Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA659811
`ESTTA Tracking number:
`03/09/2015
`
`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 ex-
`tension
`Address
`
`Diamond Cosmetics, Inc.
`03/08/2015
`
`10551 N.W. 53rd Street
`Sunrise, FL 33351
`UNITED STATES
`
`Attorney informa-
`tion
`
`Robert M. Schwartz
`Robert M. Schwartz, P.A.
`P.O. Box 221470
`Hollywood, FL 33022
`UNITED STATES
`litigation@patentmiami.com Phone:9549240707
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`International Re-
`gistration No.
`Applicant
`
`85755276
`03/09/2015
`
`NONE
`
`Publication date
`Opposition Peri-
`od Ends
`International Re-
`gistration Date
`
`09/09/2014
`03/08/2015
`
`NONE
`
`DKH Retail Limited
`Unit 60 The Runnings
`Cheltenham, GL519NW
`UNITED KINGDOM
`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: Cleaning preparations; soaps; body mist;
`body wash; body spray; body lotions; bubble bath; shower gel; lip gloss; lip balm; essential oils; hair
`lotions; dentifrices; deodorants for personal use; antiperspirants; deodorants; aftershaves; air fragran-
`cing preparations; cosmetics, namely, lipstick, lip liner, non-medicated lip plumping preparations, eye
`shadow, blusher, rouge, face powder, bronzer, foundation, concealer, mascara, eye pencils, eye
`liner, eye brow pencils, false eyelashes, skin care creams, skin care lotions, eye creams, eye primer,
`face primer, highlighting face creams, powders and lotions, topical skin sprays for cosmetic purposes,
`namely, for make-up setting, gel eye liner, tinted moisturizing creams and lotions, bath and beauty
`creams; all of the foregoing excluding nail care products
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`

`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`Registration Date
`
`2297889
`
`12/07/1999
`
`Word Mark
`Design Mark
`
`SUPER DRY
`
`Application Date
`
`08/24/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1993/01/10 First Use In Commerce: 1993/01/10
`nail polish, nail clear top coat, nail strengtheners and conditioners, and nail-
`hardeners
`
`Attachments
`
`75541205#TMSN.png( bytes )
`Notice of Opposition - SUPERDRY - 3-9-2015.pdf(30320 bytes )
`Exhibit A 85755276.pdf(86716 bytes )
`Exhibit B 2297889.pdf(43398 bytes )
`
`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.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/robert m schwartz/
`Robert M. Schwartz
`03/09/2015
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Application Serial No. 85/755,276
`Publication in the Official Gazette of September 9, 2014
`For: SUPERDRY. and Design
`
`
`
`Diamond Cosmetics, Inc., : Opposition No.
`
`
`
`
`
`Opposer, :
`
`vs. :
`
`DKH Retail Limited, :
`
`Applicant. :
`
`___________________________________:
`
`Commissioner for Trademarks
`Attn: Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`NOTICE OF OPPOSITION
`
`
`
`Opposer, Diamond Cosmetics, Inc., a Florida corporation,
`
`having its principal place of business at 10551 N.W. 53rd Street,
`
`Sunrise, Florida 33351 (hereinafter “Opposer” or “Diamond
`
`Cosmetics”), believes that it will be damaged by the
`
`registration of the mark SUPERDRY. and Design shown in
`
`Application Serial No. 85/755,276 (the ‘276 application), and
`
`hereby opposes same.
`
`
`
`As grounds for its opposition, Opposer, by and through its
`
`counsel, alleges as follows:
`
`
`
`1
`
`

