Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA594937
`ESTTA Tracking number:
`03/26/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214927
`Defendant
`Colorescience, Inc.
`SALIMA A. MERANI, PH.D.
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 MAIN ST FL 14
`IRVINE, CA 92614-8214
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`efiling@knobbe.com
`Answer
`Jeffrey L. Van Hoosear
`efiling@knobbe.com
`/JVH/
`03/26/2014
`Answer.pdf(85077 bytes )
`
`

`
`COLR.032M
`
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Opposition No. 91214927
`I hereby certify that this correspondence and all marked
`attachments are being deposited with the United States
`Patent and Trademark Office, Trademark Trial and
`Appeal Board via electronic filing through their website
`located at http://estta.uspto.gov/ on:
`
`March 26, 2014
`(Date)
`
` Jeffrey L. Van Hoosear
`
`
`
`
`
`
`
`
`
`Diffulice SARL,
`
`Opposer,
`
`v.
`
`
`
`
`
`
`Colorescience, Inc.,
`
`Applicant.
`
`
`
`
`
`
`ANSWER TO NOTICE OF OPPOSITION AND
`AFFIRMATIVE DEFENSES
`
`
`
`Assistant Commissioner for Trademarks
`P.O. Box 1451
`Arlington, VA 22313-1451
`
`
`Dear Sir:
`
`Colorescience, Inc, (“Applicant”), a Delaware corporation, having an address at 6005
`
`Hidden Valley Road Suite 180, Carlsbad, California 92011 hereby answers and responds to the
`
`Notice of Opposition filed by Diffulice SARL (“Opposer”) against the registration of
`
`Applicant’s mark “4 MINUTES TO FLAWLESS,” Serial Number 86/056,017.
`
`In answering and responding to the introductory paragraph, Applicant notes that the only
`
`element in common between Applicant’s mark and the marks alleged by Opposer is the term
`
`“minute.” Applicant notes that Opposer did not oppose the mark shown in Application Serial
`
`No. 86/063,412 “FOUR MINUTES TO FLAWLESS” also filed by Applicant in Class 3 and
`
`Class 21 for the identical goods as identified in Application Serial No. 86/056,017 for the mark
`
`“4 MINUTES TO FLAWLESS” (“Applicant’s Mark”). The only difference between
`
`Applicant’s two applications is the use of the number “4” in one of the applications versus the
`
`-1-
`
`

`
`use of the word “FOUR” in the other application. It is impossible to see how Opposer will be
`
`damaged by registration of the mark “4 MINUTES TO FLAWLESS” when it has allowed the
`
`mark “FOUR MINUTES TO FLAWLESS” to proceed to registration. Further, Applicant notes
`
`that Opposer did not oppose the mark “4 MINUTES TO FLAWLESS” for the goods in Class 21.
`
`Accordingly, Opposer’s acknowledgement that it will not be damaged by registration of the
`
`mark “4 MINUTES TO FLAWLESS” for applicator sticks for applying make-up; and cosmetic
`
`brushes undercuts Opposer’s allegations that it will be damaged by the registration of
`
`Applicant’s Mark for 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 addition, it should be noted that: (i) Opposer did not oppose multiple other
`
`applications containing the term MINUTE in connection with cosmetics, and related goods and
`
`services (see Table A) and (ii) the applications and registrations that Opposer relies upon were
`
`allowed over multiple other trademark applications containing the term MINUTE in connection
`
`with cosmetics, and related goods and services (see Table B). Thus, Opposer’s position is not
`
`only inconsistent with Opposer’s actions, but belies its own argument that it will be damaged by
`
`registration of the mark “4 MINUTES TO FLAWLESS”.
`
`Applicant hereby answers and responds to the Notice of Opposition as follows:
`
`1.
`
`Answering Paragraph 1 of the Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`Applicant makes the assumption that the term “Petitioner’s” in this paragraph is meant to
`
`refer to Opposer.
`
`2.
`
`Answering Paragraph 2 of the Notice of Opposition, Applicant admits that
`
`Opposer is listed as the record owner of U.S. Application Serial No. 79/075,687 which is based
`
`solely on Section 66(a). Applicant denies the allegation that the registration covers other goods
`
`in Class 3. Applicant admits the remaining allegations contained therein.
`
`-2-
`
`

