Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA79748
`ESTTA Tracking number:
`05/05/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91169763
`Plaintiff
`Malie Inc.
`Martin E. Hsia
`Cades Schutte, LLP
`1000 Bishop Street, Suite 1200
`Honolulu, HI 96813
`
`Motion for Summary Judgment
`Martin E. Hsia 32,471
`mhsia@cades.com, skaneshiro@cades.com, msaito@cades.com,
`shaun@maliekauai.com
`/Martin E. Hsia/
`05/05/2006
`Opposition No. 91169763 - Opposer's MSJ and Memo in Support of Opposer's
`MSJ.PDF ( 58 pages )(2050135 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MALIE, INC .,
`
`Opposer,
`
`V.
`
`MALIE KAI CHOCOLATES LLC,
`
`Applicant.
`________M_______M__.l
`
`Q/Q/Q/Q/Q/Q/Q/Q/Q
`
`Opposition No. 91169763
`Serial No. 78/582924
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`Opposer MALIE, INC. (“Opposer”), by and through its undersigned attorney, hereby
`
`moves for summary judgment pursuant to Rule 56(a), Fed. R. Civ. P., and 37 CFR § 2.127(e)(1).
`
`As set forth in the attached memorandum and based on the attached exhibits and declaration,
`
`Opposer respectfully submits that its opposition to trademark Application Serial No. 78/5 82924
`
`must be sustained, as there are no genuine issues of fact and Opposer is entitled to judgment as a
`
`matter of law.
`
`DATED:
`
`Honolulu, Hawaii,
`
`J’ J"
`
`/
`
`, 2006.
`
`/’‘)/-\,,—--~ cl‘
`
`flflvi
`
`Martin E. Hsia, Reg. No. 32,471
`CADES SCHUTTE
`
`A Limited Liability Law Partnership LLP
`1000 Bishop Street, Suite 1200
`Honolulu, HI 96816
`
`Tel: (808) 521-9200
`Attorneys for Opposer
`MALIE, INC.
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`MALIE, lNC.,
`
`Opposer,
`
`V.
`
`MALIE KAI CHOCOLATES LLC,
`
`Applicant.
`:________________?_)
`
`J/%%%%%\/M
`
`Opposition No. 91169763
`Serial No. 78/582924
`
`MEMORANDUM IN SUPPORT OF
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`I.
`
`INTRODUCTION.
`
`Opposer MALIE, INC. (“Opposer”) files this memorandum in support of its Motion For
`
`Summary Judgment (the “Motion”). As discussed below, Opposer respectfully submits that the
`
`Motion must be granted and that its opposition to trademark Application Serial No. 78/582924
`
`(the “Application”), filed by Applicant MALIE KAI CHOCOLATES LLC (“Applicant”), must be
`
`sustained pursuant to Section 2(d) of the Lanharn Act because Opposer has priority of use of the
`
`mark “MALIE”, and there is a likelihood of confusion between Applicant’s mark “MALIE KAI”
`
`as applied to the chocolate goods of the Application, and Opposer’s mark “MALIE” as applied to
`
`candles and cosmetics, so Opposer will be damaged.
`
`II.
`
`FACTUAL AND PROCEDURAL BACKGROUND.
`
`This opposition is based on Opposer’s use of “MALIE” since at least as early as April 16,
`
`2004, as confirmed by U.S. Registration No. 3,044,014 (“Opposer’s Registration”) for the
`
`trademark “MALIE” (“Opposer’s Mark”) in connection with “candles” and U.S. Trademark
`
`Application Serial Number 76/621291 (“Opposer’s Application”) for Opposer’s Mark in
`
`

