Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA772921
`09/26/2016
`
`ESTTA Tracking number:
`
`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
`
`Party who filed
`Extension of time
`to oppose
`
`Relationship to
`party who filed
`Extension of time
`to oppose
`
`Attorney informa-
`tion
`
`Fresh, Inc.
`
`09/25/2016
`
`3/F 19 East 57th Street
`New York, NY 10022
`UNITED STATES
`
`Fresh Inc.
`
`The comma was inadvertently left out of opposer's name when the extensions of
`time were filed. Opposer's name is Fresh, Inc.
`
`Wendi E. Sloane
`Barack Ferrazzano Kirschbaum & Nagelberg LLP
`200 West Madison Street, Suite 3900
`Chicago, IL 60606
`UNITED STATES
`trademarks@bfkn.com Phone:312-984-3100
`
`Applicant Information
`
`Application No
`
`86801252
`
`Publication date
`
`03/29/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`09/26/2016
`
`Opposition Peri-
`od Ends
`
`09/25/2016
`
`Best Accessory Group, LLC
`10 West 37th Street, Suite 4E
`New York, NY 10018
`UNITED STATES
`
`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: Bath beads; Bath crystals; Bath pearls;Bath
`salts; Bath soaps; Body butter; Body lotion; Body scrub; Body sprays; Bubble bath; Cosmetics and
`make-up; Cotton balls for cosmetic purposes; Cotton swabsfor cosmetic purposes; Foot scrubs; Ge-
`leye masks; Hand lotions; Lip balm; Pumice stones for personal use; Shampoos; Shower gel
`
`Class 021. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bath brushes; Bath products, namely, loo-
`fah sponges; Bath sponges; Body scrubbing puffs; Nail brushes; Soap holders; Sponge massagers;
`Toilet tissue holders
`
`
`ESTTA772921
`09/26/2016
`
`ESTTA Tracking number:
`
`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
`
`Party who filed
`Extension of time
`to oppose
`
`Relationship to
`party who filed
`Extension of time
`to oppose
`
`Attorney informa-
`tion
`
`Fresh, Inc.
`
`09/25/2016
`
`3/F 19 East 57th Street
`New York, NY 10022
`UNITED STATES
`
`Fresh Inc.
`
`The comma was inadvertently left out of opposer's name when the extensions of
`time were filed. Opposer's name is Fresh, Inc.
`
`Wendi E. Sloane
`Barack Ferrazzano Kirschbaum & Nagelberg LLP
`200 West Madison Street, Suite 3900
`Chicago, IL 60606
`UNITED STATES
`trademarks@bfkn.com Phone:312-984-3100
`
`Applicant Information
`
`Application No
`
`86801252
`
`Publication date
`
`03/29/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`09/26/2016
`
`Opposition Peri-
`od Ends
`
`09/25/2016
`
`Best Accessory Group, LLC
`10 West 37th Street, Suite 4E
`New York, NY 10018
`UNITED STATES
`
`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: Bath beads; Bath crystals; Bath pearls;Bath
`salts; Bath soaps; Body butter; Body lotion; Body scrub; Body sprays; Bubble bath; Cosmetics and
`make-up; Cotton balls for cosmetic purposes; Cotton swabsfor cosmetic purposes; Foot scrubs; Ge-
`leye masks; Hand lotions; Lip balm; Pumice stones for personal use; Shampoos; Shower gel
`
`Class 021. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bath brushes; Bath products, namely, loo-
`fah sponges; Bath sponges; Body scrubbing puffs; Nail brushes; Soap holders; Sponge massagers;
`Toilet tissue holders
`
`
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2633783
`
`Registration Date
`
`10/15/2002
`
`Word Mark
`
`Design Mark
`
`FRESH
`
`Application Date
`
`03/11/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1991/11/00 First Use In Commerce: 1991/11/00
`Body lotions, hand creams, face creams,bath gels, shower gels, face soaps,
`body soaps, shampoos, hair conditioners, cosmetics, namely, lipsticks, [ eye
`shadows, ] lip gloss, [ nail polish, ] face powders, foundations, [ scented incense,
`]perfume, toilet waters, massage oils
`
`U.S. Registration
`No.
`
`2460825
`
`Registration Date
`
`06/19/2001
`
`Word Mark
`
`FRESH
`
`Application Date
`
`03/11/1999
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark is a stylized drawing of the lower case word "FRESH".
`
`Class 035. First use: First Use: 1991/11/00 First Use In Commerce: 1991/11/00
`Wholesale and retail stores featuring body lotions, hand creams, face creams,
`bath gels, shower gels, face and body soaps, shampoos and conditioners, cos-
`metics, namely, lipsticks, eye shadows, lip gloss, [ nail polish, ] face powders,
`foundations, perfume, toilet waters and massage oils
`
`U.S. Registration
`No.
`
`2377045
`
`Registration Date
`
`08/15/2000
`
`Word Mark
`
`Design Mark
`
`FRESH
`
`Application Date
`
`03/11/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 004. First use: First Use: 1997/11/00 First Use In Commerce: 1997/11/00
`Scented Candles
`
`U.S. Registration
`No.
