IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`x
`
`CALVIN KLEIN TRADEMARK TRUST and
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`CALVIN KLEIN, INC.
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`Cancellation N0. 92042384
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`Petitioners,
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`Mark: CALVIN
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`v.
`
`Reg. No. 1,039,306
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`CALVIN CLOTHING COMPANY, INC.
`
`Registrant
`
`x
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`REGISTRANT’S MOTION FOR SUMMARY JUDGMENT
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`Registrant, Calvin Clothing Company, Inc. (”Calvin Clothing”) by and through its
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`counsel, hereby moves for summary judgment in its favor in the above-captioned proceeding.
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`PRELIMINARY STATEMENT
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`Under United States Trademark Law, abandonment occurs when use of a mark has been
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`discontinued with no intent to resume use, or when the owner engages in some course of
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`conduct that causes the mark to become generic. 15 U.S.C. § 1127. Neither of these two things
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`has happened here, and Petitioner will not be able to produce any evidence to the contrary.
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`Rather, Registrant (or its predecessors) has been using the CALVIN mark, the subject of
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`Reg. No. 1,039,306, in connection with men's suits and sport coats, continuously since the late
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`1960's or early 1970's. There has never been any cessation of use of the mark. Additionally,
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`there has been no allegation (nor could there be) that the mark has become generic. Simply put,
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`petitioner was under the rnisimpression that the mark was not in use during the 1990's. But
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`testimony from two independent third—party witnesses has confirmed that indeed it was.
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`FACTUAL AND PROCEDURAL BACKGROUND
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`Registration No. 1,039,306:
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`The CALVIN mark for men's suits and sport coats was first filed in 1975 by the Calvin
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`Clothing Corporation. The mark registered on May 11, 1976 under Registration No. 1,039,306.
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`In 1982, the Calvin Clothing Corporation became a wholly-owned subsidiary of the
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`Palm Beach Company. See Deposition of Henry Siegal (”Siegal Tr.”) 12 (attached to the
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`Declaration of Jenifer deWolf Paine (”Paine Decl.”) at Exhibit B).
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`In 1989, the mark came under the ownership of Palm Beach Company when Calvin
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`Clothing Corporation was merged into the Palm Beach Company. See Paine Decl. ‘H 3 and
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`Exhibit A thereto.
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`In 1996, Palm Beach Company sold the mark to Registrant, Calvin Clothing Company.
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`Declaration of James Alperin (”Alperin Decl.”) 1} 1.
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`The Calvin Menswear Business:
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`Historically, Calvin Clothing Corporation had two divisions — a boys’ division and a
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`men's wear division. Siegal Tr. 7 — 9. The company sold men's tailored clothing under the
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`CALVIN label through its men's division. Id. However, men's tailored clothing was also sold
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`through the boys’ division See Deposition of Gary Bader (”Bader Tr.”) 20 - 22.
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`Beginning in the 1970's, Gold Star Mfg., AAA Trouser, and Mayflower Mfg., all Scranton
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`PA-based businesses owned by the Alperin family, were key trouser suppliers to Calvin
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`Clothing Corporation. These businesses supplied, among other things, men's suit trousers to
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`

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`
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`Calvin Clothing Corporation. Alperin Decl. 1] 2; Siegal Tr. 25 — 26. These businesses would cut
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`and sew pants, and sew labels into the pants. Alperin Decl. 1] 2; Siegal Tr. 25 — 26. It was the
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`Alperin family that later, in 1996, purchased the Calvin Clothing business and now owns and
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`operates Registrant, the Calvin Clothing Company. Alperin Decl. 11 1, 2, 8. Between the 1970's
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`and up until the 1996 purchase, the Alperin family businesses were producing men's tailored
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`pants and sewing the CALVIN label into them for the Calvin Clothing Corporation, and thus
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`Iames Alperin has personal knowledge that, at a minimum, men's tailored pants were being
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`sold under the CALVIN trademark. Alperin Decl. 1[ 2.
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`Henry Siegal was the President of The Calvin Clothing Corporation from 1982 — 1992.
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`Petitioners deposed Mr. Siegal in connection with this proceeding on November 5, 2004. Mr.
