Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA630465
`ESTTA Tracking number:
`10/01/2014
`
`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
`Granted to Date
`of previous ex-
`tension
`Address
`
`Kai LLC
`10/01/2014
`
`3806 Cross Creek Road, Suite F
`Malibu, CA 90265
`UNITED STATES
`
`Attorney informa-
`tion
`
`Shaun Murphy
`Slovak Baron Empey Murphy & Pinkney LLP
`1800 East Tahquitz Canyon Way
`Palm Springs, CA 92262
`UNITED STATES
`murphy@sbemp.com, m3btmks@me.com Phone:7603222275
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`86104014
`10/01/2014
`
`Publication date
`Opposition Peri-
`od Ends
`
`06/03/2014
`10/01/2014
`
`Mariner Biomedical, Inc.
`6276 San Ignacio Avenue, Suite A
`San Jose, CA 95119
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Non-medicated skin care preparations;
`non-medicated skin care products, namely,exfoliating salt scrubs, anti-aging serums, anti-wrinkle gel,
`bath salts, facial cleansers, massage gels and oils, bodyoils and lotions, facial and body toners, bath
`soap, lip balms
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Medicated skin care preparations; medic-
`ated skin care products, namely, sun screens, skin protectant preparations, anti-itch preparations,
`anti-inflammatory preparations; dermatological pharmaceutical products; parapharmaceutical
`products for use in dermatology
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Opposer as Basis for Opposition
`
`

`
`U.S. Registration
`No.
`Registration Date
`
`2638344
`
`10/22/2002
`
`Word Mark
`Design Mark
`
`KAI
`
`Application Date
`
`09/25/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1998/12/15 First Use In Commerce: 1998/12/15
`Perfume
`
`U.S. Registration
`No.
`Registration Date
`
`4522188
`
`04/29/2014
`
`Word Mark
`Design Mark
`
`KAI
`
`Application Date
`
`05/13/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 1998/12/15 First Use In Commerce: 2000/09/30
`Fragrance, perfume, eau de parfum, eau de toilette, cologne, body lotion, hand
`crème, body butter, body wash, soap, fragrance infused sponges, body soap
`for bath and shower, deodorant for personal use, body fragrant mist, bubble
`bath, bathgels, bath salts, shampoo, conditioner,oils for hair treatment, hair care
`lotion, body scrub, non-medicated body soaks, linen soap and detergent, scen-
`ted roomand linen spray, lip conditioner, lip scrub, sun care lotions, nail polish,
`non-medicated skincare preparations for face and body, body glow, shaving pre-
`parations, shaving gel and cream, body and skin beauty care preparations, li-
`quid hand soap, sunscreen, tanning oils and lotions, hair care lotions, creams
`and gels; potpourri, incense, scented oils, essential oils for household use,
`sachets, roomfragrances, bath and bar soap, and, household cleaning prepara-
`tions
`Class 004. First use: First Use: 2001/11/08 First Use In Commerce: 2001/11/08
`
`

