Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA906316
`
`Filing date:
`
`06/28/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91239816
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Kiss Catalog, Ltd.
`
`Peter J. Vranum
`Gordon, Herlands & Randolph LLP
`355 Lexington Avenue
`New York, NY 10017
`UNITED STATES
`Email: pvranum@gordonherlands.com
`
`Opposition/Response to Motion
`
`Peter J. Vranum
`
`pvranum@gordonherlands.com
`
`/peter j. vranum/
`
`06/28/2018
`
`kiss.551.opp.brief.pdf(623242 bytes )
`kiss.551.opp.declaration.pdf(998162 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA906316
`
`Filing date:
`
`06/28/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91239816
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Kiss Catalog, Ltd.
`
`Peter J. Vranum
`Gordon, Herlands & Randolph LLP
`355 Lexington Avenue
`New York, NY 10017
`UNITED STATES
`Email: pvranum@gordonherlands.com
`
`Opposition/Response to Motion
`
`Peter J. Vranum
`
`pvranum@gordonherlands.com
`
`/peter j. vranum/
`
`06/28/2018
`
`kiss.551.opp.brief.pdf(623242 bytes )
`kiss.551.opp.declaration.pdf(998162 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91239816
`
`Mark: KISS
`
`Serial No. 87507551
`
`) )
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`)
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`)
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`) )
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`)
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`_____________________________________________________X
`
`KISS CATALOG, LTD.,
`
`Opposer,
`
`v.
`
`WATSON DESIGN, LLC,
`
`Applicant.
`__ ___________________________________________________ x
`
`OPPOSER‘S OPPOSITION TO APPLICANT‘S MOTION TO DISMISS
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`Opposer Kiss Catalog, Ltd. (“Opposer”), hereby responds to Applicant, Watson
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`Design, LLC’s (“Applicant") motion to dismiss under Fed. R. Civ. Pro. 11 for a
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`purported failure to investigate.
`
`In support of this brief, Opposer submits herewith the
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`declaration of its undersigned counsel Peter J. Vranum dated June 28, 2018 (“Vranum
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`Decl.”).
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`Applicant’s motion should be denied because Opposer had a reasonable basis
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`to institute the opposition, and has engaged in no conduct which would warrant the
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`sanction of dismissal of its claims.
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`I. BACKGROUND
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`As set forth in its Notice of Opposition, Opposer is the owner of the intellectual
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`property rights pertaining to the world famous rock group KISS.
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`(Notice of Opposition,
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`-1-
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`
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`1 TTABVUE). Opposer is well known for its distinctive KISS trademark, facial paint
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`designs, costumes and theatrical stage performances, as well as the many popular
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`songs the band has released. KISS has sold over 40 million albums in the US. and is
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`a member of the Rock and Roll Hall of Fame. KISS has performed at the Olympics
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`and the Super Bowl. Opposer has used the KISS mark in US. commerce for more
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`than 40 years in connection with a wide variety of goods and services, including
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`musical entertainment services, sound and video recordings, clothing, apparel and
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`accessories, slot machines, comic books, books, jewelry, toys and action figures and
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`other goods. Since at least as early as 1999 Opposer has maintained a website under
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`the KISS trademark providing information concerning the band, including but not
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`limited to news, tour information, fan letters, photos, video downloads and an online
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`store featuring the band’s many products for purchase. Due to its extensive use, and
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`the fame of the band and its members, the KISS mark has achieved wide renown,
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`broad consumer recognition and is a famous mark.
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`Opposer owns 23 federal registrations for marks consisting of or including
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`KISS.
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`In its Notice of Opposition it set forth 4 pleaded registrations for the mark KISS
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`covering musical entertainment services and sound and video recordings. The
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`Applicant seeks registration of a mark which is identical in sound, sight, meaning and
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`overall commercial impression to the Opposer’s mark. Opposer contends that
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`Applicant’s mark when used in connection with Applicant’s services is confusingly
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`similar with its registered KISS Mark and its uses of the KISS Mark, will dilute the
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`distinctiveness of its KISS mark or will result in a false suggestion of a connection.