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`Siegal no longer has any relationship with Calvin Clothing and is a disinterested third party in
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`this Proceeding.
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`Henry Siegal started working for The Calvin Clothing Corporation (then run by his
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`father, Calvin Siegal), during summers when he was in school, and started working for the
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`company full time in 1975. Siegal Tr. 6. He assumed management responsibilities in the late
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`1970's, and in approximately 1982, he became President of the company. Siegal Tr. 6 - 7. When
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`he was a manager in the late 1970's and early 1980's, the company was selling men's tailored
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`clothing under the CALVIN label. Siegal Tr. 9. Mr. Siegal has testified that Calvin Clothing
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`Corporation continued to sell men's tailored clothing throughout his tenure at the company,
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`which ended in 1992. Siegal Tr. 13, 14. In fact, Mr. Siegal testified that:
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`A. We had Calvin For Men. We had Calvin. It goes back and
`forth.
`I mean we were Calvin Clothing. Every day we were
`selling Calvin manufactured products. Some went out with
`Calvin For Men; some Calvin for Boys. Some went out with
`Calvin for somebody else, Evan Picone. We were Calvin Clothing,
`so there were lots of product going out with Calvin labels. Some
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`

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`of it was Calvin For Men; some of it was -- like Calvin for
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`Girnball‘s, I know there were — that may have gone to boys,
`students or men's, if we didn't have this label in stock. We
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`weren't that pure.
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`Mr. Siegal summed it all up as follows:
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`. During the time that you were associated with Calvin
`.
`.
`Q.
`Clothing, do you have any knowledge that Calvin Clothing ever
`discontinued the use of the trademark Calvin in connection with
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`men's suits or sport coats?
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`A. No, we did not.
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`Gary Bader has been both a customer of Calvin Clothing and a salesman for Calvin
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`Clothing. Petitioners deposed Mr. Bader in connection with this proceeding on November 4,
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`2004 after serving him with a subpoena. Other than as a customer, Mr. Bader has no
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`relationship with Calvin Clothing and is a disinterested third party in this Proceeding.
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`Mr. Bader is the owner and operator of a clothing store in Cedarhurst, New York called
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`Boys World of Cedarhurst, which has been in business since 1988. Bader Tr. 8, 12. He currently
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`buys men's-sized suits from Calvin Clothing to sell in his store, and has been for
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`approximately six years, or since 1998. Bader Tr. 13 - 17.
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`Additionally, from January of 1993 through 1996, Mr. Bader was employed by Calvin
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`Clothing as a salesperson for the New York Metropolitan area. Bader Tr. 18. He stopped
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`working for Calvin Clothing around the time it was purchased by Mr. Alperin. Bader Tr. 20.
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`Mr. Bader testified that as a salesman for Calvin Clothing, he sold ”tons” of men's sized suits
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`and sport coats under the CALVIN label. Bader Tr. 20 - 21. Mr. Bader specifically recalled that
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`he had two separate order forms, one for men's sizes, and one for boys’ sizes. Bader Tr. 21 - 22.
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`In fact, some of Mr. Bader’s customers only purchased men's sizes from him. Bader Tr. 22.
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`*
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`*
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`*
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`

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`
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`In March of 1996, the Calvin Clothing Company, owned by the Alperin family,
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`purchased the Calvin Clothing business from Palm Beach, including Reg. No. 1,039,306, as an
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`on-going business complete with inventory. Alperin Decl1[ 8 and Exhibit 6 thereto. Shortly
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`after the purchase, James Alperin, on behalf of Registrant, signed the renewal application for
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`Reg. No. 1,039,306. Alperin Decl. 1] 9.
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`During the negotiation of the purchase, it was a condition of the seller that an exclusive
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`license to use the CALVIN mark on men's wear be granted back to Palm Beach Company, Inc.
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`Alperin Decl. 1111 3 - 6. Mr. Alperin took care to insist that a clause be contained in the license
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`to Palm Beach that if the CALVIN mark were not used for two consecutive years, or if Palm
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`Beach went out of the men's tailored business, that the license would terminate and all rights
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`revert to Registrant. Alperin Decl. 11 7 and Exhibit 6 thereto. The license was executed as of
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`April 1, 1996. Id.