`
`connection with “scented room sprays, scented linen sprays, scented linen washes, soaps, and
`
`cosmetics and cleaners, namely body cleaners, body cream and perfume” in International Class
`
`3. Opposer’s Registration was issued by the U.S. Patent and Trademark Office (“USPTO”) on
`
`January 17, 2006. A true and correct copy of this registration is attached hereto as Exhibit “A”.
`
`E Declaration of Shaun Roberts (“Roberts Dec.”) and Declaration of Counsel (“Counsel Dec.”)
`
`attached hereto. Opposer’s Application was filed on November 19, 2004, and is presently
`
`involved in unrelated opposition proceedings.
`
`Opposer’s cosmetics, candles and other goods covered by Opposer’s Registration and
`
`Opposer’s Application are hereinafter collectively referred to as the “Opposer’s Goods.”
`
`As stated in the Roberts Dec., Opposer has used Opposer’s Mark in connection with
`
`scented room sprays, scented linen sprays, soaps and perfume since at least as early as April 16,
`
`2004, and it has continuously used Opposer’s Mark to the present.
`
`On March 8, 2005, Applicant filed the subject application Serial No. 78/582924
`
`(“Applicant’s Application”) to register the mark, “MALIE KAI” (“Applicant’s Mark”) in
`
`connection with “chocolate.” As stated in Applicant’s Application, Applicant has used
`
`Applicant’s Mark in connection with “chocolate” since September 2004. E Exhibit “B”
`
`attached hereto.
`
`On December 6, 2005, Applicant’s Application was published for opposition. Opposer
`
`timely filed its Notice of Opposition on February 22, 2006. Applicant filed its Answer on April
`
`18, 2006.
`
`Opposer respectfully submits that this opposition must be sustained for the reasons set
`
`forth below.
`
`

`
`III.
`
`ARGUMENT.
`
`A.
`
`Opposer Has Standing To Oppose the Application.
`
`“Standing is a threshold inquiry directed solely to establishing a plaintiff’ s interest in the
`
`proceeding. The purpose in requiring standing is to prevent litigation where there is no real
`
`controversy between the parties, i.e. where a plaintiff is no more than a mere intermeddler.”
`
`Hgjo v. Pro Football Inc., 30 USPQ 2d 1828, 1830 (TTAB 1994). “As in opposition
`
`proceedings, a Petitioner for Cancellation need not prove actual damage. Traditionally, all the
`
`petitioner need show is a likelihood of damage from the continuing registration of the mark.”
`
`E 3 McCarthy on Trademarks and Unfair Competition, § 20:46 at 20-93 (4th ed. 2005).
`
`If registration of Applicant’s Mark is allowed, Applicant would gain the prima facie exclusive
`
`right to use the “MALIE KAI” mark in commerce on all goods related to Opposer’s Goods, so
`
`that confusion in trade would result to the detriment of Opposer. As shown from the examples
`
`below, cosmetics and chocolate are related goods, as are candles and chocolate. In addition,
`
`Applicant’s Mark is pronounced identically to Opposer’s Mark, except for the omission of the
`
`word “KAI”. “Kai” means “sea” in the Hawaiian language. The Application is also unrestricted
`
`in terms of the channels of trade, and therefore, it is assumed that Applicant’s Goods are sold
`
`everywhere that is normal for such goods. These channels will be the same as those for
`
`Opposer’s related goods. Thus, if Applicant is allowed to register Applicant’s Mark, a cloud will
`
`be placed on Opposer’s title in and to Opposer’s Mark and on its right to enjoy the free and
`
`exclusive use thereof in connection with the sale of its goods, all to the damage and harm of
`
`Opposer. fiDec.
`
`In addition, registration of Applicant’s Mark would grant Applicant nationwide priority
`
`as of its filing date, 15 U.S.C. l057(c), so that Opposer would be vulnerable to infringement
`
`claims by Applicant when Opposer expands its actual use of the Mark to new territories or
`
`

`
`related goods. E 4 McCarthy on Trademarks and Unfair Competition, § 26:32 at 26-54(4th ed.
`
`2005). Accordingly, it is apparent that Opposer has standing, and in view of the fact that
`
`Applicant’s Mark so resembles Opposer’s Mark that its registration is likely to cause confusion.,
`
`the opposition must be sustained.
`
`B.
`
`The Applicable Standard for Summa1_'y Judgment.
`
`Summary judgment is an appropriate method for disposing of cases in which there are no
`
`genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter of law.
`
`E Fed. R. Civ. P. 56(c). The purpose of summary judgment is to avoid an unnecessary trial
`
`where additional evidence would not reasonably be expected to change the outcome. E Pg
`
`Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984). Opposer, as
`
`the party moving for summary judgment, has the burden of demonstrating the absence of any
`
`genuine issue of material fact and that it is entitled to summary judgment as a matter of law. E
`
`Celotex Corp. v. Catrett, 477 U.S. 317 (1986); and Sweats Fashions Inc. v. Pannill Knitting Co.
`
`1_ng, 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). However, the nonmoving party may not
`
`rest on mere denials or conclusory assertions, but rather must proffer countering evidence, by
`
`affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that there is a genuine factual
`
`dispute for trial. E TBMP § 528.01 at 500-341 (2d ed. Rev. 3/12/04).
`
`C.
`
`The Opposition Must Be Sustained Because Opposer Clearly Has Priority of
`@-
`
`As stated in the Roberts Dec. and as evidenced by the invoices attached thereto, Opposer
`
`has used Opposer’s Mark in connection with scented room sprays, scented linen sprays, soaps
`
`and perfume since at least as early as April 16, 2004. As stated in Applicant’s Application,
`
`Applicant has used Applicant’s Mark in connection with “chocolate” since September 2004. E
`
`Exhibit “B” attached hereto. Therefore, Opposer clearly has priority of use of the mark
`
`

