish remover
`
`U.S. Registration
`No.
`Registration Date
`
`4242374
`
`11/13/2012
`
`Word Mark
`Design Mark
`
`HAIR MINUTE
`
`Application Date
`
`03/18/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 003. First use: First Use: 2012/01/00 First Use In Commerce: 2012/01/00
`Hair preparations, namely, soaps, shampoos, hair lotions, lacquers, gels, setting
`preparations, creams
`
`79075687#TMSN.jpeg( bytes )
`79132249#TMSN.jpeg( bytes )
`79021872#TMSN.jpeg( bytes )
`79076531#TMSN.jpeg( bytes )
`79065631#TMSN.jpeg( bytes )
`79096933#TMSN.jpeg( bytes )
`77961956#TMSN.jpeg( bytes )
`Notice of Opposition - 4 MINUTES TO FLAWLESS.pdf(29882 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
`
`/rgan/
`Rebeccah Gan
`02/14/2014
`
`

`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Opposition No. _________
`
`Application Serial No. 86/056,017
`
`Mark: 4 MINUTES TO FLAWLESS
`
`
`DIFFULICE SARL,
`
`
`Opposer,
`
`v.
`
`
`
`
`COLORESCIENCE, INC.,
`
`
`
`
`NOTICE OF OPPOSITION
`
`Applicant.
`
`Diffulice Sarl (hereinafter referred to as the “Opposer”), is a Société de droit suisse
`
`
`
`
`
`
`
`(Limited Liability Company) of Switzerland, with its principal place of business located at: Rue
`
`Sigismond-Thalberg 2, Geneve 1201, Switzerland.
`
`Colorescience, Inc. (hereinafter referred to as the “Applicant”), is a corporation of the
`
`State of Delaware, with an address of: 6005 Hidden Valley Rd., Suite 180, Carlsbad, California
`
`92011, United States.
`
`Opposer believes that it will be damaged by the issuance of a registration for the
`
`trademark “4 MINUTES TO FLAWLESS”, in standard characters, in U.S. Application Serial
`
`No. 86/056,017 (hereinafter also referred to as “Applicant’s Mark”), filed on September 4,
`
`2013 for, inter alia, “Body and beauty care cosmetics; Cosmetic preparations; Cosmetic
`
`sunscreen preparations; Make-up primer; Natural mineral make-up; Non-medicated skin care
`
`preparations; Topical skin sprays for cosmetic purposes,” in International Class 3.
`
`
`Page 1 of 8
`
`

`
`
`
`As grounds for this opposition, Opposer, through counsel, alleges as follows:
`
`FACTUAL BACKGROUND
`
`1.
`
`Opposer is an internationally recognized manufacturer and distributor of various
`
`cosmetics, creams, lotions, soaps, shampoos, perfumes, colognes, oils, waxes, dentifrices,
`
`lacquers, gels, nail care products, and other attendant cosmetic, personal hygiene, and beauty
`
`products. Petitioner’s products are available worldwide, including in the United States, under
`
`its “SKIN MINUTE”, “FLASH MINUTE”, “BODY MINUTE & Design”, “EPIL' MINUTE &
`
`Design”, “HAND MINUTE”, “RELAX MINUTE” and “HAIR MINUTE” marks, (hereinafter
`
`also referred to as “Opposer’s Marks”).
`
`2.
`
`Opposer is the owner of U.S. Application Serial No. 79/075,687 for “SKIN MINUTE”
`
`for, inter alia, “Soaps; perfumes; perfumery; essential oils; hair lotions; dentifrices; cosmetics;
`
`nail care preparations,” in International Class 3. U.S. Application Serial No. 79/075,687 was
`
`filed on September 24, 2009, is based on International Registration No. 1020431, and was
`
`published for public opposition on February 8, 2011.
`
`3.
`
`Opposer is the owner of U.S. Application Serial No. 79/132,249 for “FLASH
`
`MINUTE”, in standard characters, for, inter alia, “Soaps for personal use; perfumes; perfumery
`
`products; essential oils; hair lotions; dentifrices; cosmetics; cosmetics for use on the skin;
`
`cosmetic products for depilation; nail care products,” in International Class 3. U.S. Application
`
`Serial No. 79/132,249 was filed on May 31, 2013, and is based on International Registration
`
`No. 1165780.
`
`4.
`
`Opposer is the owner of U.S. Registration Number 3,251,978 for “BODY MINUTE &
`
`Design”, for, inter alia, “Cosmetic preparations for depilation,” in International Class 3. U.S.
`
`
`Page 2 of 8
`
`