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`On or about September 14, 1998, Mr. Alperin saw Jim Murray, the President of Palm
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`Beach, and asked if the CALVIN mark was in use on menswear. Mr. Murray advised him that
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`it was not. Pursuant to the terms of the license, Mr. Alperin terminated it by letter dated
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`November 6, 1998. Alperin Decl. 11 1] 10, 11 and Exhibit 7 thereto.
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`Immediately upon learning that Palm Beach was not using the CALVIN mark on men's
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`tailored clothing and that the license would therefore be terminating, Registrant commenced
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`production of men's suits and sport coats under the CALVIN label. Registrant received its first
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`order for CALVIN men's suits on November 1, 1998, and the product shipped on April 1, 1999.
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`Registrant has been selling CALVIN-label men's suits continuously since that time, with
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`current sales of approximately $1 million per year. Alperin Decl. 11 12, 13, 14.
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`*
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`*
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`*
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`In short, Mr. Siegal has testified that for as long as he was associated with Registrant,
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`

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`from the late 1970's through 1992, Registrant was selling men's suits under the CALVIN
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`trademark. Mr. Bader has testified that from January of 1993 through 1996, he sold numerous
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`men's suits for Calvin Clothing. And Mr. Alperin can testify that (a) he took steps to ensure a
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`reversion of rights in the event the licensee of the CALVIN mark for men's clothing did not use
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`the mark; (b) as soon as he discovered the licensee's non-use, he terminated the license
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`pursuant to its terms; and (c) immediately upon learning that the license would be terminating
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`he commenced production of men's suits under the CALVIN label.
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`ARGUMENT
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`Summary judgment is appropriate when no genuine issue of material fact exists to be
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`tried and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c); see
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`also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Anderson 12. Liberty Lobby, Inc., 477 U.S.
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`242, 250 (1986). A disputed material fact is only genuine if the evidence is such that a
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`reasonable jury could return a verdict for the nonmoving party. Anderson, 477 U.S. at 250.
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`I.
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`The CALVIN Trademark Has Not Been Abandoned.
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`Under United States trademark law, a mark is abandoned when:
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`(1) "its use has been discontinued with intent not to resume such
`use .
`.
`. Nonuse for 3 consecutive years shall be prima facie
`evidence of abandonment;” or (2) When any course of conduct of
`the owner .
`.
`. causes the mark to become the generic name for the
`goods or services on or in connection with which it is used or
`otherwise to lose its significance as a mark.”
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`15 U.S.C. § 1127. Neither of these two things have happened here, and Petitioner cannot
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`produce any evidence to the contrary.
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`

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`
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`As demonstrated by the testimony of Mssrs. Siegal and Bader, and the Declaration of
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`James Aplerin, the mark at issue was in continuous use from the late 1970's through 1996, and
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`then from March of 1999 through the present. The only period when the mark was not
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`arguably in use on men's suits and sport coats was when it was licensed to Palm Beach.
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`Registrant is willing to assume for purposes of this Motion that Palm Beach did not use the
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`mark during the time it was licensed. But (a) the inclusion in the license of the right of
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`termination in the event of non-use and (b) the fact of termination of the license once non-use
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`was discovered, shows a clear intention to resume use.1 Intent not to resume use is a required
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`element of abandonment, and Petitioners can show absolutely no evidence of any intention not
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`to resume use. Registrant always had the intention to exploit the CALVIN mark on men's suits
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`and sportcoats; Registrant specifically made sure in the license that it would be able to resume
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`use if Pahn Beach's use ceased. Alperin Decl. 1] 16.
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`Additionally, even during the period when the license was in effect, Registrant was
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`nonetheless selling men's sizes through its students’ line, and selling some of these sizes to men.
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`See Bader Tr. 15 - 16; Alperin Decl. 1] 15. Mr. Bader testified that he has been buying these men's
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`sized suits from Registrant since 1998. Bader Tr. 15 - 16.