`
`“MALlE”.
`
`D.
`
`The Opposition Must Be Sustained Because Applicant’s Mark “MALIE
`KAI” So Resembles Opposer’s Previously Registered Mark “NLALIE”, That
`Its Registration Is Likely to Cause Confusion.
`
`The opposition must be sustained under Section 2(d) of the Lanham Act because
`
`Applicant seeks registration of a mark that so resembles Opposer’s registered mark, that it is
`
`likely to cause confusion when applied to the goods. SE Safety~Kleen Corp. V. Dresser Indus,
`
`_I1_1_c_., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975). An analysis ofthe factors to
`
`consider in determining whether there is a likelihood of confusion, as enunciated in In Re E.l.
`
`DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), weighs heavily in
`
`favor of a finding that registration of Applicant’s Mark presents a likelihood of confusion.
`
`The ultimate question of the likelihood of consumer confusion has been termed
`a question of fact. Coca~Cola Company V. Snow Crest Beverages, Inc., 162
`F.2d 280 (1st Cir. 1947), cert. den.332 U.S. 809, 68 S.Ct. 110, 92 L.Ed. 386
`(1947). If labeled a mixed question or one of law, it is necessarily drawn from
`the probative facts in evidence. As so often said, each case must be decided on
`its own facts. There is no litmus rule which can provide a ready guide to all
`cases.
`
`In testing for likelihood of confusion under Sec. 2(d), therefore, the following,
`when of record, must be considered:
`
`(1) The similarity or dissimilarity of the marks in their entireties as to
`appearance, sound, connotation and commercial impression.
`(2) The similarity or dissimilarity and nature of the goods or services as
`described in an application or registration or in connection with which a prior
`mark is in use.
`
`(3) The similarity or dissimilarity of established,
`channels.
`
`likely-to-continue trade
`
`(4) The conditions under which and buyers to whom sales are made,
`“impulse” vs. careful, sophisticated purchasing.
`(5) The fame of the prior mark (sales, advertising, length of use).
`(6) The number and nature of similar marks in use on similar goods.
`(7) The nature and extent of any actual confusion.
`(8) The length of time during and conditions under which there has been
`concurrent use without evidence of actual confusion.
`
`i. e.
`
`(9) The variety of goods on which a mark is or is not used (house mark,
`“family” mark, product mark).
`
`

`
`(10) The market interface between applicant and the owner of a prior mark:
`(a) a mere “consent” to register or use.
`(b) agreement provisions designed to preclude confusion, i. e.
`limitations on continued use of the marks by each party.
`(c) assignment of mark, application, registration and good will of the
`related business.
`"
`
`(d) laches and estoppel attributable to owner of prior mark and
`indicative of lack of confusion.
`
`(11) The extent to which applicant has a right to exclude others from use of its
`mark on its goods.
`(12) The extent of potential confusion, i. e., whether de minimis or substantial.
`(13) Any
`other
`established
`fact
`probative of
`the
`effect of use.
`
`Where the Patent Office follows such process, it is not abandoning its duty
`under Sec. 2(d) or allowing individuals to take the law into their own hands.
`Consideration of evidence emanating from the only place where confusion can
`occur, i. e. the marketplace, is not related to who decides but to the process of
`deciding.
`
`E DuPont, 476 F.2d at 1361
`
`1.
`
`The similarity or dissimilarity of the marks in their entireties as to
`appearance, sound, connotation and commercial impression; and the
`number and nature of similar marks in use on similar goods.
`
`It is an indisputable fact that Opposer’s Mark and Applicant’s Mark are confusingly
`
`similar. In In re J .M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987), the Trademark Trial and
`
`Appeal Board held that “if two marks for related goods or services share the same dominant
`
`feature and the marks, when viewed in their entireties, create similar overall commercial
`
`impressions, then confusion is likely.” The Applicant’s Mark is “MALIE KAI” in standard
`
`characters, so that “MALIE” is the dominant part of the mark: “KAI” is at the end of Applicant’s
`
`Mark and is much shorter than “MALIE” E Applicant’s Application specimen attached as
`
`Exhibit “C”. “[A] subsequent user may not avoid likely confusion by appropriating another’s
`
`entire mark and adding descriptive or non—descriptive matter to it.” E J. Thomas McCarthy, 3
`
`McCarthy on Trademarks and Unfair Competition, § 23:50 at 23-158 (4th ed. 2005). The
`
`addition of the subsequent word “KAI” does not prevent likely confusion between the mark of
`
`

