Notice of Oppositionlip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA940870

Filing date: 12/12/2018

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 Perfectly Posh, LLC

Granted to Dateof previous ex-tension

12/12/2018

Address 222 South Main Street, Suite 1600Salt Lake City, UT 84101UNITED STATES

Attorney informa-tion

H. Matthew HorlacherHolland & Hart LLPP.O. Box 11583Salt Lake City, UT 84110UNITED [email protected], [email protected], [email protected], [email protected], [email protected] phone number provided

Applicant Information

Application No 87815812 Publication date 08/14/2018

Opposition FilingDate

12/12/2018 Opposition Peri-od Ends

12/12/2018

Applicant Elegantly Posh500 Silver LaneOceanside, NY 11572UNITED STATES

Goods/Services Affected by Opposition

Class 003. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: 3-in-1 organic non-medicated soap bars foruse as soap, shampoo and conditioner; Cosmetic bath salts; Cosmetic body care preparations,namely, beauty balm cream for very dry skin; Cosmetic hand creams; Cosmetic massage creams;Cosmetic nourishing creams; Cosmetic preparations; Cosmetic preparations for bath and shower;Cosmetic preparations for eyelashes; Cosmetic preparations for skin care; Cosmetic preparations forskin renewal; Cosmetic preparations for the hair and scalp; Cosmetic rouges; Cosmetic skin freshen-ers; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and make-up; Cosmetics in theform of milks, lotions and emulsions; Cosmetics sold as an integralcomponent of non-medicated skin-care preparations; Cosmetics, namely, lip repairers; Almond soap; Anti-aging moisturizers used ascosmetics; Baby hand soap; Barsoap; Bath powder; BB creams; Cakes of soap; Cakes of non-medicated soap; CC creams; Colognes, perfumes and cosmetics; Eyebrow cosmetics; Face creamsfor cosmetic use; Hair stick pomades; Lip neutralizers; Lip stains; Lip stains for cosmetic purposes;Natural soap bars; Naturally handmade non-medicated soap bars; Non-medicated cosmetic skin care

http://estta.uspto.gov

preparations consisting of organic coconut virgin oil and coconut virgin oil; Non-medicatedsoaps forbabies; Non-medicated cosmetic soap; Non-medicated handmade soap bars; Organic soap bars;Perfumed soap; Private label cosmetics; Shaving soap; Shaving soaps; Skin and body topical lo-tions,creams and oils for cosmetic use; Skin moisturizers used as cosmetics; Toilet soap; body mois-turizers

Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d)

Marks Cited by Opposer as Basis for Opposition

U.S. RegistrationNo.

4348174 Application Date 09/15/2011

Registration Date 06/04/2013 Foreign PriorityDate

NONE

Word Mark PERFECTLY POSH

Design Mark

Description ofMark

NONE

Goods/Services Class 003. First use: First Use: 2011/09/30 First Use In Commerce: 2011/09/30

Personal care products, namely, hand lotion, hand balm, hand soap, body lo-tion,body butter, body balm, body soap, bodymist spray, face lotion, face oils,face creams, exfoliating masks, shampoos, hair conditioners, massage cream,massagebalm, massage oil, bath fizzies, bath beads, bath salts, non-medicatedfoot cream, non-medicated foot balm, non-medicated foot lotion, non-medicatedlip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, es-sential oils for personal use, essential oilsfor aromatherapy use, lip exfoliators,mineral powders for use as cosmetic makeup, mineral makeup, aromatic oils,non-medicated aromatic body mists, aromatic lotions, aromatic bath salts, non-medicated aromatic bombs for the skin and body for adding color and scent tobath water, bath milks, beauty milks, cosmetic milks for the skin and body

Class 005. First use: First Use: 2011/09/30 First Use In Commerce: 2011/09/30

Scented and perfumed air and room freshener sprays and fresheners


Massaging apparatus for personal use


Rendering technical assistance in the nature of advertising, marketing, and pro-motional services by developing advertising campaigns for web pages and printmedia, for the purpose of assisting in theestablishment and operation of distrib-utorships, person to person, wholesale and retail selling services in the field ofpersonal care products

U.S. RegistrationNo.


Registration Date 12/17/2013 Foreign PriorityDate

NONE


Design Mark

Description ofMark

The mark consists of the wording "perfectly posh" surrounded on each end by acurly bracket and asterisk.


Personal care products, namely, hand lotion, hand balm, hand soap, body lo-tion,body butter, body balm, body soap, bodymist spray, face lotion, face oils,face creams, exfoliating masks, shampoos, hair conditioners, massage cream,massagebalm, massage oil, bath fizzies, bath beads, bath salts, non-medicatedfoot cream, non-medicated foot balm, non-medicated foot lotion, non-medicatedlip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, es-sential oils for personal use, essential oilsfor aromatherapy use, lip exfoliators,mineral powders for use as cosmetic makeup, mineral makeup, aromatic oils,non-medicated aromatic body mists, aromatic lotions, aromatic bath salts, non-medicated aromatic bombs for the skin and body for adding color and scent tobath water, bath milks, beauty milks, cosmetic milks for the skin and body


Scented and perfumed air and room freshener sprays and fresheners



U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE


Design Mark

Description ofMark

The mark consists of the wording "PERFECTLY POSH" with two asterisks, withthe wording "PERFECTLY" underlined, all within a shaded circle.


Personal care products, namely, hand lotion, non-medicated balm for use onhands, non-medicated hand soap, body lotion,body butter, skin care prepara-tions, namely, body balm, body soap, namely, bodybath soap and body creamsoap, body mist spray, face lotion, face oils, face creams, exfoliating skin masks,shampoos, hair conditioners, massage cream, massage balm not for medicalpurposes, massageoil, bath fizzies, bath beads, non-medicated bath salts, non-medicated foot cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lip balm, lip tint, perfume, perfume oils, nutritional oils for cosmeticpurposes, essential oils for personal use, essential oilsfor aromatherapy use,non-medicated exfoliating preparations for lips, mineral powders for use as cos-metic makeup, mineral makeup, aromatic oils, non-medicatedaromatic bodymists, aromatic lotions, aromatic non-medicated bath salts, non-medicated aro-matic bath bombs for the skin and body for adding color and scent tobath water,bath milks, beauty milks, cosmetic milks for the skin and body



U.S. ApplicationNo.



NONE


Design Mark

Description ofMark

NONE


Skin lotions; beauty lotions; after-shave; after-shave lotions; after-shave liquid;non-medicated soaps made from natural oils, natural exfoliants, essential oils,cosmetic milks, fragrance, and fruit, nut and plant extracts; facial washes; faciallotion; facial cream; topical skin sprays for cosmetic purposes; beautygels; bathlotion; body polish; shower gel; make-up; makeup primer; skin highlighter; skinbronzer; beauty serums; non-medicated skin serum; non-medicated hairserums;hair masks; hair sheen spray; hair styling spray; styling sprays for enhancinghair waves and curls; lip primer; lip gloss; lip rouge; cheek colors; non-medicated body soaks; body moisturizers; salves; body balms; non-medicatedskin toners; cosmetic body care preparations, namely, body mud and body pol-ish; body masks; body scrubs; foot masks for skin care; non-medicated footcream; cuticle cream; tanning creams; perfumes in solid form; anti-aging serum;anti-aging moisturizer; anti-aging toner; anti-aging cleanser; anti-aging creams;eye cream; eye lotions; make-up remover; tissues impregnated with make-up re-moving preparations; cosmetic bags containing cosmeticsand skin care prepara-tions; kits and gift sets consisting of cosmetics and skincare preparations


Printed business supplies, marketing materials and sales aids, namely, orderforms, business cards, letterhead paper, stationery, stickers, note paper, andplanning sheets all in the fields of cosmetics and skin care preparations; cata-logs, magazines, booklets, and brochures, all in the fields of cosmetics andbeauty care; beauty related publications, namely, hand-outs, workbooks, printedperiodicals, and newsletters all in the fields of cosmetics and beauty care