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`On June 27, 2017, Applicant filed on an intent—to-use basis Application Serial
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`-2-
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`
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`No. 87507551 for the mark KISS in standard characters covering services in Class 41
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`- “consulting services in the field of photography; consulting services in the field of the
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`exhibition of photography; production services in the fields of photography, film and
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`video; providing facilities and equipment for photograph, film and video photography,
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`namely, digital imaging services; photographic computer imaging; location scouting
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`services for entertainment purposes; location scouting services for photography, film
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`and video productions.”
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`By letter dated January 23, 2018, Opposer advised Applicant of Opposer’s
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`rights in its KISS mark and requested that the Application be withdrawn. A copy of
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`such letter is attached as Exhibit A. On January 31, 2018 Applicant acknowledged
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`receipt of our letter and advised that they expect to respond within one week. A copy
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`of such email is attached as Exhibit B. On February 21, 2018, Opposer emailed a
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`followup stating that it had received no response. A copy of such email is attached as
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`Exhibit C. On February 22, 2018, Applicant advised that he expected to respond the
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`next day or within a few days. A copy of such email is attached as Exhibit D. Having
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`received no response from Applicant, on March 2, 2018 Opposer filed its notice of
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`opposition on the grounds of priority, likelihood of confusion, dilution and false
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`suggestion of a connection.
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`On April 5, 2018, only a few days before Applicant’s answer was due on April
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`11, 2018, Applicant finally responded to our letter of January 23, 2018, and demanded
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`that the opposition be withdrawn. A copy of such correspondence is attached as
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`Exhibit E. On April 6, 2018 Applicant requested a 30 day extension of the time for
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`Applicant to answer the notice of opposition, to which Opposer immediately agreed. A
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`-3-
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`
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`copy of such correspondence is attached as Exhibit F. Applicant did not file a
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`consented motion to extend the time as is customary. However, on April 25, 2018,
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`Applicant sent an email claiming that Opposer did not file the stipulation. Apparently
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`the Applicant did not file the extension and permitted the deadline to run. Opposer
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`responded that it did not undertake to file the extension for Applicant, but that it would
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`honor the agreement to extend the time and to permit Applicant to answer. Copies of
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`such emails are attached as Exhibit G. On May 8, 2018 Applicant filed a consent
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`motion to reopen the time to answer, and then on May 11, 2018 filed its answer and
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`purported “motion to dismiss.”
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`Applicant’s purported motion to dismiss is based on false allegations that
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`counsel for Opposer failed to investigate the claims prior to filing the notice of
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`opposition, and that the notice of opposition is so lacking in merit that no reasonable
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`attorney would file it. Applicant’s “motion" is combined with its Answer and does not
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`appear to comport with the procedural requirements of a Rule 11 motion.
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`As set forth in more detail below, Applicant’s applied-for mark is identical to
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`Opposer’s mark and is used in connection with similar or related services in
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`International Class 41. Applicant’s mark is in standard characters and so could be
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`used in any font or manner including in the same font as Opposer’s KISS mark.
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`Opposer has broad fame in its KISS mark and it is likely that Applicant’s use of the
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`identical mark on, for example a website, in connection with music video services,
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`photograph exhibitions related to rock stars or celebrities, or other such uses, would
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`be perceived as originating from, being associated or authorized by Opposer. Opposer
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`has standing and a reasonable basis to bring this proceeding.
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`-4-
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`
`
`A.
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`Applicant’s Motion to Dismiss Should be Denied
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`ll. ARGUMENT
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`Sanctions are appropriate under Rule 2.120(h)(1) of the Trademark Rules of
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`Practice in situations where a party fails to comply with an Order of the Board or under
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`Rule 2.120(h)(2) where a party fails to make initial disclosures or expert testimony
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`disclosures and informs the party entitled to receive such disclosures that no such
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`information will be forthcoming. There was no order from the Board and the parties
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`have not yet been required to make initial disclosures.
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`Instead, here Applicant alleges sanctionable misconduct of Opposer in the
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`nature of a failure to investigate and so the filing of a frivolous proceeding. Under
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`USPTO Rule 11.18(b):
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`bl .
`
`any paper, the party presenting such
`By presenting to the Office
`paper, whether a practitioner of non-practitioner, is certifying that -
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`2) ‘
`
`To the best of the party’s knowledge, information and belief,
`formed after an inquiry reasonable under the circumstances,
`i)
`The paper is not being presented for any improper
`purpose, such as to harass someone or cause
`unnecessary delay or needless increase in the cost of any
`proceeding before the Office;
`The other legal contentions therein are warranted by
`existing law or by a nonfrivolous argument for the
`extension, modification, or reversal of existing law or the
`establishment of new law.
