Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1129941
`04/27/2021
`
`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91266278
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`Party
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`Correspondence
`Address
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`Defendant
`iVine Herbal, LLC
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`DAYNA C. COOPER
`COOPER LEGAL, LLC
`1 OLYMPIC PL, SUITE 900
`TOWSON, MD 21204
`UNITED STATES
`Primary Email: dayna@cooperlegalsolutions.com
`202-642-5470
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Reply in Support of Motion
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`Dayna C. Cooper
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`Dayna@CooperLegalSolutions.com
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`/Dayna C. Cooper/
`
`04/27/2021
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`Ivine_Reply_MSJ_Final.pdf(334238 bytes )
`Williams_Amended_Declaration_SIGNED.pdf(166000 bytes )
`EX A - Registrations Dating Back to 1991- Herbal use not new.pdf(4593500
`bytes )
`EX B - Essential Oils Explained.pdf(627381 bytes )
`EX C - ivine price.pdf(477002 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
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`THE TRADEMARK TRIAL AND APPEAL BOARD
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`THE PROCTER & GAMBLE COMPANY,
` Opposer
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`v.
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`iVINE HERBAL, LLC,
` Applicant
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`Opposition No. 91266278
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`Mark:
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`*
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`APPLICANT’S REPLY IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
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`iVine Herbal, LLC (“Applicant”) submits this Reply in Support of Applicant’s Motion for
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`Summary Judgment.
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`ARGUMENT
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`I. WEAKNESS OF MARK IS A CONSIDERATION IN LIKELIHOOD OF CONFUSION ANALYSIS
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`Under the sixth DuPoint factor, the strength or weakness of a party’s mark is a factor to be
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`considered in the likelihood of confusion analysis. In re E. I. DuPont DeNemours & Co., 476 F.2d 1357,
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`1361 (CCPA 1973). As noted by the Board, a mark which is (merely) descriptive is to be considered under
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`this factor as it determines the extent to which a mark may be found weak. 9 TTABVUE 2.1 See also,
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`McCormick & Co. v. Hygrade Food Prods. Corp., 124 U.S.P.Q. 16, 17 (TTAB 1959) (allegation that
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`registered mark is weak does not constitute a collateral attack on validity of opposer’s registrations).
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`Accordingly, Applicant’s position that Opposer’s mark is weak (due to the descriptiveness) and therefore
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`entitled to a limited scope of protection is proper in this proceeding.
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`Speaking to Opposer’s suggestion that a registration's “presumption” of validity renders the mark
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`immune from challenge, this assertion is unsupported by case law. The presumption is rebuttable. See, e.g.,
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`1 “[T]he Board may consider any arguments and evidence that Opposer’s marks are descriptive only to the extent that
`they address the strength of Opposer’s marks.” (Emphasis added).
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`

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`Sally Beauty Co. v. Beautyco, Inc., 304 F.3d 964, 64 U.S.P.Q.2d 1321, 1326 (10th Cir. 2002) (rebuttable
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`presumption that the mark is inherently distinctive). Moreover, “[t]he fact that the mark may be valid,
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`however, does not make it strong.” Clairol, Inc. v. Cosmair, Inc., 592 F. Supp. 811, 815 (S.D.N.Y. 1984).
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`Applicant provided evidence of the descriptive nature of the words “HERBAL” and “ESSENCE.” 8
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`TTABVUE 7-8. Opposer provides no evidence to the contrary. On a motion for summary judgment, the
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`non-moving party may not rest on the mere allegations of its pleadings and assertions, but must designate
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`specific portions of the record or produce additional evidence showing the existence of a genuine dispute
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`as to a material fact for trial. See, Fed. R. Civ. P. 56(c). Accordingly, there is no genuine dispute of material
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`fact of the descriptive nature of the terms “HERBAL” and “ESSENCES” as they relate to Opposer’s goods.
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`See also, Tie Tech., Inc. v. Kinedyne Corp., 296 F.3d 778, 783, 63 U.S.P.Q.2d 1587 (9th Cir. 2002) (“In the
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`face of sufficient and undisputed facts demonstrating functionality, as in our case, the registration loses its
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`evidentiary significance.” Summary dismissal was affirmed.).