Handbags, tote bags, empty cosmetic bags, and cases used for carrying anddisplaying cosmetics to be sold


Shirts, hats, sweat shirts, sweat pants, ties, aprons


Providing a website featuring business information, promotional and marketinginformation and materials in the field ofcosmetics and skin care preparations andthe direct sales of cosmetics and skincare preparations; Dissemination of ad-vertising materials; Organization of promotional events for commercial or advert-ising purposes; Business development services, namely, providing support forthe business of others; Wholesale and retailservices by direct solicitation bysales agents in the field of cosmetics and skin care preparations; Shop at homeparties featuring cosmetics and skin care products; Customer loyalty programsfor commercial, promotional and advertising purposes; Distribution services,namely, distribution of advertising materials forothers; promoting services of oth-ers through distribution of promotional materials to independent salespersons;Sales promotion services; Organization of promotional events for commercial oradvertising purposes; Business development services, namely, providing start-up support for business of others; Advertising, marketing and promotion servicesin the field of distributorships, person to person, wholesale, and retail selling; alltheaforesaid services relating to cosmetics and beauty care and the direct sellin-gof cosmetics and beauty care products

U.S. ApplicationNo.



NONE

Word Mark FIZI BY PERFECTLY POSH

Design Mark

Description ofMark

NONE


Cosmetic preparations for baths; non-medicated bath preparations; bath bombs;non-medicated bath salts; mineral salt inthe nature of bath salts not for medicalpurposes; non-medicated body soaks


Shirts; aprons

U.S. ApplicationNo.



NONE

Word Mark POSH BODY

Design Mark

Description ofMark

NONE


Cosmetics preparations for skin care; non-medicated skin care preparations;cosmetic creams; body butter; body wash, body creams; body oil; body lotions;tanning creams; non-medicated skin serum; beauty serums; perfumes in solidform; after-shave; after-shave lotions; after-shave liquid

U.S. ApplicationNo.



NONE

Word Mark IT'S POSH TO MEET YOU

Design Mark

Description ofMark

NONE


Hand cream; hand lotions; skin lotions;skin creams; lip balm; bar soap; beau-tysoap; cosmetic soap; natural soap bars;body wash; non-medicated soapsmade from natural oils, natural exfoliants, essential oils, cosmetic milks


Advertising, marketing and promotion services in the field of distributor-ships,person to person, wholesale, and retailselling

U.S. ApplicationNo.



NONE


Design Mark

Description ofMark

The mark consists of stylized letteringof the word "PERFECTLY" on top of theword "POSH".

Goods/Services Class 003. First use: First Use: 0 First Use In Commerce: 0

cosmetics; cosmetic preparations for skin care; skin lotions; beauty lotions; after-shave; after-shave lotions; after-shave liquid; non-medicated skin care prepara-tions; cosmetic creams; body creams;hand lotions; hand cream; bar soap;beauty soap; cosmetic soap; natural soap bars; body wash; skin soap; non-medicated soaps made from natural oils, natural exfoliants, essential oils, cos-metic milks, fragrance, and fruit, nut and plant extracts; face and body lotions;body butter; body, hand, and face moisturizers; beauty gels; bath lotion; bodypolish; shower gel; non-medicated skin care preparation, namely, body mist;body oils; face oils; face creams; non-medicated exfoliating preparations for lipsand skin; cosmetic body care preparations, namely, body mud and body polish;body masks; body scrubs; skin masks; beauty masks; facial masks; facialwashes; facial lotion;facial cream; beauty serums; eye cream;eye lotions; hairshampoo; hair conditioners; non-medicated hair serums; hair masks; hair sheenspray; hair styling spray; styling sprays for enhancing hair waves and curls; footscrub; non-medicatedfoot cream; non-medicated foot lotion; foot masks for skincare; cuticle cream;bath fizzies; bath bombs; bath salts, not for medicated pur-

poses; cosmetic bathsalts; non-medicated body soaks; body moisturizers; non-medicated herbal body care products, namely, salves; body balms; perfumes;perfumes in solid form; topical skin sprays for cosmetic purposes; make-up;make-up primer; cosmetic preparations, namely, skin highlighter; skin bronzer;non-medicated skin serum; lip balm; lip stains; lip tints; lip primer; lip gloss; liprouge; lipstick; cheek colors; non-medicated skin toners; non-medicated anti-aging serum; anti-aging moisturizer; anti-aging toner; anti-aging cleanser; anti-aging creams; cosmetic bags containing cosmetics and non-medicated skin carepreparations, sold as a unit; kits and gift sets consisting of cosmeticsand non-medicated skin care preparations, sold as a unit; make-up remover; tissues im-pregnated with make-up removing preparations

Class 016. First use: First Use: 0 First Use In Commerce: 0

catalogs, magazines, booklets, and brochures, all in the fields of cosmetics andbeauty care; beauty related publications, namely, hand-outs, workbooks, printedperiodicals, and newsletters all in the fields of cosmetics and beauty care


handbags; tote bags; empty cosmetic bags, cosmetic carrying cases sold empty,and cases used for carrying cosmetics to be sold separately


shirts, hats, sweat shirts, sweat pants, ties as clothing, aprons


Providing a website featuring business information, promotional and marketinginformation and materials in the field ofcosmetics and skin care preparations andthe direct sales of cosmetics and skincare preparations; Dissemination of ad-vertising materials; Organization of promotional events for commercial or advert-ising purposes; Business development services, namely, providing support forthe business of others; Wholesale and retailservices by direct solicitation bysales agents in the field of cosmetics and skin care preparations; Shop at homeparties featuring cosmetics and skin care products; Customer loyalty programsfor commercial, promotional and advertising purposes; Distribution services,namely, distribution of advertising materials forothers; promoting services of oth-ers through distribution of promotional materials to independent salespersons;Sales promotion services; Organization of promotional events for commercial oradvertising purposes; Business development services, namely, providing start-up support for business of others; Advertising, marketing and promotion servicesin the field of distributorships, person to person, wholesale, and retail selling; alltheaforesaid services relating to cosmetics and beauty care and the direct sellin-gof cosmetics and beauty care products

Attachments 85978911#TMSN.png( bytes )85980499#TMSN.png( bytes )87689357#TMSN.png( bytes )87918888#TMSN.png( bytes )87918896#TMSN.png( bytes )87918902#TMSN.png( bytes )87919210#TMSN.png( bytes )88002534#TMSN.png( bytes )11747580_1.pdf(140222 bytes )Ex 1 - TSDR Printouts.pdf(247481 bytes )

Signature /H. Matthew Horlacher/

Name H. Matthew Horlacher

Date 12/12/2018

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

PERFECTLY POSH, LLC Opposer, v. ELEGANTLY POSH LLC, Applicant.

Opposition No.: ____________ Trademark: ELEGANTLY POSH Serial No.: 87815812

NOTICE OF OPPOSITION

Perfectly Posh, LLC, having its principal place of business located at 185 S. State Street,

Suite 800, Salt Lake City, Utah 84111 (“Perfectly Posh” or “Opposer”), believes that it will be

damaged by the registration of the trademark shown in Application Serial No. 87815812 for

goods in International Class 3 (the “Application”), and hereby opposes registration the

Application.

As grounds for its opposition, Opposer alleges that, upon actual knowledge with respect

to itself and its own actions, and upon information and belief as to other matters:

PERFECTLY POSH AND ITS MARKS

1. Opposer has established itself as a leading distributor of naturally based

pampering skincare, cosmetic, and scented products throughout the United States.

2. Since 2011, Opposer has shipped over 300 million pampering products.

3. Opposer sells its products through its website www.perfectlyposh.com and

through Perfectly Posh Independent Consultants who develop businesses promoting and selling

Perfectly Posh products. Opposer provides opportunities for over 50,000 such business owners in

the United States.