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`ii)
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`See also Fed. R. Civ. P. 11(b); TBMP §527.02.
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`The standard is low. Opposer must have a reasonable belief in damage
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`resulting from registration. Opposer’s prefiling investigation was reasonable under the
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`-5-
`
`
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`circumstances.
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`It reviewed Applicant’s application and the specified services, sent the
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`information to its client and discussed it with them.
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`(Vranum Decl., par. 10) Opposer
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`reasonably and in good faith believed that the assertion of its claims in the present
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`proceeding was warranted and that Opposer has standing to bring the claims.
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`Applicant fails to substantiate any pattern of vexatious conduct, frivolous filings or
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`other bad faith behavior by Opposer.
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`1.
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`Applicant's Motion to Dismiss is Baseless
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`Applicant’s motion is based on conclusory allegations, unsupported by
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`evidence or precedent, that the Opposer’s claims are so lacking in merit as to be
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`frivolous. The motion is insufficiently detailed to apprise a reasonable attorney how
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`the claims, which turn on discrete factual issues are frivolous. Applicant attempts to
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`reserve its right to present “a fully documented formal Motion to Dismiss" - conceding
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`the superficial, unsupported nature of its instant application. The motion is patently
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`deficient in that Applicant neither discusses the applicable standard or attempts to
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`apply such standard. Applicant merely references an article printed from the Finnegan
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`law firm’s website that concerns the need for reasonable prefiling investigation before
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`bringing a patent infringement case.
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`Based on the obvious insufficiency of Applicant’s motion it is clear that the true
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`intent behind the motion was harassment, and it is therefore filed for an improper
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`purpose.
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`Applicant’s claims that Opposer did not review the record of the application are
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`unsupported in fact. Applicant alleges that had Opposer reviewed such record it
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`-6—
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`
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`would not have filed the opposition because it would have been aware that: 1)
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`Applicant’s mark is already in use; 2) that Applicant’s current and intended use of its
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`mark are solely in the field of high-end photography and do not involve music; and 3)
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`that there are other KISS marks on the federal register. Therefore, Applicant
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`concludes that “Applicant’s use of the mark has not, will not, and is not likely to cause
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`confusion."
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`None of these allegations are true or would be a reason not to file the instant
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`proceeding. An opposition proceeding concerns the Applicant’s mark as it is set forth
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`in the application. The application was filed on an intent to use basis and the fact that
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`Applicant claims to have started using its mark is of little if any relevance. The
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`remaining claims concerning the relatedness of the services, channels of trade,
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`customers, prices, likelihood of confusion and existence and effect of any third party
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`uses or registrants are wholly conclusory. Based upon Applicant’s theory, Opposer
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`should dismiss its case solely upon his say so.
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`Below is a brief discussion of some of Opposer’s claims.
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`a.
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`Opposer Has Standing
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`Any person who believes it is or will be damaged by registration of a mark
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`has standing to file an opposition. Trademark Act Section 13, 15 U.S.C. § 1063. The
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`Federal Circuit has enunciated a liberal threshold for determining standing,
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`namely that a plaintiff must demonstrate that it possesses a “real interest” in a
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`proceeding beyond that of a mere intermeddler, and “a reasonable basis for his belief
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`of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
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`USPQ2d 1058, 1062 (Fed. Cir. 2014) (quotation omitted), cert. denied, 135 S. Ct.
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`-7-
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`
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`1401 (2015). A “real interest” is a “direct and personal stake” in the outcome of the
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`proceeding. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1026 (Fed. Cir.
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`1999).
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`Based on its pleaded ground of likelihood of confusion of Applicant’s application
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`for the identical mark, Opposer's introduction of its pleaded registrations adequately
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`establishes its interest in this proceeding and a reasonable basis for its belief that
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`damage would result from registration of Applicant's mark. Cunningham v. Laser Golf
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`gm}, 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus, inc. v.
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`Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Having
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`established its standing with respect to its likelihood of confusion claim, Opposer need
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`not separately show its standing to assert its claim of dilution and false suggestion of a
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`connection. &, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
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`101 USPQZd 1713, 1727-28 (Fed. Cir. 2012).