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`II. APPLICANT’S EVIDENCE IS SUFFICIENT TO SHOW OPPOSER’S MARK IS WEAK
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`While Opposer claims there is no credible evidence of record to support that its marks are weak,
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`simply ignoring the evidence does not render the evidence incredible. Applicant presented evidence of
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`third-party use,2 undisputed dictionary evidence,3 undisputed evidence of the term “HERBAL” disclaimed
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`in prior registration owned by Opposer for the identical mark for identical goods,4 and Opposer’s (and third-
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`party) advertising copy evincing Opposer’s use of the term “ESSENCES” in a descriptive manner5 and
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`specifications detailing herbal ingredients. Such evidence has been found to constitute competent evidence
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`and support a finding of a mark’s weakness. See, Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108,
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`1118, 94 U.S.P.Q.2d 1491 (9th Cir. 2010) (“Extensive use of a mark by third parties might indicate that the
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`mark is merely descriptive of a given class of products.”); In re Stereotaxis, Inc., 429 F.3d 1039, 1041, 77
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`2 8 TTABVUE 93-117.
`3 Id. at 7-8.
`4 Id. at 62.
`5 Id. at 38 (reference to coconut “essences”); Id. at 42 (reference to hibiscus “essences”); Id. at 58 (references to
`citrus and coconut “essences”); Id. at 60 (reference to wild berry “essences”).
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` 2
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`U.S.P.Q.2d 1087 (Fed. Cir. 2005) (“Evidence [that a term is merely descriptive] may be obtained from any
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`competent source, such as dictionaries, newspapers, or surveys.”). Herbal Chef, LLC v. AFG Distrib., Inc.,
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`2020 WL 3064439, at *1 (C.D. Cal. Mar. 10, 2020), aff'd, 840 F. App'x 223 (9th Cir. 2021)(summary
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`judgment affirmed holding registered mark, THE HERBAL CHEF, not inherently distinctive but at most
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`descriptive based upon dictionary definition of “HERBAL” - trademark infringement claims against
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`competing HERBAL CHEF mark dismissed); Gimix, Inc. v. JS & A Grp., Inc., 699 F.2d 901, 904, 217
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`U.S.P.Q. 677 (7th Cir. 1983) (AUTO PAGE descriptive of automatic telephone opening device, noting that
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`promotional literature referred to product as an “auto page.”); see also, Nature's Way Prods. Inc. v. Nature's
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`Herbs Inc., 9 U.S.P.Q.2d 2077, 2080 (TTAB 1989), 1989 WL 277824 *2 (Board considered evidence of
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`Respondent’s use of the term in a descriptive manner in its promotional literature to determine
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`descriptiveness).
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`Accordingly, assuming arguendo, listings of the USPTO’s TESS database of 103 registered marks
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`incorporating “HERBAL” text and 249 incorporating “ESSENCES” text which clearly show that the terms
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`are being used by third-parties for the same class of goods6 are discounted, the precedent establishes that
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`(1) the disclaimer of the term “HERBAL” in Opposer’s standard character mark7 is an admission by
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`Opposer’s predecessor in interest that the term is descriptive; (2) use of the term “ESSENCES”8 in its
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`advertising in a descriptive sense and further describing herbal ingredients; and (3) the dictionary evidence
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`are sufficient to show the meaning and weakness of Opposer’s mark. Moreover, Opposer failed to offer
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`contrary evidence to create a genuine dispute of material fact and Opposer’s mere assertion that the evidence
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`6 “[T]he frequency of prior use of [a mark’s text] in other marks, particularly in the same field of merchandise or
`service,’ illustrates the mark’s lack of conceptual strength.” “This is so because consumers are unlikely to associate a
`mark with a unique source if other parties use the mark extensively.” Grayson O Co. v. Agadir Int'l LLC, 856 F.3d
`307, 315 (4th Cir. 2017)(emphasis added). Accordingly, Opposer's argument that the inability to view the full marks
`is a weak one as the claim is that the terms “HERBAL” and “ESSENCES” are weak because of extensive third-party
`use of the text for the same or similar goods. If it was “truly a distinctive term, it is unlikely that ... many other
`businesses in the [haircare] industry would independently think of using the same mark or similar variants of it.”) Id.