2

4. Opposer uses and owns several POSH-formative trademarks, including the

following U.S. Applications and Registrations (see Exhibit 1 of printouts from the USPTO’s

TSDR database showing current status and title), which identify the specified goods and services

in Classes 3, 5 ,10, 16, 18, 25, and 35 (Opposer’s Goods”):

TRADEMARK APP # APP DATE

REG # REG

DATE CLASS / GOODS / SERVICES

PERFECTLY POSH

85978911 Sep-15-2011

4348174 Jun-4-2013

3 Personal care products, namely, hand lotion, hand balm, hand soap, body lotion, body butter, body balm, body soap, body mist spray, face lotion, face oils, face creams, exfoliating masks, shampoos, hair conditioners, massage cream, massage balm, massage oil, bath fizzies, bath beads, bath salts, non-medicated foot cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, essential oils for personal use, essential oils for aromatherapy use, lip exfoliators, mineral powders for use as cosmetic makeup, mineral makeup, aromatic oils, non-medicated aromatic body mists, aromatic lotions, aromatic bath salts, non-medicated aromatic bombs for the skin and body for adding color and scent to bath water, bath milks, beauty milks, cosmetic milks for the skin and body 5 Scented and perfumed air and room freshener sprays and fresheners 10 Massaging apparatus for personal use 35 Rendering technical assistance in the nature of advertising, marketing, and promotional services…

PERFECTLY POSH & Design

85980499 Sep-15-2011

4452650 Dec-17-

2013

3 Personal care products, namely, hand lotion, hand balm, hand soap, body lotion, body butter, body balm, body soap, body mist spray, face lotion, face oils, face creams, exfoliating masks, shampoos, hair conditioners, massage cream, massage balm, massage oil, bath fizzies, bath beads, bath salts, non-medicated foot cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, essential oils for personal use, essential oils for aromatherapy use, lip exfoliators, mineral powders for use as cosmetic makeup, mineral makeup, aromatic oils, non-medicated aromatic body mists, aromatic lotions, aromatic bath salts, non-medicated aromatic bombs for the skin and body for adding color and scent to bath water, bath milks, beauty milks, cosmetic milks for the skin and body 5 Scented and perfumed air and room

3


REG # REG


freshener sprays and fresheners 35 Rendering technical assistance in the nature of advertising, marketing, and promotional services …

PERFECTLY POSH circle logo

87689357 Nov-17-

2017

3 Personal care products, namely, hand lotion, non-medicated balm for use on hands, non-medicated hand soap, body lotion, body butter, skin care preparations namely, body balm, body soap, namely body bath soap and body cream soap, body mist spray, face lotion, face oils, face creams, exfoliating skin masks, shampoos, hair conditioners, massage cream, massage balm not for medical purposes, massage oil, bath fizzies, bath beads, non-medicated bath salts, non-medicated foot cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, essential oils for personal use, essential oils for aromatherapy use, non-medicated exfoliating preparations for lips, mineral powders for use as cosmetic makeup, mineral makeup, aromatic oils, non-medicated aromatic body mists, aromatic lotions, aromatic non-medicated bath salts, non-medicated aromatic bath bombs for the skin and body for adding color and scent to bath water, bath milks, beauty milks, cosmetic milks for the skin and body 35 Rendering technical assistance in the nature of advertising, marketing, and promotional services by developing advertising campaigns for web pages and print media, for the purpose of assisting in the establishment and operation of distributorships, person to person, wholesale and retail selling services in the field of personal care products

PERFECTLY POSH

87918888 May-13-

2018

3 Skin lotions; beauty lotions; after-shave; after-shave lotions; after-shave liquid; non-medicated soaps made from natural oils, natural exfoliants, essential oils, cosmetic milks, fragrance, and fruit, nut and plant extracts; facial washes; facial lotion; facial cream; topical skin sprays for cosmetic purposes; beauty gels; bath lotion; body polish; shower gel; make-up; makeup primer; skin highlighter; skin bronzer; beauty serums; non-medicated skin serum; non-medicated hair serums; hair masks; hair sheen spray; hair styling spray; styling sprays for enhancing hair waves and curls; lip primer; lip gloss; lip rouge; cheek colors; non-medicated body soaks; body moisturizers; salves; body balms; non-medicated skin toners; cosmetic body care preparations, namely, body mud and body polish; body masks; body scrubs; foot masks for skin care; non-medicated foot cream; cuticle cream; tanning creams; perfumes in solid form; anti-aging serum; anti-aging moisturizer; anti-

4


REG # REG


aging toner; anti-aging cleanser; anti-aging creams; eye cream; eye lotions; make-up remover; tissues impregnated with make-up removing preparations; cosmetic bags containing cosmetics and skin care preparations; kits and gift sets consisting of cosmetics and skin care preparations (9/30/2011) 16 Printed business supplies, marketing materials and sales aids… 18 Handbags, tote bags, empty cosmetic bags, and cases used for carrying and displaying cosmetics to be sold (9/30/2011) 25 Shirts, hats, sweat shirts, sweat pants, ties, aprons (7/14/2017) 35 Providing a website featuring business information, promotional and marketing information and materials in the field of cosmetics and skin care preparations and the direct sales of cosmetics and skin care preparations…

FIZI BY PERFECTLY

POSH

87918896 May-13-

2018

3 Cosmetic preparations for baths; non-medicated bath preparations; bath bombs; non-medicated bath salts; mineral salt in the nature of bath salts not for medical purposes; non-medicated body soaks (7/14/2017) 25 Shirts; aprons (7/14/2017)

POSH BODY 87918902 May-13-

2018

3 Cosmetics preparations for skin care; non-medicated skin care preparations; cosmetic creams; body butter; body wash, body creams; body oil; body lotions; tanning creams; non-medicated skin serum; beauty serums; perfumes in solid form; after-shave; after-shave lotions; after-shave liquid (2/3/2017)

IT'S POSH TO MEET YOU

87919210 May-13-

2018

3 Hand cream; hand lotions; skin lotions; skin creams; lip balm; bar soap; beauty soap; cosmetic soap; natural soap bars; body wash; non-medicated soaps made from natural oils, natural exfoliants, essential oils, cosmetic milks 35 Advertising, marketing and promotion services in the field of distributorships, person to person, wholesale, and retail selling

PERFECTLY POSH Logo

88002534 Jun-15-2018

3 Cosmetics; cosmetic preparations for skin care; skin lotions; beauty lotions; after-shave; after-shave lotions; after-shave liquid; non-medicated skin care preparations; cosmetic creams; body creams; hand lotions; hand cream; bar soap; beauty soap; cosmetic soap; natural soap bars; body wash; skin soap; non-medicated soaps made from natural oils, natural exfoliants, essential oils, cosmetic milks, fragrance, and fruit, nut and plant extracts; face and body lotions; body butter; body, hand, and face moisturizers; beauty gels; bath lotion; body polish; shower gel; non-medicated skin care preparation, namely, body mist; body oils; face oils; face creams; non-medicated

5


REG # REG


exfoliating preparations for lips and skin; cosmetic body care preparations, namely, body mud and body polish; body masks; body scrubs; skin masks; beauty masks; facial masks; facial washes; facial lotion; facial cream; beauty serums; eye cream; eye lotions; hair shampoo; hair conditioners; non-medicated hair serums; hair masks; hair sheen spray; hair styling spray; styling sprays for enhancing hair waves and curls; foot scrub; non-medicated foot cream; non-medicated foot lotion; foot masks for skin care; non-medicated foot cream; cuticle cream; bath fizzies; bath bombs; bath salts, not for medicated purposes; cosmetic bath salts; non-medicated body soaks; body moisturizers; salves; body balms; perfumes; perfumes in solid form; topical skin sprays for cosmetic purposes; make-up; make-up primer; skin highlighter; skin bronzer; non-medicated skin serum; lip balm; lip stains; lip tints; lip primer; lip gloss; lip rouge; lipstick; cheek colors; non-medicated skin toners; anti-aging serum; anti-aging moisturizer; anti-aging toner; anti-aging cleanser; anti-aging creams; cosmetic bags containing cosmetics and skin care preparations; kits and gift sets consisting of cosmetics and skin care preparations; make-up remover; tissues impregnated with make-up removing preparations 16 Catalogs, magazines, booklets, and brochures, all in the fields of cosmetics and beauty care… 25 Shirts, hats, sweat shirts, sweat pants, ties, aprons 35 Providing a website featuring business information, promotional and marketing information and materials in the field of cosmetics and skin care preparations and the direct sales of cosmetics and skin care preparations…

The above registrations and applications together with Opposer’s common law rights are

collectively referred to as “Opposer’s Marks.”