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`1. By the application herein opposed, Applicant seeks to
`
`obtain registration on the Principal Register of the United
`
`States Patent and Trademark Office (USPTO) of the mark SUPERDRY.
`
`and Design for various cosmetic goods in International Class 3
`
`(“Applicant’s Mark”). See attached Exhibit A.
`
`2. On October 16, 2012, Applicant filed the ‘276 application
`
`with the USPTO under Sections 1(b) and 44(e) of the Trademark
`
`Act of 1946, as amended.
`
`3. Applicant’s Mark was published for opposition on September
`
`9, 2014. The time for filing a Notice of Opposition was set to
`
`expire on October 9, 2014. On October 1, 2014, Opposer timely
`
`filed with the Trademark Trial and Appeal Board (TTAB) a first
`
`request for a 30-day extension of time to oppose Applicant’s
`
`Mark, which was granted on the same date. On November 7, 2014,
`
`Opposer requested and was granted a 60-day extension of time to
`
`file a Notice of Opposition. On January 6, 2015, Opposer filed
`
`another request for a 60-day extension of time, which was
`
`granted, thus extending the deadline to file a Notice of
`
`Opposition to March 8, 2015. Accordingly, this Notice of
`
`Opposition is timely filed.
`
`4. Opposer is the owner of U.S. Trademark Registration No.
`
`2,297,889, issued on December 7, 1999, for the mark SUPER DRY,
`
`for “nail polish, nail clear top coat, nail strengtheners and
`
`conditioners, and nail hardeners,” in International Class 3
`
`
`
`2
`
`

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`(Opposer’s Mark), and has used its mark continuously in
`
`connection with these goods since at least as early as January
`
`10, 1993. See attached Exhibit B.
`
`5. Since long prior to the filing date of Applicant’s ‘276
`
`application, Opposer’s Mark has been and continues to be
`
`extensively used, advertised and promoted in interstate commerce
`
`throughout the United States to identify Opposer’s goods. The
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`mark SUPER DRY is a symbol of considerable good will and
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`recognition built up by Opposer through substantial amounts of
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`time and effort, and has become well-known to customers and
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`potential customers as a trademark of Opposer, and as an origin
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`and source of the goods sold and provided by Opposer.
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`6. Applicant's mark SUPERDRY. and Design is highly similar in
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`appearance, sound, meaning and commercial impression to
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`Opposer's SUPER DRY mark. The goods in connection with which
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`Applicant seeks to register its mark are closely related to the
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`goods in connection with which Opposer uses its SUPER DRY mark.
`
`7. In view of the similarity of the parties’ respective marks
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`and the related nature of the goods of the respective parties,
`
`Applicant's Mark so resembles Opposer's Mark that, when used in
`
`connection with Applicant's goods, it is likely to cause
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`confusion, or to cause mistake or to deceive within the meaning
`
`of Section 2(d) of the Trademark (Lanham) Act of 1946, 15 U.S.C.
`
`
`
`3
`
`

`
`§ 1052(d); and, more particularly, Applicant's Mark and use
`
`thereof is likely to cause confusion in, or to cause mistake by,
`
`or to deceive the trade and purchasing public into believing
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`that Applicant's goods originate with or otherwise are
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`authorized, licensed or sponsored by Opposer.
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`8. Registration of Applicant's Mark will result in irreparable
`
`injury to Opposer and to its rights in its SUPER DRY mark.
`
`
`
`WHEREFORE, for the foregoing reasons, Opposer, Diamond
`
`Cosmetics, by and through its counsel, respectfully requests
`
`that this opposition be sustained and that the registration
`
`sought by Applicant in U. S. Trademark Application Serial No.
`
`84/755,276 be denied.
`
`Dated: March 9, 2015
`
`Respectfully submitted,
`
`ROBERT M. SCHWARTZ, P.A.
`
`s/robert m. schwartz/
`BY: Robert M. Schwartz, Esq.
`
`Robert M. Schwartz, P.A.
`2445 Hollywood Boulevard
`Hollywood, FL 33020
`Tel: (954) 924-0707
`Fax: (954) 924-0717
`litigation@patentmiami.com
`Attorney for Diamond Cosmetics, Inc.
`
`
`
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`
`
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`4
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`