`78 TTABVUE 62.
`8 See, supra notes 2-5.
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` 3
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`presented is not credible is simply not true; precedent holds otherwise. Accordingly, the evidence is credible
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`and competent.
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`LIKELIHOOD OF CONFUSION
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`I. THERE IS NO GENUINE DISPUTE THAT THE MARKS ARE SO DISSIMILAR NO LIKELIHOOD OF
`CONFUSION EXISTS
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`The parties agree that the marks are to be considered in their entireties and the proper test focuses
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`on the overall impression the marks have on the average consumer who encounters them. See, Coach Servs
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`v. Triumph Learning LLC, 101 U.S.P.Q.2d 1713, 1721 (Fed. Cir. 2012). To that point, with respect to
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`Opposer’s standard character marks, there is no reasonable basis to believe that consumers are going to skip
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`over the first and dominant term “iVine” focusing only on the small, non-stylized, and descriptive term
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`“HERBAL” and mistakenly believe that the iVine brand emanates from the same source as the HERBAL
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`ESSENCES brand. Further, the parties agree that it is improper to ignore the graphic elements of
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`Applicant’s mark when comparing it with Opposer’s text marks as it contravenes the anti-dissection rule.
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`However, it appears that Opposer argues that, in addition to encompassing variations in stylization, color,
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`and font, its rights in the standard character marks extend to design elements. The case law provides
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`otherwise. The Aquitaine Wine case cited by Opposer provides that,
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`[A] standard character mark ... may be used in any particular font style, size, or
`color... [T]he Viterra court addressed only the fact that applicant's standard
`character mark could be depicted in the stylized fashion of the literal portion of
`registrant's design mark; the court did not extend that finding to the background
`“splatter” dot design of the registrant's mark … we are not suggesting that a
`standard character mark encompasses all possible design elements of the
`mark...We hold that when we are comparing a standard character mark to a word
`+ design mark for Section 2(d) purposes, we will consider variations of the
`depictions of the standard character mark only with regard to font style, size, or
`color of the “words, letters, numbers, or any combination thereof.
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`In Re Aquitaine Wine Usa, LLC, 126 U.S.P.Q.2d 1181 (TTAB 2018)(internal citation and quotes omitted).
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`Therefore, Opposer’s rights in the standard character mark do not “encompass[] all possible design
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`elements.” Applicant will not repeat its arguments related to the differences between Opposer’s and
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`Applicant’s composite designs.
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` 4
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`With respect to the commercial impression, Opposer’s argument that the parties’ marks share the
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`same commercial impression because the shared term describes the ingredients of the goods is nothing more
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`than an admission of the descriptive nature of the “HERBAL” term. It is well established that the mere fact
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`that two marks share the same descriptive term does not mean the commercial impressions are the same or
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`render them likely to confuse. See, Comphy Co v. Amazon.com, Inc., 371 F. Supp. 3d 914 (W.D. Wash.
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`2019) (COMFY bedding not likely to cause confusion with COMPHY bedding)(“[P]laintiff does not have
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`the exclusive right to call its good ‘comfy.’”); Sure-Fit Prods. Co. v. Saltzson Drapery Co., 254 F.2d 158,
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`160, 117 U.S.P.Q. 295 (1958) (dismissal of opposition by SURE-FIT against registration of RITE-FIT,
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`both for furniture slip-covers); Am. Aloe Corp. v. Aloe Creme Labs., Inc., 420 F.2d 1248, 164 U.S.P.Q. 266
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`(7th Cir. 1970), cert. denied, 398 U.S. 929 (1970))(Cosmetic manufacturer could not appropriate for its
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`own trademark use “Aloe,” the distinguishing and effective ingredient in its product, and hence acquired
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`no trademark rights, through use or registration, in the term “ALO–” by itself, notwithstanding validity of
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`particular trademarks embodying the phrase; Ownership of numerous valid trademarks containing phrase
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`“ALO–” (and ‘ALO- and Design) did not result in a “family of trademarks” such as to preclude others from
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`using the term “Aloe.” “We hold that defendant has no trademark rights, through use or registration, in the
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`term ‘ALO-’ by itself.”)(competing ALO-CREME mark not infringing).