`
`Candles
`
`4264957
`
`12/25/2012
`
`KAI BY GAYE STRAZA
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`Application Date
`
`05/13/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2011/06/01 First Use In Commerce: 2011/06/01
`Fragrance, perfume, eau de parfum, eau de toilette, cologne, body lotion, hand
`crème, body butter, body wash, soap, fragrance infused sponges primarily
`used for imparting fragrance, body soap for bath and shower, deodorant for per-
`sonal use, body fragrant mist, bubble bath, bath gels, bath salts, shampoo, con-
`ditioner, oils for hair treatment, hair care lotion, body scrub, non-medicated body
`soaks,linen soap and detergent, scented room and linen spray, lip conditioner,
`lip scrub, sun care lotions, nail polish, non-medicated skin care preparations for
`face and body, body glow, shaving preparations, shaving gel and cream, body
`and skin beauty care preparations, liquid hand soap, sunscreen, tanning oils and
`lotions, hair care lotions, creams and gels; potpourri, incense, scented oils, es-
`sential oils for household use, sachets, roomfragrances, bath and bar soap, and,
`household cleaning preparations
`Class 004. First use: First Use: 2011/06/01 First Use In Commerce: 2011/06/01
`Candles
`
`Attachments
`
`76134334#TMSN.png( bytes )
`85038236#TMSN.png( bytes )
`85038229#TMSN.png( bytes )
`Notice of Opposition Final.pdf(683918 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/s/
`Shaun Murphy
`10/01/2014
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMRAK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Kai, LLC,
`
`
`
`
`
`
`Opposer,
`
`v.
`
`
`
`
`
`
`Mariner Biomedical, Inc.,
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`)
`)
`)
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`)
`)
`)
`)
`)
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`
`
`In the Matter of Application
`Serial No. 86104014
`for the Mark KAIDERMA
`
`Published in the Official Gazette
`on June 3, 2014
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Kai, LLC, a California limited liability company, having a principal place of business at
`
`3003 Malibu Canyon Road, Malibu, California 90265 (“Opposer”), hereby opposes the
`application of Mariner Biomedical, Inc., a California corporation, having a principal place of
`business at 6276 San Ignacio Avenue, Suite A, San Jose, California 95519 (“Applicant”). The
`application at issue is Application Serial No. 86104014 for the mark KAIDERMA (“Applicant’s
`Mark”) which was published for opposition in the Official Gazette on June 3, 2014 (the
`“Application”).
`
`
`Opposer believes it will be damaged by registration of the Applicant’s Mark and hereby
`opposes same on the grounds below and alleges as follows:
`
`1.
`Applicant filed Application Serial No. 86104014 for the mark KAIDERMA on
`October 29, 2013 for use in connection with the following goods:
`
`
`a.
`
`b.
`
`non-medicated skin care preparations; non-medicated skin care products, namely,
`exfoliating salt scrubs, anti-aging serums, anti-wrinkle gel, bath salts, facial
`cleansers, massage gels and oils, body oils and lotions, facial and body toners,
`bath soap, lip balms in International Class 003; and
`
`medicated skin care preparations; medicated skin care products, namely, sun
`screens, skin protectant preparations, anti-itch preparations, anti-inflammatory
`preparations; dermatological pharmaceutical products; parapharmaceutical
`products for use in dermatology in International Class 005.
`
`All of the above are jointly referred as “Applicant’s Goods.” A current printout of the
`information from the TSDR Electronic Database of the USPTO showing the current title and
`status of the Application is attached hereto as Exhibit A.
`
`
`
`
`1
`
`

`
`The Application is based on Section 1(b) of the Trademark Act, 15 U.S.C.
`
`2.
`§1051(b).
`
`
`3.
`Opposer is the owner of U.S. Trademark Registration No. 2638344 which issued
`on October 22, 2002 for the mark KAI for perfume in Class 003. The ‘344 Registration is valid,
`subsisting, in full force and effect, and is incontestable under Section 15 of the Lanham Act. A
`current printout of the information from the TSDR Electronic Database of the USPTO showing
`the current title and status of the Registration is attached hereto as Exhibit B.
`
`
`4.
`Opposer is the owner of the U.S. Trademark Registration No. 4522188 which
`issued on April 29, 2014 for the mark KAI for fragrance, perfume, eau de parfum, eau de toilette,
`cologne, body lotion, hand crème, body butter, body wash, soap, fragrance infused sponges,
`body soap for bath and shower, deodorant for personal use, body fragrant mist, bubble bath, bath
`gels, bath salts, shampoo, conditioner, oils for hair treatment, hair care lotion, body scrub, non-
`medicated body soaks, linen soap and detergent, scented room and linen spray, lip conditioner,
`lip scrub, sun care lotions, nail polish, non-medicated skincare preparations for face and body,
`body glow, shaving preparations, shaving gel and cream, body and skin beauty care preparations,
`liquid hand soap, sunscreen, tanning oils and lotions, hair care lotions, creams and gels;
`potpourri, incense, scented oils, essential oils for household use, sachets, room fragrances, bath
`and bar soap, and, household cleaning preparations in Class 003 and candles in Class 004. A
`current printout of the information from the TSDR Electronic Database of the USPTO showing
`the current title and status of the Application is attached hereto as Exhibit C.
`
`
`5.
`Opposer is the owner of the U.S. Trademark Registration No. 4264957 which
`issued on December 25, 2012, for the mark KAI BY GAYE STRAZA for fragrance, perfume,
`eau de parfum, eau de toilette, cologne, body lotion, hand crème, body butter, body wash, soap,
`fragrance infused sponges primarily used for imparting fragrance, body soap for bath and
`shower, deodorant for personal use, body fragrant mist, bubble bath, bath gels, bath salts,
`shampoo, conditioner, oils for hair treatment, hair care lotion, body scrub, non-medicated body
`soaks, linen soap and detergent, scented room and linen spray, lip conditioner, lip scrub, sun care
`lotions, nail polish, non-medicated skin care preparations for face and body, body glow, shaving
`preparations, shaving gel and cream, body and skin beauty care preparations, liquid hand soap,
`sunscreen, tanning oils and lotions, hair care lotions, creams and gels; potpourri, incense, scented
`oils, essential oils for household use, sachets, room fragrances, bath and bar soap, and, household
`cleaning preparations in Class 003 and candles in Class 004. A current printout of the
`information from the TSDR Electronic Database of the USPTO showing the current title and
`status of the Application is attached hereto as Exhibit D.
`
`
`6.
`Hereinafter the above referenced KAI trademarks are jointly referred to as
`“Opposer’s Marks and the above referenced KAI trademark registrations are jointly referred to
`as “Opposer’s Registrations.”
`
`
`
`
`2
`
`