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`b.
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`Similarity of the Marks/Likelihood of Confusion
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`In determining whether there is a likelihood of confusion within the meaning of
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`Section 2(d) of the Trademark Act, relevant factors include (1) the similarity or
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`dissimilarity fo the marks in their entireties; (2) the similarity or dissimilarity of the
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`parties; respective products and the product trade channels; (3) the fame of the prior
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`mark; and (4) any other established fact probative of the effect of use.
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`In re E.|. Du
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`Pont de Nemours & Company, 177 USPQ 563 (CCPA 1973). As demonstrated
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`below, application of these factors to the facts of this opposition compels the
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`conclusion that confusion is likely because the respective marks are identical, the
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`-8-
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`
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`Opposer‘s mark is famous and the services are similar or related.
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`i.
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`Applicant’s Mark is Identical to Opposer’s Mark
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`Applicant has adopted the Opposer’s KISS mark in its entirety. Applicant’s
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`application is for standard characters and is not limited to any particular font or
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`stylization. Such a mark can be used in any manner of display including a font similar
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`to one of the Opposer’s fonts. E, g9, In re Melville Corp., 18 U.S.P.Q.2d 1386,
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`1388 (T.T.A.B. 1991); In re Pollio Diag Products Corp, 8 U.S.P.Q.2d 2012,2015
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`(T.T.A.B. 1988).
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`In such a case, confusion would be unavoidable.
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`ii.
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`Fame/Strength
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`It is appropriate to consider fame because this factor plays a dominant role in
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`cases, as here, featuring a famous or strong mark. Bose Corp. v. 080 Audio
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`Products lnc., 63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Famous marks are accorded
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`more protection precisely because they are more likely to be remembered and
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`associated in the public mind than a weaker mark. Kenner Parker Toys. Inc. v. Rose
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`Arts Industries lnc., 22 USPQ2d 1453 (Fed. Cir. 1992). A famous mark is one “with
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`extensive public recognition and renown." Id.; see also. Palm Bay Imports Inc. v.
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`Veuve Clicguot Ponsardin, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). Opposer’s mark
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`is a distinctive, famous mark.
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`iii.
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`Services and Channels of Trade
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`In determining whether a likelihood of confusion exists, the party’s goods or
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`services must be determined on the basis of the goods or services recited in the
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`-9-
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`
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`application. &, 19,, Hewlett-Packard Co. v. Packard Press Inc, 281 F.3d 1261, 62
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`U.S.P.Q.2d 1001 (Fed. Cir. 2002). An applicant may not restrict the scope of its
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`goods covered in the application by extrinsic argument or evidence. S_ee, g9, m
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`Dakin’s Miniatures Inc., 59 U.S.P.Q.2d 1593, 1596 (T.T.A.B. 1999).
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`If the application
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`has no limitations as to their nature, type, channels of trade or classes of purchasers,
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`then it is presumed that the application or registration encompasses all goods and/or
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`services of the type described, that they move in all normal channels of trade, and that
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`they are available to all potential customers.
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`In re Linkvest 8A., 24 U.S.P.Q.2d 1716
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`(T.T.A.B. 1992); In re Elbaum, 211 U.S.P.Q. 639 (T.T.A.B. 1981); TMEP
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`§1207.01(a)(iii). Applicant’s arguments regarding its unsubstantiated use of its mark
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`are not relevant to this proceeding and Opposer had no duty to investigate any such
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`possible use.
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`The goods of the parties need not be identical or directly competitive to find a
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`likelihood of confusion. &, Safety-Kieen Corp. v. Dresser Indus, Inc., 518 F.2d
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`1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP§1207.01(a)(i). Rather, they
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`need only be related in some manner, or the conditions surrounding their marketing
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`are such that they would be encountered by the same purchasers under
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`circumstances that would give rise to the mistaken belief that the goods come from a
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`common source.
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`In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB
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`1999); TMEP§1207.01(a)(I).
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`iv.
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`Third Party Registrations
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`Applicant’s claims concerning the strength of the Opposer’s mark based on
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`-10-
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`
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`third party registrations on the federal register are not persuasive. First, the reference
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`in Applicant’s reply brief to1 ,000 marks that include KISS is wholly unsupported.
