Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1151103
`08/04/2021
`
`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
`
`Entity
`
`Address
`
`Vamsi M. Nallapati
`
`Individual
`
`501 S. NEW HOPE RD.
`RALEIGH, NC 27610
`UNITED STATES
`
`Citizenship
`
`UNITED STATES
`
`Attorney informa-
`tion
`
`SUSAN FREYA OLIVE
`OLIVE & OLIVE, P.A.
`500 MEMORIAL ST.
`DURHAM, NC 27701
`UNITED STATES
`Primary Email: emailboxTTAB@oliveandolive.com
`Secondary Email(s): bcrews@oliveandolive.com
`No phone number provided.
`
`Docket Number
`
`NAVM9001-d
`
`Applicant Information
`
`Application No.
`
`88597466
`
`Publication date
`
`07/06/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`08/04/2021
`
`Opposition Peri-
`od Ends
`
`08/05/2021
`
`Justh Holdings, LLC
`8610 S 212TH ST, SUITE 100
`KENT, WA 98032
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Distributorship services featuring natural
`stone, porcelain, and glass materials not for use in flooring; distributorship services featuring granite,
`marble, quartzite, limestone, onyx, schist, soap stone, quartz, porcelain, and travertinenot for use in
`flooring; distributorship services featuring stone, porcelain, and glass slabs and tiles not for use in
`flooring; distributorship services featuring limestone, porcelain, and glass tiles and onyx, quartz, and
`porcelain slabsnot for use in flooring; import-export agencies in the field of stone, porcelain, and glass
`slabs and tiles not for usein flooring; import agencies in the field of stone, porcelain, and glass slabs
`and tiles not for use in flooring; import agency services featuring limestone, porcelain, and glass tiles
`and onyx, quartz, and porcelain slabs not for use in flooring; import agency services featuring natural
`stone, porcelain, and glass materials not for use in flooring; import agency services featuring granite,
`marble, quartzite, limestone, onyx, schist, soap stone, quartz, porcelain, and travertine not for use in
`flooring; retail store and wholesale store services featuring natural stone, porcelain, and glass materi-
`als, and natural stone, porcelain, and glass products, namely, slabs and tiles not for use in flooring
`
`Class 039. First Use: 0 First Use In Commerce: 0
`
`

`

`All goods and services in the class are opposed, namely: Importation services, namely, import and
`export cargo handling services; distribution services, namely, delivery of stone, porcelain, and glass
`slabs and tilesnot for use in flooring; distribution services, namely, delivery of limestone, porcelain,
`and glass tiles and onyx, quartz, and porcelain slabs not for use in flooring
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`No bona fide intent to use mark in commerce for
`identified goods or services
`
`Applicant not rightful owner of mark for identified
`goods or services
`
`Trademark Act Section 1(b), 44(e) or 66(a)
`
`Trademark Act Section 1
`
`Fraud on the USPTO
`
`Other
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`1938 (Fed. Cir. 2009)
`
`Void ab initio for failure to comply with require-
`ments of Section 1
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`
`COSMOS
`
`Importation, distribution, and sale of granite and natural stone
`products and of related goods
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`COSMOS GRANITE & MARBLE
`
`Importation, distribution, and sale of granite and natural stone
`products and of related goods
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`NONE
`
`NONE
`
`Application Date
`
`NONE
`
`