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`Finally, Opposer’s attempt to impute its own meaning to Applicant’s mark9 such that Applicant’s
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`mark may be perceived as a fresh or innovative take on plant-based goods is unsupported by any evidence.
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`Further, Applicant provides that its mark has no such meaning. App. Am. Decl. ¶6. Moreover, there is
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`nothing new or innovative about using herbs or herbal extracts for hair care or skincare products. See,
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`Exhibit A10, (registered third-party marks dating back to 1991 using the term “HERBAL” for haircare and
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`skincare products containing herbal extracts and internet evidence supporting that such use dates back to
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`9 “The compound expression ‘iVine’ thus is more likely to connote to consumers that the products are a fresh or
`innovative take on plant-based goods.” 10 TTABVUE 14.
`10 Some descriptions include the term “HERBAL” in the description, some descriptions use the phrase “essential oils”
`which are synonymous with herbal extracts (see Exhibit B); the disclaimers of “HERBAL” evince that the term is
`descriptive of a characteristic or ingredient in the goods even if not listed in the description
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`ancient times). Accordingly, there is no reasonable belief that any consumers would believe that Applicant’s
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`goods are those belonging to Opposer merely because of the shared descriptor or that they are a fresh or
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`innovative take on plant-based goods. See, Moody v. St. Charles County, 23 F.3d 1410, 1412 (8th
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`Cir.1994)(“to withstand the motion for summary judgment, [the non-moving party] must substantiate his
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`allegations with sufficient probative evidence [that] would permit a finding in [his] favor based on more
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`than mere speculation, conjecture, or fantasy.”).
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`With respect to the commercial packaging, since the issue is not whether purchasers would confuse
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`the goods, but rather whether there is a likelihood of confusion as to the source of the goods. In re Rexel
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`Inc., 223 U.S.P.Q. 830 (TTAB 1984) one cannot merely rely on the goods as recited in the application, but
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`encountered by the consumer to determine the commercial impression. Anheuser–Busch, Inc. v. L & L
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`Wings, Inc., 962 F.2d 316, 319 (4th Cir. 1992)(“we must examine the allegedly infringing use in the context
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`in which it is seen by the ordinary consumer.”). Accordingly because the marks and packaging11 are so
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`dissimilar, the consumer is not likely to confuse Applicant’s good and mistakenly believe that they are those
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`provided by Opposer. Opposer cites to In re Aquitaine Wine for the notion that the manner in which the
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`consumers encounter the mark is not to be considered only the marks as presented in the application.
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`Assuming arguendo, this the proper standard to be applied, irrespective of the packaging, Comphy Co., Am.
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`Aloe, and Sure-Fit establish that the weakness of Opposer’s mark is enough to find in Applicant’s favor.
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`371 F. Supp. 3d 914 (COMFY not likely to cause confusion with COMPHY for identical goods - bedding);
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`(SURE-FIT not likely to confuse with RITE-FIT, for identical goods, both for furniture slip-covers; Clairol,
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`592 F. Supp. 811 (“SUMMER BLONDE” for shampoo-in gentle hair lightener not infringed by
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`“SUMMER SUN” for competing hair lightener). In keeping with In re Aquitaine Wine, we would also have
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`to accept that,
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`[I]f a mark comprises both a word and a design, then the word is normally accorded
`greater weight because it would be used by purchasers to request the goods. While
`Applicant's mark includes a design element, we find that the term LAROQUE is
`its dominant element. Displayed in a large, bold typeface, it comprises the largest
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`11 Applicant provides that its hair oils are custom and made-to-order App. Am. Decl.¶ 5. This further reduces any
`likelihood that the source will be confused.