`
`the Application and “MALIE”, because the dominant part of the mark is “MALIE”.
`
`It should be noted that likelihood of confusion can arise not just as to source, but also, as
`
`to affiliation.
`
`_S_e_e_ 3 McCarthy on Trademarks and Unfair Competition, § 23:8 at 23-39 (4th ed.
`
`2005).
`
`
`_S_e_e_ gg_. Pebble Beach Co. V. Tour 18 I Ltd., 942 F. Supp. 1513, 1549 (S.D. Tex. 1996),
`
`afi”d, 155 F.3d 526, 48 USPQ2d 1065 (5th Cir. 1998) (“Here, the crux of plaintiffs’ service mark
`
`infringement claim is that [defendant’s] advertisements and promotional material deceive
`
`[defendant’s] customers into believing that plaintiffs gave their permission to [defendant] to use
`
`their names and golf hole designs”). This factor clearly favors Opposer.
`
`2.
`
`The similarity or dissimilarity and nature of the goods or services as
`described in an application or registration or in connection with which a
`prior mark is in use.
`
`The goods and services do not need to be identical or even competitive in order to
`
`determine that there is a likelihood of confusion. It is sufficient that the goods or services of the
`
`applicant and the registrant are so related that the circumstances surrounding their marketing are
`
`such that they are likely to be encountered by the same persons under circumstances that would
`
`give rise to the mistaken belief that they originate form the same source. _S_ee TMEP
`
`§ 1207.01(a)(i) (4th ed. Rev. 4/05).
`
`In the Application, Applicant’s goods are “chocolates.” Cosmetics companies often sell
`
`chocolates and register their marks for both cosmetics and chocolates. For example, Kanebo
`
`Kabushiki Kaisha (Kanebo Ltd.) holds Registration No. 2,941,619 for “KANEBO” in connection
`
`with “Cosmetics, namely, face cream, skin cream, face packs, skin lotion, milky face lotion, lip
`
`cream, make-up base, skin cleansing preparations, soaps, skin whitening preparations,
`
`foundation make-up, face powder, bath powder, eye make-up, eye liner, mascara, eyebrow
`
`pencils, lipsticks, cheek color, nail care preparations, namely, nail color and cuticle coat,. . .” in
`
`International Class 3, and in connection with “. . .chocolate. . .” in International Class 30.
`
`

`
`In fact, many cosmetics companies use chocolate as an ingredient in their products. For
`
`example, Origins Natural Resources, Inc. (“Origins”) as a “Cocoa Therapy” product line that
`
`incorporates cocoa into its cosmetics (cocoa is a main ingredient in chocolate). Origins holds
`
`Registration No. 1,855,053 for “ORIGINS” in connection with “face makeup, face powder,
`
`lipstick, blusher, mascara, eye makeup pencils, eye shadow, face and body moisturizers,
`
`cleansers, toilet soap, bath additives, bath powder, suntanning and suncare products, skin
`
`treatment cleanser, creams and lotions” in International Class 3, and is also the holder of U.S.
`
`Trademark Application Serial No. 78/485912 for “SENSORY THERAPY” in connection with
`
`“Chocolate and chocolate candy” in International Class 30.
`
`Many companies that sell chocolate products also sell candles. Hershey Foods
`
`Corporation is the holder of Registration No. 863,607 for “HERSHEY’S KISSES” in connection
`
`with “Generally conical pieces of chocolate candy” in International Class 30, and Registration
`
`No. 2,757,584 for “HERSHEY’S KISSES” in connection with “candles” in International Class 4.
`
`The Madden Corporation is the holder of Registration No. 2,885,183 for “ISLAND
`
`PLANTATIONS” in connection with “candles namely, decorative and scented candles” in
`
`International Class 4, and in connection with “. . .chocolate syrup. . .chocolate confections,
`
`namely candies, teas, fruitcakes and nut cakes” in International Class 30.
`
`Opposer currently uses Opposer’s Mark in connection with “candles” and “scented room
`
`sprays, scented linen sprays, scented linen washes, soaps, and cosmetics and cleaners, namely
`
`body cleaners, body cream and perfume.” E Roberts Dec.
`
`As shown from the registrations discussed above, cosmetics and chocolate are related
`
`products, as are candles and chocolate. These third-party registrations of marks used in
`
`connection with the same or similar goods as those of Opposer and Applicant have probative
`
`