5. Registration Nos. 4452650 and 4348174 are valid and subsisting and therefore

constitute prima facie evidence of the validity of Opposer’s Marks and Opposer’s exclusive right

to use and license Opposer’s Marks in connection with the goods and services set forth in the

registrations.

6

6. These registrations also provide constructive notice of Opposer’s ownership of

Opposer’s Marks.

7. Opposer has expended considerable money and effort in promoting Opposer’s

Marks and Opposer’s Goods in the United States.

8. Opposer has sold thousands of dollars’ worth of products under Opposer’s Marks

in the United States.

9. As a result of Opposer’s longstanding use of Opposer’s Marks, Opposer’s Marks

have come to be associated with Opposer in the United States.

APPLICANT’S MARK

10. Applicant has filed App. Ser. No. 87815812 for the mark ELEGANTLY POSH

(“Applicant’s Mark”) identifying Class 3 goods “3-in-1 organic non-medicated soap bars for use

as soap, shampoo and conditioner; Cosmetic bath salts; Cosmetic body care preparations,

namely, beauty balm cream for very dry skin; Cosmetic hand creams; Cosmetic massage creams;

Cosmetic nourishing creams; Cosmetic preparations; Cosmetic preparations for bath and shower;

Cosmetic preparations for eyelashes; Cosmetic preparations for skin care; Cosmetic preparations

for skin renewal; Cosmetic preparations for the hair and scalp; Cosmetic rouges; Cosmetic skin

fresheners; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and make-up;

Cosmetics in the form of milks, lotions and emulsions; Cosmetics sold as an integral component

of non-medicated skincare preparations; Cosmetics, namely, lip repairers; Almond soap; Anti-

aging moisturizers used as cosmetics; Baby hand soap; Bar soap; Bath powder; BB creams;

Cakes of soap; Cakes of non-medicated soap; CC creams; Colognes, perfumes and cosmetics;

Eyebrow cosmetics; Face creams for cosmetic use; Hair stick pomades; Lip neutralizers; Lip

stains; Lip stains for cosmetic purposes; Natural soap bars; Naturally handmade non-medicated

7

soap bars; Non-medicated cosmetic skin care preparations consisting of organic coconut virgin

oil and coconut virgin oil; Non-medicated soaps for babies; Non-medicated cosmetic soap; Non-

medicated handmade soap bars; Organic soap bars; Perfumed soap; Private label cosmetics;

Shaving soap; Shaving soaps; Skin and body topical lotions, creams and oils for cosmetic use;

Skin moisturizers used as cosmetics; Toilet soap; body moisturizers” (“Applicant’s Goods”).

11. On information and belief, Applicant formed its Limited Liability Company,

Elegantly Posh LLC, in the State of New York on March 15, 2018.

12. Applicant’s Mark wholly incorporates the dominant POSH portion of Opposer’s

Marks and adds only the descriptive term ELEGANTLY. The addition of the descriptive term

does not distinguish Applicant’s Mark from Opposer’s Marks. Applicant’s Mark is confusingly

similar to Opposer’s Marks.

13. Applicant’s Goods are identical to Opposer’s Goods.

14. Opposer enjoys priority as a result of its USPTO applications and registrations,

and common law use of Opposer’s Marks that precedes the March 1, 2018 filing date of

Applicant’s intent-to-use App. Ser. No. 87815812 and any priority date upon which Applicant

may rely.

15. On information and belief, Opposer and Applicant sell (or are likely to sell) their

goods through identical channels of trade and target identical consumers.

16. Applicant filed its Application without Opposer’s consent.

17. Consumers are therefore likely to conclude, erroneously, that Opposer and

Applicant, their marks, or their goods, are related.

8

COUNT I Likelihood of Confusion

15 U.S.C. § 1052(d)

18. Opposer realleges and incorporates by reference the preceding allegations of its

Notice of Opposition.

19. Registration of the trademark shown in App. Ser. No. 87815812 by Applicant will

injure Opposer by causing the public to be confused or to believe, erroneously, that Applicant’s

Goods are endorsed or sponsored by Opposer. Opposer has no control over the nature and

quality of the products and services offered by Applicant under the confusingly similar mark

shown in the Application, and Opposer’s reputation and goodwill will be damaged and the value

of Opposer’s Marks jeopardized, all to Opposer’s detriment.

20. Since well prior to the filing date of the Applications, Opposer has used

Opposer’s Marks in connection with Opposer’s Goods, which goods are identical to those listed

in Applicant’s App. Ser. No. 87815812.

21. Registration of the mark herein opposed will damage Opposer because the

trademark shown in App. Ser. No. 87815812 is likely, when used on or in connection with the

goods described in the Application, to cause confusion, or to cause mistake or to deceive. Thus,

the mark shown in the Application is unregistrable under Section 2(d) of the Lanham Act, 15

U.S.C. § 1052(d), and should be refused registration.

WHEREFORE, Opposer believes that it will be damaged by registration of the trademark

shown in App. Ser. No. 87815812 and respectfully requests that the opposition be sustained, and

that registration to Applicant be refused.

9

The filing fee is being transmitted electronically with this submission. Any deficiency in

the fee should be charged to Deposit Account No. 08-2623.

December 12, 2018 Respectfully submitted,

/H. Matthew Horlacher/

H. Matthew Horlacher Amy Tindell HOLLAND & HART LLP 222 South Main, Suite 2200 Salt Lake City, UT 84101 Phone: 801.799.5825 Emails: [email protected]; [email protected] [email protected] Attorneys for Opposer Perfectly Posh LLC

10

NOTICE REGARDING SERVICE

Consistent with the Trademark Trial and Appeal Board Manual of Procedure Rule

309.02(c)(1) (amended January 14, 2017), service of the above NOTICE OF OPPOSITION will

be effected by the Board. To facilitate the Board, the following physical address and email

address(es) are available as Applicant’s correspondence address via TSDR:

Phyllis P. Corella Posh, LLC 500 Silver Lane Oceanside, New York United States 11572 [email protected]

/Amy Tindell/_______________ Amy Tindell

EXHIBIT 1

Mark Information

Mark LiteralElements:

PERFECTLY POSH

Standard CharacterClaim:

Yes. The mark consists of standard characters without claim to any particular font style, size, or color.

Mark DrawingType:

4 - STANDARD CHARACTER MARK

Related Properties Information

Child Of: 85424061

Goods and Services

Note: The following symbols indicate that the registrant/owner has amended the goods/services:

Brackets [..] indicate deleted goods/services;Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; andAsterisks *..* identify additional (new) wording in the goods/services.