`

`Design Mark
`
`Goods/Services
`
`Importation, distribution, and sale of granite and natural stone
`products and of related goods
`
`Related Proceed-
`ings
`
`Federal lawsuit: Civil Action No. 5:20-cv-47 (copy of currently operative com-
`plaint attached as Exhibit 1); TTAB Opposition No. 91255855
`
`Attachments
`
`cosmos logo.jpg
`20210804 ATELIER BY COSMOS - NAVM9001-d NOO.pdf(291823 bytes )
`ATELIER BY COSMOS - NOO - Common Law Marks.pdf(47797 bytes )
`
`Signature
`
`/bjc/
`
`Name
`
`Date
`
`Brian J. Crews
`
`08/04/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Before the Trademark Trial and Appeal Board
`
`
`
`IN THE MATTER OF Trademark Application of Justh Holdings, LLC
`For Registration of ATELIER BY COSMOS, Serial No. 88597466
`Published for Opposition in the Official Gazette on July 6, 2021
`Goods/Services Opposed: All
`
`
`
`Vamsi M. Nallapati,
`Plaintiff-Opposer
`
`vs
`Justh Holdings, LLC,
`Defendant-Applicant
`
`OPPOSITION
`TO
`REGISTRATION OF MARK
`
`Attorney Reference: NAVM9001-d
`
`Opposer Vamsi M. Nallapati, an individual resident of the State of North Carolina, with a
`
`principal place of business in Raleigh, North Carolina and a business address at 501 S. New Hope
`
`Rd, Raleigh, NC 27610, believes that he will be damaged by the registration of the mark shown in the
`
`above-identified application (hereafter referred to as “Justh’s Application”), and hereby opposes
`
`same.
`
`The grounds for opposition are priority and likelihood of confusion (Trademark Act Section
`
`2(d), 15 U.S.C. § 1052(d), failure to comply with the requirements of the Trademark Act (15 U.S.C.
`
`§ 1051(b)), and fraud. The grounds for opposition are more particularly set out as follows. Headings
`
`are interposed for convenience; all allegations are deemed incorporated into each ground for
`
`opposition, as though realleged for each.
`
`GENERAL ALLEGATIONS
`
`1.
`
`In 2005, Opposer adopted the name “Cosmos Granite & Marble,” and began using COSMOS,
`
`typically with the descriptive language “Granite & Marble,” as a mark in interstate commerce
`
`- Page 1-
`
`

`

`to identify services in the nature of importation, distribution, and sale of granite and natural
`
`stone products to construction and design professionals and retailers, all provided through
`
`businesses controlled by Opposer. In that same year, Opposer purchased the domain
`
`cosmosgranite.com and soon thereafter established a website at that address to advertise these
`
`services.
`
`2. From 2005 to the present and without cessation, Opposer has used and authorized use of
`
`COSMOS (alone and with other words) in commerce as a mark, business name, and domain
`
`name in connection with the importation, distribution, and sale of granite and natural stone
`
`products (collectively referred to hereafter as “Services”). These marks that include the term
`
`COSMOS, whether with or without design elements, are referred to hereafter as the
`
`“Opposer’s Marks.”
`
`3.
`
`
`
`4.
`
`In or around 2009, Opposer started using a design mark that incorporated his COSMOS mark,
`
`depicted as follows (referred to hereafter as the “Original Cosmos Design Mark”):
`
`
`
`5. Because he was using the Original Cosmos Design Mark, Opposer secured a federal trademark
`
`registration for the words with the associated design: U.S. Registration 4,028,275 issued in
`
`September 2011, for “distributorship services in the field of granite, marble, travertine, onxy
`
`[sic], lime stone, slate; import agency services in the field of granite, marble, travertine, onxy
`
`[sic], lime stone, slate.”
`
`- Page 2-
`
`

`

`6. Thereafter, a graphic designer was employed to draw the modernized logo depicted below,
`
`which Opposer promptly placed in use.
`
`
`
`7. Unfortunately, Opposer’s registration 4,028,275 was canceled on November 16, 2018, after
`
`Opposer failed to file a Section 8 declaration.
`
`8. Meanwhile, Opposer’s cousin Hari Hara Prasad Nallapaty, who is the managing member of
`
`Defendant-Applicant Justh Holdings, LLC (hereafter referred to as “Justh”), apparently was
`
`lying in wait for an opportunity to take advantage of such an error. On October 9, 2018, after
`
`Opposer had missed his deadline to file the required declaration but before Opposer’s
`
`registration of the Original Cosmos Design Mark had been officially canceled, Opposer’s said
`
`cousin caused Justh to file three applications covering the use of marks containing the word
`
`COSMOS in identical or substantially identical form to Opposer’s Marks, all for use in
`
`connection with the Services, seeking registration in Justh’s name of:
`
`a. the words COSMOS GRANITE & MARBLE;
`
`b. the words VIVID COSMOS; and
`
`c. the words COSMOS GRANITE & MARBLE in the modernized logo form that
`
`Opposer had previously adopted, as shown below:
`
`
`
`- Page 3-
`
`