`
`4510859
`
`Registration Date
`
`04/08/2014
`
`Word Mark
`
`FRESH
`
`Application Date
`
`09/10/2013
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "fresh" in a stylized font.
`
`Class 003. First use: First Use: 1991/11/00 First Use In Commerce: 1991/11/00
`Cosmetics; Deodorants and antiperspirants; Fragrances; Hair care preparations;
`Non-medicated bath preparations; Non-medicated lip care preparations; Non-
`medicated skin care preparations; Skin bronzer; Sun block
`
`U.S. Registration
`No.
`
`2713600
`
`Registration Date
`
`05/06/2003
`
`Application Date
`
`06/25/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`FRESH
`
`NONE
`
`Class 003. First use: First Use: 1991/11/01 First Use In Commerce: 1991/11/01
`Skin Clarifiers, Face Cleansers and Makeup Remover, [ face cleansing wipes, ]
`Face Creams, Face Emollients, Face Lotion, Face Masks, Face Moisturizer,
`Face Scrubs, Soaps and Toners; Shower Gels; BodyGels and Lotions; [ Body
`Masks, ] Scrubs and Exfoliants; Hand Cream; [ Foot Care preparations, namely,
`Foot Cream, Footsoak and Foot scrub; ] Body Scrubs; [ Oral Care preparations,
`namely, toothpaste, tooth polish; Perfume; Cologne; Toilet Water; ] Scented
`Body Oil for personaluse; Personal Deodorant; Sun Block; After-Sun Lotions;
`Shaving Cream and lotions; After-Shave Cream; non-medicated Lip Balm; Toilet
`Soap for face and body, Bath Foam and Bath Gels Preparations; Hair Care Pre-
`paration; Hair Shampoo and Conditioner; Hair Styling Products; Makeup; Lip-
`stick; Lip Gloss and shines; Face baseand foundations and face makeup
`primers, concealers, face powders and blush, [ Eye shadows and eye shines; ]
`Mascara; [Sun protection creams, ] sun block [ lotions and ] sticks, after-sun
`creams andlotions [, self-tanning creams and lotions ]
`
`U.S. Registration
`No.
`
`4510936
`
`Registration Date
`
`04/08/2014
`
`Word Mark
`
`FRESH
`
`Application Date
`
`11/15/2013
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1991/11/00 First Use In Commerce: 1991/11/00
`Cosmetics; Deodorants and antiperspirants; Fragrances; Hair care preparations;
`Non-medicated bath preparations; Non-medicated lip care preparations; Non-
`medicated skin care preparations; Skin bronzer; Sun block
`
`U.S. Registration
`No.
`
`3028724
`
`Registration Date
`
`12/13/2005
`
`Word Mark
`
`Design Mark
`
`SUGAR
`
`Application Date
`
`11/17/2004
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1998/01/14 First Use In Commerce: 1998/01/14
`Fragrances for personal use, eau de Parfum [ and Eau de Toilette]
`
`U.S. Registration
`No.
`
`2537616
`
`Registration Date
`
`02/12/2002
`
`Application Date
`
`10/30/1999
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`SUGAR EAU DE PARFUM
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`perfume, toilet waters
`
`U.S. Registration
`No.
`
`2234297
`
`Registration Date
`
`03/23/1999
`
`Word Mark
`
`Design Mark
`
`SUGARBATH
`
`Application Date
`
`04/06/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`[body lotions, ] bath preparations, namely, [bath powders,] bath cubes [, bubble
`bath, bath oil, skin soaps, body creams and lotions, hair shampoos, perfume
`and toilet waters, face creams and lotions, facial cleansers, masks for the face,
`cosmetics, namely, lipstick, face powder, eye shadow, blush, foundation, eye
`liners, lip liner pencils, nail polish]
`
`U.S. Registration
`No.
`
`2685121
`
`Registration Date
`
`02/11/2003
`
`Application Date
`
`09/13/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BROWN SUGAR BODY POLISH
`
`Description of
`
`NONE
`
`
`
`Mark
`
`Goods/Services
`
`Class 003. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`[ Body lotions, hand creams, face creams and ] cleansers; bath preparations,
`namely, bath gels, shower gels, and non-medicated bath salts; [ face and ] body
`soaps; [ hair shampoos, hair conditioners;cosmetics, namely, lipsticks, eye
`shadows, lip gloss, nail polish, face powdersand foundations; scented incense;
`perfume, toilet waters, ] and massage oils; not sold in professional tanning
`salons or beauty salons
`
`U.S. Registration
`No.
`
`4424730
`
`Registration Date
`
`10/29/2013
`
`Application Date
`
`02/25/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`BROWN SUGAR BODY POLISH
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`exfoliants for skin, not sold in professional tanning or beauty salons
`
`U.S. Registration
`No.
`
`4730385
`
`Registration Date
`
`05/05/2015
`
`Word Mark
`
`Design Mark
`
`FRESH BROWN SUGAR
`
`Application Date
`
`04/28/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2011/01/01 First Use In Commerce: 2011/01/01
`Fragrances, not sold in professional tanning salons or beauty salons
`
`U.S. Registration
`No.