For: Personal care products, namely, hand lotion, hand balm, hand soap, body lotion, body butter, body balm, body soap, body mist spray,face lotion, face oils, face creams, exfoliating masks, shampoos, hair conditioners, massage cream, massage balm, massage oil, bathfizzies, bath beads, bath salts, non-medicated foot cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lipbalm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, essential oils for personal use, essential oils foraromatherapy use, lip exfoliators, mineral powders for use as cosmetic makeup, mineral makeup, aromatic oils, non-medicatedaromatic body mists, aromatic lotions, aromatic bath salts, non-medicated aromatic bombs for the skin and body for adding color andscent to bath water, bath milks, beauty milks, cosmetic milks for the skin and body

InternationalClass(es):

003 - Primary Class U.S Class(es): 001, 004, 006, 050, 051, 052

Class Status: ACTIVE

Basis: 1(a)

First Use: Sep. 30, 2011 Use in Commerce: Sep. 30, 2011

For: Scented and perfumed air and room freshener sprays and fresheners




Basis: 1(a)


For: Massaging apparatus for personal use

International 010 - Primary Class U.S Class(es): 026, 039, 044

Generated on: This page was generated by TSDR on 2018-12-12 12:26:15 EST

Mark: PERFECTLY POSH

US Serial Number: 85978911 Application FilingDate:

Sep. 15, 2011

US RegistrationNumber:

4348174 Registration Date: Jun. 04, 2013

Register: Principal

Mark Type: Trademark, Service Mark

Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.

Status Date: Jun. 04, 2013

Publication Date: Jul. 31, 2012 Notice ofAllowance Date:

Sep. 25, 2012

Class(es):


Basis: 1(a)


For: Rendering technical assistance in the nature of advertising, marketing, and promotional services by developing advertising campaignsfor web pages and print media, for the purpose of assisting in the establishment and operation of distributorships, person to person,wholesale and retail selling services in the field of personal care products


035 - Primary Class U.S Class(es): 100, 101, 102


Basis: 1(a)


Basis Information (Case Level)

Filed Use: No Currently Use: Yes Amended Use: No

Filed ITU: Yes Currently ITU: No Amended ITU: No

Filed 44D: No Currently 44D: No Amended 44D: No

Filed 44E: No Currently 44E: No Amended 44E: No

Filed 66A: No Currently 66A: No

Filed No Basis: No Currently No Basis: No

Current Owner(s) Information

Owner Name: Perfectly Posh, LLC

Owner Address: 185 S. State Street, Suite 800Salt Lake City, UTAH 84111UNITED STATES

Legal Entity Type: LIMITED LIABILITY COMPANY State or CountryWhere Organized:

UTAH

Attorney/Correspondence Information

Attorney of Record

Attorney Name: H. Matthew Horlacher Docket Number: 100084.0007

Attorney PrimaryEmail Address:

[email protected] Attorney EmailAuthorized:

Yes

Correspondent

CorrespondentName/Address:

H. Matthew HorlacherHolland & Hart LLPP.O. Box 11583Salt Lake City, UTAH 84110UNITED STATES

Phone: 8017995825

Correspondent e-mail:

[email protected] mhorlacher@hollandhart

.com [email protected] cathomas@ho

llandhart.com

Correspondent e-mail Authorized:

Yes

Domestic Representative - Not Found

Prosecution History

Date DescriptionProceedingNumber

Jun. 04, 2018 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED

Oct. 05, 2017 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Oct. 05, 2017 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Jun. 04, 2013 REGISTERED-PRINCIPAL REGISTER

Apr. 30, 2013 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED

Apr. 29, 2013 LAW OFFICE REGISTRATION REVIEW COMPLETED 66213

Apr. 25, 2013 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED

Mar. 28, 2013 STATEMENT OF USE PROCESSING COMPLETE 61813

Mar. 25, 2013 USE AMENDMENT FILED 61813

Mar. 28, 2013 DIVISIONAL PROCESSING COMPLETE

Mar. 25, 2013 DIVISIONAL REQUEST RECEIVED

Mar. 26, 2013 CASE ASSIGNED TO INTENT TO USE PARALEGAL 61813

Mar. 25, 2013 TEAS REQUEST TO DIVIDE RECEIVED

Mar. 25, 2013 TEAS STATEMENT OF USE RECEIVED

Sep. 25, 2012 NOA E-MAILED - SOU REQUIRED FROM APPLICANT

Jul. 31, 2012 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Jul. 31, 2012 PUBLISHED FOR OPPOSITION

Jul. 11, 2012 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Jun. 27, 2012 LAW OFFICE PUBLICATION REVIEW COMPLETED 66213

Jun. 27, 2012 ASSIGNED TO LIE 66213

Jun. 08, 2012 APPROVED FOR PUB - PRINCIPAL REGISTER

May 24, 2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED

May 24, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

May 24, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

May 24, 2012 TEAS REQUEST FOR RECONSIDERATION RECEIVED

May 11, 2012 NOTIFICATION OF FINAL REFUSAL EMAILED

May 11, 2012 FINAL REFUSAL E-MAILED

May 11, 2012 FINAL REFUSAL WRITTEN 82421

Apr. 13, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Apr. 13, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Apr. 13, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Jan. 03, 2012 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Jan. 03, 2012 NON-FINAL ACTION E-MAILED 6325

Jan. 03, 2012 NON-FINAL ACTION WRITTEN 82421

Dec. 31, 2011 ASSIGNED TO EXAMINER 82421

Sep. 20, 2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Sep. 19, 2011 NEW APPLICATION ENTERED IN TRAM

TM Staff and Location Information

TM Staff Information - None

File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Apr. 29, 2013

Assignment Abstract Of Title Information

Summary

Total Assignments: 2 Registrant: Perfectly Posh, LLC

Assignment 1 of 2

Conveyance: SECURITY INTEREST

Reel/Frame: 5822/0833 Pages: 8

Date Recorded: Jun. 27, 2016

SupportingDocuments:

assignment-tm-5822-0833.pdf

Assignor

Name: PERFECTLY POSH, LLC Execution Date: Jun. 24, 2016


UTAH

Assignee

Name: U.S. BANK NATIONAL ASSOCIATION

Legal Entity Type: NATIONAL BANKING ASSOCIATION State or Country UTAH

Where Organized:

Address: 170 S. MAIN STREET6TH FLOORSALT LAKE CITY, UTAH 84101

Correspondent

CorrespondentName:

S. BRANDON OWEN

CorrespondentAddress:

36 SOUTH STATE STREETSUITE 1400SALT LAKE CITY, UT 84111


Assignment 2 of 2



Date Recorded: Jul. 09, 2018



Assignor

Name: PERFECTLY POSH, LLC Execution Date: May 22, 2018


UTAH

Assignee

Name: EAST WEST BANK, AS LENDER

Legal Entity Type: BANKING CORPORATION State or CountryWhere Organized:

CALIFORNIA

Address: 135 NORTH LOS ROBLES AVENUESUITE 200PASADENA, CALIFORNIA 91101

Correspondent

CorrespondentName:

JOYCE MILLER


1750 TYSONS BLVD.TYSONS, VA 22102


Proceedings

Summary

Number ofProceedings:

1

Type of Proceeding: Opposition

ProceedingNumber:

91241488 Filing Date: May 30, 2018

Status: Suspended Status Date: Oct 03, 2018

InterlocutoryAttorney:

ELIZABETH A DUNN

Defendant

Name: Jacqueline Abner-Pongratz


WILLIAM E O'BRIENLAW OFFICE OF WILLIAM E O'BRIEN LLC2 CONNECTOR ROAD SUITE 200WESTBOROUGH MA , 01581UNITED STATES


[email protected]

Associated marks

Mark Application StatusSerialNumber

RegistrationNumber

POSH GOTH Opposition Pending 87609820


Plaintiff(s)

Name: Perfectly Posh, LLC


H MATTHEW HORLACHERHOLLAND & HART LLP222 SOUTH MAIN STREET SUITE 2200SALT LAKE CITY UT , 84101UNITED STATES


[email protected] , [email protected] , [email protected] , [email protected]

Associated marks


RegistrationNumber

PERFECTLY POSH Registered 85978911 4348174


PERFECTLY POSH Final Refusal - Mailed 87689357

Prosecution History

Entry Number History Text Date Due Date

1 FILED AND FEE May 30, 2018

2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: May 31, 2018 Jul 10, 2018

3 PENDING, INSTITUTED May 31, 2018

4 D APPEARANCE / POWER OF ATTORNEY Jul 09, 2018

5 ANSWER Jul 09, 2018

6 P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS Oct 03, 2018

7 SUSPENDED Oct 03, 2018

Mark Information


PERFECTLY POSH


No

Mark DrawingType:

3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)

Description ofMark:

The mark consists of the wording "perfectly posh" surrounded on each end by a curly bracket and asterisk.