`

`Each of these three marks is referred to hereafter as a Disputed Mark. Opposer’s cousin Hari
`
`Hara Prasad Nallapaty, Justh’s managing member, signed each of the applications to register
`
`these three Disputed Marks in his capacity as manager of Justh.
`
`9. Because Justh’s applications were filed before Opposer’s registration was eventually and
`
`actually canceled, Opposer’s registration was still on the Principal Register at the time of the
`
`applications. Opposer’s registration was at that time, and the canceled registration remains
`
`today, easily discoverable by way of the simplest of searches conducted on the Trademark
`
`Office’s publicly accessible website, including by searches using simple terms such as
`
`“Cosmos” or “Cosmos Granite.”
`
`10. Trademark searches are a normal precursor to the filing of any federal trademark application,
`
`conducted in advance of the filing. It strains credulity to believe that Justh and its managing
`
`member and attorneys all were unaware of the existence of Opposer’s Marks on the Principal
`
`Register at the time of filing Justh’s applications to register these three Disputed Marks.
`
`11. As part of each of Justh’s applications to register these three Disputed Marks, Justh was
`
`required to, and did, submit evidence purporting to show Justh’s use of each Disputed Mark.
`
`Justh told the Trademark Office, as part of its applications, that its evidence was “a[n] catalog
`
`and screenshots from Justh’s website showing prominent use” of the mark for which
`
`registration was sought. But in fact:
`
`a. the catalog was posted on Opposer’s website cosmosgranite.com rather than on any
`
`website owned by Justh, and had been created by and under the direction of Opposer
`
`rather than by Justh; Justh had been permitted by Opposer to use the catalog to promote
`
`its Services but the catalog did not belong to Justh; and
`
`- Page 4-
`
`

`

`b. the screenshots were taken from Opposer’s website cosmosgranite.com, rather than
`
`from any website owned by Justh, and specifically were taken from a subpage on that
`
`website that Opposer had permitted Justh’s managing member and Justh to use.
`
`12. At the time Justh filed each of the applications to register these three Disputed Marks, and
`
`continuously since that time, Justh and its managing member Hari Hara Prasad Nallapaty were
`
`well aware that:
`
`a. Opposer had conceived the use of the COSMOS name and brand;
`
`b. Opposer had first used Opposer’s Marks in commerce for the Services as set forth
`
`above, beginning at least as early as 2005;
`
`c. Opposer was the first user in commerce and was at the least an owner of each of the
`
`three Disputed Marks for which Justh sought registration;
`
`d. Opposer was still using Opposer’s Marks (including each of these three Disputed
`
`Marks) in commerce for the Services;
`
`e. Opposer was entitled to continue using Opposer’s Marks (including these three
`
`Disputed Marks) in commerce for the Services; and
`
`f.
`
`the catalog and screenshots Justh submitted as part of its applications were not a
`
`“catalog and screenshots from Justh’s website” but were instead were a catalog and
`
`screenshots from Opposer’s website cosmosgranite.com that Justh was not entitled to
`
`pass off as its own for trademark application purposes.
`
`13. Justh did not, however, disclose these facts to the United States Trademark Office as part of
`
`the applications that Justh filed, or at any later time while the applications were being
`
`considered by that Office and prior to their registration.
`
`- Page 5-
`
`

`

`14. As a result of Justh’s nondisclosures and false representations, each of Justh’s applications to
`
`register these three Disputed Marks was approved and issued as a federal registration in 2019,
`
`without Opposer’s knowledge. Thus, Justh became the owner of U.S. Registrations Nos.
`
`5774030 (COSMOS GRANITE & MARBLE and Design), 5803910 (COSMOS GRANITE
`
`& MARBLE, standard character mark), and 5757082 (VIVID COSMOS, standard character
`
`mark)—each of which is currently the subject of a lawsuit filed on February 6, 2020, seeking
`
`its cancellation: Civil Action No. 5:20-cv-00047 (E.D.N.C.). A copy of the currently
`
`operative complaint in that action is attached hereto as Exhibit 1.
`
`15. Justh’s above-described misconduct was not inadvertent, and the intentionality thereof
`
`emphasizes the evident wrongfulness of Justh’s subsequent conduct described below.
`
`16. On July 26, 2019, Opposer acquired the domain cosmossurfaces.com and almost immediately
`
`began using this domain as an additional means for advertising the Services being offered by
`
`himself and his permitted users and their businesses — including Justh’s managing member
`
`and Justh — under Opposer’s Marks.
`
`17. On or about August 29, 2019, approximately one month after Opposer had acquired the
`
`domain cosmossurfaces.com and after Opposer already had placed that domain in use to
`
`advertise Services, Justh’s managing member caused Justh to acquire the domain
`
`cosmosurfaces.com— identical to Opposer’s prior-acquired domain except omitting one “S”
`
`from the term. Justh did not notify Opposer of its actions or seek his consent and Opposer was
`
`not aware of what Justh had done.
`
`18. On August 28, 2019, Justh’s managing member caused Justh to file three additional federal
`
`trademark applications seeking to register marks containing the word COSMOS, again in
`
`forms identical or substantially similar to Opposer’s Marks, and again without notice to
`
`- Page 6-
`
`