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`literal portion of the mark in terms of size, position, and emphasis. It is also the
`first term in the mark, further establishing its prominence. Moreover, the
`wording ‘Cité de Carcassonne’ is a geographically descriptive term, is in
`significantly smaller lettering, and has been disclaimed. Therefore, it is entitled
`to less weight in the likelihood of confusion determination.
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`126 U.S.P.Q.2d 1181 (TTAB 2018).
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`This case is analogous, in part, with the facts here. “iVine” is the dominant portion as it is “[d]splayed in a
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`large, [stylized] typeface, it comprises the largest literal portion of the mark in terms of size, position, and
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`emphasis. It is also the first term in the mark, further establishing its prominence.” And, “HERBAL” is
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`descriptive and “is in significantly smaller lettering, and has been disclaimed[]” and “[t]herefore, it is
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`entitled to less weight in the likelihood of confusion determination.” The remainder of the case is
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`distinguishable, because unlike the CHATEAU LAROQUE mark, here, both terms in Opposer’s mark are
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`descriptive of its goods, making it difficult to isolate one as descriptive permitting the examiner to focus on
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`the other. In addition, the parties in In Re Aquitaine Wine presented no evidence related to the weakness of
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`the shared term. Whereas, here, as stated above, there is undisputed evidence of the weakness of the terms
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`individually or combined. Further, the Board found that the parties shared the same dominant term, which
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`is not the case here, because Applicant use of the term “HERBAL” is afforded less weight and is not
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`dominant.
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`II.
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`THE PARTIES’ CONSUMERS ARE SOPHISTICATED PURCHASERS
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`Despite the fact that Opposer did not limit the claims in the opposition to hair care products and
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`submitted exhibits depicting Applicant’s skin care products,12 Opposer now argues that the cases cited in
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`Applicant’s motion are inapposite because the goods at issue here are not skincare products. Further,
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`Opposer argues that the goods are not substantially priced. If it is Opposer’s position that the skincare
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`products are not at issue in this proceeding, in the event Applicant does not prevail on its motion, Applicant
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`respectfully requests that Board limit and find that there is no genuine issue of fact that the skincare products
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`are not at issue. If the Board finds that the skincare products are at issue, Applicant maintains its position
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`12 1 TTABVUE.
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`that the consumers of the skincare products are sophisticated purchasers and Opposer has failed to provide
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`any evidence to the contrary. The case law provides that purchasers of fragrances and skincare products
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`tend to exercise a high degree of care. Glow Indus., Inc. v. Lopez, 252 F.Supp.2d 962, 1001–02
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`(C.D.Cal.2002) and cases cited therein. The single, nonprecedential, case Opposer cites to support its claim
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`that the parties’ consumers are not sophisticated does not hold that all inexpensive hair products are impulse
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`purchases. Clairol Inc. & Proctor & Gamble Hair Care LLC, vs. Lavar Hair Designs, 2004 WL 624563,
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`at *3 (Mar. 25, 2004). Even where the goods are not expensive, courts have elevated the reasonably prudent
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`ordinary-buyer standard to a higher, more discriminating level. Herbalife Int'l, Inc. v. Lumene N. Am. LLC,
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`2007 WL 4225776, at *10 (C.D. Cal. Oct. 15, 2007). The court in Herbalife stated,
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`“Of course, ‘price alone is not determinative of the care a consumer will take in
`making purchases.’” “Thus, while a court might find that generally purchasers of
`relatively inexpensive items are not sophisticated, it must look at the specific
`products in question rather than just the price.” “[Plaintiff’s] argument that
`consumers exercise little care in buying these products fails when one considers the
`relevant consumer markets in which the parties' products are sold.” “[Plaintiff]
`attempted to distinguish Lumene's products from the high-end personal products in
`Glow Indus, based on price alone. The Court is unconvinced. In the context of
`mass-market retailers such as CVS and Target, “[Defendant's] prices are not
`inexpensive ($17.99–$21.99 for normal-sized, as opposed to sample-sized
`containers); [Plaintiff] has not demonstrated otherwise.” “Thus, the budget-
`conscious, yet quality-conscious female consumer who will be looking at Lumene's
`[skincare] products is likely to exercise great care.”
