Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1299159
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`Filing date:
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`07/23/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91272175
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`Party
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`Correspondence
`address
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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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`Defendant
`MelaBeauty LLC
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`JEFFREY STURMAN
`STURMAN LAW, LLC
`8700 E JEFFERSON AVE # 371706
`DENVER, CO 80237
`UNITED STATES
`Primary email: tm-docket@sturmanlaw.com
`720-772-1724
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`Reply in Support of Motion
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`Jeffrey Sturman
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`info@sturmanlaw.com
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`/Jeffrey Sturman/
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`07/23/2023
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`_Applicants Reply to Opposers Response in Opposition to Applicants Se cond
`Motion for Sanctions_MELAHUE v MELABEAUTY_Opposition Number
`91272175_Jhonelle Beauty Cosmetics EE Inc v MelaBeauty LLC.pdf(110907
`bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Jhon'elle Beauty Cosmetics EE, Inc.,
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`Opposition Proceeding Number - 91272175
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`Opposer,
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`v.
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`MelaBeauty LLC,
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`Applicant.
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`Applicant’s U.S. Serial Number - 90334676
`Applicant’s Trademark - MELABEAUTY
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`APPLICANT’S REPLY TO OPPOSER’S RESPONSE IN OPPOSITION TO
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`APPLICANT’S SECOND MOTION FOR SANCTIONS AGAINST OPPOSER
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`I.
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`Introduction
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`Opposer appears to be confused as to the reason that Applicant filed a second motion for
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`sanctions. Applicant’s Second Motion for Sanctions focuses specifically on Opposer’s Reply to
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`Applicant’s Response in Opposition to Opposer’s Motion for Sanctions, which demonstrates Opposer’s
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`continued improper conduct in filing motions and papers with the Board. Applicant’s Second Motion for
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`Sanctions specifically details the need for such Motion. Applicant’s Motion states that “[a]fter being
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`served with a Motion for Sanctions, Opposer doubled down by filing another paper with the Board1,
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`which contains unsupported allegations, incorrect information, and cites to cases in which the facts at
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`issue were entirely different from the facts in this proceeding” [and that] “[t]he unfair nature of Opposer’s
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`conduct is furthered by the prohibition against the filing of a surreply, thereby preventing Applicant from
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`responding to the unsupported and incorrect statements that Opposer has made against Applicant”. 43
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`TTABVUE at 1-2. Applicant complied with the safe harbor provision of Rule 11, and therefore Opposer
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`had full opportunity to amend or remove the offending portions of Opposer’s Response. Moreover, by
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`1 40 TTABVUE - Opposer’s Reply to Applicant’s Response in Opposition to Opposer’s Motion for
`Sanctions.
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`1 of 6
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`filing a new Motion seeking sanctions, Applicant provided Opposer with a fair opportunity to respond to
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`Applicant’s concerns. If Applicant had added these concerns to Applicant’s Reply to Opposer’s
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`Opposition to Applicant’s First Motion for Sanctions, Opposer would have been deprived of a fair
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`opportunity to respond to Applicant’s concerns, as sur-replies are not permitted in proceedings before the
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`Board. See 37 C.F.R. § 2.127(a); Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc.,
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`74 USPQ2d 1672, 1677 (TTAB 2005); No Fear Inc. v. Rule, 54 USPQ2d 1551, 1553 (TTAB 2000).
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`II.
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`Argument
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`Opposer’s Response to Applicant’s Second Motion for Sanctions fails to address numerous
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`concerns, thereby conceding such issues, and further demonstrating the need for sanctions to be entered
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`against Opposer. Rather, Opposer focuses on repeating their baseless claims which Applicant has already
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`addressed. Opposer continues to focus on Applicant’s nominal advertising costs, which serve no purpose
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`in this proceeding, and of which Applicant has not sought to rely upon (Applicant’s trial period has not
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`commenced yet).