`

`Opposer or any other interested party who had long used Opposer’s Marks prior to the filing
`
`of these new applications. Justh’s new applications sought registration of the following
`
`additional marks (each also referred to hereafter as a Disputed Mark) in connection with the
`
`Services:
`
`a. the word COSMOS;
`
`b. the words COSMOS SURFACES; and
`
`c. the words ATELIER BY COSMOS.
`
`Justh’s managing member signed each of these new applications in his capacity as manager of
`
`Justh. The applications to register the first two of these Disputed Marks are the subject of
`
`Opposition No. 91255855, filed May 18, 2020. The application for registration of the third of
`
`these Disputed Marks, ATELIER BY COSMOS, is the subject of the current Notice of
`
`Opposition. Two of the applications (for COSMOS SURFACES and ATELIER BY
`
`COSMOS) were filed on the basis of Justh’s alleged intent to use the marks in commerce.
`
`19. However, the application seeking registration of COSMOS standing alone was filed on the
`
`basis of alleged use in commerce and as part of that application, Justh was required to, and
`
`did, submit evidence of Justh’s purported use of COSMOS. In particular, Justh submitted
`
`what it described as “catalog samples displaying prominent use of Applicant’s mark in
`
`connection with the services offered thereunder.”
`
`20. The catalog samples submitted by Justh were from a catalog that was posted on Opposer’s
`
`website cosmosgranite.com rather than on any website owned by Justh. That catalog had been
`
`created by and under the direction of Opposer rather than by Justh, and was a catalog that did
`
`not belong to Justh (although Justh—like all the various businesses operated under Opposer’s
`
`- Page 7-
`
`

`

`Marks—had been permitted by Opposer to use the catalog to promote its Services). Justh was
`
`not entitled to use Opposer’s catalog for the purpose of seeking registration of any of the
`
`Disputed Marks.
`
`21. On August 28, 2019 when Justh’s managing member caused Justh to file these three most
`
`recent applications for registration of Disputed Marks, and continuing to date, Justh knew that:
`
`a. All of the three Disputed Marks that Justh was now seeking to register consisted
`
`entirely or most significantly of the word COSMOS;
`
`b. Opposer had conceived the use of the COSMOS name and brand;
`
`c. Opposer had first used Opposer’s Marks in commerce in connection with the Services
`
`as set forth above, had used the specific mark COSMOS in commerce for Services
`
`since at least as early as 2005, and owned the domain cosmossurfaces.com and was
`
`using it in commerce for Services;
`
`d. Opposer, and not Justh, was the first user in commerce for Services, and was the owner,
`
`of the mark COSMOS that was incorporated as a part of all three Disputed Marks for
`
`which Justh sought registration;
`
`e. Opposer has priority over Justh with respect to use in commerce of Opposer’s Marks
`
`for the Services;
`
`f. Opposer was entitled to continue using Opposer’s Marks, including COSMOS and the
`
`domain name cosmossurfaces.com, in commerce for the Services; and
`
`g. the catalog samples that Justh submitted to show Justh’s use of the Disputed Mark
`
`COSMOS were not created by Justh and Justh was not entitled to pass them off as its
`
`own for trademark application purposes.
`
`- Page 8-
`
`