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`Id. at *11(emphasis added).
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`The Herbalife facts are similar to the instant case. In fact, they bolster Applicant’s argument as
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`Applicant’s items are priced even higher (most priced at $20-30, and hair oils at $15.00) than defendant’s
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`in Herbalife. Exhibit C; See also, App. Am. Decl. ¶5.
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`With respect to Opposer’s claim that the goods at issue are only hair care products and purchasers
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`of such are not discriminating and sophisticated, this claim is completely undercut by Opposer’s website.
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`The categorization of products by “hair type” and “hair needs” is clear and undisputed evidence that
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`Opposer’s consumers exercise some thought and deliberation before purchasing and are therefore
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`discriminating and sophisticated, not impulse purchasers. See, App. Mtn., 8 TTABVUE 118, Exhibit I. If
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`the consumers do not consider “hair type” and “hair needs” in making their purchase decisions, there would
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`be no need for Opposer to include the categorization on its website. Opposer makes no attempt to provide
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`any explanation as to why the categorization is necessary. Opposer may not rest on the mere and assertions,
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`but must produce additional evidence showing the existence of a genuine dispute as to a material fact for
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`trial. See, Fed. R. Civ. P. 56(c). Accordingly, the evidence presented by Applicant is undisputed and
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`therefore there is no genuine issue of material fact that the purchasers are discerning purchasers of haircare
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`and skincare products.
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`III.
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`OPPOSER HAS PRESENTED NO EVIDENCE OF ACTUAL CONFUSION
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`In its motion, Applicant provides that there has been no actual confusion. In response, Opposer
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`provides no evidence to the contrary, but merely states, “This statement appears to be a bit premature, as
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`discovery has not occurred as yet, nor had Opposer had an opportunity to submit evidence of actual
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`confusion at the time Applicant filed its brief.” 10 TTABVUE 18. If there was any actual confusion,
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`Opposer is required to provide “evidence” to rebut Applicant’s claims and Opposers has failed to do so.
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`Discovery is not necessary for Opposer to present its own evidence of actual confusion. Opposer may not
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`rest on the mere assertions, but must designate specific portions of the record or produce additional
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`evidence showing the existence of a genuine dispute as to a material fact for trial. See, Fed. R. Civ. P. 56(c).
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`IV.
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`DUE TO THE WEAKNESS OF OPPOSER’S MARKS, ANY RELATEDNESS OF THE GOODS AND
`CHANNELS OF TRADE ARE OUTWEIGHED BY THE OTHER DUPONT FACTORS
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`If Opposer is now limiting the goods to hair care only, Applicant agrees with Opposer that the
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`goods should be limited to hair care only and further concedes that Opposer’s hair care preparations
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`encompass Applicant’s hair care oils. However, the other factors, such as the descriptiveness and weakness
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`of Opposer’s mark, dissimilarity of marks, and sophistication of the parties obviates any likelihood of
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`confusion.
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`CONCLUSION
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`Applicant has sustained its burden to show that there are no issues of genuine dispute - (1)
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`Opposer’s mark is descriptive, weak, and entitled to limited protection; (2) the shared descriptive term is
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`not sufficient to find any likelihood of confusion; (3) the marks are dissimilar in sight, sound, connotation,
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`and commercial impression; (4) the parties’ consumers of (skincare and haircare) products are
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`discriminating and sophisticated purchasers; and (5) due to the weakness of Opposer’s mark any overlap in
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`goods and channels of trade are outweighed by the other factors.
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`WHEREFORE, Applicant respectfully requests that summary judgment be granted and this
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`Petition for Cancellation be dismissed.
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`Dated: April 27, 2021
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`Respectfully submitted,
`COOPER LEGAL, LLC
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`/s/ Dayna C. Cooper
`By: Dayna C. Cooper
`1 Olympic Pl., Suite 900
`Towson, MD 21204
`(202) 642.5470
`Dayna@CooperLegalSolutions.com
`Attorney for Applicant,
`iVine Herbal, LLC
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` 10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing APPLICANT’S REPLY IN
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`SUPPORT OF MOTION FOR SUMMARY JUDGMENT has been served via electronic mail upon the
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`following counsel of record this 27th day of April 2021.