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`In addition, Petitioners cannot meet the threshold for a prima facie case of abandonment
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`through non-use of three consecutive years as provided in 15 U.S.C. § 1127. Mr. Bader has
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`testified that he sold men's suits and sport coats throughout his employment with Calvin
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`Clothing, which ended in 1996. The license to Palm Beach was dated April 1, 1996, and, even
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`1 See, e.g., Miller Brewing Co. v. Oland’s Breweries (1971) Ltd., 548 F.2d 349 (C.C.P.A. 1976) (renewal of
`license constituted evidence of lack of intent to abandon mark); Sands Taylor <9 Wood 21. Quaker Oats Co.,
`18 U.S.P.Q. 2d 1457 (N.D. Ill. 1990), ajfd in part, rev’d in part, 978 F.2d 947 (7th Cir. 1992) (agreement of sale
`included a license back, which constituted evidence of intent to resume use); See also, Parson's Co. v.
`Christman, 9 U.S.P.Q.2d 1477 (T.T.A.B. 1988) (attempt to sell rights to mark is inconsistent with intent to
`abandon).
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`

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`assuming that beginning on day 1 of the license the mark was not in use, and even disregarding
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`Registrant's continued use on men's sizes sold as part of its students’ line, the mark was in use
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`again less than three years later, in November of 1998.
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`In opposing a motion for summary judgment, Petitioners ”may not rest upon the mere
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`allegations or denials of [its] pleading, but [its] response, by affidavits or .
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`.
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`. otherwise .
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`.
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`. must
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`set forth specific facts showing that there is a genuine issue for trial.” Fed. R. Civ. P. 56(e).
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`Finally, disputes over peripheral facts cannot defeat summary judgment. ”Only disputes over
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`facts that might affect the outcome of the suit under the governing law will properly preclude
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`the entry of summary judgment.” Anderson, 477 at 248. Petitioners have no affirmative
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`evidence that the CALVIN trademark was discontinued with an intent not to resume use.
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`Rather, Petitioners merely had a belief, and that belief has been belied by the testimony of two
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`witnesses subpoenaed by Petitioners themselves.
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`Petitioners may attempt to argue that because Henry Siegal testified that he believed the
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`mark that was used on men's clothing during his tenure was CALVIN FOR MEN, rather than
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`CALVIN, that Registrant thus was not using the CALVIN trademark, at least for the period of
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`Mr. Siegal's tenure, which was from the late 1970's through 1992. This argument fails for
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`several reasons. First, Mr. Siegal also testified that it was possible that the CALVIN trademark
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`was used on men's clothes. Siegal Tr. 11. Second, Mr. Bader testified that he personally sold
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`men's suits bearing the CALVIN trademark to customers throughout his tenure, which ended
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`in 1996. Finally, even if this allegation were true, use of the mark CALVIN FOR MEN would
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`constitute use of the trademark CALVIN as a matter of law. The ”FOR MEN” portion of the
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`mark is purely descriptive. It has been repeatedly held that a change in a mark that does not
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`affect the distinctive characteristics of the mark represents a continuity of the prior mark. See,
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`e.g., Healing Children, Inc. v. Heal Children, Inc., 786 F. Supp. 1209 (W.D. Pa. 1992); Pacific
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`

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`International Rice Mills, Inc. 12. Rice Growers Ass’n, 14 U.S.P.Q. 2d 1659 (E.D. Cal. 1989); Schieflielin
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`8* Co. v. The Molson Cos., 9 U.S.P.Q. 2d 2069 (T.T.A.B. 1989); Sands Taylor 8 Wood Co. v. Quaker
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`Oats Company, 978 F.2d 947 (7th Cir. 1992).
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`II.
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`There Was No Abandonment Through Naked Licensing.
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`Petitioners have alleged that Calvin Clothing abandoned the mark CALVIN for men's
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`tailored clothing by licensing the mark to Palm Beach without sufficient exercise of quality
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`control. However, given that there is no evidence that Palm Beach ever used the CALVIN
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`trademark in connection with men's clothing, there was no quality for Registrant to exercise
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`control over. Registrant had the right to exercise control over the quality of the goods produced
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`under the license pursuant to the license agreement. See Exhibit 6 to Alperin Decl. But this
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`right turned out to be moot, as there is no evidence that goods were produced pursuant to
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`license.