`
`FIRST GROUND FOR OPPOSITION
`(Likelihood of Confusion)
`(Trademark Act §2(d), 15 U.S.C. §1052(d))
`
`
`7.
`Upon information and belief, Applicant has commenced use of the mark
`KAIDERMA long after Kai’s dates of first use and first use in commerce of its KAI Marks.
`
`
`8.
`Opposer commenced use and obtained registration of its KAI Marks prior to
`Applicant’s filing date of the Application.
`
`9.
`Opposer commenced use and obtained registration of its KAI Marks prior to
`Applicant’s date of first use of the mark KAIDERMA.
`
`
`10.
`Such use and registration grants Opposer priority over Applicant with respect to
`the Application.
`
`
`Applicant’s Mark KAIDERMA is virtually identical to Opposer’s Marks as to
`11.
`appearance, sound, connotation and commercial impression.
`
`
`Applicant’s Mark KAIDERMA encompasses Opposer’s Mark KAI in its entirety
`12.
`with the only additional element being the descriptive term “derma” which term is merely
`descriptive and not distinctive enough to differentiate Applicant’s Mark from Opposer’s KAI
`Mark.
`
`
`Applicant’s Goods are identical and/or nearly identical to the goods listed in
`13.
`Opposer’s Registrations.
`
`Opposer’s Goods and the goods identified in the Application are used together
`14.
`and/or are complementary goods and would emanate from the same source.
`
`Applicant’s Goods are in the natural zone of expansion for the goods described in
`15.
`Opposer’s Registrations.
`
`
`Applicant’s Goods travel in the same marketing channels and channels of trade
`16.
`and are viewed by the same consumers as Opposer’s Goods.
`
`
`17.
`If Applicant uses and/or continues to use its mark KAIDERMA in connection
`with the goods listed in the Application, such use would be likely to cause confusion, mistake,
`and/or deception in the relevant trade and public. Customers and potential customers are likely to
`believe that Applicant’s Goods offered under the mark KAIDERMA emanate from, or are
`licensed or approved by Opposer, when, in fact, they are not. Such confusion, mistake and/or
`deception would be a source of damage to Opposer.
`
`
`Deficiencies or faults in the quality of Applicant’s Goods are likely to reflect
`18.
`negatively upon, tarnish and seriously injure the reputation which Opposer has established for
`
`
`
`3
`
`

`
`the goods sold in connection with the KAI Marks. This injury is likely to result in loss of
`revenues to Opposer and damage Opposer’s reputation.
`
`For the foregoing reasons, Applicant’s registration and use of the Mark
`19.
`KAIDERMA would likely create confusion, mistake or deception in the minds of prospective
`purchasers as to the source or origin of the goods offered and sold in connection with Opposer’s
`KAI Marks and would damage Opposer’s rights to Opposer’s Marks.
`
`Accordingly, registration of Applicant’s alleged mark KAIDERMA is barred by
`20.
`the provisions of Section 2(d) and Section 43(a) of the Lanham Act and Applicant is not entitled
`to federal registration of its alleged Mark and Opposer believes it would be damaged therefore.
`
`
`SECOND GROUND FOR OPPOSITION
`(Prior Use)
`(Trademark Act §2(d), 15 U.S.C. §1052(d))
`
`
`Opposer commenced use of the Opposer’s Marks long before Applicant’s filing
`21.
`date of the Application.
`
`
`Opposer commenced use of the Opposer’s Mark long before any alleged date of
`22.
`first use by Applicant of Applicant’s Marks.
`
`
`Opposer has had continuous and on-going use of Opposer’s Marks before
`23.
`Applicant’s filing date of the Application and has not abandoned use of its Marks.
`
`
`24.
`Opposer has used its KAI Marks in such a manner so as to create public
`identification as to the source of Opposer’s goods.
`
`
`Such use grants Opposer priority over Applicant with respect to the Application.
`
`25.
`
`Accordingly, registration of Applicant’s alleged mark KAIDERMA is barred by
`26.
`the provisions of Section 2(d) and Section 43(a) of the Lanham Act and Applicant is not entitled
`to federal registration of its alleged Mark and Opposer believes it would be damaged therefore.
`
`
`THIRD GROUND FOR OPPOSITION
`(Dilution by Blurring and Tarnishment)
`15 U.S.C. § 1125(c)
`
`Opposer’s Mark KAI is distinctive and famous. Factors that support such findings
`27.
`include (i) the inherent distinctiveness of the KAI Mark; (ii) over fifteen years of extensive and
`continuous use of the KAI Mark; (iii) the broad geographical scope of KAI branded goods,
`which are advertised nationally and internationally; and (iv) unsolicited media coverage given
`KAI branded products.
`
`Opposer’s products are marketed, sold and distributed on a nationwide and
`28.
`international basis and have been featured in numerous media features and stories.
`
`
`
`4
`
`