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`Second, it references marks “that include KISS.” Here, Applicant’s mark consists of
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`KISS - it is identical to Opposer’s mark. Third, registrations are not evidence of use in
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`the marketplace and are not useful for purposes of analyzing the strength of a mark.
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`Finally, the Board is not bound by decisions made in other applications. E, m
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`Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). See also In re Nett Designs lnc., 236
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`F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Each case must be decided on its own
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`facts. AMF Inc. v. Am. Leisure Prods.
`lnc., 474 F.2d 1403, 177 USPQ 268, 269
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`(CCPA 1973).
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`b.
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`Dilution
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`Opposer has properly pled and can prove its dilution claim. Dilution by blurring
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`is “association arising from the similarity between a mark or trade name and a famous
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`mark that impairs the distinctiveness of the famous mark.” Section 43(c)(2)(B) of the
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`Trademark Act, 15 U.S.C. § 1125(c)(2(B). Dilution may be likely “regardless of the
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`presence or absence of actual or likely confusion, of competition, or of actual
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`economic injury.” Section 43(c)(1) of the Trademark Act, 15 U.S.C. § 1125(c)(1).
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`Applicant’s mark may dilute even if as Applicant alleges its services “do not involve
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`music (or any other type) of performance. recorded music, wearing full face make-
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`up...” (Applicant’s Answer/Motion, page 8).
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`0.
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`False Suggestion of a Connection
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`-11-
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`
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`Opposer has properly pled and believes it can prove (1) that Applicant’s KISS
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`mark is a close approximation of, Opposer’s name or identity, as previously used by it
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`or identified with it; (2) that Applicant’s mark, KISS would be recognized as
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`such by purchasers of Applicant’s services, in that it points uniquely and
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`unmistakably to Opposer; (3) that Opposer is not connected with the services that are
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`sold or will be sold by Applicant under its KISS mark; and (4) that Opposer’s name or
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`identity is of sufficient fame or reputation that when used by Applicant as a mark for its
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`services, a connection with Opposer would be presumed.
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`2.
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`
`Applicant's Motion to Dismiss is Procedurally Defective
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`A motion for sanctions must be filed more than 21 days after its service upon
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`Opposer, and must be presented as a distinct and separate motion, othenNise it
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`violates the “safe harbor" provision of Fed. R. Civ. P. 11(c)(2). Such a motion should
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`not be considered on its merits.
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`-12-
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`
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`lll. CONCLUSION
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`Accordingly, for the reasons set forth herein, Opposer respectfully requests that
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`the motion to dismiss be denied in its entirety.
`
`Dated:
`
`New York, New York
`June 28, 2018
`
`GORDON, HERLANDS
`& RANDOLPH LLP
`
`Peter J. Vranum
`
`Attorneys for Opposer
`355 Lexington Avenue
`New York, New York 10017
`(212) 986-1200
`
`-13-
`
`
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`CERTIFICATE OF SERVICE
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`The undersigned, counsel for Opposer, hereby certifies under penalty of perjury
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`that I caused a true correct copy of the attached OPPOSER’S OPPOSITION TO
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`MOTION TO DISMISS to be served upon Applicant on June 28, 2018 by email at:
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`Charles@charlesbkramercom; Charles.b.kramer@gmail.com
`
`PumI/W/
`
`Peter J. Vranum
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`-14-
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`I I I lII I lI I I lI. II I III II II I I I lI lI I I I lI l l l II IIII II I I I I I l [
`
`KISS CATALOG, LTD.,
`
`Opposer,
`
`v.
`
`WATSON DESIGN, LLC,
`
`Applicant.
`
`><
`
`Xvvvvvvvvv
`
`Opposition No. 91239816
`
`Mark: KISS
`
`Serial No. 87507551
`
`DECLARATION OF PETER J. VRANUM
`
`I, Peter J. Vranum, declare:
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`1.
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`The facts set forth in this declaration are based on my personal
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`knowledge.
`
`2.
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`I am one of the attorneys representing the Opposer, Kiss Catalog, Ltd.,
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`and | submit this declaration in opposition to Applicant’s motion to dismiss.
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`3.
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`Annexed hereto as Exhibit A is a true and accurate copy of Opposer’s
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`letter dated January 23, 2018.
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`4.
`
`Annexed hereto as Exhibit B is a true and accurate copy of Applicant’s
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`email dated January 31, 2018.