`
`KAREN KREIDER GAUNT
`DINSMORE & SHOHL LLP
`255 EAST FIFTH ST, SUITE 1900
`CINCINNATI, OH 45202
`UNITED STATES
`karen.gaunt@dinsmore.com, michael.frey@dinsmore.com, govinda.davis@dinsmore.com,
`robin.bissantz@dinsmore.com, trademarks@dinsmore.com
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`Respectfully submitted,
`COOPER LEGAL, LLC
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`
`/Dayna C. Cooper/
`By: Dayna C. Cooper, Esq.
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` 11
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`IN THE UNITED STA TES PA TENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
`
`THE PROCTER & GABLE COPANY,
`Opposer
`
`V.
`i VINE HERBAL, LLC,
`Appicant
`
`Oposition No. 91266278
`
`Mark:
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`*
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`*
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`*
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`*
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`*
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`AMENDED DECLARATION OF CYNDI \\TLLIAMS
`IN SUPPORT OF MOTION FOR SUMMARY JUDGMENT
`
`I, Cyndi Williams, hereby declare and state as follows:
`
`1.
`
`2.
`
`I am the owner of i Vine Herbal, LLC.
`
`I have access to the records of iVine Herbal, LLC, and I make this declaration based
`
`on personal knowledge and/or my review of company records thatare kept by iVine
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`Herbal, LLC in the regular course of its business.
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`3.
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`In connection with this business, I have sold and continue to sell hair oils; massage
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`oil; moisturizing creams; sunscreen creams; non-medicated herbal bdy care
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`prducts, namely, skin cream or treating eczema; and skin moisturizer since at
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`least as early as July 28, 2019.
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`4.
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`I have never had a customer confuse my prducts with any of Proctor and Gamble's
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`prducts.
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`5. My custom made-to-order hair oils sell for $ 15.00.
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`Doc ID: b73a628aa95f5b8bfc08315612f6e93ea29514c
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`

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`6. My iVine mark has no meaning that is associated with new and innovative products
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`or fresh, new. and innovative take on plant-based goods.
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`I am over the age of 18‘ and I declare under penalty of perjury under the laws of the United
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`States that the foregoing is true and correct.
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`DA TED this 27th day oprril 2021
`
`
`
`amnion A wiUiszs_
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`Cyndi Williams, Owner
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`Doc ID: b73a628aa95f5 b8bfc0831 561 2f69939a29514bc
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`

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`Generated on: This page was generated by TSDR on 2021-04-27 17:12:39 EDT
`
`Mark: HERBAL BLEND
`
`US Serial Number: 73735607
`
`US Registration
`Number:
`
`1632093
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Date: Mar. 21, 2021
`
`Publication Date: Jul. 25, 1989
`
` 
`
`Mark Literal
`Elements:
`
`HERBAL BLEND
`
`Standard Character
`Claim:
`
`No
`
`Application Filing
`Date:
`
`Jun. 16, 1988
`
`Registration Date: Jan. 22, 1991
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Mark Information
`
`Mark Drawing
`Type:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`Disclaimer: "HERBAL BLEND"
`
`Design Search
`Code(s):
`
`05.01.25 - Willow tree; Other trees or bushes; Cypress tree
`26.09.21 - Squares that are completely or partially shaded
`26.11.13 - Two rectangles; Rectangles (exactly two rectangles)
`26.11.21 - Rectangles that are completely or partially shaded
`