`

`22. At no time has Opposer transferred or assigned to Justh ownership of any of Opposer’s Marks,
`
`in whole or in part, including but not limited to the Disputed Marks.
`
`23. At no time has Opposer consented to Justh’s registration of any of Opposer’s Marks, in whole
`
`or in part, including but not limited to the Disputed Marks.
`
`24. When Justh’s managing member signed each of Justh’s applications to register the Disputed
`
`Marks, including the applications at issue in this Opposition, he was required to confirm under
`
`penalty of perjury that the facts set out in the application were truthful.
`
`25. When Justh’s managing member signed each of Justh’s three pending applications to register
`
`the Disputed Marks, including the application at issue in this Opposition, he specifically
`
`represented to the Trademark Office under penalty of perjury that:
`
`As to the use-based COSMOS application:
`
`[Justh’s managing member] believes that [Justh] is the owner of [the
`trademark/service mark sought to be registered;
`
`And as to all three applications, including the application that is the subject of the
`
`present opposition:
`
`To the best of [Justh’s managing member’s] knowledge and belief,
`the facts recited in the application are accurate.
`
`To the best of [Justh’s managing member’s] knowledge and belief,
`no other persons … have the right to use the mark in commerce,
`either in the identical form or in such near resemblance as to be
`likely, when used on or in connection with the goods/services of
`such other persons, to cause confusion or mistake, or to deceive.
`
`the best of [Justh’s managing member’s] knowledge,
`To
`information, and belief, formed after an inquiry reasonable under the
`circumstances, the allegations and other factual contentions made
`above have evidentiary support.
`
`[Justh’s managing member], being warned that willful false
`
`- Page 9-
`
`

`

`statements and the like are punishable by fine or imprisonment, or
`both, under 18 U.S.C. § 1001, and that such willful false statements
`and the like may jeopardize the validity of the application or
`submission or any registration resulting therefrom, declares that all
`statements made of his … own knowledge are true and all statements
`made on information and belief are believed to be true.
`
`26. For the reasons set out above, each of these statements, each made under penalty of perjury,
`
`was false and, at the time Justh’s managing member signed these statements under penalty of
`
`perjury as Justh’s agent and manager, Justh’s managing member knew the statements were
`
`false. Justh’s managing member and Justh knew that Justh’s representations concerning
`
`Justh’s evidence of use were false, knew that Opposer and not Justh was the first user of
`
`Opposer’s Marks in commerce, knew in each instance that Justh was not the owner of the
`
`Disputed Mark that was the subject of the application and had no independent right to use the
`
`mark at issue, and knew that at the least, Opposer had the right to use in commerce the
`
`Disputed Marks, either in the identical form or in such near resemblance as to be likely, when
`
`used on or in connection with the goods/services of such other persons, to cause confusion or
`
`mistake, or to deceive and that Justh’s representation that no person other than Justh had such
`
`rights was false.
`
`27. Justh made each of its false statements willfully and with the intent to deceive the Trademark
`
`Office, and/or with such reckless disregard of the truth, as to be the legal equivalent of such
`
`intent.
`
`28. Justh has not only sought to appropriate to itself the exclusive right to control the use of all of
`
`the Disputed Marks but in closely related conduct has sought to cause confusion in the
`
`marketplace as to its origination of Opposer’s Marks and Services and the quality and
`
`reliability of its Services and itself as a company. Among other things, Justh has:
`
`- Page 10-
`
`

`

`a. purchased and placed in use a domain that is virtually identical to Opposer’s pre-
`
`existing cosmossurfaces.com domain: cosmosurfaces.com;
`
`b. posted on that cosmosurfaces.com domain a website with content that is virtually
`
`identical to the content posted on Opposer’s website cosmosgranite.com;
`
`c. included as part of the copied content references to the business being founded in 2005
`
`and having 15 locations, neither of which were accurate, when posted, with respect to
`
`Justh and Justh’s business, although both were then accurate with respect to Opposer
`
`and the businesses he has permitted to use Opposer’s Marks; and
`
`d. published on that website a statement that Cosmos Granite & Marble has rebranded
`
`itself as Cosmos Surfaces, thereby suggesting that consumers should no longer access
`
`the website principally used by Opposer and his permitted users, at
`
`cosmosgranite.com.
`
`PRIORITY AND LIKELIHOOD OF CONFUSION
`TRADEMARK ACT SECTION 2(d), 15 U.S.C. § 1052(d)
`
`29. In the application at issue in this Opposition (Justh’s Application), Justh seeks registration of a
`
`mark which contains as its prominent element the term COSMOS, pursuant to Section 1(b) of
`
`the Trademark Act (15 U.S.C. §1051(b)) for use in connection with the following services:
`
`Distributorship services featuring natural stone, porcelain, and glass
`materials not for use in flooring; distributorship services featuring
`granite, marble, quartzite, limestone, onyx, schist, soap stone, quartz,
`porcelain, and travertine not for use in flooring; distributorship
`services featuring stone, porcelain, and glass slabs and tiles not for
`use
`in flooring; distributorship services featuring
`limestone,
`porcelain, and glass tiles and onyx, quartz, and porcelain slabs not
`for use in flooring; import-export agencies in the field of stone,
`porcelain, and glass slabs and tiles not for use in flooring; import
`agencies in the field of stone, porcelain, and glass slabs and tiles not
`
`- Page 11-
`
`