`
`4788526
`
`Application Date
`
`06/12/2014
`
`
`
`Registration Date
`
`08/11/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`SUGAR FRESH F21C
`
`Description of
`Mark
`
`The mark consists of a three-dimensional configuration of the packaging for the-
`goods. The configuration is comprised of a cylindrical container with the end of
`the top portion of the container that is convexly curved and with the word "SUG-
`AR" in a stylized font positioned vertically down the length of the container
`above the word "fresh" in a stylized font, above the phrase "F21C" in a stylized
`font.
`
`Goods/Services
`
`Class 003. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`Non-medicated lip care preparations
`
`U.S. Registration
`No.
`
`4663796
`
`Registration Date
`
`12/30/2014
`
`Word Mark
`
`Design Mark
`
`SUGAR FACE POLISH
`
`Application Date
`
`05/30/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2001/00/00 First Use In Commerce: 2001/00/00
`Non-medicated skin care preparations
`
`
`
`U.S. Application
`No.
`
`87140433
`
`Application Date
`
`08/16/2016
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`SUGAR
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 003. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`Non-medicated lip care preparations
`
`86893587
`
`Application Date
`
`02/01/2016
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`SUGAR
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`The mark consists of the word "SUGAR" in a stylized font and positioned vertic-
`ally on the product packaging. The mattershown in broken lines is not claimed
`aspart of this mark and serves only to show the orientation of the mark on the
`packaging for the goods.
`
`Goods/Services
`
`Class 003. First use: First Use: 2004/01/00 First Use In Commerce: 2004/01/00
`
`
`
`Attachments
`
`Non-medicated lip care preparations
`
`75658377#TMSN.png( bytes )
`75658398#TMSN.png( bytes )
`75658667#TMSN.png( bytes )
`86060739#TMSN.png( bytes )
`86120413#TMSN.png( bytes )
`78518607#TMSN.png( bytes )
`75786152#TMSN.png( bytes )
`75462761#TMSN.png( bytes )
`75797492#TMSN.png( bytes )
`85859472#TMSN.png( bytes )
`86264135#TMSN.png( bytes )
`86308464#TMSN.png( bytes )
`86296728#TMSN.png( bytes )
`87140433#TMSN.png( bytes )
`86893587#TMSN.png( bytes )
`FRSH 0437 Notice of Opposition to FRESHSWEET.pdf(46142 bytes )
`Exhibit A.pdf(1147825 bytes )
`Exhibit B.pdf(2010696 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
`
`/Wendi E Sloane/
`
`Wendi E. Sloane
`
`09/26/2016
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`x : : :
`
`In the matter of:
`: Application Serial No. 86/801252
`: For the mark:
`: FRESHSWEET
`: Published in the Official Gazette
`: On March 29, 2016
`
`: : : : : : : : x
`
`_____________________________________
`
`Fresh, Inc.
`
`Opposer,
`
`v.
`
`Best Accessory Group, LLC
`
`Applicant.
`
`_____________________________________
`
`NOTICE OF OPPOSITION
`
`Opposer Fresh, Inc. (“Opposer”), a Delaware corporation, with the address of 3/F 19
`
`East 57th Street, New York, New York 10022, believes that
`
`it will be damaged by the
`
`registration of the mark FRESHSWEET (“Applicant’s Mark”), as shown in Application Serial
`
`No. 86/801252, filed on October 27, 2015 by Best Accessory Group, LLC (“Applicant”), for
`
`“Bath beads; Bath crystals; Bath pearls; Bath salts; Bath soaps; Body butter; Body lotion; Body
`
`scrub; Body sprays; Bubble bath; Cosmetics and make-up; Cotton balls for cosmetic purposes;
`
`Cotton swabs for cosmetic purposes; Foot scrubs; Gel eye masks; Hand lotions; Lip balm;
`
`Pumice stones for personal use; Shampoos; Shower gel” in International Class 3, and for “Bath
`
`brushes; Bath products, namely, loofah sponges; Bath sponges; Body scrubbing puffs; Nail
`
`brushes; Soap holders; Sponge massagers; Toilet tissue holders” in International Class 21, and
`
`hereby opposes the same.
`
`1236387
`
`
`
`The grounds for opposition are as follows:
`
`1.
`
`Opposer, a Delaware corporation, is a manufacturer and seller of various
`
`high-quality cosmetic and personal care products, including skin care preparations, fragrances
`
`and other related merchandise, and has advertised, promoted, distributed and sold, since at least
`
`as early as November 1991, and January 1998, respectively, a wide variety of such goods under
`
`its trademarks FRESH and SUGAR, each in standard characters as well as in characteristic
`
`stylized script (collectively, the “FRESH and SUGAR Trademarks”), in the United States.
`
`2.
`
`Opposer owns several
`
`federal
`
`trademark registrations and pending
`
`applications in the United States for its FRESH and SUGAR Trademarks,
`
`including for
`
`composite source identifiers containing both designations. These registrations and applications
`
`include:
`
`MARK
`
`REG./APPLN.
`NO.
