Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA420849 Filing date: 07/20/2011 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 The Wella Corporation Entity Corporation Citizenship Delaware Address Attorney information Applicant Information 6109 Desoto Avenue Woodland Hills, CA 91367 UNITED STATES Katherine Ruwe The Procter & Gamble Company 299 E. Sixth Street Cincinnati, OH 45202 UNITED STATES ruwe.ka@pg.com Phone:(513) 983-1443 Application No 85227863 Publication date 06/21/2011 Opposition Filing Date Applicant 07/20/2011 Opposition Period Ends Willagirl LLC 315 Riverside Drive New York, NY 10025 UNITED STATES Goods/Services Affected by Opposition 07/21/2011 Class 003. All goods and services in the class are opposed, namely: Body and beauty care cosmetics, namely, non medicated acne treatments, hair shampoo and conditioner, nail polish, deodorant, mascara, makeup, eye shadow, and blush, all for preteen and teenage girls Grounds for Opposition Priority and likelihood of confusion Dilution Trademark Act section 2(d) Marks Cited by Opposer as Basis for Opposition U.S. Registration No. Trademark Act section 43(c) 1642546 Application Date 05/18/1990 Registration Date 04/30/1991 Foreign Priority Date Word Mark Design Mark WELLA
Description of Mark Goods/Services Class 003. First use: First Use: 1931/12/02 First Use In Commerce: 1931/12/02 hair care products, namely hair coloring preparations, hair color, anti-oxidation color care treatment, self-heating cream hair color lotion, color builder for hair, hair bleaching preparations, hair developer, hair color remover, hair conditioners, hair conditioning lotions, hair and scalp conditioners, hair moisturizers, deep cleansing shampoo and intensive conditioner, hair shampoo, permanent wave preparations, permanent wave lotions, cold permanent wave lotions, after permanent hair conditioning preparations, neutralizers, normalizing cream, hair lightening preparations, thermo-active reagent lotion, hair styling mousses and gels, hair styling spray, hair setting lotions and sprays, hair sprays, styling foam for blow drying, setting and hair drying, blow wave lotion, spray shine, hair styling and finishing spray, spritz shine, spritz spray, hair sculpting spritz, hair sculpting glaze, hair net preparation, preparation used in the treatment of dry and brittle hair, and hair cream relaxer U.S. Registration No. 1951441 Application Date 03/15/1995 Registration Date 01/23/1996 Foreign Priority Date Word Mark Design Mark WELLA Description of Mark Goods/Services Class 025. First use: First Use: 1994/08/24 First Use In Commerce: 1994/08/24 clothing, namely shirts, athletic shorts, tank tops, hats and beauticians capes U.S. Registration No. 575178 Application Date 04/01/1952 Registration Date 06/02/1953 Foreign Priority Date Word Mark WELLA
Design Mark Description of Mark Goods/Services Class U051 (International Class 003). First use: First Use: 1931/12/02 First Use In Commerce: 1931/12/02 PREPARATIONS FOR USE IN THE TREATMENT OF HAIR-NAMELY, HAIR DYES, HAIR LOTIONS, HAIR CREAMS, HAIR LACQUERS, LIQUID HAIR CONDITIONERS, PREPARATIONS FOR WAVING AND CURLING THE HAIR U.S. Registration No. 575177 Application Date 04/01/1952 Registration Date 06/02/1953 Foreign Priority Date Word Mark Design Mark WELLA Description of Mark Goods/Services Class U051 (International Class 003). First use: First Use: 1931/12/02 First Use In Commerce: 1931/12/02 PREPARATIONS FOR USE IN THE TREATMENT OF HAIR-NAMELY, HAIR DYES, HAIR LOTIONS, HAIR CREAMS, HAIR LACQUERS, LIQUID HAIR CONDITIONERS, PREPARATIONS FOR WAVING AND CURLING THE HAIR U.S. Registration No. 979071 Application Date 01/31/1973 Registration Date 02/19/1974 Foreign Priority Date Word Mark Design Mark Description of Mark Goods/Services WELLA Class U052 (International Class 003). First use: First Use: 1940/01/16 First Use In Commerce: 1940/01/16 HAIR SHAMPOO Related Proceedings Willagirl, LLC, v. The Wella Corporation, Case 1:11-cv-01017-JSR
Attachments 74647077#TMSN.gif ( 1 page )( bytes ) 71627416#TMSN.gif ( 1 page )( bytes ) 71627415#TMSN.gif ( 1 page )( bytes ) Willa_opposition.pdf ( 5 pages )(30601 bytes ) Wella v Willa_Not of Oppn_EXHIBIT A.DOC.pdf ( 6 pages )(149861 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 Overnight Courier on this date. Signature /Katherine Ruwe/ Name Katherine Ruwe Date 07/20/2011