`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: SKIN MOISTURIZER
`
`International
`Class(es):
`
`003 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 051
`
`First Use: Oct. 22, 1987
`
`Use in Commerce: Oct. 22, 1987
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`A-001
`
`

`

`Current Owner(s) Information
`
`Owner Name: SHAKLEE CORPORATION
`
`Owner Address: 4747 WILLOW ROAD
`PLEASANTON, CALIFORNIA UNITED STATES 94588
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Attorney/Correspondence Information
`
`Attorney Name: Lisa M. Caldwell
`
`Docket Number: 65925964401
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`ptotmdocket@klarquist.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Lisa M. Caldwell
`Klarquist Sparkman, LLP
`121 SW Salmon Street, Suite 1600
`One World Trade Center
`Portland, OREGON UNITED STATES 97204
`
`Phone: 503-595-5300
`
`Fax: 503-595-5301
`
`Correspondent e-
`mail:
`
`ptotmdocket@klarquist.com lisa.caldwell@klarqui
`st.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Mar. 21, 2021
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Mar. 21, 2021
`
`REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS)
`
`Mar. 21, 2021
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Mar. 21, 2021
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Dec. 10, 2020
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Dec. 18, 2010
`
`REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
`
`Dec. 18, 2010
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Dec. 17, 2010
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Dec. 09, 2010
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Dec. 04, 2008
`
`CASE FILE IN TICRS
`
`May 11, 2001
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`May 11, 2001
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Jan. 24, 2001
`
`REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
`
`Feb. 06, 1997
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Jan. 17, 1997
`
`REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
`
`Jan. 22, 1991
`
`REGISTERED-PRINCIPAL REGISTER
`
`Jul. 25, 1989
`
`PUBLISHED FOR OPPOSITION
`
`Jun. 24, 1989
`
`NOTICE OF PUBLICATION
`
`Apr. 18, 1989
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Mar. 02, 1989
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Mar. 02, 1989
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Sep. 07, 1988
`
`NON-FINAL ACTION MAILED
`
`Aug. 16, 1988
`
`ASSIGNED TO EXAMINER
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Mar. 21, 2021
`
`A-002
`
`Proceeding
`Number
`
`76985
`
`76985
`
`76985
`
`76533
`
`76533
`
`60740
`
`

`

`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 5
`
`Assignment 1 of 5
`
`Registrant: SHAKLEE CORPORATION
`
` 
`
`Conveyance: MERGER
`
`Reel/Frame: 1348/0501
`
`Date Recorded: Apr. 17, 1995
`
`Supporting
`Documents:
`
`No Supporting Documents Available
`
`Pages: 11
`
`Name: SHAKLEE CORPORATION
`
`Execution Date: Nov. 28, 1994
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: SHAKLEE CORPORATION
`
`Legal Entity Type: CORPORATION
`
`Address: 444 MARKET STREET
`SAN FRANCISCO, CALIFORNIA 94111
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`MARTIN F. MAJESTIC
`
`MAJESTIC, PARSONS, SIEBERT & HSUE
`4 EMBARCADERO CENTER, SUITE 1450
`SAN FRANCISCO, CA 94111-4121
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 2 of 5
`
`Pages: 19
`
`Conveyance: CHANGE OF NAME
`
`Reel/Frame: 2315/0431
`
`Date Recorded: Jun. 11, 2001
`
`Supporting
`Documents:
`
`assignment-tm-2315-0431.pdf
`
`Name: SHAKLEE CORPORATION
`
`Execution Date: Oct. 31, 2000
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: YAMANOUCHI CONSUMER INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 4747 WILLOW ROAD
`PLEASANTON, CALIFORNIA 94588
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`MARTIN F. MAJESTIC, ESQ.
`
`FOUR EMBARCADERO CENTER
`SUITE 3300
`SAN FRANCISCO, CA 94611
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Assignment 3 of 5
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 2315/0863
`
`Pages: 9
`
`A-003
`
`

`

`Date Recorded: Jun. 11, 2001
`
`Supporting
`Documents:
`
`assignment-tm-2315-0863.pdf
`
`Name: YAMANOUCHI CONSUMER, INC.
`
`Execution Date: Apr. 01, 2001
`
`Assignor
`
`Legal Entity Type: CORPORATION
`
`Name: SHAKLEE CORPORATION
`
`Legal Entity Type: CORPORATION
`
`Address: 4747 WILLOW ROAD
`PLEASANTON, CALIFORNIA 94588
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`MARTIN F. MAJES