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`CERTIFICATE OF SERVICE
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`I HEREBY certify that a true and correct copy of the foregoing
`has been sent by First-Class mail this 9th day of March, 2015
`to:
`
`
`Stephen R. Baird
`Winthrop & Weinstine, P.A.
`Capella Twr Ste 3500
`225 S 6TH ST
`Minneapolis, Minnesota 55402-4601
`
`s/robert m. schwartz/
`Robert M. Schwartz, Esquire
`
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`5
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`EXHIBIT A
`EXHIBITA
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`

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`
`Word Mark
`Translations
`
`Goods and
`Services
`
`SUPERDRY.
`The non-Latin characters in the mark transliterate to "su:pa:dorai" and this means "extremely dry" in
`English.
`IC 003. US 001 004 006 050 051 052. G & S: Cleaning preparations; soaps; body mist; body wash;
`body spray; body lotions; bubble bath; shower gel; lip gloss; lip balm; essential oils; hair lotions;
`dentifrices; deodorants for personal use; antiperspirants; deodorants; aftershaves; air fragrancing
`preparations; cosmetics, namely, lipstick, lip liner, non-medicated lip plumping preparations, eye
`shadow, blusher, rouge, face powder, bronzer, foundation, concealer, mascara, eye pencils, eye
`liner, eye brow pencils, false eyelashes, skin care creams, skin care lotions, eye creams, eye primer,
`face primer, highlighting face creams, powders and lotions, topical skin sprays for cosmetic
`purposes, namely, for make-up setting, gel eye liner, tinted moisturizing creams and lotions, bath and
`beauty creams; all of the foregoing excluding nail care products
`
`(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
`
`28.01.03 - Asian characters; Chinese characters; Japanese characters
`
`Mark Drawing
`Code
`Design Search
`Code
`Serial Number 85755276
`Filing Date
`October 16, 2012
`Current Basis 44E
`Original Filing
`Basis
`Published for
`Opposition
`Owner
`
`1B;44E
`
`September 9, 2014
`
`(APPLICANT) DKH Retail Limited LIMITED LIABILITY COMPANY UNITED KINGDOM Unit 60 The
`Runnings Cheltenham UNITED KINGDOM GL519NW
`
`Attorney of
`Record
`
`Stephen R. Baird
`
`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:1lmdw7.2.1
`
`3/6/2015
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`

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`Trademark Electronic Search System (TESS)
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`Page 2 of 2
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`Prior
`Registrations 4085538
`Description of
`Color is not claimed as a feature of the mark. The mark consists of the stylized literal element
`Mark
`"SUPERDRY" followed by a period, with Japanese characters directly above the literal element.
`Type of Mark TRADEMARK
`Register
`PRINCIPAL
`Live/Dead
`Indicator
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`LIVE
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`| .HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
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`http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4802:1lmdw7.2.1
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`3/6/2015
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`EXHIBIT B
`EXHIBIT B
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`

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`Int. Cl.: 3
`
`Prior U.S. CIs.: 1, 4, 6, 50, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,297,889
`Registered Dec. 7, I999
`
`TRADEM A R K
`PRINCIPAL REGISTER
`
`SUPER DRY
`
`DIAMOND COSMETICS, INC. (FLORIDA COR-
`PORATIONI
`I()55I N.W. SJRD STREET
`SUNRISE, FL 3335i
`
`FIRST USE
`I—I()—I‘)03,
`
`SEC. 2(I7).
`
`I—I()—|993;
`
`IN
`
`COMMIERCF.
`
`FOR: NAIL POLISH, NAIL CLEAR TOI’
`COAT, NAIL STRENGTHENERS AND CONDI-
`TIONERS. AND NAIL HARDENERS. IN CLASS
`3 (U.S. CLS. I, 4. (7. 50, 5| AND 52),
`
`SER. N(). 75—541.205. FILED 8-24-1908.
`
`PAUL F. GAST. EXAMININC /\’I‘T()RNF.Y