`
`5.
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`Annexed hereto as Exhibit C is a true and accurate copy of Opposer’s
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`email dated February 21, 2018.
`
`6.
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`Annexed hereto as Exhibit D is a true and accurate copy of Opposer’s
`
`
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`email dated February 22, 2018.
`
`7.
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`Annexed hereto as Exhibit E is a true and accurate copy of Applicant’s
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`correspondence dated April 5, 2018.
`
`8.
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`Annexed hereto as Exhibit F is a true and accurate copy of
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`correspondence dated April 6, 2018.
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`9.
`
`Annexed hereto as Exhibit G is a true and accurate copy of
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`correspondence dated April 25, 2018.
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`10.
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`Prior to filing the Notice of Opposition, I reviewed the Applicant's
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`application and the specified services, sent the information to Opposer and discussed
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`it with them.
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`I declare under the penalty of perjury that the foregoing is true and correct.
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`Executed on June 28. 2018.
`
`PM- Watt/v
`
`Peter Vranum
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned, counsel for Opposer, hereby certifies under penalty of
`
`perjury that I caused a true correct copy of the attached OPPOSER’S DECLARATION
`
`IN OPPOSITION TO MOTION TO DISMISS to be served upon Applicant on June 28,
`
`2018 by email at:
`
`Charles@charlesbkramer.com; Charles.b.kramer@gmail.com
`
`PM.W
`
`Peter J. Vranum
`
`
`
`EXHIBIT A
`
`
`
`Peter Vranum
`
`From:
`
`Sent:
`To:
`
`Subject:
`Attachments:
`
`Dear Mr. Kramer,
`
`Peter Vranum
`
`Tuesday, January 23, 2018 2:00 PM
`'charles@charlesbkramer.com'; 'charles.b.kramer@gmail.com'
`
`U.S. Trademark Appl. 87501551 for KISS
`1109_001.pdf
`
`Our law firm is counsel to the musical group KISS. Attached is a copy of our letter for your immediate attention.
`
`Very truly yours,
`
`Peter Vranum
`
`Peter J. Vranum, Esq.
`Gordon, Herlands & Randolph LLP
`355 Lexington Avenue, 10th Floor
`New York, NY 10017
`Phone: 212-986-1200 /Fax: 212—983-0772
`
`NOTICE: This e-mail message and any attachment to this e-mail message contains confidential information that may be
`legally privileged. If you are not the intended recipient, you must not review, retransmit, convert to hard copy, copy, use or
`disseminate this e-mail or any attachments to it. If you have received this e-mail in error, please immediately notify us by
`return e-mail or by telephone at 212.986.1200 and delete this message. Please note that if this e-mail message contains a
`forwarded message or is a reply to a prior message, some or all of the contents of this message or any attachments may
`not have been produced by Gordon, Herlands & Randolph.
`
`Please note that neither Gordon, Herlands & Randolph nor the sender accepts any responsibility for viruses and it is your
`responsibility to scan this message and any attachments. No contractual commitment may be entered into by Gordon,
`Herlands & Randolph by virtue of e-mail alone.
`
`This notice is automatically appended to each e-mail message leaving Gordon, Herlands & Randolph. Thank you.
`
`
`
`Gonoon, HEFILANDS & RANDOLPH LLP
`ATTORNEYS AT LAW
`
`January 23, 2018
`
`
`By Email ”_chgjgs_.@gharles_m<ramer.co_mf
`And Charles.b.kramer@gmail.com
`
`Charles B. Kramer, Esq.
`Law Office of Charles B. Kramer
`200 East 10th Street, No. 816
`New York, NY 10003
`
`Re:
`
`Trademark Application for KISS,
`Serial No. 87507551
`
`In International Class 41
`
`Dear Mr. Kramer:
`
`We are attorneys for Kiss Catalog, Ltd., the owner of the intellectual property rights
`pertaining to the artists professionally known as KISS (“KISS"). KISS is a world famous,
`heavy metal rock group composed of four members, including Gene Simmons and Paul
`Stanley. KISS is well known for its distinctive KISS logo, facial paint designs, costumes
`and theatrical stage performances, as well as the many popular songs the group has
`released. KISS has sold over 40 million albums in the US, and is a member of the Rock
`and Roll Hall of Fame. Since its first concert appearances in 1972, KISS has toured nearly
`every year. For over 40 years, KISS has extensively used the KISS logo, and facial make
`up designs in commerce in connection with a wide variety of merchandise and services.