`
`
`
`29.
`Opposer has used the trade name and trademark KAI and variants therefore, on
`and in connection with beauty and body care products, including, perfumes and fragrances,
`lotions, oils, creams, sprays, scrubs, body wash, deodorant, home fragrance, and candles, since at
`least as early as 1998.
`
`30.
`Opposer has, by virtue of extensive usage, advertising and promotion, built a high
`level of consumer and trade recognition in the KAI Marks, and variants thereof, for beauty and
`body care products. Due to public exposure and awareness by consumers, media, and the trade,
`the KAI Marks are famous and have acquired and now possess an extremely favorable reputation
`and distinctiveness with an invaluable amount of goodwill, solely signifying Opposer as the
`source of beauty and body care products of high quality.
`
`Further, Opposer’s distinctive KAI Marks became famous long before the filing
`31.
`date of the Application, as well as any claimed dates of first use, and the registration and use of
`Applicant’s mark KAIDERMA is likely to dilute the distinctive quality of Opposer’s KAI
`Marks. Accordingly, Applicant’s alleged mark KAIDERMA is not entitled to registration under
`15 U.S.C. § 1125(c) and Section 43(a) of the Lanham Act.
`
`WHEREFORE, Opposer prays that Application Serial No. 86104014 be rejected, and that
`registration of the mark KAIDERMA be denied and refused.
`
`This Notice of Opposition is being filed electronically pursuant to the ESTTA system.
`
`Respectfully submitted,
`
`KAI, LLC
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Shaun M. Murphy, Esq.
`Slovak Baron Empey Murphy & Pinkney LLP
`Attorney for Opposer
`1800 East Tahquitz Canyon Way
`Palm Springs, California 92262
`Tel: 760-322-2275
`Fax: 760-322-2107
`
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`Date: October 1, 2014
`
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`The undersigned hereby certifies that on this 1st day of October, 2014, a true and
`complete copy of the foregoing NOTICE OF OPPOSITION was served by first-class mail,
`
`CERTIFICATE OF SERVICE
`
`
`
`5
`
`

`
`postage pre-paid on, Bassam N. Ibrahim, Esq., Buchanan Ingersoll & Rooney PC, P.O. Box
`1404, Alexandria, Virginia 22313-1404.
`
`
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`/s/
`
`Mary Carter
`
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`6
`
`

`
`EXHIBIT A
`NOTICE OF OPPOSITION
`In the Matter of Application Serial No. 86104014 for the Mark KAIDERMA
`
` 
`
`
`Generated on:
`This page was generated by TSDR on 2014-09-30 16:37:27 EDT
`Mark:
`KAIDERMA
`
`
`US Serial Number:
`86104014
`Application Filing Date:
`Oct. 29, 2013
`Register:
`Principal
`Mark Type:
`Trademark
`Status:
`A request for an extension of time to file an opposition has been filed with the Trademark Trial
`and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal
`Board web page.
`Status Date:
`Jun. 28, 2014
`Publication Date:
`Jun. 03, 2014
`
`
`
`Mark Information
`
`Mark Literal Elements:
`KAIDERMA
`Standard Character Claim:
`Yes. The mark consists of standard characters without claim to any particular font style, size, or
`color.
`Mark Drawing Type:
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the
`goods/services:
`
`
`
`7
`
`

`
` Brackets [..] indicate deleted goods/services;
` Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit
`of incontestability; and
` Asterisks *..* identify additional (new) wording in the goods/services.
`
`For:
`Non-medicated skin care preparations; non-medicated skin care products, namely, exfoliating
`salt scrubs, anti-aging serums, anti-wrinkle gel, bath salts, facial cleansers, massage gels and oils,
`body oils and lotions, facial and body toners, bath soap, lip balms
`International Class(es):
`003 - Primary Class
`U.S Class(es):
`001, 004, 006, 050, 051, 052
`Class Status:
`ACTIVE
`Basis:
`1(b)
`For:
`Medicated skin care preparations; medicated skin care products, namely, sun screens, skin
`protectant preparations, anti-itch preparations, anti-inflammatory preparations; dermatological
`pharmaceutical products; parapharmaceutical products for use in dermatology
`International Class(es):
`005 - Primary Class
`U.S Class(es):
`006, 018, 044, 046, 051, 052
`Class Status:
`ACTIVE
`Basis:
`1(b)
`
`Basis Information (Case Level)
`
`Filed Use:
`No
`Currently Use:
`No
`Amended Use:
`No
`Filed ITU:
`Yes
`Currently ITU:
`Yes
`Amended ITU:
`No
`Filed 44D:
`
`
`
`8
`
`

