Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA657473
`ESTTA Tracking number:
`02/23/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91206960
`Plaintiff
`BeautyBank Inc.
`JESSICA HEISS
`THE ESTEE LAUDER COMPANIES INC
`767 FIFTH AVENUE, LEGAL DEPARTMENT
`NEW YORK, NY 10153
`UNITED STATES
`jheiss@estee.com, uspto@estee.com
`Response to Board Order/Inquiry
`MARK D. PASSLER
`ip@akerman.com
`/Mark D. Passler/
`02/23/2015
`10647-2.pdf(349183 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 85/489,368 for the mark FLIRTRESS
`Application filed on December 7, 2011
`Published in the Ofiicial Gazette on May 15, 2012
`Opposition No. 91206960 filed on September 12, 2012
`____________________________________________________________ .._X
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`BEAUTYBANK INC.,
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`RESPONSE TO TTAB ORDER,
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`: :
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`Opposer,
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`— against -
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`: MAILED FEBRUARY 6, 2015
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`KUMAR RAMANI,
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`Applicant.
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`_____________________________________________________________..X
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`George C. Pologeorgis, Interlocutory Attorney
`United States Patent and Trademark Office
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`Trademark Trial and Appeal Board
`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`In a communication dated February 6, 2015, the United States Patent and Trademark Office,
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`Trademark Trial and Appeal Board inquired as to the status of the civil action captioned BeautyBank
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`Inc. V. Kumar Ramani, et al., Civ. Action No. 10-cv—955(KPF)(GWG) (the “Civil Action”), which
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`occasioned the current suspension of the above—captioned opposition proceeding.
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`Opposer respectfully submits that the District Court has issued a decision in favor of Opposer
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`in that civil action. A copy of the Judgment and Order of District Court is attached. The time period
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`for the Applicant to file an appeal in the civil action has expired, and no appeal was filed.
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`{30397477;1}
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`

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`Accordingly, Opposer requests that the Board take appropriate action in accordance with the
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`District Court findings in this matter.
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`Dated: February 23, 2015
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`Respectfully submitted,
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`AKERMAN LLP
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`(f/k/a AKERMAN SENTERFITT LLP)
`
`///7&4/“
`
`Mark D. Passler
`Jennifer P. Rabin
`
`Rachel B. Rudensky
`777 South Flagler Drive
`Suite 1100 West Tower
`
`West Palm Beach, FL 33401
`Telephone: (561) 653-5000
`Fax:
`(561) 653-5333
`
`Ira S. Sacks
`
`666 Fifth Avenue, 20”‘ Floor
`New York, NY 10103
`
`Telephone: (212) 880-3800
`Fax:
`(212) 905-6458
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`ATTORNEYS FOR OPPOSER
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`{3o397477;1}
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 23, 2015, a true and complete copy of the foregoing
`Response to TTAB Order, Mailed February 6, 2015, was served on Applicant, Kumar Ramani, via
`first class mail, postage prepaid, to:
`
`Kumar Ramani
`PO. Box 805
`Princeton Junction
`
`New Jersey 08550-0805
`United States
`
`{30397477;l}
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`

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`Case 1:10-cv-OO955—KPF—GWG Document 318 Filed 0 glgigc figlge 1 of 5
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`‘
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`DOCUMENT _
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`.........................................................._-)(
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`ELECTRONICALLY FILED
`Doc rt;
`DATE F1LEDI
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`BEAUTYBANK, lNC.,
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`Plaintiff,
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`10 CIVIL 955 (KPF)
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`—against-
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`JUDGMENT
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`HARVEY PRINCE LLP, et al.,
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`Defendants.
`.......................................................... --x
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`Whereas the above—entitled action having been assigned to the Honorable Katherine Polk
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`Failla, United States District Judge, and the matter thereafter having been brought to trial on October
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`16, 2013, and at the conclusion of the trial, on October 23, 2013, the jury having reached a verdict
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`in favor ofPlaintiff as against Defendants, awarding Plaintiff compensatory damages in the amount
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`of$ 120,000.00, and punitive damages in the amount of$l,l00,000.00; and,
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`Whereas, on April
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`I, 2014, at the conclusion of a Court conference, the court issued a
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`decision on the post—trial motions filed by Plaintiff and Defendant Rarnani; denying in its entirety,
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`Defendant Ramani’s post—trial motions seeking judgment as a matter of law under Fed. R. Civ. P.
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`(S0)(b), a new trial under Fed. R. Civ. P. 59, and a declaratory judgment under Fed.R. Civ. P. 60;
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`and in the April 1, 2014 decision, the Court (i) orderingthe seizure and destruction of all infringing
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`Eau Flirt Goods (as defined in the Coui“t’s April 22, 2014 Order) pursuant to 15 U.S.C. § 1 l 18; (ii)
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`permanently enjoining and restraining Defendants from selling their infringing Eau Flirt Goods and
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`disseminating the false advertisements relating to their Eau Flirt fragrance pursuant to 15 U.S.C. §
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`1 l 16 and GBL § 349; (iii) enhancing Plaintiffs compensatory damages award to $3 60,000 pursuant
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`to 15 U.S.C. §l l l7(a); and (iv) awarding Plaintiffattorneys’ fees in the amount of$l,130,739.23;
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`and
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`