`
`3.
`
`Answering Paragraph 3 of the Notice of Opposition, Applicant admits that
`
`Opposer is listed as the record owner of U.S. Application Serial No. 79/132,249 which is based
`
`solely on Section 66(a). Applicant denies that Opposer’s application covers “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.” The terms “perfumery
`
`products”, “cosmetic products for depilation” and “nail care products” have identified
`
`limitations. Applicant denies the allegation that the registration covers other goods in Class 3.
`
`Applicant admits the remaining allegations contained therein.
`
`4.
`
`Answering Paragraph 4 of the Notice of Opposition, Applicant admits that
`
`Opposer is listed as the record owner of U.S. Registration No. 3,251,978 for “cosmetic
`
`preparations for depilation.” Applicant denies the allegation that the registration covers other
`
`goods in Class 3. Applicant admits the remaining allegations contained therein.
`
`5.
`
`Answering Paragraph 5 of the Notice of Opposition, Applicant admits that
`
`Opposer is listed as the record owner of U.S. Registration No. 3,885,574 which is based solely
`
`on Section 66(a). Applicant denies the allegation that the registration covers other goods in
`
`Class 3. Applicant admits the remaining allegations contained therein.
`
`6.
`
`Answering Paragraph 6 of the Notice of Opposition, Applicant admits that
`
`Opposer is listed as the record owner of U.S. Registration No. 4,137,415 which is based solely
`
`on Section 66(a). Applicant admits the remaining allegations contained therein.
`
`7.
`
`Answering Paragraph 7 of the Notice of Opposition, Applicant admits that
`
`Opposer is listed as the record owner of U.S. Registration No. 3,746,997 which is based solely
`
`on Section 66(a). Applicant admits the remaining allegations contained therein.
`
`8.
`
`Answering Paragraph 8 of the Notice of Opposition, Applicant admits that
`
`Opposer is listed as the record owner of U.S. Registration No. 4,242,374 which is based on
`
`Sections 1(a) and 66(a). Applicant is without sufficient knowledge or information to form a
`
`belief as to the truth or falsity if Opposer used the mark in “U.S. commerce at lease [sic] as early
`
`as January 2012,” and accordingly denies this allegation.
`
`-3-
`
`

`
`9.
`
`Answering Paragraph 9 of the Notice of Opposition, Applicant admits the
`
`allegations contained therein.
`
`10.
`
`Answering Paragraph 10 of the Notice of Opposition, Applicant admits or denies,
`
`respectively, the “re-alleged” allegations of paragraph 1-9 as set forth above.
`
`11.
`
`Answering Paragraph 11 of the Notice of Opposition, Applicant denies the
`
`allegation contained.
`
`12.
`
`Answering Paragraph 12 of the Notice of Opposition, Applicant denies the
`
`allegation contained therein.
`
`13.
`
`Answering Paragraph 13 of the Notice of Opposition, Applicant denies all the
`
`allegations contained therein.
`
`14.
`
`Answering Paragraph 14 of the Notice of Opposition, Applicant denies all the
`
`allegations contained therein.
`
`15.
`
`Answering Paragraph 15 of the Notice of Opposition, Applicant admits or denies,
`
`respectively, the “re-alleged” allegations of paragraph 1-14 as set forth above.
`
`16.
`
`Answering Paragraph 16 of the Notice of Opposition, Applicant denies all the
`
`allegations contained therein.
`
`17.
`
`Answering Paragraph 17 of the Notice of Opposition, Applicant denies all the
`
`allegations contained therein.
`
`18.
`
`Answering Paragraph 18 of the Notice of Opposition, Applicant denies all the
`
`allegations contained therein.
`
`19.
`
`Answering Paragraph 19 of the Notice of Opposition, Applicant is without
`
`sufficient knowledge or information to form a belief as to the truth or falsity of the allegations
`
`contained therein, and accordingly denies the allegations.
`
`20.
`
`Answering Paragraph 20 of the Notice of Opposition, Applicant admits that there
`
`are no restrictions or limitations to Applicant’s channel of trade identified in the subject
`
`application. Applicant is without sufficient knowledge or information to form a belief as to the
`
`-4-
`
`

`
`truth or falsity of the remaining allegations contained therein, and accordingly denies the
`
`allegations.
`
`21.
`
`Answering Paragraph 21 of the Notice of Opposition, Applicant is without
`
`sufficient knowledge or information to form a belief as to the truth or falsity of the allegations
`
`contained therein, and accordingly denies the allegations.
`
`22.
`
`Answering Paragraph 22 of the Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`23.
`
`Answering Paragraph 23 of the Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`24.
`
`Answering Paragraph 24 of the Notice of Opposition, Applicant admits the
`
`allegations contained therein.
`
`25.
`
`Answering Paragraph 25 of the Notice of Opposition, Applicant admits that
`
`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 for the identified goods is such application. Applicant denies the allegation
`
`that Opposer would be damaged.
`
`26.
`
`Answering Paragraph 26 of the Notice of Opposition, Applicant denies the
`
`allegations contained therein.
`
`-5-
`
`