`
`value to the extent that they serve to suggest that the goods listed therein, namely cosmetics,
`
`candles and chocolates, are of a kind that may emanate from a single source.
`
`_S_e_e In re Infinity
`
`Broad. Corp, 60 USPQ2d 1214, 1217-1218 (TTAB 2001). As noted above, the Opposers goods
`
`are related to chocolate in that there exist many cosmetics companies that sell chocolates and
`
`chocolate companies that sell candles. Additionally, Opposer’s Goods and will likely target the
`
`same consumers as Applicant’s goods.
`
`Therefore, the closeness of the products with which the Opposer’s Mark is used, and with
`
`which Applicant’s Mark is allegedly used, weighs in favor of a finding of likely confusion.
`
`_§e_e In Re Martin’s Famous Pastg Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
`
`1984). This factor clearly favors Opposer.
`
`3.
`
`The similarity or dissimilarity of established, likely—to—continue trade
`channels.
`
`The Application does not contain any restrictions as to channels of trade, so that the trade
`
`channels must be deemed to be those normal for the trade.
`
`_S_e_e Kangol Ltd. v. KangaROOS
`
`
`U.S.A. 974 F.2d 161, 23 USPQ2d 1945 (Fed Cir. 1992). As stated above, Kanebo Kabushiki
`
`Kaisha (Kanebo Ltd.) sells both cosmetics and chocolates and Hershey Foods Corporation sells
`
`both chocolates and candles, so the cosmetics, candles and chocolate channels of trade clearly
`
`intersect. For example, gift shops sell both chocolates and candles. Country Cow Creamery,
`
`LLC is the holder of Registration No. 3,043,921 for “COUNTRY COW” in connection with
`
`“Retail store service featuring. . .chocolates. . .candles. . .perfumes, cosmetics, soaps, hand creams,
`
`powders, bath salts, bath oils...” in International Class 35. Thus, the goods of Applicant and
`
`Opposer share the same channels of trade. This factor clearly favors Opposer.
`
`4.
`
`The conditions under which and buyers of whom sales are made, i.e.
`“impulse” vs. careful, sophisticated p_urchasing.
`
`Both Applicant’s goods and Opposer’s Goods are relatively inexpensive so that buyers of
`
`

`
`Applicant’s goods may well overlook any potential distinctions. This factor clearly favors
`
`Opposer.
`
`5.
`
`The fame of the prior mark.
`
`This factor weighs in favor of Opposer as it has advertised Opposer’s Goods since
`
`April 2004 and Opposer had gained favorable nationwide publicity before the Application was
`
`filed. E Roberts Dec. Opposer is not aware of any fame of Applicant’s mark in connection
`
`with “chocolate.” This factor clearly favors Opposer.
`
`6.
`
`The number and nature of similar marks in use on similar goods.
`
`The word “MALIE” is so rare that it presently is found in the TESS database in only Q (4) live
`
`applications or registrations — and all except Applicant’s Application belong to Opposer. E
`
`Counsel’s Dec. and TESS website search results attached hereto as Exhibit “D”. This factor
`
`clearly favors Opposer.
`
`7.
`
`The nature and extent of any actual confusion.
`
`Opposer and Applicant share a common vendor, S. Walter Packaging Corp. E Roberts
`
`Dec. In November 2005, Opposer called S. Walter Packaging Corp. to place an order for retail
`
`packaging. E Roberts Dec. Despite being a customer since 2004, as Opposer proceeded to
`
`place the order, the customer service representative said “Oh, I see you right here in our system,
`
`Malie Kai Chocolates.” E Roberts Dec. Opposer had to correct the customer service
`
`representative and inform the representative that Malie, Inc. and Malie Kai Chocolates are not
`
`the same entity or related entities. E Roberts Dec. This factor clearly favors Opposer.
`
`8.
`
`The length of time during and conditions under which there has been
`concurrent use without evidence of actual confusion.
`
`Actual confusion started at least as early as November 2005, so there was a very short
`
`time of concurrent use without confusion. This factor clearly favors Opposer.
`
`10
`
`

