Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA656180
`ESTTA Tracking number:
`02/17/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91207687
`Plaintiff
`BeautyBank Inc.
`MARK D PASSLER
`AKERMAN SENTERFITT
`222 LAKEVIEW AVENUE, 4TH FLOOR
`WEST PALM BEACH, FL 33401
`UNITED STATES
`ip@akerman.com
`Response to Board Order/Inquiry
`MARK D. PASSLER
`ip@akerman.com
`/Mark D. Passler/
`02/17/2015
`10647-1.pdf(403513 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`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. 85/074,416 for the mark HARVEY PRINCE EAU FLIRT
`Application filed on June 29, 2010
`Published in the Oflicial Gazette on June 26, 2012
`Opposition No. 91207687 filed on October 24, 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 4, 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 4, 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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`{3o332519;2}
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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 17, 2015
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`Respectfully submitted,
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`AKERMAN LLP
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`(f/k/a AKERMAN SENTERFITT LLP)
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`/
`
`//7/7fl//7/
`
`ark D. Passler
`Jennifer P. Rabin
`
`Rachel B. Rudensky
`777 South Flagler Drive
`Suite 1 100 West Tower
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`West Palm Beach, FL 33401
`Telephone: (561) 653-5000
`Fax:
`(561) 653-5333
`
`Ira S. Sacks
`666 Fifth Avenue, 20”‘ Floor
`New York, NY l0l03
`
`Telephone: (212) 880-3800
`Fax:
`(212) 905—6458
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`ATTORNEYS FOR OPPOSER
`
`{30332519;2}
`
`

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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 17, 2015, a true and complete copy of the foregoing
`Response to TTAB Order, Mailed February 4, 2015, was served on Applicant, Kumar Ramani, via
`first class mail, postage prepaid, to:
`
`Kumar Ramani
`P.O. Box 805
`Princeton Junction
`
`New Jersey 08550-0805
`United States
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`
`
`{3o332519;2}
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`

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` Case l:10—cv-D0955-KPF—GWG Document 318 Filed O {zjgigc gglge 1 of 5
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`..........................................................fix
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`DOCUMENT
`§%EcCl§R0NICALLY FILED
`DATE FILED: April 252 2014
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`BEAUTYBANK, INC,
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`Plaintiff,
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`l0
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`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 Poik
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`Faiila, 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
`in favor ofPlaintiffas against Defendants, awarding Plaintiffcompensatory damages in the amount
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`of SE 120,000.00, and punitive damages in the amount of $1,100,000.00; and,
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`Whereas, on April 1, 2014, at the conclusion of a Court conference, the court issued a
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`decision on the post-trial motions flied by Piaintiff and Defendant Ramani; 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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`(50)(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) orderingithe seizure and destruction of all infringing
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`Bau Flirt Goods (as defined in the Cou1“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 soiling 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 1 l6 and GBL § 349; (iii) enhancing Plaintiff’ s compensatory damages award to $360,000 pursuant
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`to 15 UrS.C. §l l 17(a); and (iv) awarding Plaintiff attorneys’ fees in the amount o1‘$l,130,739.23;
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`and
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`

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`Case 1:10-cv~0O955—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 liabie to Plaintiff for (i) trademaric infringement in violation of 15 U.S.C. § 1114; (ii)
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`false designation of origin in vioiation of 15 USC. § 1125(a); (iii) false advertising in violation of
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`15 U.S.C. §1125(a); (iv) trademark infringement in violation of the 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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`ofticers, 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 rotating 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 prejudgment 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 Aprii 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 1d U.S.C. § 1125(a); (iii) false advertising in violation of 15 U.S.C. §l 125(3); (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 of New York; and (vi) deceptive acts and
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`practices in violation of GEL § 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 Ban Flirt
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`

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`Case 1:10—cv~OO955-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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`of them, 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 Plaiiitiff for destruction, at Defendants’ expense, all signs,
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`prints, iiterature, 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 thorn; 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 fiom: 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 Fan Flirt Goods, or any other products bearing any unauthorized reproduction,
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`counterfeit, copy, or colorahle imitation of Plaintiff’ s Flirt Trademarks, either individually or in
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`conjunction 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 Plaintiff’ s Flirt 'l‘rademarl<s or Plaintiffs rights in, or its rights to use or exploit such
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`trademarks, or the reputation and the goodwill associated with Piaintiffs Flirt Trademarks; e)
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`making any statement or representation whatsoever, with respect to Eau Flirt Goods that falsely
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`

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`Case 1:lO~cv-O0955—KPF—GWG Document 318 Filed 04/25/14 Page 4 of 5
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`designates Plaintiff as the origin ofthe goods, or that is false or misleading with respect to Plaintiff;
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`i) 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 (i) 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 of their interests in marks confusingly similar to Plaintiffs
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`Flirt "I‘radernarl<s, 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 vioiating the prohibitions set forth in subsections (a) through (g) above; Plaintiff is
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`entitled to and shali, receive and recover from Defendants, jointly and severally, the following
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`amounts:
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`Compensatory Damages W
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`
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`$3 60,000.00
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`$1,100,000.00
`$1,130,739.23
`$l30,584,62;
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`M
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`b
`
`
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`u
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`(inclusive of enhancement)
`Punitive Daniages
`Attorneys’ Fees
`Costs
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`Plaintiff is emitted to and shall receive and recover from Defendants, jointly and severally,
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`prejudgment 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 1:10—cv—OO955-KPF—GWG Document 318 Filed 04/25/14 Page 5 of 5
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`
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`9% Interest Begins Accruing
`Amount To Accnie Upon
`January 1, 2010
`$150,000
`January 1, 2011
`$75,000
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` January 1, 2012
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`January 1, 2013
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`_
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`
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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 11.8.0 23‘ 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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`S0 Ordered:
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`RUBY J. KRAJICK
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`/5'5
`United States District Judge
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`KATHERINE POLK FAILLA
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`V
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`BY:
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`/,
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`Cierk ofCourt
`,“
`Depdtyyllerk
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`/K?/tw/.62,
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`.