`

`for use in flooring; import agency services featuring limestone,
`porcelain, and glass tiles and onyx, quartz, and porcelain slabs not
`for use in flooring; import agency services featuring natural stone,
`porcelain, and glass materials not for use in flooring; import agencies
`featuring granite, marble, quartzite, limestone, onyx, schist, soap
`stone, quartz, porcelain, and travertine not for use in flooring; retail
`store and wholesale store services featuring natural stone, porcelain,
`and glass materials, and natural stone, porcelain, and glass products,
`namely, slabs and tiles not for use in flooring, all in International
`Class 035; and
`
`Importation services, namely, import and export cargo handling
`services; distribution services, namely, delivery of stone, porcelain,
`and glass slabs and tiles not for use in flooring; distribution services,
`namely, delivery of limestone, porcelain, and glass tiles and onyx,
`quartz, and porcelain slabs not for use in flooring, in International
`Class 039.
`
`30. Justh seeks registration of ATELIER BY COSMOS (filed August 29, 2019) under Section 1(b)
`
`of the Act. In its application, Justh relies on two prior-issued Registrations, each of which
`
`contains its own alleged date of first use. One of those Registrations, No. 5803910 (for the mark
`
`COSMOS GRANITE & MARBLE), asserts the use of COSMOS GRANITE & MARBLE
`
`since at least as early as June 2006. For the reasons set out above and in the co-pending federal
`
`litigation, Justh cannot legitimately rely even on that junior date as its own and in any event,
`
`Justh has not alleged in any Trademark Office proceeding that it has any date earlier than June
`
`2006 on which it can rely for any purpose herein.
`
`31. Justh seeks to register a mark whose prominent term is identical to Opposer’s COSMOS mark
`
`and is confusingly similar to Opposer’s Marks in general.
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`32. The addition of the words “ATELIER BY” at the beginning of the mark does not add
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`distinctiveness sufficient to distinguish the mark from Opposer’s COSMOS mark and
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`Opposer’s Marks in general. Indeed, Justh itself has admitted to the Office the insignificance
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`of ATELIER to the mark and, in contrast, the importance of COSMOS.
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`33. Evidence of the appearance of the applied-for mark or images or themes that allegedly will be
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`used in connection with the applied-for mark by Justh or its licensees is irrelevant to the claims
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`in this proceeding, as registration is not sought in design form and no particular appearance,
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`images, or themes are claimed.
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`34. Opposer, directly and through its informal licensees, has used and continues to use Opposer’s
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`Marks as aforestated, and in particular, has used and continues to use Opposer’s Marks in
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`commerce in connection with services that are identical and substantially similar to the services
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`identified in Justh’s Application.
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`35. Use of Opposer’s Marks in commerce for Opposer’s substantially similar services precedes any
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`priority date that Justh could claim even if Justh legitimately could claim to own any rights
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`whatsoever in the applied-for mark, and Opposer’s use is continuing.
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`36. By reason of its longstanding use of Opposer’s Marks, which commenced prior to the date of
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`Justh’s Application and any date of use on which Justh is entitled to rely, Opposer has priority
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`with respect to use of Opposer’s Marks over Justh and also over Justh’s actual and proposed uses
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`and intended uses of the mark that is the subject of Justh’s Application.
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`37. Justh has not incorporated, in Justh’s Application, limitations on the font or coloration of the
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`mark, or limitations on themes and images that can be used in association with its mark.
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`Neither has Justh incorporated limitations on its marketing and channels of commerce. Justh’s
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`mark, and Justh’s services offered under and in connection with the mark, presumptively will
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`be used and marketed in all ways similarly to Opposer’s Marks, and to Opposer’s services
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`bearing Opposer’s Marks, so as to maximize the likelihood of confusion with Opposer’s
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`Marks. Indeed, as outlined above, such confusing use has already been undertaken.
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`38. Further increasing the likelihood of confusion, the words “ATELIER BY” proceeding the
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`word “COSMOS” suggest that this is an offering of, endorsed by, or in association with
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`Opposer and/or Opposer’s Marks.
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`39. In view of the identities and close similarities between Opposer’s prior-used and not
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`abandoned Opposer’s Marks to Justh’s applied-for mark, the related nature of the services
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`offered by Opposer and its licensees, and the reasonable and predictable zone of expansion of
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`such services, to the uses identified in Justh’s Application, it is further alleged that the mark
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`Justh seeks to register in Justh’s Application so resembles Opposer’s Marks as to be likely to
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`cause confusion and to cause mistake.
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`VOID AB INITIO FOR FAILURE TO COMPLY WITH REQUIREMENTS