`
`9.
`
`The variety of goods on which mark is or is not used (house mark,
`“family” mark, product mark).
`
`Opposer uses “MALIE” for a broad variety of cosmetics and for candles. This factor
`
`strongly favors Opposer.
`
`10.
`
`The market interface between applicant and owner of a prior mark.
`
`DuPont lists several possible market interfaces, such as: (1) consent to register or use; (2)
`
`contractual provisions designed to preclude confusion; (3) assignment; and (4) laches and
`
`estoppel attributable to the challenger that would indicate lack of confusion. E DuPont, 476
`
`F.2d at 1361, 177 USPQ at 567. None of these factors is applicable here as Opposer timely filed
`
`this opposition and there is no contractual relationship between the parties. This factor clearly
`
`favors Opposer.
`
`11.
`
`The extent to which applicant has a right to exclude others from use of its
`mark on its goods.
`
`This factor clearly favors Opposer as Applicant has no rights to exclude others from use
`
`of Applicant’s Mark, and even in connection with chocolates, Opposer has priority because of its
`
`prior actual use for related goods.
`
`12.
`
`The extent of potential confusion, i.e., whether de minimis or substantial.
`
`This factor favors Opposer in view of the strong overlap in the chocolate and cosmetics
`
`markets (e. g. Kanebo Kabushiki Kaisha (Kanebo Ltd.)) and in chocolate and candles (e. g.
`
`Hershey Foods Corporation). Further, the actual confusion described above clearly proves that
`
`there is a great extent of potential confusion. This factor clearly favors Opposer.
`
`13.
`
`Any other established fact probative of the effect of use.
`
`Opposer has expended considerable sums to market and promote its goods under the
`
`“MALIE” mark and has gained substantial nationwide publicity from the remote island of Kauai
`
`before the Application was filed. This factor clearly favors Opposer.
`
`11
`
`

`
`13.
`
`Any other established fact probative of the effect of use.
`
`Opposer has expended considerable sums to market and promote its goods under the
`
`“MALIE” mark and has gained substantial nationwide publicity from the remote island of Kauai
`
`before the Application was filed. This factor clearly favors Opposer.
`
`14.
`
`Doubt resolved in favor of Registrant.
`
`If there is any doubt as to whether the applied for mark presents a likelihood of
`
`confusion, that doubt must be resolved against the newcomer, which in this case is Applicant.
`
`Sge In Re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d (Fed. Cir. 1988). The equities
`
`do not favor the newcomer. Accordingly, the Board should, and must, sustain this opposition.
`
`IV.
`
`CONCLUSION.
`
`For the foregoing reasons, Opposer respectfully requests that the Motion be granted and
`
`that its opposition be sustained.
`
`DATED:
`
`Honolulu, Hawaii,
`
`JV /r
`
`, 2006.
`
`Martin E. Hsia, Reg. No. 32,471
`CADES SCHUTTE
`
`A Limited Liability Law Partnership LLP
`1000 Bishop Street, Suite 1200
`Honolulu, HI 96813
`
`Tel: (808) 521-9200
`
`Attorneys for Opposer
`MALIE, INC.
`
`12
`
`

`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that a true and correct copy of the foregoing was mailed
`
`this
`
`5% day of
`
`I Z
`
`, 2006 to: Chad M. Iida, Esq., Godbey Griffiths Reiss
`
`Chong, 1001 Bishop Street, Suite 2300, Pauahi Tower, Honolulu, HI 96813.
`
`/2[\."-—~c_,’/l’\_’
`
`Martin E. Hsia, Reg. No. 32,471
`CADES SCHUTTE
`
`A Limited Liability Law Partnership LLP
`1000 Bishop Street, Suite 1200
`Honolulu, HI 96813
`
`Tel: (808) 521-9200
`
`Attorneys for Opposer
`MALIE, INC.
`
`1manageDB:646433.1
`
`