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`Case 1:10-cv-00955-KPF—GWG Document 318 Filed 04/25/14 Page 2 of 5
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`Whereas, on April 22, 2014, the Court having rendered its Order (Doc. # 317), finding
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`Defendants liable to Plaintiff for (i) trademark infringement in violation of 15 U.S.C. § 1114; (ii)
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`false designation of origin in violation of 15 USC. § 1125(a); (iii) false advertising in violation of
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`15 U.S.C. §l l25(a); (iv) trademark infringement in violation ofthe common law of the State of
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`New York; (V) unfair competition in violation of the common law ofthe State ofNew York; and (vi)
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`deceptive acts and practices in violation of GBL § 349; ordering the seizure and destruction of all
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`Eau Flirt Goods, signs, prints, literature, and advertisements containing the Eau Flirt name in
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`Defendants’ possession, custody, or control, or in the possession, custody, or control ofDefendants’
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`officers, employees, agents, servants and any and all persons acting in concert with any of them;
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`permanently enjoining and restraining Defendants from selling their infringing Eau Flirt Goods and
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`disseminating the false advertisements relating to their Eau Flirt fragrance; awarding Plaintiff an
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`enhanced compensatory damages award to $3 60,000.00, punitive damages in the amount of
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`$1,100,000.00, attorneys‘ fees in the amount of $1,130,739.23, and costs in the amount of
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`$130,584.62; and awarding Plaintiff pre~judgrnent interest on the compensatory damage award at
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`the rate of 9%, compounded annually; and the Court, instructing the Clerk of the Court to calculate
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`the interest due to Plaintiff, and to close this case, it is,
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`ORDERED, ADJUDGED AND DECREED: That for the reasons stated in the
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`Court’s Order (Doc. # 317), dated April 22, 2014, Defendants are found to be liable to Plaintiff for
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`(i) trademark infringement in violation of 15 U.S.C. § 1114; (ii) false designation of origin in
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`violation of 15 U.S.C. § l125(a); (iii) false advertising in violation of 15 U.S,C. §ll25(a); (iv)
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`trademark infringement in violation of the common law of the State of New York; (v) unfair
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`competition in violation of the common law of the State ofNew York; and (vi) deceptive acts and
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`practices in violation of GBL § 349; within five (5) business days from the entry of this Order,
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`Defendants are required to turn over to Plaintiff for destruction, at Defendants’ expense, all Eau Flirt
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`