`
`AFFIRMATIVE DEFENSES
`
`Applicant alleges the following affirmative defenses. There may be additional affirmative
`
`defenses to the claims alleged by Opposer that are currently unknown to Applicant. Therefore,
`
`Applicant reserves the right to amend its Answer to allege additional affirmative defenses in the
`
`event discovery of additional information indicates they are appropriate.
`
`FIRST AFFIRMATIVE DEFENSE
`
`Applicant alleges that the Opposer is estopped from alleging confusion and cannot be
`
`damaged by the registration of Applicant’s Mark as Opposer failed to oppose U.S. Application
`
`Serial No. 86/063,412 for the mark “FOUR MINUTES TO FLAWLESS” also owned by
`
`Applicant for the exact same goods as identified in Applicant’s Mark. As Applicant owns an
`
`allowed application for the mark “FOUR MINUTES TO FLAWLESS” for the exact same goods
`
`as identified in the subject application, the case Morehouse Mfg. Corp. v. J. Strickland & Co.,
`
`160 USPQ 715 (CCPA 1969) is analogous to this situation. In Morehouse, the court recognized
`
`that when an applicant owns a prior registration for the same mark identifying the same goods
`
`that are the subject mark and goods of the proposed application that “the opposer cannot be
`
`further injured because there already exists an injurious registration” and therefore an additional
`
`registration cannot cause injury. Such is also clearly the case here between the two marks “4
`
`MINUTES TO FLAWLESS” and “FOUR MINTUES TO FLAWLESS” for the exact same
`
`goods. As Opposer declined to oppose Applicant’s mark “FOUR MINUTES TO FLAWLESS,”
`
`Opposer’s present opposition is without merit.
`
`-6-
`
`

`
`SECOND AFFIRMATIVE DEFENSE
`
`Applicant alleges that due to the significant differences between the parties’ respective
`
`marks, there is no likelihood of confusion, mistake or deception between Applicant’s Mark and
`
`the alleged marks of the Opposer.
`
`THIRD AFFIRMATIVE DEFENSE
`
`The only element in common between Applicant’s Mark and the marks alleged by
`
`Opposer is the term “minute.” The term “minute” is a very weak term in relation to the goods
`
`and services allegedly offered by the Opposer, and cannot serve as a basis for a finding of a
`
`likelihood of confusion between the Applicant’s Mark and the alleged marks of the Opposer.
`
`Applicant notes that there are numerous existing registrations for marks containing the term
`
`“minute” for cosmetics and related goods in Class 3 and/or related services in Class 44.
`
`Table A, below, identifies a selection of registered marks containing the term “minute”
`
`that were filed after at least one of Opposer’s marks. In other words, although Opposer had a
`
`chance to oppose these “minute” marks, Opposer failed to do so. These actions – or lack thereof
`
`– are inconsistent with Opposer’s current allegation that it will be damaged by the registration
`
`of Applicant’s 4 MINUTES TO FLAWLESS mark.
`
`Table B, below, identifies a selection of registered marks containing the term “minute”
`
`that were filed before Opposer’s marks. Thus, Opposer, which obtained its own “minute” marks
`
`over the multiple third party “minute” registrations in Table B, now appears to argue that it has
`
`exclusive rights to the term “minute” in at least Class 3 for cosmetics and related goods.
`
`-7-
`
`

`
`TABLE A
`
`Mark
`
`Class
`
`Filing and Reg.
`
`Owner Name
`
`ONE-MINUTE TRANSFORMATION
`
`
`5-MINUTE TOTAL RESTORE
`
`
`
`
`FACIAL IN MINUTES
`
`
`
`
`THE 3 - MINUTE FACE LIFT
`
`
`
`
`ADONIA 9 MINUTE LEGTONE
`
`
`9 MINUTE LEGTONE
`
`
`3
`
`3
`
`3, 10, 44
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`FEDERICI BRANDS LLC
`
`L'OREAL USA CREATIVE, INC.
`
`BEGGS, PATRICIA D.
`
`EARTHEN, INC.
`
`KAO KABUSHIKI KAISHA (Japan)
`
`GLOBAL SOURCE
`
`MIGAMI, INC.
`
`GREEK ISLAND LABS, LLC
`
`GREEK ISLAND LABS, LLC
`
`App 29-JUN-2012
`App 85665922
`Reg 01-OCT-2013
`Reg 4412003
`
`App 15-FEB-2012
`App 85543507
`Reg 22-JAN-2013
`Reg 4278469
`
`App 12-MAY-2011
`App 85319443
`Reg 03-JUL-2012
`Reg 4169125
`
`App 03-DEC-2009
`App 77885893
`Reg 20-SEP-2011
`Reg 4029375
`
`App 11-JUN-2009
`App 77757029
`Reg 14-DEC-2010
`Reg 3890863
`
`App 21-APR-2009
`App 77719083
`Reg 12-JAN-2010
`Reg 3736272
`
`App 16-APR-2009
`App 77715745
`Reg 10-NOV-2009
`Reg 3708344
`
`App 23-JAN-2009
`App 76695418
`Reg 21-JUL-2009
`Reg 3656299
`
`App 23-JAN-2009
`App 76695419
`Reg 21-JUL-2009
`Reg 3656300
`
`-8-
`
`