`
`No
`Currently 44D:
`No
`Amended 44D:
`No
`Filed 44E:
`No
`Currently 44E:
`No
`Amended 44E:
`No
`Filed 66A:
`No
`Currently 66A:
`No
`Filed No Basis:
`No
`Currently No Basis:
`No
`
`Current Owner(s) Information
`
`Owner Name:
`Mariner Biomedical, Inc.
`Owner Address:
`6276 San Ignacio Avenue, Suite A
`San Jose, CALIFORNIA 95119
`UNITED STATES
`Legal Entity Type:
`CORPORATION
`State or Country Where Organized:
`CALIFORNIA
`
`Attorney/Correspondence Information
`
`Attorney of Record
`Attorney Name:
`Bassam N. Ibrahim
`Docket Number:
`0082515-0000
`Attorney Primary Email Address:
`bassam.ibrahim@bipc.com
`Attorney Email Authorized:
`Yes
`Correspondent
`
`
`
`9
`
`

`
`Correspondent Name/Address:
`BASSAM N. IBRAHIM
`BUCHANAN INGERSOLL & ROONEY PC
`PO BOX 1404
`ALEXANDRIA, VIRGINIA 22313-1404
`UNITED STATES
`Phone:
`703.836.6620
`Fax:
`703.836.2021
`Correspondent e-mail:
`bassam.ibrahim@bipc.com
`Correspondent e-mail Authorized:
`Yes
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Jun. 28,
`2014
`Jun. 03,
`2014
`Jun. 03,
`2014
`May 14,
`2014
`Apr. 30,
`2014
`Apr. 29,
`2014
`Apr. 09,
`2014
`Apr. 09,
`2014
`Apr. 09,
`2014
`Apr. 09,
`2014
`Apr. 09,
`
`
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-
`MAILED
`PUBLISHED FOR OPPOSITION
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-
`MAILED
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`ASSIGNED TO LIE
`
`Proceeding
`Number
`
`
`
`
`
`
`
`
`73296
`
`73296
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`
`
`EXAMINER'S AMENDMENT ENTERED
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-
`MAILED
`EXAMINERS AMENDMENT E-MAILED
`
`EXAMINERS AMENDMENT -WRITTEN
`
`88888
`
`6328
`
`6328
`
`80813
`
`10
`
`

`
`2014
`Apr. 08,
`2014
`Apr. 07,
`2014
`Apr. 07,
`2014
`Feb. 18,
`2014
`Feb. 18,
`2014
`Feb. 18,
`2014
`Feb. 14,
`2014
`Nov. 05,
`2013
`Nov. 01,
`2013
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`88889
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`88889
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`6325
`
`NON-FINAL ACTION E-MAILED
`
`NON-FINAL ACTION WRITTEN
`
`ASSIGNED TO EXAMINER
`
`6325
`
`80813
`
`80813
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`IN TRAM
`NEW APPLICATION ENTERED IN TRAM
`
`
`
`
`
`TM Staff and Location Information
`
`TM Staff Information
`TM Attorney:
`HELFMAN, JUDITH MICHEL
`Law Office Assigned:
`LAW OFFICE 114
`File Location
`Current Location:
`PUBLICATION AND ISSUE SECTION
`Date in Location:
`Apr. 30, 2014
`
`Proceedings
`
`Summary
`Number of Proceedings:
`1
`
`
`
`Type of Proceeding: Extension of Time
`
`
`
`11
`
`

`
`Proceeding Number:
`86104014
`Filing Date:
`Jun 27, 2014
`Status:
`Not Instituted
`Status Date:
`Jun 27, 2014
`Interlocutory Attorney:
`
`Defendant
`
`Name:
`Mariner Biomedical, Inc.
`Correspondent Address:
`BASSAM N. IBRAHIM
`BUCHANAN INGERSOLL & ROONEY PC
`PO BOX 1404
`ALEXANDRIA VA , 22313-1404
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial
`Number
`
`Registration
`Number
`
`KAIDERMA
`
`Request For Extension of Time to File
`Opposition
`
`86104014
`
`
`
`Potential Opposer(s)
`
`Name:
`Kai LLC
`Correspondent Address:
`Shaun Murphy
`Slovak Baron Empey Murphy & Pinkney LLP
`1800 east Tahquitz canyon way
`Palm Springs CA , 92262
`UNITED STATES
`Correspondent e-mail:
`murphy@sbemp.com , m3btmks@me.com
`Name:
`GALDERMA S.A.
`Correspondent Address:
`G MATHEW LOMBARD
`LOMBARD & GELIEBTER LLP
`1115 BROADWAY12 FL
`
`
`
`12
`
`