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`Case 1:10—cv—O0955-KPF-GWG Document 318 Filed 04/25/14 Page 3 of 5
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`Goods in Defendants’ possession, custody, or control, or in the possession, custody, or control of
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`Defendants’ officers, employees, agents, servants, and any and all persons acting in concert with any
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`ofthem, including the packaging, labels, bottles, wrappers, containers, molds, and any and all other
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`articles containing the Eau Flirt name; within five (5) business days from the entry of this Order,
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`Defendants are required to turn over to Plaintiff for destruction, at Defendants’ expense, all signs,
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`prints, literature, and advertisements containing the Eau Flirt name in Defendants’ possession,
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`custody, or control, or in the possession, custody, or control of Defendants’ officers, employees,
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`agents, servants and any and all persons acting in concert with any of them; effective immediately,
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`Defendants are permanently enjoined and restrained, together with their affiliates, divisions, officers,
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`directors, principals, servants, employees, successors, agents, and assigns, and all those in active
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`concert or participation with them from: a) imitating, copying, or making unauthorized use of
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`Plaintiffs Flirt Trademarks (as defined in the Court’s April 22, 2014 Order); b) manufacturing,
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`importing, exporting, distributing, circulating, selling, offering for sale,_advertising, promoting, or
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`displaying the Eau Flirt Goods, or any other products bearing any unauthorized reproduction,
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`counterfeit, copy, or colorable imitation of Plaintiffs Flirt Trademarks, either individually or in
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`conj unction with other words, marks, or designs; c) using any mark confusingly similar to any of
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`the Plaintiffs Flirt Trademarks in connection with the manufacture, promotion, advertisement,
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`display, sale, offering for sale, production, import, export, circulation, or distribution of any product
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`in such manner as to relate or connect, or tend to relate or connect, such product in any way with
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`Plaintiff or to any goods sold, sponsored, approved by, or connected with Plaintiff; d) engaging in
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`any other activity constituting unfair competition with Plaintiff, or constituting an infringement of
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`any of Plaintiffs Flirt Trademarks or Plaintiff’ s rights in, or its rights to use or exploit such
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`trademarks, or the reputation and the goodwill associated with Plaintiffs Flirt Trademarks; e)
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`making any statement or representation whatsoever, with respect to Ban Flirt Goods that falsely
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`

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`Case 1:10-cv-00955-KPF-GWG Document 318 Filed 04/25/14 Page 4 of 5
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`designates Plaintiff as the origin of the goods, or that is false or misleading with respect to Plaintiff;
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`1) making any statement, representation, or advertisement that (i) Eau Flirt fragrance is clinically
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`proven to make men flirt with women, (ii) Eau Flirt fragrance contains no artificial colorings, (iii)
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`Eau Flirt fragrance is based on research from leading dermatologists, psychologists, physicians, and
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`doctors, and (iv) Eau Flirt fragrance contains fragrance notes of pumpkin pie and lavender; g)
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`making any statement, representation, or advertisement that gives the impression to a reasonable
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`consumer that (1') Eau Flirt fragrance is clinically proven to make men flirt with women, (ii) Eau
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`Flirt fragrance contains no artificial colorings, (iii) Eau Flirt fragrance is based on research from
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`leading dermatologists, psychologists, physicians, and doctors, and (iv) Eau Flirt fragrance contains
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`fragrance notes of pumpkin pie and lavender; and h) engaging in any other activity, including the
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`effectuation of assignments or transfers oftheir interests in marks confusingly similar to Plaintiffs
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`Flirt Trademarks, the formation of other corporations, partnerships, associations, or other entities,
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`or the utilization of any other devices, for the purpose of circumventing, evading, avoiding, or
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`otherwise violating the prohibitions set forth in subsections (a) through (g) above; Plaintiff is
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`entitled to and shall, receive and recover from Defendants, jointly and severally, the following
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`amounts:
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`$360,000.00
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`$1,100,000.00
`$1,130,739.23
`$130,584.62;
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`
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`Compensatory Damages
`(inclusive of enhancement)
`Punitive Damages
`Attorneys’ Fees
`Costs
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`
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`Plaintiff is entitled to and shall receive and recover from Defendants, jointly and severally,
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`pre—judgment interest on the compensatory damage award at the rate of 9%, compounded
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`annually, based on the following schedule, with the amount accruing until the date ofjudgment:
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`

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`Case l:10—cv-00955-KPF-GWG Document 318 Filed 04/25/14 Page 5 of 5
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`9% Interest Begins Accruing
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`January 1, 2010
`January 1, 201 1
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`January 1, 2012
`January 1, 2013
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`1
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`i‘
`‘t
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`Amount To Accrue Upon
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`$150,000
`$75,000
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`$75,000
`$60,000;
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`the total amount of pre-j udgment interest on the compensatory damage award at the rate of 9%
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`compounded annually awarded to Plaintiff is $116,397.13; and pursuant to 28 U.S.C. § 1961, the
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`total amount shall bear interest in accordance with 28 U.S.C. § 1961 until satisfied in full;
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`accordingly, the case is closed.
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`DATED: New York, New York
`April 25, 2014
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`So Ordered:
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`RUBY J. KRAJICK
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`.m gal: fig
`United States District Judge
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`KATHERINE POLK FAJLLA
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`BY:
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`/"’
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`Clerk of Court
`‘
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`/.o/»w77€2;
`Deputy C 'erk
`/