`Since at least 1999 KISS has maintained a website at “kissonlinecom,” providing
`information concerning the band, including but not limited to news, tour information, fan
`letters, photos, video downloads, and an online store featuring the band’s many products
`for purchase.
`
`As a famous mark, the KISS mark is entitled to a broad scope of protection. KISS
`is the owner of several trademark registrations for the name, KISS, and variations thereof,
`along with trademark registrations and copyrights for the facial paint designs worn by the
`members of the band. KISS has also acquired common law trademark rights based on its
`long and extensive use of the KISS mark in commerce.
`
`355 LEXINGTON AVENUE / 10TH FLOOR - NEW YORK, NY 10017 ° PHONE (212) 986-1200 - FAX (212) 983-0772
`
`
`
`GORDON, HERLANDS & RANDOLPH LLP
`
`It has come to our client's attention that you filed intent to use trademark application
`for KISS for use in connection with various services in International Class 41. Your client's
`mark is identical to our client's KISS mark, and is used for services which are related to our
`client’s services and likely to be distributed through similar channels of trade. As such it
`appears to be confusingly similar to our client’s KISS mark and related trademarks.
`
`At present, our client has no indication that your client’s adoption of a mark so
`similar to our client’s mark is anything other than an unfortunate mistake. We hope that
`this notice enables your client to avoid making further investment of time, money and
`goodwill in the mark.
`
`In order to amicably resolve this matter, please confirm to us that you have
`withdrawn the application for KISS and that your client has ceased any use of the mark in
`the US. in connection with the applied-for services or related services.
`
`Our client has filed an extension of the time to oppose the application. Unless we
`have received a satisfactory response from you, they will consider taking further action to
`protect their valuable trademark rights.
`
`This letter is written without prejudice to all further rights of our client. including, but
`not limited to, rights to profits and damages.
`
`Very truly yours,
`
`PMW
`
`Peter J. Vranum
`
`
`
`EXHIBIT B
`
`
`
`Peter Vranum
`
`From:
`
`Sent:
`To:
`
`Subject:
`
`Dear Mr. Vranum,
`
`Charles B. Kramer, Esq. <charles@charlesbkramer.com>
`
`Wednesday, January 31, 2018 1:08 AM
`Peter Vranum
`
`Re: U.S. Trademark Appl. 87501551 for KISS
`
`Our law firm is counsel to the musical group KISS. Attached is a copy of our letter for your immediate
`attention.
`
`I have been authorized to respond, and anticipate I will do so within a
`This acknowledges your letter.
`week. Feel free to contact me in the interim.
`
`- Charles
`
`Charles B. Kramer, Esq.
`~ ATTORNEY ~
`
`Linkedin: www.1iukedin .com/in/charleskramer
`
`Tel: +1 212-254-5093
`
`Mobile: +1 917-626-6215 (also text)
`Fax: +1 347-493-3583
`
`Email: charlest'fhcharlesbkramer.com
`
`Skype: charles_kramer
`Mail: 200 E. 10th Street, No. 816, New York, NY 10003
`Member of the Bar ofNew York: littp:Hiapps.courts.state.ny.usfatlomcyfAttomeyDetails?attorneyld=54203 1?.
`
`CONFIDENTIALITY NOTICE: This message and any attachments are solely for the intended
`recipients. They may contain privileged and/or confidential information, attorney work product or other
`information protected from disclosure and distribution. If you are not an intended recipient, please (1) let me
`know, and (2) delete the message and any attachments from your system.
`
`IRS CIRCULAR 230 DISCLOSURE: To comply with requirements imposed by the IRS, we inform you that
`any tax advice contained herein, including attachments, is not intended or written to be used and cannot be used
`by a taxpayer to (i) avoid tax penalties or (ii) promote, market or recommend a transaction or matter to another
`person.
`
`
`
`EXHIBIT C
`
`
`
`Peter Vranum—
`
`From:
`
`Sent:
`To:
`
`Subject:
`
`Dear Mr. Kramer,
`
`Peter Vranum
`
`Wednesday, February 21, 2018 5:25 PM
`'Charles B. Kramer, Esq.‘
`
`RE: U.S. Trademark Appl. 87501551 for KISS
`
`We have no record of receiving your response.