`
`NEW YORK NY , 10010
`UNITED STATES
`Correspondent e-mail:
`mlombard@lgtrademark.com
`
`Prosecution History
`
`Entry Number History Text
`1
`INCOMING - EXT TIME TO OPPOSE FILED
`2
`EXTENSION OF TIME GRANTED
`3
`INCOMING - EXT TIME TO OPPOSE FILED
`4
`EXTENSION OF TIME GRANTED
`5
`INCOMING - EXT TIME TO OPPOSE FILED
`6
`EXTENSION OF TIME GRANTED
`
`
`Date
`Jun 27, 2014
`Jun 28, 2014
`Jun 30, 2014
`Jun 30, 2014
`Jul 26, 2014
`Jul 26, 2014
`
`Due Date
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13
`
`

`
`EXHIBIT B
`NOTICE OF OPPOSITION
`In the Matter of Application Serial No. 86104014 for the Mark KAIDERMA
`
`
`
`
`
`Generated on:
`
`This page was generated by TSDR on 2014-09-30 16:43:02 EDT
`
`Mark:
`
`KAI
`
`
`
`US Serial Number:
`
`76134334
`
`Application Filing Date:
`
`Sep. 25, 2000
`
`US Registration Number:
`
`2638344
`
`Registration Date:
`
`Oct. 22, 2002
`
`Register:
`
`Principal
`
`Mark Type:
`
`Trademark
`
`Status:
`
`The registration has been renewed.
`
`Status Date:
`
`Aug. 25, 2012
`
`Publication Date:
`
`Jan. 08, 2002
`
`
`
`14
`
`

`
`
`
`
`
`Mark Information
`
`Mark Literal Elements:
`
`KAI
`
`Standard Character Claim:
`
`No
`
`Mark Drawing Type:
`
`1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
`
`Translation:
`
`The English translation of HAWAIIAN word "KAI" is "ocean".
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the
`
`goods/services:
`
` Brackets [..] indicate deleted goods/services;
` Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit
`of incontestability; and
` Asterisks *..* identify additional (new) wording in the goods/services.
`
`For:
`
`Perfume
`
`International Class(es):
`
`003 - Primary Class
`
`U.S Class(es):
`
`001, 004, 006, 050, 051, 052
`
`Class Status:
`
`ACTIVE
`
`Basis:
`
`1(a)
`
`
`
`15
`
`

`
`First Use:
`
`Dec. 15, 1998
`
`Use in Commerce:
`
`Dec. 15, 1998
`
`Basis Information (Case Level)
`
`Filed Use:
`
`Yes
`
`Currently Use:
`
`Yes
`
`Amended Use:
`
`No
`
`Filed ITU:
`
`No
`
`Currently ITU:
`
`No
`
`Amended ITU:
`
`No
`
`Filed 44D:
`
`No
`
`Currently 44D:
`
`No
`
`Amended 44D:
`
`No
`
`Filed 44E:
`
`No
`
`Currently 44E:
`
`No
`
`
`
`16
`
`

`
`Amended 44E:
`
`No
`
`Filed 66A:
`
`No
`
`Currently 66A:
`
`No
`
`Filed No Basis:
`
`No
`
`Currently No Basis:
`
`No
`
`Current Owner(s) Information
`
`Owner Name:
`
`KAI, LLC
`
`Owner Address:
`
`3003 malibu canyon road
`
`MALIBU, CALIFORNIA 90265
`
`UNITED STATES
`
`Legal Entity Type:
`
`LIMITED LIABILITY COMPANY
`
`State or Country Where Organized:
`
`CALIFORNIA
`
`Attorney/Correspondence Information
`
`Attorney of Record
`
`Attorney Name:
`
`John O. Pinkney
`
`Docket Number:
`
`
`
`17
`
`

`
`80788.00002
`
`Attorney Primary Email Address:
`
`pinkney@sbelawyers.com
`
`Attorney Email Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent Name/Address:
`
`John O. Pinkney
`
`Slovak Baron & Empey
`
`1800 East Tahquitz Canyon Way
`
`Palm Springs, CALIFORNIA 92262
`
`UNITED STATES
`
`Phone:
`
`7603222275
`
`Correspondent e-mail:
`
`pinkney@sbelawyers.com ninabeck@dc.rr.com
`
`Correspondent e-mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Proceeding Number
`
`Aug. 25, 2012
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`
`
`Aug. 25, 2012
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`73376
`
`Aug. 25, 2012
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`73376
`
`Aug. 20, 2012
`
`TEAS SECTION 8 & 9 RECEIVED
`
`May 14, 2010
`
`ATTORNEY REVOKED AND/OR APPOINTED
`
`
`
`
`
`
`
`18
`
`