`
`
`
`Registration Number 3,251,978 registered on June 12, 2007, and is based on International
`
`Registration No. 879672.
`
`5.
`
`Opposer is the owner of U.S. Registration Number 3,885,574 for “EPIL' MINUTE &
`
`Design”, for, inter alia, “Cosmetic depilatory preparations, nail care products, namely, nail care
`
`preparations, depilatory cream, depilatory wax, nail cream, nail polish, nail varnish, nail glitter,
`
`varnish removing preparations, nail-polish removers, false nails, adhesives for artificial nails,
`
`nail softeners, nail hardeners, nail repair products, namely, nail wraps,” in International Class 3.
`
`U.S. Registration Number 3,885,574 registered on December 7, 2010, and is based on
`
`International Registration No. 694871.
`
`6.
`
`Opposer is the owner of U.S. Registration Number 4,137,415 for “HAND MINUTE”,
`
`for “Soap; perfumes; perfumery products, namely, cologne, eau de parfum and perfumery;
`
`essential oils; hair lotions; dentifrices; cosmetics; cosmetic products for depilation, namely,
`
`depilatory creams; nail care products, namely, cuticle cream, nail polish, and nail polish
`
`remover,” in International Class 3. U.S. Registration Number 4,137,415 registered on May 8,
`
`2012, and is based on International Registration No. 1075920.
`
`7.
`
`Opposer is the owner of U.S. Registration Number 3,746,997 for “RELAX MINUTE”,
`
`for “Beauty services, namely, cosmetic body care, manicure services, non-permanent hair
`
`removal,” in International Class 44. U.S. Registration Number 3,746,997 registered on
`
`February 9, 2010, and is based on International Registration No. 994217.
`
`8.
`
`Opposer is the owner of U.S. Registration Number 4,242,374 for “HAIR MINUTE”, in
`
`standard characters, for “Hair preparations, namely, soaps, shampoos, hair lotions, lacquers,
`
`gels, setting preparations, creams,” in International Class 3. U.S. Registration Number
`
`
`Page 3 of 8
`
`

`
`
`
`4,242,374 registered on November 13, 2012, and was used in U.S. commerce at lease as early
`
`as January 2012.
`
`9.
`
`On September 4, 2013, Applicant filed an application to register the “4 MINUTES TO
`
`FLAWLESS” mark, in standard characters, with Section 1(b) intent-to-use in U.S. commerce
`
`as the basis, for, inter alia, “Body and beauty care cosmetics; Cosmetic preparations; Cosmetic
`
`sunscreen preparations; Make-up primer; Natural mineral make-up; Non-medicated skin care
`
`preparations; Topical skin sprays for cosmetic purposes,” in International Class 3. Applicant’s
`
`Mark was issued Serial Number 86/056,017, and was published for public opposition on
`
`January 21, 2014.
`
`COUNT ONE: PRIORITY
`
`10.
`
`Opposer re-alleges and incorporates herein by reference the allegations in paragraphs 1-
`
`9 above as if fully set forth herein.
`
`11.
`
`Opposer’s use, application, and registration of Opposer’s Marks pre-date the filing date
`
`of Applicant’s Mark.
`
`12.
`
`Upon opinion and belief, Applicant’s Mark has not been used in U.S. commerce in
`
`connection with International Class 3.
`
`13.
`
`The granting of a trademark registration to Applicant for Applicant’s Mark in
`
`International Class 3 would violate and diminish the prior and superior rights of Opposer.
`
`14.
`
`Opposer would be damaged within the meaning of 15 U.S.C. § 1063(a) if Applicant’s
`
`Mark is allowed to register in International Class 3, because Applicant would obtain statutory
`
`rights in Applicant’s Mark in violation and derogation of the established prior rights of Opposer
`
`in Opposer's Marks.
`
`
`Page 4 of 8
`
`