`2,633,783
`
`2,460,825
`
`2,377,045
`
`4,510,859
`
`1236387
`
`GOODS/SERVICES
`
`CLASS(ES)
`
`Body lotions, hand creams, face creams,
`bath gels, shower gels, face soaps, body
`soaps, shampoos, hair conditioners,
`cosmetics, namely lipsticks, lip gloss,
`face powders, foundations, perfume,
`toilet waters, massage oils
`wholesale and retail stores featuring
`body lotions, hand creams, face creams,
`bath gels, shower gels, face and body
`soaps, shampoos and conditioners,
`cosmetics, namely lipsticks, eye
`shadows, lip gloss, face powders,
`foundations, perfume, toilet waters and
`massage oils
`scented candles
`
`cosmetics; deodorants and
`antiperspirants; fragrances; hair care
`preparations; non-medicated bath
`preparations; non-medicated lip care
`preparations; non-medicated skin care
`preparations; skin bronzer; sun block
`
`3
`
`35
`
`4
`
`3
`
`
`
`GOODS/SERVICES
`
`CLASS(ES)
`
`skin clarifiers, face cleansers and
`makeup remover, face creams, face
`emollients, face lotion, face masks, face
`moisturizer, face scrubs, soaps and
`toners; shower gels; body gels and
`lotions; scrubs and exfoliants; hand
`cream; body scrubs; scented body oil for
`personal use; personal deodorant; sun
`block; after-sun lotions; shaving cream
`and lotions; after-shave cream; non-
`medicated lip balm; toilet soap for face
`and body, bath foam and bath gels
`preparations; hair care preparation; hair
`shampoo and conditioner; hair styling
`products; makeup; lipstick; lip gloss and
`shines; face base and foundations and
`face makeup primers, concealers, face
`powders and blush; mascara; sun block
`sticks, after-sun creams and lotions
`cosmetics; deodorants and
`antiperspirants; fragrances; hair care
`preparation; non-medicated bath
`preparations; non-medicated lip care
`preparations; non-medicated skin care
`preparation; skin bronzer; sun block
`Fragrances for personal use, eau de
`Parfum
`perfume, toilet waters
`
`cleansers; bath preparations, namely,
`bath gels, shower gels, and non-
`medicated bath salts; body soaps; and
`massage oils; not sold in professional
`tanning salons or beauty salons
`exfoliants for skin, not sold in
`professional tanning or beauty salons
`fragrances, not sold in professional
`tanning salons or beauty salons
`non-medicated lip care preparations
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`3
`
`2,234,297
`
`bath preparations, namely, bath cubes
`
`MARK
`
`FRESH
`
`REG./APPLN.
`NO.
`2,713,600
`
`FRESH
`
`4,510,936
`
`SUGAR
`
`3,028,724
`
`SUGAR EAU DE
`PARFUM
`(Stylized)
`SUGARBATH
`(Stylized)
`BROWN SUGAR
`BODY POLISH
`
`2,537,616
`
`2,685,121
`
`BROWN SUGAR
`BODY POLISH
`FRESH BROWN
`SUGAR
`SUGAR FRESH
`F21C
`
`4,424,730
`
`4,730,385
`
`4,788,526
`
`1236387
`
`
`
`MARK
`
`REG./APPLN.
`NO.
`
`GOODS/SERVICES
`
`CLASS(ES)
`
`SUGAR FACE
`POLISH
`SUGAR
`
`4,663,796
`
`non-medicated skin care preparations
`
`87/140433
`
`non-medicated lip care preparations
`
`86/893587
`
`non-medicated lip care preparations
`
`3
`
`3
`
`3
`
`3.
`
`These registrations and applications are valid and subsisting, and many are
`
`now incontestable. Together, these two families of marks protect Opposer’s numerous personal
`
`care products and related services. Copies of these registrations and applications from the U.S.
`
`Patent and Trademark Office (“PTO”) Database are attached herewith, collectively marked as
`
`Exhibit A. Certified copies of these properties will be made of record during Opposer’s
`
`testimony period. Opposer currently distributes its products in commerce under its FRESH and
`
`SUGAR Trademarks, both within the United States and in numerous countries throughout the
`
`world.
`
`4.
`
`Long prior to the filing date of the application opposed herein, Opposer
`
`used the FRESH and SUGAR Trademarks for the goods and services covered by the
`
`registrations and applications referred to above. As a result of such use, Opposer has developed
`
`a distinctive style and quality of products that the general public throughout the United States
`
`associates with the FRESH and SUGAR Trademarks. Non-medicated skin care preparations and
`
`1236387
`
`
`
`other beauty and personal care products sold under the FRESH and SUGAR Trademarks have
`
`been extremely successful throughout the country and internationally, and have come to be
`
`associated by consumers as emanating from Opposer.
`
`5.
`
`Opposer’s FRESH and SUGAR Trademarks are strong and distinctive,
`
`with many of these registrations now being incontestable. Also, by virtue of Opposer’s
`
`longstanding use, the FRESH and SUGAR Trademarks are accorded protection not only in
`
`connection with the precise goods and services identified in Opposer’s registrations, but also in
`
`connection with products and services which are related to or which are in the likely zone of
`
`natural expansion of the goods identified in Opposer’s registrations.