`
`Mark
`
`Class
`
`Filing and Reg.
`
`Owner Name
`
`ADONIA 9MINUTE LEGTONE
`
`
`9MINUTE LEGTONE
`
`
`ONE POWDER. ONE BRUSH. ONE
`MINUTE
`
`
`ONE HOT MINUTE
`
`
`
`
`MINUTE-WONDER
`
`
`3 MINUTE UP
`
`
`IN A NEW YORK COLOR MINUTE
`
`
`BEAT PER MINUTE
`
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`FIFTEEN MINUTE FACELIFT
`
`
`44
`
`GREEK ISLAND LABS, LLC
`
`GREEK ISLAND LABS, LLC
`
`GO-NATURAL, INC.
`
`BENEFIT COSMETICS LLC
`
`LAVAKISS CORPORATION
`
`BB COSMETICS, LLC
`
`WU, JOHN HAN
`
`COTY US LLC
`
`LABORATOIRE DUCASTEL
`(France)
`
`COLBER, DAVID MD
`
`App 21-JAN-2009
`App 76695393
`Reg 21-JUL-2009
`Reg 3656296
`
`App 21-JAN-2009
`App 76695392
`Reg 21-JUL-2009
`Reg 3656295
`
`App 14-NOV-2008
`App 77614522
`Reg 30-JUN-2009
`Reg 3646568
`
`App 27-OCT-2008
`App 77601235
`Reg 25-AUG-2009
`Reg 3674386
`
`App 27-JUN-2008
`App 77510072
`Reg 03-MAR-2009
`Reg 3582804
`
`App 12-JUN-2008
`App 77497429
`Reg 20-JAN-2009
`Reg 3564377
`
`App 08-MAR-2008
`App 77416779
`Reg 14-OCT-2008
`Reg 3515640
`
`App 25-JAN-2008
`App 77380306
`Reg 20-OCT-2009
`Reg 3699704
`
`App 11-APR-2007
`App 77153835
`Reg 12-FEB-2008
`Reg 3380571
`
`App 05-OCT-2006
`App 77014665
`Reg 13-NOV-2007
`Reg 3337505
`
`-9-
`
`

`
`Mark
`
`Class
`
`Filing and Reg.
`
`Owner Name
`
`5 MINUTE FACE
`
`
`WAIT A MINUTE
`
`
`3
`
`3
`
`App 26-MAY-2006
`App 78894283
`Reg 04-MAY-2010
`Reg 3786309
`
`App 08-MAR-2006
`App 78832353
`Reg 18-MAR-2008
`Reg 3399878
`
`
`
`TABLE B
`
`ACOSTA, CARMINDY
`
`BATH & BODY WORKS BRAND
`MANAGEMENT, INC.
`
`Mark
`
`Class
`
`Filing and Reg.
`
`Owner Name
`
`JUST A MINUTE
`
`
`7 MINUTE LIFT
`
`
`2 MINUTE TAN
`
`5 MINUTE MIRACLE MANICURE
`
`3
`
`3
`
`3
`
`3
`
`44
`
`
`
`THE 5 MINUTE TUNE-UP
`
`44
`
`A TEN MINUTE BEAUTY
`
`
`ONE MINUTE BODY BAR
`
`3
`
`3
`
`App 05-DEC-2005
`App 78766342
`Reg 23-OCT-2007
`Reg 3320744
`
`App 08-SEP-2005
`App 76646296
`Reg 16-JAN-2007
`Reg 3199860
`
`App 25-JUN-2001
`App 78070798
`Reg 15-APR-2003
`Reg 2708204
`
`App 13-NOV-1988
`App 73714050
`Reg 27-JUN-1989
`Reg 1545079
`
`App 28-DEC-2005
`App 78781784
`Reg 16-OCT-2007
`Reg 3314174
`
`App 17-JUN-2003
`App 76526014
`Reg 02-NOV-2004
`Reg 2898941
`
`App 03-NOV-2004
`App 78510421
`Reg 10-OCT-2006
`Reg 3155004
`
`BATH & BODY WORK BRAND
`MANAGEMENT, INC.
`
`EARTHSPRING, LLC
`
`PERFORMANCE BRANDS, INC.
`
`MARKRON COSMETICS, INC.
`
`10MinManicure LLC
`
`Creative Hairdressers, Inc.
`
`HOLYFIELD, LOUISE
`
`App 17-JUN-2003
`
`MYKYTYN ENTERPRISES, INC.
`
`-10-
`
`