`
`Sincerely,
`
`Peter Vranum
`
`From: Charles B. Kramer, Esq. [mailto:charlesgajchariesbkramer.com]
`Sent: Wednesday, January 31, 2018 1:08 AM
`To: Peter Vranum
`
`Subject: Re: U.S. Trademark Appl. 87501551 for KISS
`
`Dear Mr. Vranum,
`
`Our law firm is counsel to the musical group KISS. Attached is a copy of our letter for your immediate
`attention.
`
`I have been authorized to respond, and anticipate I will do so within a
`This acknowledges your letter.
`week. Feel free to contact me in the interim.
`
`- Charles
`
`Charles B. Kramer, Esq.
`~ A TTORNE Y ~
`
`Linkedin: www.1inkedin.com/in/charleskramer
`
`Tel: +1 212-254-5093
`
`Mobile: +1 917—626-621 5 (also text)
`Fax: +1 347-493-3583
`
`Email: charles@charlesbkramer.com
`
`Skype: charles_kramer
`Mail: 200 E. 10th Street, No. 816, New York, NY 10003
`Member of the Bar ofNew York: htt
`:lr'ia
`s.eourts.state.n
`
`
`
`
`.Llsfallnrne fAttorneyDelails'?allorneylcl=54203 l 2
`
`CONFIDENTIALITY NOTICE: This message and any attachments are solely for the intended
`recipients. They may contain privileged and/or confidential information, attorney work product or other
`1
`
`
`
`information protected from disclosure and distribution. If you are not an intended recipient, please (1) let me
`know, and (2) delete the message and any attachments from your system.
`
`
`IRS CIRCULAR 230 DISCLOSURE: To comply with requirements imposed by the IRS, we inform you that
`any tax advice contained herein, including attachments, is not intended or written to be used and cannot be used
`by a taxpayer to (i) avoid tax penalties or (ii) promote, market or recommend a transaction or matter to another
`person.
`
`
`
`EXHIBIT D
`
`
`
`Peter Vranumfl
`
`From:
`Sent:
`To:
`
`Subject:
`
`Dear Mr. Vranum,
`
`Charles B. Kramer, Esq. <charles@char|esbkramer.com>
`Thursday, February 22, 2018 3:50 PM
`Peter Vranum
`
`RE: U.S. Trademark Appl. 87501551 for KISS
`
`We have no record of receiving your response
`
`I haven't sent it yet, and please forgive me. My client realizes this is a serious matter.
`
`I will send my client a proposed response later today, and will send it to you as soon as it is approved -- likely
`tomorrow or Monday.
`
`In the unlikely event there is need for brief further delay (for example, if my client is traveling) I will let you
`know.
`
`Sincerely,
`
`- Charles Kramer
`
`From: Charles B. Kramer, Esq. [ mailinmharles a charlesbkramer.com]
`Sent: Wednesday, January 31, 2018 1:08 AM
`To: Peter Vranum
`
`Subject: Re: U.S. Trademark Appl. 87501551 for KISS
`
`Dear Mr. Vranum,
`
`Our law firm is counsel to the musical group KISS. Attached is a copy of our letter for your immediate
`attention.
`
`I have been authorized to respond, and anticipate I will do so within a
`This acknowledges your letter.
`week. Feel free to contact me in the interim.
`
`Charles B. Kramer, Esq.
`~ ATTORNEY ~
`
`Linkedin: www.linkedincomfilifclmrleskramer
`
`Tel: +1 212-254-5093
`
`Mobile: +1 917-626-6215 (also text)
`Fax: +1 347-493-3583
`
`Email: charleslfrlcharlesbkramiemom
`Skype: charles_kramer
`Mail: 200 E. 10th Street, No. 816, New York, NY 10003
`
`1
`
`
`
`
`Member of the Bar ofNew York: 11111;:fliapflcourts.sullen .LIsfaltorlleMItorneyDetailS'Rzlttorneyld=54203 I 2
`
`CONFIDENTIALITY NOTICE: This message and any attachments are solely for the intended
`recipients. They may contain privileged and/0r confidential information, attorney work product or other
`information protected from disclosure and distribution. If you are not an
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