`
`6.
`
`The FRESH and SUGAR Trademarks have achieved extensive consumer
`
`recognition by virtue of Opposer’s continuous use of the marks for over two decades with the
`
`registered goods and its advertising and publicity in a variety of well-known media sources,
`
`including, among others: Vogue, Seventeen, Cosmopolitan, Vanity Fair, Harper's Bazaar, Elle,
`
`In Style, Glamour, In Touch, Allure, Details, Women’s Wear Daily, The New York Times, The
`
`New York Post, The Boston Globe, Time Out Chicago and People. Opposer also features the
`
`FRESH and SUGAR Trademarks on its own website, www.fresh.com, representative pages of
`
`which are collected at Exhibit B.
`
`7.
`
`Opposer’s goods have been sold and marketed under the FRESH and
`
`SUGAR Trademarks, in the United States and internationally, both at Opposer’s own boutiques
`
`and at select retail stores, including, among others, Sephora, Barney’s New York, and Nieman
`
`Marcus, as well as on the Internet, and have become exclusively associated with Opposer. As a
`
`result of this extensive use, Opposer has acquired an eminent reputation and valuable good will
`
`1236387
`
`
`
`in the FRESH and SUGAR Trademarks throughout the United States. Finally, “Fresh” also
`
`constitutes the Opposer’s trade name in addition to simply being the trademark for its products.
`
`8.
`
`On October 27, 2015 Applicant
`
`filed its application to register
`
`“FRESHSWEET” in connection with “Bath beads; Bath crystals; Bath pearls; Bath salts; Bath
`
`soaps; Body butter; Body lotion; Body scrub; Body sprays; Bubble bath; Cosmetics and make-
`
`up; Cotton balls for cosmetic purposes; Cotton swabs for cosmetic purposes; Foot scrubs; Gel
`
`eye masks; Hand lotions; Lip balm; Pumice stones for personal use; Shampoos; Shower gel” in
`
`International Class 3 and “Bath brushes; Bath products, namely, loofah sponges; Bath sponges;
`
`Body scrubbing puffs; Nail brushes; Soap holders; Sponge massagers; Toilet tissue holders” in
`
`International Class 21, under the intent-to-use basis, 15 U.S.C. § 1051(b).
`
`9.
`
`Applicant’s Mark so closely resembles Opposer’s FRESH and SUGAR
`
`Trademarks in appearance, sound and in the overall commercial impression it imparts on
`
`consumers that it is likely to cause confusion, mistake or deception among the buying public as
`
`to any affiliation, association or sponsorship between Opposer and Applicant if registered, in
`
`violation of 15 U.S.C. § 1052(d).
`
`10.
`
`Foremost,
`
`the visual appearance of Applicant’s Mark is confusingly
`
`similar to the FRESH and SUGAR Trademarks in a number of respects. The “Fresh” component
`
`is identical between the Applicant’s Mark and Opposer’s numerous “FRESH” and “FRESH”-
`
`formative marks. The difference in appearance from Applicant’s inclusion of the word “sweet”
`
`is de minimus, and insufficient to preclude likely confusion since this term both begins with the
`
`letter “s” and has similar connotation to “Sugar”. Finally, having been filed with a standard
`
`character claim, Applicant's Mark does not include any design element or appear in any
`
`1236387
`
`
`
`stylization that could otherwise visually distinguish it from Opposer's FRESH and SUGAR
`
`Trademarks.
`
`11.
`
`The FRESH and SUGAR Trademarks and Applicant’s Mark are also
`
`similar phonetically. The marks sound practically the same, and are in fact acoustically identical
`
`in regard to the “Fresh” components.
`
`12. Moreover, Applicant’s Mark has a similar meaning and imparts the same
`
`overall commercial impression as the FRESH and SUGAR Trademarks. More precisely, the
`
`FRESHSWEET mark invokes the same connotation of something both delightful as well as
`
`new/innovative as many of Opposer’s composite marks containing both “Fresh” and “Sugar.”
`
`13.
`
`Applicant has applied to register its mark with many of the same and
`
`otherwise directly related personal care products, along with corresponding accessories, as the
`
`goods in Class 3 for which Opposer has registered and is using its FRESH and SUGAR
`
`Trademarks, thereby heightening the likelihood of confusion. Applicant’s registration of a mark
`
`highly similar to that of Opposer's FRESH and SUGAR Trademarks is likely to give rise to the
`
`mistaken belief among consumers that Applicant’s Class 3 lotions, bath soaps, scrubs and other
`
`beauty products and Class 21 bath brushes and other accessories emanate from the same source
`
`and/or that Applicant’s goods are sponsored by, approved by, connected with or otherwise
`
`affiliated with those of Opposer.
`
`14.
`
`Given the related (and, with respect to Class 3, identical) nature of the
`
`products, Applicant’s and Opposer’s respective merchandise may be encountered by certain
`
`classes of overlapping consumers in the same geographic markets, passing through the same
`
`channels of distribution and trade.
`
`1236387
`
`
`
`15.
`
`Applicant’s Mark so closely resembles
`
`the FRESH and SUGAR
`
`Trademarks that it is likely to cause confusion, mistake or deception within the meaning of
`
`Section 2(d) of the Lanham Act.