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`Opposer’s continued focus on Facebook vs. Instagram only highlights the lack of due diligence
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`and/or disregard for Opposer’s obligations in filing motions and papers with the Board. Opposer clearly
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`has at least a modicum amount of familiarity with Facebook and Instagram, as Opposer’s responses to
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`Applicant’s discovery requests contain screenshots of Opposer’s Facebook and Instagram pages. See
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`Exhibits 11-15. The Facebook and Instagram mobile applications contain distinct navigation icons on the
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`bottom portions of the applications. Despite Opposer’s claims to the contrary, the documents produced by
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`Applicant
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`in response to Opposer’s discovery requests in regards to advertising are clearly from
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`Instagram, not Facebook, as evidenced by the menu icons on the bottom of each page. See 38 TTABVUE
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`(Opposer’s Trial Exhibits 075-085)2; 46 TTABVUE Exhibits 1-10 3. Applicant cannot say with certainty
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`2 Applicant notes that Applicant cannot view 38 TTABVUE as it was filed as confidential, and that on the
`same date as 38 TTABVUE was filed, Opposer sent to Applicant confidential documents that were
`produced by Applicant in response to Opposer’s discovery requests. Therefore, Applicant presumes that
`such documents were filed as 38 TTABVUE.
`3 Applicant has made of record evidence which demonstrates the distinct nature of the Facebook and
`Instagram navigation icons.
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`why the “product type” is listed as Facebook, and can only presume this has to do with Instagram being
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`owned by Facebook. Nonetheless, the exhibits are obviously screenshots from Applicant’s Instagram
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`account.
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`Opposer’s Response to Applicant’s Second Motion for Sanctions again alleges that Applicant has
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`fabricated evidence, which is unfounded and offensive. Additionally, Opposer continues to focus on
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`Applicant not providing documents showing specific advertising posts on Instagram. However, it is
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`crucial to note that Opposer’s discovery requests to Applicant did not request such documents. Two of
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`Opposer’s document requests to Applicant contain references to ‘advertising’. Opposer’s Request for
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`Production 3 asks Applicant to “[p]rovide all “DOCUMENTS” and “THINGS” that shows [sic] the
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`Applicants advertising expenditure [sic] for Applicant’s mark for its goods from 2016 to present”. See 40
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`TTABVUE at 13-15. Applicant produced receipts documenting Applicant’s advertising expenditures that
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`Applicant had within Applicant’s possession, custody, and/or control. Opposer’s Request for Production
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`24 asks Applicant
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`to “[p]rovide all “DOCUMENTS” and “THINGS” that shows that shows [sic]
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`advertising in 2016, 2017, 2018, 2019 of the word “MELA” or MELABEAUTY”. See id. As the exhibits
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`documenting Applicant’s advertising expenditures establish, Applicant’s first advertisements took place in
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`November of 2020. Opposer’s Request for Production 24 specifically asks for documents from the years,
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`2016, 2017, 2018, and 2019, years that are prior to Applicant commencing advertising. Additionally,
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`Opposer continues to allege that Applicant
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`intentionally provided incorrect
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`information regarding
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`Applicant’s advertising expenditures, providing the signature page of an affidavit, without producing that
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`affidavit at issue (which was thereafter superseded by a new affidavit to address the mistake made by
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`Applicant). Nonetheless, the Board does not review evidence and testimony until the proceeding is ready
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`to be decided by the Board. See TBMP 502.01; Carl Karcher Enterprises Inc. v. Carl’s Bar & Delicatessen
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`Inc., 98 USPQ2d 1370, 1371-72 n.2 (TTAB 2011); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1263 (TTAB
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`2003) (citing Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1233 (TTAB 1992)) (citation omitted); and
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`New York State Office of Parks and Recreation, v. Atlas Souvenir & Gift Co., 207 USPQ 954, 956
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`(TTAB 1980) (citing Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc., 182 USPQ 572 (Comr.,
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`1974) and K&S Corset Manufacturing Co., Inc. v. Hanskat, 79 USPQ 89 (Comr., 1948)).
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`Opposer continues to assert
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`that Applicant should not be permitted to introduce certain
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`information and exhibits related to Applicant’s advertising expenses. Opposer continues to ignore the fact
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`that Applicant has not sought to introduce such evidence, and that the Board does not rule upon motions
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`in limine. This is despite Opposer being made aware numerous times of precedent that the Board does not
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`entertain motions in limine. See 39 TTABVUE at 6; 43 TTABVUE at 2; 44 TTABVUE at 1. Opposer has
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`once again cited Panda Travel, despite the facts in that proceeding being distinct from those at issue in
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`this matter. See Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d 1789 (TTAB 2009).
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`Additionally, Opposer again alleges that Applicant has intentionally withheld information and documents
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`related to Applicant’s nominal advertising costs. Opposer’s allegations are unsupported, and Opposer has
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`received such information and documents from Applicant.