Color(s) Claimed: Color is not claimed as a feature of the mark.

Design SearchCode(s):

24.17.14 - Ampersands (&); Commas; Brackets, punctuation; At symbol (@); Question marks (?); Punctuation marks; Exclamationpoints (!¡); Diacritical marks26.17.01 - Bands, straight; Straight line(s), band(s) or bar(s); Lines, straight; Bars, straight26.17.05 - Horizontal line(s), band(s) or bar(s); Bars, horizontal; Bands, horizontal; Lines, horizontal


Child Of: 85424065

Goods and Services



For: Personal care products, namely, hand lotion, hand balm, hand soap, body lotion, body butter, body balm, body soap, body mist spray,face lotion, face oils, face creams, exfoliating masks, shampoos, hair conditioners, massage cream, massage balm, massage oil, bathfizzies, bath beads, bath salts, non-medicated foot cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lipbalm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, essential oils for personal use, essential oils foraromatherapy use, lip exfoliators, mineral powders for use as cosmetic makeup, mineral makeup, aromatic oils, non-medicatedaromatic body mists, aromatic lotions, aromatic bath salts, non-medicated aromatic bombs for the skin and body for adding color andscent to bath water, bath milks, beauty milks, cosmetic milks for the skin and body




Basis: 1(a)




Sep. 15, 2011

US RegistrationNumber:

4452650 Registration Date: Dec. 17, 2013

Register: Principal


Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.

Status Date: Dec. 17, 2013

Publication Date: Jul. 31, 2012 Notice ofAllowance Date:

Sep. 25, 2012


For: Scented and perfumed air and room freshener sprays and fresheners




Basis: 1(a)






Basis: 1(a)



Filed Use: No Currently Use: Yes Amended Use: No

Filed ITU: Yes Currently ITU: No Amended ITU: No







Owner Address: 185 S. State Street Suite 800Salt Lake City, UTAH 84111UNITED STATES


UTAH


Attorney of Record




Yes

Correspondent



Phone: 8017995825




llandhart.com


Yes


Prosecution History


Oct. 05, 2017 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Oct. 05, 2017 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Dec. 17, 2013 REGISTERED-PRINCIPAL REGISTER

Nov. 14, 2013 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED

Nov. 13, 2013 LAW OFFICE REGISTRATION REVIEW COMPLETED 66213

Nov. 08, 2013 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED

Oct. 24, 2013 NOTICE OF DESIGN SEARCH CODE E-MAILED

Oct. 23, 2013 STATEMENT OF USE PROCESSING COMPLETE 70565

Sep. 25, 2013 USE AMENDMENT FILED 70565

Oct. 23, 2013 DIVISIONAL PROCESSING COMPLETE

Sep. 25, 2013 DIVISIONAL REQUEST RECEIVED

Oct. 09, 2013 CASE ASSIGNED TO INTENT TO USE PARALEGAL 70565

Sep. 25, 2013 TEAS REQUEST TO DIVIDE RECEIVED

Sep. 25, 2013 TEAS STATEMENT OF USE RECEIVED

Sep. 23, 2013 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Sep. 23, 2013 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Mar. 27, 2013 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED

Mar. 25, 2013 EXTENSION 1 GRANTED 98765

Mar. 25, 2013 EXTENSION 1 FILED 98765

Mar. 25, 2013 TEAS EXTENSION RECEIVED

Sep. 25, 2012 NOA E-MAILED - SOU REQUIRED FROM APPLICANT

Jul. 31, 2012 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Jul. 31, 2012 PUBLISHED FOR OPPOSITION

Jul. 11, 2012 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Jun. 27, 2012 LAW OFFICE PUBLICATION REVIEW COMPLETED 66213


Jun. 08, 2012 APPROVED FOR PUB - PRINCIPAL REGISTER

May 24, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

May 24, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

May 24, 2012 TEAS REQUEST FOR RECONSIDERATION RECEIVED

May 11, 2012 NOTIFICATION OF FINAL REFUSAL EMAILED

May 11, 2012 FINAL REFUSAL E-MAILED

May 11, 2012 FINAL REFUSAL WRITTEN 82421




Dec. 31, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Dec. 31, 2011 NON-FINAL ACTION E-MAILED 6325

Dec. 31, 2011 NON-FINAL ACTION WRITTEN 82421


Sep. 21, 2011 NOTICE OF DESIGN SEARCH CODE MAILED

Sep. 20, 2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Sep. 19, 2011 NEW APPLICATION ENTERED IN TRAM


TM Staff Information - None

File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Nov. 13, 2013


Summary

Total Assignments: 2 Registrant: Perfectly Posh, LLC

Assignment 1 of 2



Date Recorded: Jun. 27, 2016



Assignor

Name: PERFECTLY POSH, LLC Execution Date: Jun. 24, 2016


UTAH

Assignee

Name: U.S. BANK NATIONAL ASSOCIATION

Legal Entity Type: NATIONAL BANKING ASSOCIATION State or CountryWhere Organized:

UTAH

Address: 170 S. MAIN STREET6TH FLOORSALT LAKE CITY, UTAH 84101

Correspondent

CorrespondentName:

S. BRANDON OWEN


36 SOUTH STATE STREETSUITE 1400SALT LAKE CITY, UT 84111


Assignment 2 of 2






Assignor



UTAH

Assignee



CALIFORNIA


Correspondent

CorrespondentName:

JOYCE MILLER




Proceedings

Summary


1


ProceedingNumber:

91241488 Filing Date: May 30, 2018



ELIZABETH A DUNN

Defendant


Correspondent WILLIAM E O'BRIEN

Address: LAW OFFICE OF WILLIAM E O'BRIEN LLC2 CONNECTOR ROAD SUITE 200WESTBOROUGH MA , 01581UNITED STATES


[email protected]

Associated marks


RegistrationNumber



Plaintiff(s)






Associated marks


RegistrationNumber




Prosecution History









Mark Information


PERFECTLY POSH


No

Mark DrawingType:

3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)

Description ofMark:

The mark consists of the wording "PERFECTLY POSH" with two asterisks, with the wording "PERFECTLY" underlined, all within ashaded circle.


Design SearchCode(s):

01.01.05 - Stars - one or more stars with seven or more points26.01.21 - Circles that are totally or partially shaded.26.17.13 - Overlined words or letters; Underlined words or letters; Letters or words underlined and/or overlined by one or more strokesor lines

Goods and Services



For: Personal care products, namely, hand lotion, non-medicated balm for use on hands, non-medicated hand soap, body lotion, bodybutter, skin care preparations, namely, body balm, body soap, namely, body bath soap and body cream soap, body mist spray, facelotion, face oils, face creams, exfoliating skin masks, shampoos, hair conditioners, massage cream, massage balm not for medicalpurposes, massage oil, bath fizzies, bath beads, non-medicated bath salts, non-medicated foot cream, non-medicated foot balm, non-medicated foot lotion, non-medicated lip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic purposes, essential oils forpersonal use, essential oils for aromatherapy use, non-medicated exfoliating preparations for lips, mineral powders for use as cosmeticmakeup, mineral makeup, aromatic oils, non-medicated aromatic body mists, aromatic lotions, aromatic non-medicated bath salts, non-medicated aromatic bath bombs for the skin and body for adding color and scent to bath water, bath milks, beauty milks, cosmeticmilks for the skin and body




Basis: 1(a)

First Use: Oct. 2011 Use in Commerce: Oct. 2011








Nov. 17, 2017

Filed as TEAS RF: Yes Currently TEAS RF: Yes

Register: Principal


Status: A final Office action refusing registration has been sent (issued) because the applicant neither satisfied nor overcame all requirementsand/or refusals previously raised. The applicant may respond by filing (1) a request for reconsideration; and/or (2) an appeal to theTrademark Trial and Appeal Board. To view all documents in this file, click on the Trademark Document Retrieval link at the top of thispage.