`
`
`
`COUNT TWO: LIKELIHOOD OF CONFUSION
`
`15.
`
`Opposer re-alleges and incorporates herein by reference the allegations in paragraphs 1-
`
`14 above as if fully set forth herein.
`
`16.
`
`Applicant’s Mark is likely to be confused with and mistaken for Opposer’s goods
`
`developed and marketed under Opposer’s Marks, because Applicant’s Mark is confusingly
`
`similar in sight and sound to Opposer’s Marks.
`
`17.
`
`Additionally, Applicant’s Mark conveys a nearly identical commercial impression as
`
`Opposer’s Marks.
`
`18.
`
`On information and belief, Applicant’s Mark is intended to be used on and in
`
`connection with goods in International Class 3 that are identical, or confusingly similar, to
`
`those of Opposer.
`
`19.
`
`On information and belief, Applicant’s target customer and consumer base for
`
`International Class 3 overlaps with the customers and consumers of Opposer’s goods.
`
`20.
`
`Applicant’s goods description for International Class 3 contains no restrictions or
`
`limitations as to Applicant’s channels of trade; accordingly, Opposer may assume that
`
`Applicant’s Mark, like Opposer’s Marks, will be used in all accepted channels of trade.
`
`21.
`
`On information and belief, Applicant’s channels of trade for its goods in International
`
`Class 3 overlaps with the channels of trade used by, or exist within the natural realm of
`
`expansion available to Opposer, for marketing, selling, and otherwise distributing its products.
`
`22.
`
`If Applicant is permitted to register its “4 MINUTES TO FLAWLESS” mark for “Body
`
`and beauty care cosmetics; Cosmetic preparations; Cosmetic sunscreen preparations; Make-up
`
`
`Page 5 of 8
`
`

`
`
`
`primer; Natural mineral make-up; Non-medicated skin care preparations; Topical skin sprays
`
`for cosmetic purposes,” in International Class 3, confusion resulting in damage and injury to
`
`Opposer would likely occur. Persons familiar with Opposer’s Marks and goods would likely
`
`be confused, be mistaken, or be deceived into the belief that Applicant’s products in
`
`International Class 3 are associated with, affiliated with, or sponsored by Opposer. Such
`
`confusion would inevitably result in damage to Opposer.
`
`23.
`
`Opposer’s customers and the relevant public are likely to misperceive Applicant’s Mark
`
`as one of Opposer’s Marks, rather than as a mark of Colorescience, Inc., and/or believe in error
`
`that goods in International Class 3 offered under Applicant’s Mark are offered by, in
`
`association with, or under license from Opposer.
`
`24.
`
`Applicant’s filing of Application Serial No. 86/056,017 is without license, authorization
`
`or permission from Opposer.
`
`25.
`
`Registration of Applicant’s Mark would give Applicant prima facie evidence of the
`
`validity and ownership of Applicant’s Mark, and of Applicant’s exclusive right to use its “4
`
`MINUTES TO FLAWLESS” mark, all to the detriment of Opposer.
`
`26.
`
`In view of the foregoing reasons, the grant of a registration for Applicant’s Mark in
`
`International Class 3, as sought in the application opposed herein, should be denied as
`
`registration would be contrary to the provisions of Section 2(d) of the Lanham Act, 15 U.S.C.
`
`§1052(d), and Opposer believes that it would be damaged thereby.
`
`WHEREFORE, by the undersigned attorney, Opposer respectfully requests that this
`
`Notice of Opposition be sustained and that registration of Application Serial No. 86/056,017
`
`for International Class 3 be refused.
`
`
`Page 6 of 8
`
`

`
`
`Respectfully submitted,
`
`
`
`February 14, 2014
`
`
`
`
`
`
` /rgan/
`Rebeccah Gan
`Attorney for Opposer
`Young & Thompson
`209 Madison St., Suite 500
`Alexandria, VA 22314
`Tel.: (703) 521-2297
`Email: rgan@young-thompson.com
`
`
`Page 7 of 8
`
`

`
`CERTIFICATE OF SERVICE
`
`I, Christopher Emond, hereby certify that a true and complete copy of the foregoing
`
`
`
`
`
`
`
`Notice of Opposition has been served on Applicant’s attorney of record, Dr. Salima A. Merani,
`
`Ph.D., Esquire, by mailing said copy on this 14th day of February 2014, via First Class Mail,
`
`postage prepaid to:
`
`DR. SALIMA A. MERANI, PH.D., ESQ.
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 MAIN ST., FL 14
`IRVINE, CALIFORNIA 92614-8214
`UNITED STATES
`
`
`
`
`
`
`
`/cpe/
`
` Christopher Emond
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 8 of 8

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