`
`EXHIBIT A
`
`

`
`Int. C1.: 4
`
`Prior U.S. Cls.: 1, 6 and 15
`United States Patent and Trademark Office
`
`Reg. NO. 3,044,014
`Registered Jan. 17,2006
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`MALIE
`
`MALIE, INC. (HAWAII CORPORATION)
`
`P- 0- BOX 701
`
`KALAHEO’ H1967“
`
`FOR: CANDLES, IN CLASS 4 (US CLS. 1, 6 AND
`15)_
`
`FIRST USE 4-16-2004; IN COMMERCE 4-20-2004.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`"MALIE" MEANS "CALM QUIET SERENE” IN
`THE HAWAIIAN LANGUAGE.
`
`SER. NO. 76-621,290, FILED 11-19-2004.
`
`NORA BUCHANAN WILL, EXAMINING ATTOR-
`NEY
`
`

`
`EXHIBIT B
`
`

`
`Trademark/Service Mark Application, Principal Register
`
`Page 1 of 5
`
`II ocument Description: Trademark Application
`
`Mail / Create Date: 08-Mar-2005 You are currently on page 1
`
`of 3
`
`PTO Form ‘I478 (Rev 4/98)
`OMB Control #065‘I«0O09 (Exp. 09/30/2008)
`
`Trademark/Service Mark Application, Principal Register
`
`,.,M,,,,,..,---....,,....-.4 ....... .».-.».w--.,«—;
`
`fbx ...».- ~.v>»~ —_.~.,;.
`
`.- ,.-.... ..—..—;.»».-».,~»»w»4-~a.._~.—w»:i .\,- ,-.-A.-N.,;4:....it.__...~......a;m.- «..—».—.~».-T r—~.,».~...,.... ..‘.. -..,..-,.....--.—-..~..-...~.~ »~«;-,~~.,-...,.....,.......,... »...,.....»........~. M.
`
`Serial Number: 78582924
`
`Filing Date: 03/08/2005
`
`
`
`
`
`
`
`Input Field
`
`MARK SECTION
`
`MARK
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`LITERAL ELEMENT
`
`MARK STATEMENT
`
`OWNER SECTION
`
`NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`The mark consists of standard characters,
`without claim to any particular font, style, size,
`or color.
`
`Malie Kai Chocolates LLC
`
`P.O. Box 1146
`
`Honolulu
`
`Hawaii
`
`96807
`
`United States
`
`808 524 1800
`
`mhornor@ahfi.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`LEGAL ENTITY SECTION
`
`
`
`
`
`
`
`http://portal.uspto.goV/external/PA_1_0_1ET/OpenServletWindow?serialNumber=785 82924&scan. .. 5/3/2006
`
`

`
`Trademark/Service Mark Application, Principal Register
`
`Page 2 of 5
`
`TYPE
`
`CORPORATION
`
`GOODS AND/OR SERVICES SECTION
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`FILING BASIS
`
`030
`
`chocolate
`
`Section 1(a)
`
`FIRST USE AN Y WHERE DATE
`
`FIRST USE IN COMMERCE DATE
`
`At least as early as 09/00/2004
`
`At least as early as 09/21/2004
`
`SPECIMEN FILE NAME(S)
`
`\.\.T_IC 1y\7.8
`XIZ85
`
`SPECIMEN DESCRIPTION
`
`sales flyer
`
`ADDITIONAL STATEMENTS SECTION
`
`TRANSLATION
`
`SIGNATURE SECTION
`
`SIGNATURE
`
`SIGNATORY NAME
`
`SIGNATORY DATE
`
`SIGNATORY POSITION
`
`PAYMENT SECTION
`
`NUMBER OF CLASSES
`
`NUMBER OF CLASSES PAID
`
`SUBTOTAL AMOUNT
`
`TOTAL AMOUNT
`
`ATTORNEY
`
`The foreign wording in the mark translates into
`.
`English as calm sea.
`
`/mark hornor/
`
`mark c. hornor
`
`03/08/2005
`
`attorney
`
`325
`
`325
`
`Alston Hunt Floyd & Ing
`1001 Bishop Street Suite 1800
`Honolulu
`Hawaii
`96813
`
`
`
`
`
`
`
`
`
`http://portal.uspto.goV/extemal/PA_l_0_l ET/OpenS erVletWindow?serialNumbe1=785 82924&scan. .. 5/3/2006
`
`