`
`May 14, 2010
`
`TEAS REVOKE/APPOINT ATTORNEY RECEIVED
`
`
`
`May 07, 2008
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`73376
`
`
`
`73376
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`76616
`
`73348
`
`74305
`
`Feb. 29, 2008
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Mar. 05, 2008
`
`ASSIGNED TO PARALEGAL
`
`Feb. 29, 2008
`
`PAPER RECEIVED
`
`Oct. 22, 2002
`
`REGISTERED-PRINCIPAL REGISTER
`
`Feb. 15, 2002
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`Jan. 08, 2002
`
`PUBLISHED FOR OPPOSITION
`
`Dec. 19, 2001
`
`NOTICE OF PUBLICATION
`
`Oct. 02, 2001
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Sep. 10, 2001
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Mar. 26, 2001
`
`NON-FINAL ACTION MAILED
`
`Mar. 15, 2001
`
`ASSIGNED TO EXAMINER
`
`Mar. 12, 2001
`
`ASSIGNED TO EXAMINER
`
`Mar. 06, 2001
`
`ASSIGNED TO EXAMINER
`
`Maintenance Filings or Post Registration Information
`
`Affidavit of Continued Use:
`
`Section 8 - Accepted
`
`Affidavit of Incontestability:
`
`Section 15 - Accepted
`
`Renewal Date:
`
`Oct. 22, 2012
`
`
`
`19
`
`

`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location:
`
`GENERIC WEB UPDATE
`
`Date in Location:
`
`Aug. 25, 2012
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments:
`
`1
`
`Registrant:
`
`Canal Company, The
`
`
`
`
`
`Assignment 1 of 1
`
`Conveyance:
`
`ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame:
`
`2791/0762
`
`Pages:
`
`2
`
`Date Recorded:
`
`Jul. 28, 2003
`
`Supporting Documents:
`
`assignment-tm-2791-0762.pdf
`
`Assignor
`
`
`
`20
`
`

`
`Name:
`
`CANAL COMPANY, THE
`
`Execution Date:
`
`Nov. 27, 2001
`
`Legal Entity Type:
`
`CORPORATION
`
`State or Country Where Organized:
`
`CALIFORNIA
`
`Assignee
`
`Name:
`
`KAI, LLC
`
`Legal Entity Type:
`
`CALIFORNIA LIMITED LIABILITY COMPANY
`
`State or Country Where Organized:
`
`No Place Where Organized Found
`
`Address:
`
`3806 CROSS CREEK RD., STE. F
`
`MALIBU, CALIFORNIA 90265
`
`Correspondent
`
`Correspondent Name:
`
`DOUGLAS E. WHITE
`
`Correspondent Address:
`
`ATTORNEY AT LAW
`
`14 CAMINO SOBRANTE
`
`ORINDA, CA 94563
`
`Domestic Representative - Not Found
`
`
`
`21
`
`

`
`Proceedings
`
`Summary
`
`Number of Proceedings:
`
`2
`
`Type of Proceeding: Opposition
`
`Proceeding Number:
`
`91211865
`
`Filing Date:
`
`Aug 03, 2013
`
`Status:
`
`Terminated
`
`Status Date:
`
`Nov 20, 2013
`
`Interlocutory Attorney:
`
`BENJAMIN U OKEKE
`
`Defendant
`
`Name:
`
`Intrawest Honua Kai Hospitality Management LLC
`
`Correspondent Address:
`
`IAN L SAFFER
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`
`1400 WEWATTA ST STE 600
`
`DENVER CO , 80202
`
`UNITED STATES
`
`Correspondent e-mail:
`
`denverteas@kilpatricktownsend.com;dacke
`
`
`
`22
`
`

`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial
`
`Registration
`
`Number
`
`Number
`
`SPA
`
`HONUA
`
`Abandoned
`
`- After
`
`Inter-Partes
`
`KAI
`
`Decision
`
`85779409
`
`
`
`Plaintiff(s)
`
`Name:
`
`Kai, LLC
`
`Correspondent Address:
`
`SHAUN MURPHY
`
`SLOVAK BARON EMPEY MURPHY & PINKNEY
`
`1800 E TAHQUITZ CANYON WAY
`
`PALM SPRINGS CA , 92262
`
`UNITED STATES
`
`Correspondent e-mail:
`
`murphy@sbemp.com , m3btmks@me.com
`
`Associated marks
`
`Mark
`
`KAI
`
`KAI
`
`Application Status
`
`Renewed
`
`Registered
`
`Serial
`
`Registration
`
`Number
`
`Number
`
`76134334
`
`2638344
`
`85038236
`
`4522188
`
`KAI BY GAYE STRAZA
`
`Registered
`
`85038229
`
`4264957
`
`KAI
`
`TERRE
`
`BY GAYE
`
`Fifth
`
`Extension
`
`-
`
`STRAZA
`
`Granted
`
`85317593
`
`
`
`
`
`23
`
`