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`The purpose behind quality control requirements is to prevent a fraud on the public, as
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`it is inherently deceptive. See, e.g., Dawn Donut Co. v. hart’s Food Stores, Inc., 267 F.2d 358, 367
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`(2d Cir. 1959). Therefore, if the public is not encountering the trademark on the licensed
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`products, then there is nothing to protect, and quality control requirements have no relevance.
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`Suffice it to say that Petitioners have no evidence that the alleged lack of quality control in this
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`case resulted in a loss of trademark significance of the CALVIN mark as applied to men's
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`tailored clothing. Petitioners will be unable to meet the ”strict" and ”stringent” burden of proof
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`required to establish loss of trademark significance through alleged naked licensing?
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`2 See, e.g., The Nestle Company Inc. v. Nash—1'-‘inch Co., 4 U.S.P.Q. 2d 1085 (T.T.A.B. 1987); Creative Gifts, Inc. v.
`LIFO, 235 F.3d 540, 548 (10th Cir. 2000); Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1075 - 76 (5th
`Cir. 1997); Amer 12. Sharper Image Corp., 39 U.S.P.Q. 2d 1282, 1288 (C.D. Cal. 1995); American Foods, Inc. v.
`Golden Flake, Inc., 312 F.2d 619, 624-25 (5th Cir. 1963).
`
`

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`
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`III.
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`There Was No Fraud On The Trademark Office.
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`Petitioners have alleged that Registrant committed fraud on the Trademark Office by
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`submitting a renewal application for Reg. No. 1,039,306 that swore that the mark was in use
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`when it was not. But, as has been demonstrated above, the mark was in use. Petitioners’ fraud
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`claim is ancillary to and entirely dependent upon the validity of the abandonment claim.
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`Because Petitioners’ abandonment claim fails, Petitioners’ fraud claim does as well.
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`CONCLUSION
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`There is no genuine issue of fact in dispute that the CALVIN mark was ever
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`discontinued with an intention not to resume use, or that it was discontinued for three
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`consecutive years. Petitioner cannot produce no evidence to the contrary. Accordingly, the
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`Board should grant summary judgment in favor of Registrant.
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`Dated: December 23, 2004
`
`New York, New York
`
`PROSKAUER ROSE LLP
`
`By:
`
`
`
`Ie ' er deWolf Paine
`1585 Broadway
`New York, New York 10036
`
`(212) 969-3000
`Attorneys for Registrant
`
`_
`_
`CERTIFICATE OF’ MAILl_NG
`I
`hueby certify that this correspondence is berng deposited with
`Po
`8
`'
`first
`In mail in an envelope
`2:dr‘eJsnsl:1dn§:m(‘2e:mm$ioxr:rNfl§: Egadenrzfrk:2900 Crystal Drive.
`OE
`Arlington, Virginia 2
`0 -3513 on the -=
`'
`0?\,
`
`/I/-Z/t
`.
`
`
`
`10
`
`

`
`
`
` '
`ed does fereby certify that on December 23, 2004, I caused a true and
`g Motion For Summary Judgment to be served on Counsel for
`correct copy of the
`Petitioner by hand delivery as follows:
`
`Barry Cooper, Esq.
`Richard Schurin, Esq.
`Gottlieb Rackman & Reisman, P.C.
`270 Madison Avenue
`
`New York, NY 10016
`
`‘ «flog
`deWo Paine
`
`]e
`
`11
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`

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`12/23/04 THU 13:23 FAX
`
`@002
`
` THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`X
`
`CALVIN KLEIN TRADEMARK TRUST and
`
`CALVIN KLEIN, INC.
`
`Cancellation No. 92042384
`
`Opposers,
`
`I
`
`Mark: CALVIN
`
`v.
`
`Reg. No. 1,039,306
`
`CALVIN CLOTHING COMPANY, INC.
`
`Applicant
`
`DECLARATION OF JAMES ALPERIN
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`I, James Alperin, do hereby state under oath:
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`1.
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`I am the President of Calvin Clothing Inc. (”Calvin Clothing"). My company
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`(formerly Alperin, Inc.) purchased Calvin Clothing on March 28, 1996. In my capacity as
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`President of Calvin Clothing and as chairman of the former Alperin, Inc., I am intimately
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`familiar with the purchase of Calvin Clothing and the current day-to-day operations of Calvin
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`Clothing.