`
`16.
`
`Opposer has not authorized or consented to Applicant’s use or registration
`
`of Applicant’s Mark in the United States.
`
`17.
`
`Accordingly, registration of Applicant’s Mark will likely cause consumers
`
`to be confused, mistaken or deceived as to the source, origin or sponsorship of Applicant’s
`
`goods, to believe that Applicant’s goods emanate from Opposer, to believe that Applicant is in
`
`some way related to Opposer, and/or to believe that Applicant’s goods marketed under the
`
`opposed mark are marketed with the consent, permission or authorization of Opposer.
`
`18.
`
`If Applicant is permitted to register Applicant’s Mark as set forth in the
`
`application herein opposed, it is likely that the relevant public will be confused as to association,
`
`affiliation or sponsorship, resulting in damage and injury to Opposer.
`
`19.
`
`Furthermore, any objection to Applicant’s goods would necessarily reflect
`
`on and seriously injure the reputation that Opposer has established under the FRESH and
`
`SUGAR Trademarks and the goods sold and services provided thereunder.
`
`20.
`
`If Applicant were to be granted a registration for the mark herein opposed,
`
`it would obtain thereby at least a prima facie exclusive right to use the mark for Applicant’s
`
`goods. Such registration would be a source of damage and injury to Opposer, as set forth herein.
`
`WHEREFORE, Opposer respectfully requests that this opposition be sustained and that
`
`registration of the mark FRESHSWEET, Application Serial No. 86/801252 for the goods
`
`specified therein, be refused and that no registration should issue thereon to Applicant.
`
`1236387
`
`
`
`The Trademark Office is hereby authorized to charge any underpayment or overpayment
`
`to Deposit Account No. 50-1004.
`
`Dated: September 26, 2016
`
`Respectfully submitted,
`
`/Wendi E. Sloane/
`By:
`Wendi E. Sloane
`Thomas M. Gniot
`BARACK FERRAZZANO KIRSCHBAUM
`& NAGELBERG LLP
`200 West Madison Street
`Suite 3900
`Chicago, IL 60606-3465
`Phone: (312) 984-3100
`Fax: (312) 984-3150
`
`Counsel for Opposer, Fresh, Inc.
`
`1236387
`
`
`
`Certificate of Service
`
`The undersigned, an attorney, hereby certifies that on September 26, 2016, she served a
`copy of this Notice of Opposition upon the Applicant Best Accessory Group, LLC’s attorneys by
`first class mail to:
`
`Limor Wigder
`Goldberg Cohen LLP
`1350 Avenue of the Americas, 3rd Fl.
`New York, New York 10019
`
`/Wendi E. Sloane/_________________________
`Wendi E. Sloane
`
`1236387
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`
`
`Int. Cl.: 3
`
`Prior U.S. Cls.: 1, 4, 6, 50, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,633,783
`Registered Oct. 15,2002
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`fres/7
`
`FRESH, INC. (DELAWARE CORPORATION)
`25 DRYDOCK AVENUE
`BOSTON, MA 02210 , BY MERGER FRESH, INC.
`(MASSACHUSETTS CORPORATION) BOSTON,
`MA 02110
`
`SHADOWS, LIP GLOSS, NAIL POLISH, FACE POW-
`DERS, FOUNDATIONS, SCENTED INCENSE, PER-
`FUME, TOILET WATERS, MASSAGE OILS,
`IN
`CLASS 3 (U.S. CLS. 1, 4, 6, 50, 51 AND 52).
`
`FOR: BODY LOTIONS, HAND CREAMS, FACE
`CREAMS, BATH GELS, SHOWER GELS, FACE
`SOAPS, BODY SOAPS, SHAMPOOS, HAIR CONDI-
`TIONERS, COSMETICS, NAMELY LIPSTICKS, EYE
`
`FIRST USE 11-0-1991; IN COMMERCE 11-0-1991.
`
`SER. NO. 75-658,377, FILED 3-11-1999.
`
`DAVID C. REIHNER, EXAMINING ATTORNEY
`
`
`
`Int. Cl.: 35
`
`Prior U.S. CIs.: 100, 101 and 102
`
`United States Patent and Trademark Office’
`
`Reg. No. 2,460,825
`Registered June 19, 2001
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`fresh
`
`(MASSACHUSETTS CORPORA-
`
`INC.
`
`FRESH,
`TION)
`25 DRYDOCK AVE
`BOSTON, MA 02210
`
`FOR: WHOLESALE AND RETAIL STORES FEA-
`TURING BODY LOTIONS, HAND CREAMS, FACE
`CREAMS, BATH GELS, SHOWER GELS, FACE AND
`BODY SOAPS, SHAMPOOS AND CONDITIONERS,
`COSMETICS, NAMELY LIPSTICKS, EYE SHA-
`DOWS, LIP GLOSS, NAIL POLISH, FACE POWDERS,
`FOUNDATIONS, PERFUME, TOILET WATERS
`
`AND MASSAGE OILS, IN CLASS 35 (U.S. CLS. 100,
`101 AND 102).