`OF THE TRADEMARK ACT - (15 USC §1051(b))
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`40. The mark ATELIER BY COSMOS that Justh seeks to register, used as identified in Justh’s
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`Application, is likely to cause confusion and mistake with respect to Opposer’s Marks and their
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`use by Opposer and Opposer’s licensees.
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`41. At the time of filing the application at issue in this proceeding:
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`a. Contrary to the requirements of Section 1(b) of the Act, Justh did not have a bona fide
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`intention, under circumstances showing its good faith, to use the mark ATELIER BY
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`COSMOS in commerce as sought; and
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`b. Contrary to the requirements of Section 1(b) of the Act, Justh knew that there was at
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`least one other person, other than Justh—namely, Opposer—who had the right to use
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`in commerce the mark that was the subject of Justh’s Application, either in the identical
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`form or in such near resemblance as to be likely, when used on or in connection with
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`the services of such other person, to cause confusion or mistake, or to deceive.
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`42. For the reasons set out hereinabove, all of which existed at the time Justh executed and filed
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`Justh’s Application and on the dates stated in Justh’s Application, the application as filed was
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`void ab initio for failure to comply with the applicable requirements of Section 1 of the
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`Trademark Act (15 USC §1051(b)).
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`FRAUD
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`43. As described hereinabove, with respect to the application at issue herein, Justh knowingly
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`made materially false representations to the Office, with the intent to procure a registration
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`based upon such false statements. Justh’s willful false statements were made with the intent
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`to deceive the Office and/or with such reckless disregard of the truth, as to be the legal
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`equivalent of such intent. Justh’s signatory well-knew the status of its ownership, of its right
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`to use the marks it sought to register, and of its lack of priority as to use of the marks in
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`commerce, as said signatory is the managing member of Justh; and the directions
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`accompanying the application provided ample explanation of the importance of accuracy.
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`Justh deceived the Office with the intent of procuring a trademark registration to which it was
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`not entitled (if indeed Justh was entitled to registration under any circumstances, which
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`Opposer denies), and thereby successfully obtained approval of Justh’s Application and its
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`passage to publication.
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`44. It is alleged based upon the foregoing facts and on information and belief that Justh’s
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`Application was fraudulent due to:
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`a. Justh’s willful false statement that it was the owner of the mark COSMOS; and
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`b. Justh’s concealment of its knowledge that at least one person other than Justh—namely,
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`Opposer—had the right to use in commerce the mark that is the subject of Justh’s
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`Application, either in the identical form or in such near resemblance as to be likely,
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`when used on or in connection with the services of such other person, to cause
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`confusion or mistake, or to deceive; and Justh’s willful false statement that it had no
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`such knowledge.
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`45. The true facts underlying the above-described statements were known to Justh and yet the
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`facts were falsely alleged and averred by Justh at the date of filing of Justh’s Application.
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`Justh made the false statements, knowing that they were false and that Justh’s Application
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`would be judged for allowance based on those representations and that the representations
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`were material to the application. In short, these false representations were knowingly made
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`by Justh at the time of Justh’s Application, and were not corrected during prosecution, to
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`deceive the Office so as to induce the Trademark Office to issue a registration to Justh; and
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`those false statements ultimately had the desired effect of inducing approval of Justh’s
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`Application by the Office.
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`46. Even after the wrongfulness of Justh’s conduct was made the subject of the federal lawsuit
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`shown in Exhibit 1, which was filed in February 2020, well over sixteen months before the
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`filing of this Notice of Opposition, Justh took no corrective action with respect to Justh’s
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`Application and has not withdrawn it or sought to correct its wrong