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`Opposer does not address the fact that Opposer cited a non-existent case in Opposer’s Reply to
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`Applicant’s Response in Opposition to Opposer’s Motion for Sanctions.4 Opposer also failed to address
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`Opposer’s attempt to support their baseless claims with citations to cases in which the facts were distinct
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`from those in this matter, eg. United Construction Products, Inc. v. Tile Tech, Inc., 843 F.3d 1363 (Fed
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`Cir. 2016) (quoting United Constr. Prods., Inc. v. Tile Tech, Inc., No. 2:14-cv-08570-R-VBK, 2015 WL
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`7776795, at *5-6 (C.D. Cal. Dec. 1, 2015)) (Tile Tech admittedly destroyed evidence, and the court
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`determined that “Tile Tech ‘demonstrated a lack of respect for virtually every . . . deadline in this case,”
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`such that “there is no assurance that this matter can proceed to trial on the true facts’.”); Benedict v. Super
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`Bakery, Inc., 665 F.3d 1263, 1268 (Fed. Cir. 2011) (“two years of failure to comply with discovery
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`requests and orders”); Baron Philippe de Rothschild S.A. v. Styl-Rite Optical Manufacturing Co., 55
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`4 As set forth by Applicant in Applicant’s Second Motion for Sanctions, “Opposer cites to a case which
`does not exist according to the citation that Opposer provided (In re American Greetings Corp., 74
`USPQ2d 1470 (TTAB 2005)). The case located at
`the citation, 74 USPQ2d 1470, was a patent
`infringement matter in which jurisdiction was at issue. Further, In re American Greetings Corp. is a 1985
`ex parte appeal dealing with descriptiveness, and not remotely on point with the facts at issue in this
`proceeding. See In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985)”.
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`USPQ2d 1848, 1854 (TTAB 2000) (pattern of delays, and willful disregard for a Board order). Applicant
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`further notes that this is not the first time that Opposer has cited United Construction Products, seeking to
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`equate the facts in this matter with the extremely distinct circumstances in that case.5 See United
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`Construction Products, Inc. v. Tile Tech, Inc., 843 F.3d 1363. As Opposer has chosen not to address any
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`of these issues, they should be treated as conceded, and provide support to Applicant’s argument that
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`sanctions should be entered against Opposer.
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`III.
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`Conclusion
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`Applicant and the Board should not continue to be subjected to the need to defend against
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`baseless allegations within motions and other papers filed by Opposer, which are incoherent and rely upon
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`irrelevant and non-existent cases, and which only serve to delay this matter and waste the Board’s and
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`Applicant’s resources. Applicant’s request that the Board enter a sanction that Opposer be required to
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`obtain authorization from the Board to file any further motions in this proceeding is both reasonable and
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`warranted under the circumstances. Moreover, such a sanction would not prevent Opposer from filing
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`motions that are germane. Nonetheless, based on the fact that Opposer continues to eschew their
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`responsibilities to adhere to all rules and regulations that govern proceedings before the Board, entry of a
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`judgment against Opposer is warranted.
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`Dated: July 23, 2023
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`Respectfully submitted
`on behalf of Applicant,
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`/Jeffrey Sturman/
`Jeffrey Sturman, Esq.
`Sturman Law, LLC
`8700 E Jefferson Ave # 371706
`Denver, CO 80237
`Phone: 720-772-1724
`Attorney for Applicant
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`5 36 TTABVUE at 8; 40 TTABVUE at 8.
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`CERTIFICATE OF SERVICE
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`I, Jeffrey Sturman, as attorney for Applicant, MelaBeauty LLC hereby certify that a true and
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`complete copy of Applicant’s Reply to Opposer’s Response in Opposition to Applicant’s Second Motion
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`for Sanctions was served upon Opposer, Jhon'elle Beauty Cosmetics EE, Inc. by sending the filed
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`documents on July 23, 2023,
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`to the correspondence email addresses as listed on TTABBVUE,
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`jhonellebeautycosmeticsee@gmail.com, info@jhonellebeautycosmeticsee.com
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`/Jeffrey Sturman/
`Jeffrey Sturman, Esq.
`Sturman Law, LLC
`8700 E Jefferson Ave # 371706
`Denver, CO 80237
`Phone: 720-772-1724
`Attorney for Applicant
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`6 of 6
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