Status Date: Jul. 16, 2018

Basis: 1(a)

First Use: Oct. 2011 Use in Commerce: Oct. 2011


Filed Use: Yes Currently Use: Yes Amended Use: No

Filed ITU: No Currently ITU: No Amended ITU: No







Owner Address: Suite 1600222 South Main StreetSalt Lake City, UTAH 84101UNITED STATES


UTAH


Attorney of Record




Yes

Correspondent



Phone: 8017995825




llandhart.com


Yes


Prosecution History


Jul. 16, 2018 NOTIFICATION OF FINAL REFUSAL EMAILED

Jul. 16, 2018 FINAL REFUSAL E-MAILED

Jul. 16, 2018 FINAL REFUSAL WRITTEN 92450

Jun. 18, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 70997

Jun. 18, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 70997


Jun. 03, 2018 TEAS RESPONSE TO OFFICE ACTION RECEIVED

May 30, 2018 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

May 30, 2018 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

May 03, 2018 NOTIFICATION OF NOTICE OF UNRESPONSIVE AMENDMENT - E-MAILED

May 03, 2018 NOTICE OF UNRESPONSIVE AMENDMENT - E-MAILED

May 03, 2018 REPORT UNRESPONSIVE AMENDMENT - COMPLETED 92450




Mar. 20, 2018 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Mar. 20, 2018 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Dec. 15, 2017 NOTIFICATION OF PRIORITY ACTION E-MAILED 6326

Dec. 15, 2017 PRIORITY ACTION E-MAILED 6326

Dec. 15, 2017 PRIORITY ACTION WRITTEN 92450


Dec. 01, 2017 NOTICE OF DESIGN SEARCH CODE E-MAILED

Nov. 30, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM


TM Staff Information

TM Attorney: CHO, HANNA Law OfficeAssigned:

LAW OFFICE 115

File Location

Current Location: TMO LAW OFFICE 115 - SENIOR ATTORNEY Date in Location: Jul. 16, 2018


Summary

Total Assignments: 1 Applicant: Perfectly Posh, LLC

Assignment 1 of 1






Assignor



UTAH

Assignee



CALIFORNIA


Correspondent

CorrespondentName:

JOYCE MILLER




Proceedings

Summary


1


ProceedingNumber:

91241488 Filing Date: May 30, 2018



ELIZABETH A DUNN

Defendant



WILLIAM E O'BRIENLAW OFFICE OF WILLIAM E O'BRIEN LLC2 CONNECTOR ROAD SUITE 200WESTBOROUGH MA , 01581UNITED STATES


[email protected]

Associated marks


RegistrationNumber



Plaintiff(s)






Associated marks


RegistrationNumber




Prosecution History









Mark Information


PERFECTLY POSH



Mark DrawingType:



Claimed Ownershipof US

Registrations:

4348174, 4452650

Goods and Services



For: Skin lotions; beauty lotions; after-shave; after-shave lotions; after-shave liquid; non-medicated soaps made from natural oils, naturalexfoliants, essential oils, cosmetic milks, fragrance, and fruit, nut and plant extracts; facial washes; facial lotion; facial cream; topicalskin sprays for cosmetic purposes; beauty gels; bath lotion; body polish; shower gel; make-up; makeup primer; skin highlighter; skinbronzer; beauty serums; non-medicated skin serum; non-medicated hair serums; hair masks; hair sheen spray; hair styling spray;styling sprays for enhancing hair waves and curls; lip primer; lip gloss; lip rouge; cheek colors; non-medicated body soaks; bodymoisturizers; salves; body balms; non-medicated skin toners; cosmetic body care preparations, namely, body mud and body polish;body masks; body scrubs; foot masks for skin care; non-medicated foot cream; cuticle cream; tanning creams; perfumes in solid form;anti-aging serum; anti-aging moisturizer; anti-aging toner; anti-aging cleanser; anti-aging creams; eye cream; eye lotions; make-upremover; tissues impregnated with make-up removing preparations; cosmetic bags containing cosmetics and skin care preparations;kits and gift sets consisting of cosmetics and skin care preparations




Basis: 1(a)


For: Printed business supplies, marketing materials and sales aids, namely, order forms, business cards, letterhead paper, stationery,stickers, note paper, and planning sheets all in the fields of cosmetics and skin care preparations; catalogs, magazines, booklets, andbrochures, all in the fields of cosmetics and beauty care; beauty related publications, namely, hand-outs, workbooks, printedperiodicals, and newsletters all in the fields of cosmetics and beauty care


016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050





May 13, 2018


Register: Principal


Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additionalinformation and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click onthe Trademark Document Retrieval link at the top of this page.

Status Date: Sep. 10, 2018

Basis: 1(a)


For: Handbags, tote bags, empty cosmetic bags, and cases used for carrying and displaying cosmetics to be sold


018 - Primary Class U.S Class(es): 001, 002, 003, 022, 041


Basis: 1(a)


For: Shirts, hats, sweat shirts, sweat pants, ties, aprons


025 - Primary Class U.S Class(es): 022, 039


Basis: 1(a)

First Use: Jul. 14, 2017 Use in Commerce: Jul. 14, 2017

For: Providing a website featuring business information, promotional and marketing information and materials in the field of cosmetics andskin care preparations and the direct sales of cosmetics and skin care preparations; Dissemination of advertising materials;Organization of promotional events for commercial or advertising purposes; Business development services, namely, providing supportfor the business of others; Wholesale and retail services by direct solicitation by sales agents in the field of cosmetics and skin carepreparations; Shop at home parties featuring cosmetics and skin care products; Customer loyalty programs for commercial,promotional and advertising purposes; Distribution services, namely, distribution of advertising materials for others; promoting servicesof others through distribution of promotional materials to independent salespersons; Sales promotion services; Organization ofpromotional events for commercial or advertising purposes; Business development services, namely, providing start-up support forbusiness of others; Advertising, marketing and promotion services in the field of distributorships, person to person, wholesale, andretail selling; all the aforesaid services relating to cosmetics and beauty care and the direct selling of cosmetics and beauty careproducts




Basis: 1(a)











Owner Address: 222 South Main Street, Suite 1600Salt Lake City, UTAH 84101UNITED STATES


UTAH


Attorney of Record




Yes

Correspondent


H. MATTHEW HORLACHERHOLLAND & HART LLP

P.O. BOX 11583SALT LAKE CITY, UTAH 84110UNITED STATES

Phone: 801-799-5825




llandhart.com


Yes


Prosecution History


Sep. 10, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Sep. 10, 2018 NON-FINAL ACTION E-MAILED 6325

Sep. 10, 2018 NON-FINAL ACTION WRITTEN 93428

Sep. 05, 2018 ASSIGNED TO EXAMINER 93428

May 20, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

May 16, 2018 NEW APPLICATION ENTERED IN TRAM



TM Attorney: HOWELL, MATTHEW P Law OfficeAssigned:

LAW OFFICE 123

File Location

Current Location: TMO LAW OFFICE 123 - EXAMININGATTORNEY ASSIGNED

Date in Location: Sep. 10, 2018

Mark Information


FIZI BY PERFECTLY POSH



Mark DrawingType:


Goods and Services



For: Cosmetic preparations for baths; non-medicated bath preparations; bath bombs; non-medicated bath salts; mineral salt in the nature ofbath salts not for medical purposes; non-medicated body soaks




Basis: 1(a)


For: Shirts; aprons




Basis: 1(a)











Mark: FIZI BY PERFECTLY POSH


May 13, 2018


Register: Principal

Mark Type: Trademark






UTAH


Attorney of Record




Yes

Correspondent


H. MATTHEW HORLACHERHOLLAND & HART LLPP.O. BOX 11583SALT LAKE CITY, UTAH 84110UNITED STATES

Phone: 801-799-5825




llandhart.com


Yes


Prosecution History











LAW OFFICE 123

File Location



Mark Information


POSH BODY



Mark DrawingType:


Goods and Services



For: Cosmetics preparations for skin care; non-medicated skin care preparations; cosmetic creams; body butter; body wash, body creams;body oil; body lotions; tanning creams; non-medicated skin serum; beauty serums; perfumes in solid form; after-shave; after-shavelotions; after-shave liquid




Basis: 1(a)

First Use: Feb. 03, 2017 Use in Commerce: Feb. 03, 2017












UTAH


Mark: POSH BODY


May 13, 2018


Register: Principal

Mark Type: Trademark




Attorney of Record




Yes

Correspondent



Phone: 801-799-5825




llandhart.com


Yes


Prosecution History











LAW OFFICE 123

File Location



Mark Information


IT'S POSH TO MEET YOU



Mark DrawingType:


Goods and Services



For: Hand cream; hand lotions; skin lotions; skin creams; lip balm; bar soap; beauty soap; cosmetic soap; natural soap bars; body wash;non-medicated soaps made from natural oils, natural exfoliants, essential oils, cosmetic milks




Basis: 1(a)


For: Advertising, marketing and promotion services in the field of distributorships, person to person, wholesale, and retail selling




Basis: 1(a)











Mark: IT'S POSH TO MEET YOU


May 13, 2018


Register: Principal







UTAH


Attorney of Record




Yes

Correspondent



Phone: 801-799-5825




llandhart.com


Yes


Prosecution History










TM Attorney: VENGROFF, MARILYN IZZI Law OfficeAssigned:

LAW OFFICE 112

File Location



Mark Information


PERFECTLY POSH


No

Mark DrawingType:

5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM

Description ofMark:

The mark consists of stylized lettering of the word "PERFECTLY" on top of the word "POSH".



Claimed Ownershipof US

Registrations:

4348174, 4452650

Goods and Services



For: cosmetics; cosmetic preparations for skin care; skin lotions; beauty lotions; after-shave; after-shave lotions; after-shave liquid; non-medicated skin care preparations; cosmetic creams; body creams; hand lotions; hand cream; bar soap; beauty soap; cosmetic soap;natural soap bars; body wash; skin soap; non-medicated soaps made from natural oils, natural exfoliants, essential oils, cosmeticmilks, fragrance, and fruit, nut and plant extracts; face and body lotions; body butter; body, hand, and face moisturizers; beauty gels;bath lotion; body polish; shower gel; non-medicated skin care preparation, namely, body mist; body oils; face oils; face creams; non-medicated exfoliating preparations for lips and skin; cosmetic body care preparations, namely, body mud and body polish; body masks;body scrubs; skin masks; beauty masks; facial masks; facial washes; facial lotion; facial cream; beauty serums; eye cream; eye lotions;hair shampoo; hair conditioners; non-medicated hair serums; hair masks; hair sheen spray; hair styling spray; styling sprays forenhancing hair waves and curls; foot scrub; non-medicated foot cream; non-medicated foot lotion; foot masks for skin care; cuticlecream; bath fizzies; bath bombs; bath salts, not for medicated purposes; cosmetic bath salts; non-medicated body soaks; bodymoisturizers; non-medicated herbal body care products, namely, salves; body balms; perfumes; perfumes in solid form; topical skinsprays for cosmetic purposes; make-up; make-up primer; cosmetic preparations, namely, skin highlighter; skin bronzer; non-medicatedskin serum; lip balm; lip stains; lip tints; lip primer; lip gloss; lip rouge; lipstick; cheek colors; non-medicated skin toners; non-medicatedanti-aging serum; anti-aging moisturizer; anti-aging toner; anti-aging cleanser; anti-aging creams; cosmetic bags containing cosmeticsand non-medicated skin care preparations, sold as a unit; kits and gift sets consisting of cosmetics and non-medicated skin carepreparations, sold as a unit; make-up remover; tissues impregnated with make-up removing preparations




Basis: 1(b)

For: catalogs, magazines, booklets, and brochures, all in the fields of cosmetics and beauty care; beauty related publications, namely,




Jun. 15, 2018


Register: Principal


Status: Application has been published for opposition. The opposition period begins on the date of publication.

Status Date: Dec. 11, 2018

Publication Date: Dec. 11, 2018

hand-outs, workbooks, printed periodicals, and newsletters all in the fields of cosmetics and beauty care


016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050


Basis: 1(b)

For: handbags; tote bags; empty cosmetic bags, cosmetic carrying cases sold empty, and cases used for carrying cosmetics to be soldseparately


018 - Primary Class U.S Class(es): 001, 002, 003, 022, 041


Basis: 1(b)

For: shirts, hats, sweat shirts, sweat pants, ties as clothing, aprons




Basis: 1(a)


For: Providing a website featuring business information, promotional and marketing information and materials in the field of cosmetics andskin care preparations and the direct sales of cosmetics and skin care preparations; Dissemination of advertising materials;Organization of promotional events for commercial or advertising purposes; Business development services, namely, providing supportfor the business of others; Wholesale and retail services by direct solicitation by sales agents in the field of cosmetics and skin carepreparations; Shop at home parties featuring cosmetics and skin care products; Customer loyalty programs for commercial,promotional and advertising purposes; Distribution services, namely, distribution of advertising materials for others; promoting servicesof others through distribution of promotional materials to independent salespersons; Sales promotion services; Organization ofpromotional events for commercial or advertising purposes; Business development services, namely, providing start-up support forbusiness of others; Advertising, marketing and promotion services in the field of distributorships, person to person, wholesale, andretail selling; all the aforesaid services relating to cosmetics and beauty care and the direct selling of cosmetics and beauty careproducts




Basis: 1(b)



Filed ITU: Yes Currently ITU: Yes Amended ITU: No









UTAH


Attorney of Record




Yes

Correspondent



Phone: 801-799-5825




llandhart.com


Yes


Prosecution History


Dec. 11, 2018 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Dec. 11, 2018 PUBLISHED FOR OPPOSITION

Nov. 21, 2018 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Nov. 02, 2018 ASSIGNED TO LIE 70884

Oct. 22, 2018 APPROVED FOR PUB - PRINCIPAL REGISTER

Oct. 22, 2018 EXAMINER'S AMENDMENT ENTERED 88888

Oct. 22, 2018 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328

Oct. 22, 2018 EXAMINERS AMENDMENT E-MAILED 6328

Oct. 22, 2018 EXAMINERS AMENDMENT -WRITTEN 73699

Oct. 18, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Oct. 17, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Oct. 17, 2018 TEAS RESPONSE TO OFFICE ACTION RECEIVED





Jun. 21, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Jun. 19, 2018 NEW APPLICATION ENTERED IN TRAM



TM Attorney: ALTREE, NICHOLAS Law OfficeAssigned:

LAW OFFICE 107

File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Nov. 07, 2018

Notice of Oppositionlip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic...

Documents

Transcript of Notice of Oppositionlip balm, lip tint, perfume, perfume oils, nutritional oils for cosmetic...