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the matter of Trademark Application Serial No. 85/227863 The Wella Corporation : Opposition No: : Opposer, : : v. : : : Willagirl, LLC. : : Applicant. : NOTICE OF OPPOSITION Opposer, The Wella Corporation, a Delaware corporation having its principal place of business at 6109 Desoto Avenue, Woodland Hills, California, 91367 (hereinafter Opposer ), believes that it will be damaged by the issuance of registration of application Serial No. 85/227863 for the trademark WILLA (and design) for goods defined as body and beauty care cosmetics, namely, non medicated acne treatments, hair shampoo and conditioner, nail polish, deodorant, mascara, makeup, eye shadow, and blush, all for preteen and teenage girls filed as an intent-to-use application on January 27, 2011 by Willagirl, LLC, 315 Riverside Drive, New York, NY (hereinafter Applicant ) and hereby opposes registration of the same. As grounds of this opposition, Opposer alleges the following: 1. Opposer is engaged in the business of, inter alia, providing consumer goods including goods in International Class 3. 2. Opposer is a long-established company, engaged in, among other things,
the development, manufacture, advertising, distribution and sale of a wide variety of hair care products, including without limitations, shampoos, conditioners, styling products, and colorants. 3. Since at least 1931, Opposer has manufactured and sold various beauty care products, including hair care products ( Opposer s Products ) under the WELLA name in the United States, 4. Opposer owns many valid registrations incorporating the WELLA mark for various products in International Class 3, including: WELLA (Registration Number 1642546) WELLA (Registration Number 1951441) WELLA (Registration Number 0575178) WELLA (Registration Number 0575177) WELLA (Registration Number 0979071), among others. 5. Copies of the TESS/TARR printouts for each of the following registrations are attached as Exhibit A. 6. The existence of these valid and subsisting registrations constitutes prima facie evidence of the ownership and validity of the marks. 7. Opposer has continuously and extensively used the WELLA mark in commerce in connection with the advertising, promotion and sale of Opposer s Products well prior to January 27, 2011, Applicant s filing date. 8. Opposer has enjoyed substantial sales and has spent vast sums in advertising and promoting Opposer s Products in connection with its WELLA mark throughout the United States. 2
9. Opposer s WELLA mark has achieved such widespread public recognition as to become commercially strong, well-known and famous. 10. Applicant, Willagirl, LLC, is a New York Limited Liability Corporation, with an address of 315 Riverside Drive New York, New York 10025. 11. Applicant s use and registration of WILLA (and design), in connection with the proposed goods specification, is likely to cause confusion because the mark is confusingly similar to Opposer s well-known WELLA mark. The marks are similar in sight and sound and, based on the description in Applicant s application, the marks would be sold on the same or related goods on which Opposer uses its WELLA marks. Based on the similarities of the marks and goods, the public is likely to associate the goods sold or distributed by Applicant under the mark WILLA (and design) with Opposer or Opposer s goods, or to believe that Applicant s goods are sponsored, endorsed or licensed by Opposer. 12. In addition, Applicant s registration and use of the mark WILLA (and design) for the goods specified in the application is likely to dilute Opposer s mark by whittling away at the goodwill, strength and source-identifying capability of the WELLA mark. 13. For the reasons above, any use or registration of the mark WILLA (and design) by Applicant is likely to cause confusion, mistake or deceive the public into believing that the goods sold or distributed under Applicant s mark emanate from or are otherwise sponsored by or endorsed by Opposer, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. 1052(d). 3
14. Further, Applicant s WILLA (and design) mark so closely resembles Opposer s previously used and registered WELLA mark as to dilute or be likely to cause dilution of the distinctive quality of Opposer s famous WELLA mark in violation of Section 43(c) of the Lanham Act, as amended, 15 U.S.C. 1125(c). 15. As a result of the foregoing, the registration of Applicant s mark Willa (and design), and the resulting likelihood of confusion and/or dilution of Opposer s mark created by such a registration would seriously damage Opposer. WHEREFORE, Opposer prays that no registration be issued to Applicant for Serial No. 85/227863, and that this opposition be sustained in favor of Opposer. Please charge required fees in this action to Deposit Account No. 162488. July 20, 2011 Respectfully submitted, /Katherine A. Ruwe/ Attorney for Opposer The Procter & Gamble Company 299 E. Sixth Street Cincinnati, OH 45202 4
CERTIFICATE OF SERVICE I certify that a true and accurate copy of the foregoing NOTICE OF OPPOSITION was served by Federal Express, postage prepaid, on July 20, 2011, upon counsel for Applicant at: Lisa Krizman Krizman Law LLC 1930 East Marlton Pike Bldg. Q Cherry Hill, NJ 08003 /Katherine A. Ruwe/ Katherine A. Ruwe 5