`
`Entry Number
`
`History Text
`
`Date
`
`Due Date
`
`Prosecution History
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`FILED AND FEE
`
`Aug 03, 2013
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`Aug 03, 2013
`
`
`Sep 12, 2013
`
`PENDING, INSTITUTED
`
`NOTICE OF DEFAULT
`
`BD DECISION: SUSTAINED
`
`TERMINATED
`
`Aug 03, 2013
`
`Oct 02, 2013
`
`Nov 20, 2013
`
`Nov 20, 2013
`
`
`
`
`
`
`
`
`
`Type of Proceeding: Opposition
`
`Proceeding Number:
`
`91205425
`
`Filing Date:
`
`Jun 04, 2012
`
`Status:
`
`Terminated
`
`Status Date:
`
`Jul 23, 2013
`
`Interlocutory Attorney:
`
`JENNIFER KRISP
`
`Name:
`
`Harmony Green America, Inc.
`
`Correspondent Address:
`
`KRISTIN JORDAN HARKINS
`
`CONLEY ROSE PC
`
`
`
`Defendant
`
`24
`
`

`
`5601 GRANITE PARKWAY, SUITE 750
`
`PLANO TX , 75024
`
`UNITED STATES
`
`Correspondent e-mail:
`
`dallaslit@dfw.conleyrose.com
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration Number
`
`ROKAI
`
`Abandoned - No Statement Of Use Filed
`
`85414215
`
`
`
`Plaintiff(s)
`
`Name:
`
`Kai LLC
`
`Correspondent Address:
`
`SHAUN MURPHY
`
`LOVAK BARON EMPEY MURPHY PINKNEY LLP
`
`1800 EAST TAHQUITZ CANYON WAY
`
`PALM SPRINGS CA , 92262
`
`UNITED STATES
`
`Correspondent e-mail:
`
`murphy@sbelawyers.com , barlow@sbemp.com
`
`Associated marks
`
`Mark
`
`KAI
`
`KAI
`
`
`
`Serial
`
`Registration
`
`Number
`
`Number
`
`76134334
`
`2638344
`
`85038236
`
`4522188
`
`Application Status
`
`Renewed
`
`Registered
`
`25
`
`

`
`KAI BY GAYE STRAZA
`
`Registered
`
`85038229
`
`4264957
`
`KAI
`
`TERRE
`
`BY GAYE
`
`Fifth
`
`Extension
`
`-
`
`STRAZA
`
`Granted
`
`85317593
`
`
`
`EntryNumber
`
`History Text
`
`Date
`
`Due Date
`
`Prosecution History
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`
`
`FILED AND FEE
`
`Jun 04, 2012
`
`
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`Jun 05, 2012
`
`Jul 15, 2012
`
`PENDING, INSTITUTED
`
`Jun 05, 2012
`
`STIPULATION FOR AN EXTENSION OF TIME
`
`Jul 12, 2012
`
`EXTENSION OF TIME GRANTED
`
`Jul 12, 2012
`
`CHANGE OF CORRESPONDENCE ADDRESS
`
`Sep 13, 2012
`
`D'S APPEARANCE OF COUNSEL/POWER OF ATTORNEY
`
`Sep 13, 2012
`
`D'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`Sep 13, 2012
`
`EXTENSION OF TIME GRANTED
`
`ANSWER
`
`Sep 18, 2012
`
`Oct 04, 2012
`
`D'S MOT FOR EXTEN. OF TIME W/ CONSENT
`
`Dec 03, 2012
`
`EXTENSION OF TIME GRANTED
`
`Dec 10, 2012
`
`STIP TO SUSPEND PEND SETTLEMENT NEGOTNS
`
`Jan 16, 2013
`
`SUSPENDED
`
`MOT TO AMEND APPLICATION
`
`Jan 16, 2013
`
`Apr 11, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RESPONSE DUE 30 DAYS (DUE DATE)
`
`Apr 25, 2013
`
`May 25, 2013
`
`W/DRAW OF OPPOSITION
`
`Apr 26, 2013
`
`
`
`RESPONSE DUE 30 DAYS (DUE DATE)
`
`May 18, 2013
`
`Jun 17, 2013
`
`26
`
`

`
`19
`
`20
`
`
`
`
`
`BD DECISION: DISMISSED W/ PREJ
`
`TE