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Written Assignment V

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of trademark application Serial No.: 77/163,992

For the mark: BEYOND GLOW

Published in the Official Gazette on: October 9, 2007

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Natural Born Cosmetics, LLC,

Opposer,
v.

PRL USA HOLDINGS, INC.,

Applicant.
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NOTICE OF OPPOSITION

Natural Born Cosmetics, LLC, an X state limited liability company having an address at XXX (hereinafter “Opposer”), believes that it will be damaged by registration of the mark “BEYOND GLOW” shown in the application of Serial No. 77/163,992 filed April 24, 2007 by PRL USA HOLDINGS, INC. (hereinafter “Applicant”), and hereby opposes the same mark. Applicant’s mark was published in the Official Gazette on October 9, 2007, and it is for use with “cosmetics, namely, makeup for the face, eyes, cheeks and lips.” Opposer obtained an extension of time to oppose Applicant’s mark until December 10, 2007.

The grounds for opposition are as follows:

I. Applicant’s Mark is Unregistrable under 15 U.S.C. § 2(d).

No trademark is registrable if it “consists of or comprises a mark previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” See 15 U.S.C. §2(d). “The issue of likelihood of confusion typically revolves around the similarity [] of the marks and the relatedness of the goods [].” See TMEP §1207.01, 5.

Here, before Applicant’s mark was filed on April 24, 2007, Opposer had sold its own makeup products since July 1, 2004 by using Opposer’s mark “BEYOND GLOWING” in connection with such products. Opposer sold and has sold these makeup products in its retail stores in at least two states of the United States. Additionally, Applicant’s mark and Opposer’s mark both are used for the makeup products. Average purchasers in the makeup marketplace should likely be confused by Applicant’s mark “BEYOND GLOW” when they are in fact looking for the makeup products bearing Opposer’s mark “BEYOND GLOWING.” Thus, Applicant’s mark, when used in connection with the makeup products, should likely cause confusion with Opposer’s mark.

Specifically regarding “similarity of the marks,” “[s]imilarity in appearance is one factor in determining whether there is a likelihood of confusion between marks.” See TMEP §1207.01(b)(ii). “Similarity in meaning or connotation is another factor in determining whether there is a likelihood of confusion between marks.” See TMEP §1207.01(b)(v), 1. Here, when Applicant’s mark “BEYOND GLOW” and Opposer’s mark “BEYOND GLOWING” are put together, it of course appears to average purchasers in the makeup marketplace that both marks are similar not only because the only difference is “ING” but also because these two words are not different in their meanings.

Further regarding “relatedness of goods,” “[t]he goods [] do not have to be identical or even competitive in order to determine that there is a likelihood of confusion.” See TMEP §1207.01, 5. “It is sufficient that the goods [] of the applicant and the registrant are so related that the circumstances surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that would give rise to the mistaken belief that they originate from the same source.” Id.(citation omitted). Here, Opposer has sold specialty skin care products and related items for many years and continues to sell these products. Although Applicant’s mark is used for cosmetics products, however, it is specifically used for skin-contacting cosmetics, such as makeup products for the face, eyes, cheeks and lips. As a result, average purchasers for the skin makeup products of Opposer’s mark will get confused when they see skin-contacting cosmetics products having Applicant’s mark.

Conclusively, Applicant’s mark “BEYOND GLOW” is unregistrable under 15 U.S.C. § 2(d), and when used in connection with the makeup products, it should cause likelihood of confusion with Opposer’s mark “BEYOND GLOWING.”

II. Applicant’s Mark is Unregistrable under 15 U.S.C. § 1(d).

Applicant’s mark is based on the Lanham Act §1(b) which “provides that an applicant may file an application based on a bona fide intention to use a mark in commerce ‘under circumstances showing the good faith of such person.’” See TMEP §1101, 1. However, the evidences reasonably show that Applicant does not intend to use “BEYOND GLOW” in commerce but instead Applicant merely intends to preserve it.

According to the page 4 of the Applicant’s SEC (U.S. Securities Exchange Commission) Form 10-K filed June 15, 2006 (http://www.secinfo.com/dsvr4.v7y6.htm) and the page 5 of the Applicant’s SEC Form 10-K filed May 30, 2007 (http://www.secinfo.com/dsvr4.u7Ts.htm), Applicant has removed the “skin care products” from its product lines. It is clear that Applicant’s mark was filed on April 24, 2007, the date before Applicant reported its SEC Form 10-K. So if Applicant intends to use “BEYOND GLOW” in commerce, Applicant is at least required to show its business plan in its SEC Form 10-K.

Since Applicant failed to do so, Applicant’s act proves that it does not have any intention to use “BEYOND GLOW” in commerce. Consequently, Applicant’s mark is unregistrable under 15 U.S.C. § 1(d).

According to the previous arguments, Opposer requests the NOTICE OF OPPOSITION to be sustained and Applicant’s mark to be refused.

Sincerely,

By _______________________ Date_____________________