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`2.
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`My family has been in the clothing business since 1946. Starting at some point in
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`the 1970’s, several of my family's business (including Gold Star Mfg., AAA Trouser, and
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`Mayflower Mfg.) were suppliers of trousers to the Calvin Clothing Corporation ("Calvin
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`Clothing). Among other sizes, my family supplied finished tailored trousers for men's suits to
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`Calvin Clothing. We would sew the labels supplied to us by Calvin Clothing into the pants
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`before delivering them. I was in charge of production scheduling between 1988 and the
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`12/23/04 THU 13:24 FAX
`all
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`oo3
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`acquisition of Calvin Clothing in 1996, and have intimate knowledge of the labeling instructions
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`supplied with all of the production orders issued by Calvin Clothing. I personally recall
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`overseeing the production of CALVIN-branded men's tailored pants to Calvin Clothing,
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`starting in the 1933 and continuing until the purchased of Calvin Clothingin 1995.
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`3.
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`On or about January 25, 1996, my agent Allen Ellinger of Marketing Management
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`Group, Inc. sent a proposed ”Letter of Intent” to Dennis McNamara, Senior V.P. and General
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`Counsel of Palm Beach Company, outlining the terms of the acquisition. A copy of this
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`proposed Letter of Intent is attached as
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`4.
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`On or about January 26, 1996, Plaid Clothing (the parent company of Palm
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`Beach) faxed to us a mark-up of the Letter of Intent. On page 2, under the heading ”Intangible
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`Assets”, Plaid had added a provision that "Seller will retain the trademark for use in the sale of
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`men's tailored clothing." A copy of this mark-up is attached as
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`5.
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`On or about January 30, 1996, my agent sent another draft Letter of Intent to
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`Dennis McNamara of Palm Beach. On or about February 1, 1996, Palm Beach faxed back a
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`mark-up of the Letter of Intent, again with a comment on page 2 that there would be a license
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`"for the use of all trademarks currently used by Seller in the sale of men's tailored clothing
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`including licenses." A copy of this mark-up is attached as
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`6.
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`As a result of negotiations with Palm Beach, the Letter of Intent eventually
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`provided that "Buyer will provide Seller with a royalty-free perpetual license to use the name
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`”
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`vin" for the manufacture and sale of men's tailored clothing." A copy of the signed
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`February 19, 1996 Letter of Intent with this provision is attached as
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`7.
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`As a result of Palm Beach's insistence on this provision, I in turn insisted that the
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`license to Palm Beach for the CALVIN mark in connection with men's taflored clothing include
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`2
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`1‘2/23/04
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`THU 13:24 FAX
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`004
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`a provision that the license would terminate if Palm Beach "sells no Licensed Products for two
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`consecutive Contract Years, or goes out of business in the Licensed Products.” A copy of the
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`CALVIN License Agreement as it was executed is attached hereto as
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`8.
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`As of March 28, 1996, the Calvin Clothing Company, owned by my family,
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`purchased the Calvin Clothing business from Palm Beach, including Reg. N0. 1,039,306, as an
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`on-going business complete with inventory. Attached as §xl_I@it_6 is an executed copy of the
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`purchase and sale agreement.
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`9.
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`On or about May 11, 1996, shortly after the purchase, I signed the renewal
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`application for Reg. No. 1,039,306 on behalf of the Calvin Clothing Company. When I signed
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`the renewal application, Ihad personal knowledge that the CALVIN mark was being used in
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`connection with men's suits and sportcoats because my family’s business had been making
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`pants for men's suits for Calvin Clothing. Additionally, I had recently entered into a
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`transaction by which Palm Beach had insisted on a license to use the CALVIN name in
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`connection with men's tailored clothing.
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`10.
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`On or about September 14, 1998, I saw Jim Murray, the President of Palm Beach,
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`at a tradeshow. I asked him if the CALVIN mark was in use on menswear. Mr. Murray
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`advised me that it was not.
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`11.