`
`FIRST USE 11-0-1991; IN COMMERCE 1]-O-1991.
`
`THE MARK IS A STYLIZED DRAWING OF THE
`LOWER CASE WORD "FRESH".
`
`SER. NO. 75-658,398, FILED 3-11-1999.
`
`JON SCHIFFRIN, EXAMINING ATTORNEY
`
`
`
`Int. Cl.: 4
`
`Reg. No. 2,377,045
`Prior U.S. Cls.: 1, 6 and 15
`
`United States Patent and Trademark Office Registered Aug. 15,2000
`
`TRADEIVIARK
`
`PRINCIPAL REGISTER
`
`fres/7
`
`FRESH, INC. (MASSACHUSETTS CORPORATION)
`25 DRYDOCK AVENUE
`
`FIRST USE 11-0-1997; IN COMMERCE 11-(P1997.
`
`BOSTON, MA 02210
`
`SER. NO. 75-658,667, FILED 3-11-1999.
`
`FOR: SCENTED CANDLES, IN CLASS 4 (U.S. CLS.
`1, 5 AND 15).
`
`JON SCHIFFRIN, EXAMINING ATTORNEY
`
`
`
`Tfluitetl £0102; ifiatent anti fllitahemark ®ffI'I:2
`
`fresh
`
`FRESH, INC. (DELAWARE CORPORATION)
`Reg, No_ 4,510,359
`3.1T 19 EAST 57TH STREET
`_
`Reglstered Apr. 8, 2014 NEW YORK, NY 10022
`
`Int. Cl.: 3
`
`TRADEMARK
`
`FOR: COSMETICS; DEODORANTSANDANTIPERSPIRANTS;FRAGRANCES; HAIR CARE
`PREPARATIONS-, NON-MEDICATED BATH PREPARATIONS; NON-MIEDICATED LEP CARE
`PREPARATIONS-, NON-MEDICATED SKJN CARE PREPARATIONS-, SKIN BRONZER; SUN
`BLOCK, IN CLASS 3 (U.S. CLS. 1.4, 0, 50, 51 AND 52).
`
`PRINCIPAL REGISTER
`
`FIRST USE 11-0-1991; IN COMMERCE 11-0-1991.
`
`OWNER OF U.S. REG. NOS. 2,460,825, 2.713.600 AND OTHERS.
`
`THE MARK CONSISTS OF THE WORD "FRESH" IN A STYLIZED FONT.
`
`SER. NO. S6-060,739, FILED 9-10-2013.
`
`PAM W]1.LIS, EXAM1'N1'NG ATTORNEY
`
`Deputy Director of the United States
`Patent and Trad emark Offite
`
`
`
`Int. CL: 3
`
`Prior U.S. Cls.: 1, 4, 6, 50, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 2,713,600
`Registered May 6, 2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`FRESH INC (DELAWARE CORPORATION)
`25 DRYDOCK AVENUE
`BOSTON, MD, MA 02210
`
`FOR: SKIN CLARIFIERS, FACE CLEANSERS
`AND MAKEUP REMOVER, FACE CLEANSING
`WIPES, FACE CREAMS, FACE EMOLLIENTS, FACE
`LOTION, FACE MASKS, FACE MOISTURIZER,
`FACE SCRUBS, SOAPS AND TONERS; SHOWER
`GELS; BODY GELS AND LOTIONS; BODY MASKS,
`SCRUBS AND EXFOLIANTS; HAND CREAM; FOOT
`CARE PREPARATIONS NAMELY FOOT CREAM,
`FOOT SOAK AND FOOT SCRUB; BODY SCRUBS;
`ORAL CARE PREPARATIONS NAMELY TOOTH-
`PASTE, TOOTH POLISH; PERFUME; COLOGNE;
`TOILET WATER; SCENTED BODY OIL FOR PER-
`SONAL USE; PERSONAL DEODORANT; SUN
`BLOCK; AFTER-SUN LOTIONS; SHAVING CREAM
`AND LOTIONS; AFTER-SHAVE CREAM; NON-
`MEDICATED LIP BALM; TOILET SOAP FOR FACE
`AND BODY, BATH FOAM AND BATH GELS PRE-
`
`PARATIONS; HAIR CARE PREPARATION; HAIR
`SHAMPOO AND CONDITIONER; HAIR STYLING
`PRODUCTS; MAKEUP; LIPSTICK; LIP GLOSS AND
`SHINES; FACE BASE AND FOUNDATIONS AND
`FACE MAKEUP PRIMERS, CONCEALERS, FACE
`POWDERS AND BLUSH, EYE SHADOWS AND EYE
`SHINES; MASCARA; SUN PROTECTION CREAMS,
`SUN BLOCK LOTIONS AND STICKS, AP'rER—sUN
`CREAMS AND LOTIONS, SELF-TANNING
`CREAMS AND LOTIONS, IN CLASS 3 (U.S. CLS. 1,
`4, 6, 50, 51 AND 52).
`
`FIRST USE 11-1-1991; IN COMMERCE 11-1-1991.
`
`OWNER OF US. REG. N0. 2,633,783.