`
`Mark
`
`
`
`Class
`
`ONE MINUTE
`
`3 MINUTE MIRACLE DEEEEEP
`
`
`
`
`ONE MINUTE PEDICURE
`
`
`ONE MINUTE BODY SPA
`
`
`ONE MINUTE MANICURE
`
`
`3 MINUTE MIRACLE
`
`
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`Filing and Reg.
`
`App 78263222
`Reg 27-JUL-2004
`Reg 2866755
`
`App 22-MAY-2003
`App 78253340
`Reg 17-MAY-2005
`Reg 2953446
`
`App 13-MAY-2003
`App 78248945
`Reg 12-JUL-2005
`Reg 2966246
`
`App 11-APR-2003
`App 78236982
`Reg 23-MAR-2004
`Reg 2825227
`
`App 30-MAY-2002
`App 76414876
`Reg 13-JUL-2004
`Reg 2863307
`
`App 30-MAY-2002
`App 76415198
`Reg 30-NOV-2004
`Reg 2906969
`
`App 27-JUL-2000
`App 76096997
`Reg 23-OCT-2001
`Reg 2500082
`
`App 01-JUL-1992
`App 74290297
`Reg 13-JUL-1993
`Reg 1780994
`
`Owner Name
`
`MYKYTYN ENTERPRISES, INC.
`
`THE PROCTER & GAMBLE
`COMPANY
`
`MYKYTYN ENTERPRISES, INC.
`
`MYKYTYN ENTERPRISES, INC.
`
`MYKYTYN ENTERPRISES, INC.
`
`MYKYTYN ENTERPRISES, INC.
`
`PROCTER & GAMBLE
`COMPANY, THE
`
`FOURTH AFFIRMATIVE DEFENSE
`
`Applicant alleges that Opposer is barred due to the equitable doctrine of unclean hands
`
`and/or fraud in connection with its identified services. A purely foreign use and/or a purely
`
`intrastate use do not provide a basis to obtain and/or maintain a federal service mark registration.
`
`
`
`-11-
`
`

`
`FIFTH AFFIRMATIVE DEFENSE
`
`Applicant alleges that Opposer is barred due to the equitable doctrine of unclean hands
`
`and/or fraud in connection with its identified goods. A product not sold in the United States does
`
`not provide a basis to obtain and/or maintain a federal trademark registration.
`
`SIXTH AFFIRMATIVE DEFENSE
`
`Applicant alleges that the marks RELAX MINUTE and
`
`relied upon by Opposer
`
`in its Notice of Opposition have been abandoned and therefore are unenforceable and should be
`
`cancelled.
`
`SEVENTH AFFIRMATIVE DEFENSE
`
`Applicant alleges that the mark
`
`relied upon by Opposer in its Notice of
`
`Opposition should be: (i) cancelled in Class 3 on the basis of unclean hands and/or fraud and is
`
`therefore unenforceable; and (ii) Class 3 should be cancelled on the basis of non-use with respect
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By:
`
`Jeffrey L. Van Hoosear
`
`2040 Main Street
`
`Fourteenth Floor
`
`Irvine, CA 92614
`
`(949) 760-0404
` Attorney for Applicant
`
`
`
`-12-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`to the goods in Class 3.
`
`
`
`
`
`
`
`Dated: March 26, 2014
`
`
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that I served a copy of the foregoing ANSWER TO NOTICE OF
`OPPOSITION AND AFFIRMATIVE DEFENSES upon Opposer’s counsel by depositing one
`copy thereof in the United States Mail, first-class postage prepaid, on March 26, 2014 addressed
`as follows:
`
`
`
`
`Rebeccah Gan
`YOUNG & THOMPSON
`209 Madison Street, Suite 500
`Alexandria, VA 22314
`
`
`Lisa Helmle
`
`
`
`
`
`
`
`
`
`17414003
`
`
`-13-