`
`Trademark/Service Mark Application, Principal Register
`
`Page 3 of 5
`
` COUNTRY
`
`PHONE
`
`EMAIL
`
`United States
`
`808 524 1800
`
`mhornor@ahfi.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`es
`
`ATTORNEY DOCKET NUMBER
`
`malie kai chocolates
`
`OTHER APPOINTED ATTORNEY(S)
`
`Lea Hong
`
`CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`Mark C. Hornor
`
`Alston Hunt Floyd & Ing
`
`1001 Bishop Street Suite 1800
`
`Honolulu
`
`Hawaii
`
`96813
`
`United States
`
`808 524 1800
`
`mhornor@ahfi.con1
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`FILING INFORMATION
`
`SUBMIT DATE
`
`Tue Mar 08 17:28:03 EST 2005
`
`TEAS STAMP
`
`USPTO/BAS-66175653-200503
`08172803289686-785 82924-2
`00583fed083bbc656a241a139
`92f68a2-CC-496-2005030817
`205 8294522
`
`
`
`
`
`«.,..»..-.»,.-,... .. ............‘.‘....m-.»............=.._.,.....‘...,,.»,.. AK ,m....u.w.,.«,--,....m.v...., »....z.......,~....,..,....... .-\y~»~a.x«vo4~.n .«».-...»..x...»..‘.»....4~.v:x.......u»a.....t...~~...,.««;wm.~.-.... ¢....l«...»-«..»,—.—..«...,.».«...»,;.; .-.,sg.,»...2..‘.‘....x-,Ma..,........x...;....A..,....».,,,,,, .~«..<..l..»»»»»»»>*_X ...m.. ,, .4
`
`http://portal.uspto.goV/external/PA_1_0_1 ET/OpenServletWindow?serialNun1ber=785 82924&scan. .. 5/3/2006
`
`

`
`Trademark/Service Mark Application, Principal Register
`
`Page 4 of 5
`
`PTO Form 1478 (Rev 4/98)
`OMB Control #0651-0009 (Exp. 09/30/2008)
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 78582924
`
`Filing Date: 03/08/2005
`
`To the Commissioner for Trademarks:
`
`MARK: (Standard Characters, see maiik)
`
`The mark consists of standard characters, without claim to any particular font, style, size, or color.
`
`The literal element of the mark consists of MALIE KAI.
`
`The applicant, Malie Kai Chocolates LLC, a corporation of Hawaii, residing at P.O. Box 1146 , Honolulu,
`Hawaii, United States, 96807, requests registration of the trademark/service mark identified above in the
`United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946
`(15 U.S.C. Section 1051 et seq.), as amended.
`
`The applicant, or the applicant's related company or licensee, is using the mark in commerce, and lists below
`the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the
`mark on or in connection with the identified goods and/or services. 15 U.S.C. Section 105 1(a), as amended.
`
`International Class 030: chocolate
`
`In International Class 030, the mark was first used at least as early as 09/00/2004, and first used in commerce
`at least as early as 09/21/2004, and is now in use in such commerce. The applicant is submitting or will
`submit one specimen for each class showing the mark as used in commerce on or in connection with any item
`in the class of listed goods and/or services, consisting of a(n) sales flyer.
`
`.Sp,e_<:i1nll
`
`The foreign wording in the mark translates into English as calm sea.
`
`The applicant hereby appoints Mark C. Homor and Lea Hong of Alston Hunt Floyd & Ing, 1001 Bishop
`Street Suite 1800 , Honolulu, Hawaii, United States, 96813 to submit this application on behalf of the
`applicant. The attorney docket/reference number is malie kai chocolates.
`
`The USPTO is authorized to communicate with the applicant or its representative at the following email
`address: mhornor@ahfi.com.
`
`A fee payment in the amount of $325 will be submitted with the application, representing payment for 1 class
`(es).
`
`Declaration
`
`The undersigned, being hereby warned that willful false statements and the like so made are punishable by
`
`http2//portal.uspto.gov/external/PA_l_0_l ET/OpenServletWindow?serialNumber=785 82924&scan. .. 5/3/2006
`
`

`
`Trademark/Service Mark Application, Principal Register
`
`Page 5 of 5
`
`fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the
`like, may jeopardize the validity of the application or any resulting registration, declares that he/she is
`properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be
`the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15
`U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of
`his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in
`commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used
`on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or
`to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on
`information and belief are believed to be true.
`
`Signature: /mark homor/ Date: 03/08/2005
`Signatory's Name: mark c. hornor
`Signatory's Position: attorney
`
`Mailing Address:
`Mark C. Hornor
`
`1001