`
`SER. NO. 78-138,471, FILED 6-25-2002.
`
`MARIA—VICTORIA SUAREZ, EXAMINING ATTOR-
`NEY
`
`
`
`FRESH
`
`FRESH, INC. (DELAWARE CORPORATION)
`Reg, No_ 4,510,936
`3/F 19 EAST 57TH STREET
`_
`Reglstered Apr. 8, 2014 NEW YORK, NY 10022
`
`Int. CL: 3
`
`TRADEMARK
`
`FOR: COSMETICS; DEODORANTSANDANTIPERSPIRANTS; FRAGRANCES; HAIR CARE
`PREPARATIONS; NON-MEDICATED BATH PREPARATIONS; NON-MEDICATED I IP CARE
`PREPARATIONS; NON-MEDICATED SKIN CARE PREPARATIONS; SKIN BRONZER; SUN
`BLOCK, IN CLASS 3 (U.S. CLS. 1,4, 6, 50, 51 AND 5- .
`
`PRINCIPAL REGISTER
`
`FIRST USE 11-0-1991; IN COMMERCE 11-0-1991.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICIILAR FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NOS. 2,493,583, 2,713,600 AND OTHERS.
`
`SER. NO. 86-120,413, FILED 11-15-2013.
`
`PAM WILLIS, EXAMINING ATTORNEY
`
`Deputy Director of the United States
`Patent and Trademark Office
`
`
`
`Int. Cl.: 3
`
`Prior U.S. Cls.: 1, 4, 6, 50, 51 and 52
`
`United States Patent and Trademark Office
`
`Reg. No. 3,028,724
`Registered Dec. 13, 2005
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`FRESH INC (DELAWARE CORPORATION)
`zs
`BOSTON, MA 02210
`
`FOR: FRAGRANCES FOR PERSONAL USE, EAU
`DE PARFUM AND EAU DE TOILETTE, IN CLASS 3
`(U.S. CLS. 1, 4, 6, 50, 51 AND 52).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`;‘81E’%“§T”¥‘Jé*§’1‘飑i%£“éfeE81:‘N‘
`
`OWNER OF U.S. REG. NOS. 2,234,297 AND
`1537:615-
`
`SER. NO. 78-518,607, FILED 11-17-2004.
`
`FIRST USE 1-14-1998; IN COMMERCE 1-14-1998.
`
`MARK T- MULLEN, EXAMINING ATTORNEY
`
`
`
`Tfluitetl fitates ifiatent anti fllitahemark ®fft'I:2
`
`SUGAR
`
`eau de parfum
`
`FRESH, INC. (DELAWARE CORPORATION)
`Reg_ No_ 2,537,616
`32F, 19 EAST 57TH STREET
`_
`Reglstered Feb. 12, 2002 NEW TORK,NY 10022
`
`Amended Mai‘. 27, 2012 FOR: PERFUME, TOILET WATERS, IN CLASS 3 (US. CLS. 1, 4, 6, 50, 51 AND 52).
`
`Int, C1,: 3
`
`FIRST USE 1-0-1993; IN COMM]-ERCE 1-0.1993.
`
`TRADEMARK
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "EAU DE PARFUM", APART
`FROM THE MARK AS SHOWN.
`
`PRINCIPAL REGISTER
`
`SER. N0. 75-786,152, FILED 10-30-1999.
`
`Din:I:I0r ofllar Unillod Slatcei P311311 and Trndcmurlx Ofiiut
`
`
`
`Tfluitetl fitatns ifiatent anti fllitahemark ®fft'I:2
`
`SUGARBATH
`
`Reg. No. 2,234,297
`
`Registered Mar. 23, 1999
`
`Amended Feb. 28, 2012
`
`Int. CL: 3
`
`TRADEMARK
`
`FRESH INC (DELAWARE CORPORATION)
`32F, 19 EAST 57TH STREET
`NEW YORK, NY 10022
`
`FOR: [BODY LOTIONS, ] BATH PREPARATIONS, NAMELY, [BATH POWDERS,] BATH
`CUBES [, BUBBLE BATH, BATH OIL, SKIN SOAPS, BODY CREAMS AND LOTIONS, HAIR
`SHAMPOOS, PERFUME AND TOILET WATERS, FACE CREAMS AND LOTIONS, FACIAL
`CLEANSERS, MASKS FOR THE FACE. COSMETICS, NAMELY, LIPSTICK, FACE POWDER,
`EYE SHADOW, BLUSH, FOUNDATION, EYE LINERS, LIP LINER PENCILS, NAIL POLISH],
`IN CLASS 3 (U.S. CLS. 1, 4, 6, S0, 5] AND 52).
`
`PRINCIPAL REGISTER
`
`FIRST USE 1-0-1998; IN COMMERCE 1-0-1998.
`
`SER. NO. 75-462,761, FILED 4-6-1998.
`
`Din:I:I0r ofllar Unillod Slates P311311 and Tmdcmurk Ofiiut
`
`
`
`Int. Cl.: 3
`
`I
`
`Prior U.S. Cls.: 1, 4, 6, 50, 51 and 52
`United States Patent and Tradiemark Office
`
`Reg. No.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