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`On November 6, 1998, I sent Mr. Murray formal notice that the license was
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`terminating pursuant to its terms. A copy of the letter I sent Mr. Murray is attached hereto as
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`The same day I had this conversation with Mr. Murray, I took steps with Calvin
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`- 1
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`2.
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`
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`Clothing’s menswear affiliate to resume use of CALVIN on men's suits. On November 1, 1998,
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`one of our largest customers, Porta Bella, placed an order for CALVIN men's suits.
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`3
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`12/23/04 THU 13:25 FAX
`xi
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`005
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`13.
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`On April 1, 1999, we had finished producing the production lots of the CALVIN
`
`men's line and shipped the order that had been placed by Porta Bella. The invoice for the Porta
`
`Bella order placed on November 1, 1998 and shipped on April 1, 1999 is attached as
`
`14.
`
`Since that time, Calvin Clothing has been selling CALVIN-label men's suits
`
`continuously. Our sales of men's suits sold under the CALVIN label are currently
`
`approximately $1 million per year.
`
`15.
`
`Although technically prohibited from selling men's tailored clothing during the
`
`period that the license to Palm Beach was in effect, Calvin Clothing did, in fact, sell men's sized
`
`suits as part of its students’ line. Calvin Clothing boys’ sized suits go up to a size Z2, which is
`
`the equivalent of a men's 39. These sizes were available for sale and sold from 1996 through
`
`the present day.
`
`16.
`
`Calvin Clothing always, from the day of the acquisition, had an intention to
`
`exploit the CALVIN mark on men's tailored clothing. Although the license back to Palm Beach
`
`was a necessary condition of the purchase, we made sure to include a provision that would
`
`enable us to resume use if Palm Beach's use ever ceased. Calvin Clothing has absolutely never
`
`had any intention to abandon the CALVIN trademark in connection with men's suits and sport
`
`Coats.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Date: December 23, 2004
`
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`CERTIFICATE OF SERVICE
`
`A" d does hereby certify that on December 23, 2004, a true and correct copy
`The undersi
`of the foregoing Declaration of James Alperin was served by hand delivery on counsel for
`Opposers at the following address:
`
`Barry A. Cooper, Esq.
`Richard Schurin, Esq.
`Gottlieb Rackman 8: Reisman, P.C.
`270 Madison Avenue
`
`New York, NY 10016
`
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`
`MARKETING MANAGEMENT GROUP, INC.
`111 West 40th Street
`Suite 1100
`NewYorl£. NY 10018
`
`January 25, 1996
`
`Dennis P. McNamara, Esq.
`Senior Vice President and General Counsel
`Palm Beach Company
`730 Fifth Avenue
`New York, NY 10019
`RE;
`Acquisition ofCertain Assets ofthe Calvin Youthwear Division or
`
`‘
`
`Palm Beach Company
`
`Dear Mr. McNamara:
`
`Vifith further reference-to our ongoing discussions concerning the above matter, Marketing
`perin, Inc. has been authorized to enter into
`Management Group, Inc. (“MIMG”) as advisors to Al
`the within non-legally binding Letter ofIntent for the acquisition by Alperin, Inc. or its designee
`(“Buyer”) ofselected assets ofthe Calvin Youthwear Division ofthe Palm Beach Company
`(“Seller"). The mgor business terms hereinafier set forth in this Letter ofIntent are intended to
`be embodied in legally binding definitive agreements to be signed by the parties subject to the
`approval ofthe respective Boards ofDirectors ofBuyer and Seller.
`The Buyer is aware that Palm Beach Company is currently operating as a debtor in '
`possession in Chapter 11 along with afliliated companies and the case is pending in the United
`States Bankruptcy Court for the Southern District ofNew York TheBuyer understands that the
`sale ofthe assets as set forth herein is subject to Bankruptcy Court approval under Section 363 of
`the Bankruptcy Code. Subject to the foregoing, it is currently anticipated that the major terms
`will be as follows:
`
`1.
`
`Agggg to be Burclmsed.
`
`A.
`
`'
`
`Finished Goods - Spring 1996 Advance and Pmgpgm Orders
`
`The Buyer will purchase from Seller (1) all finished merchandise required to
`.
`cover Spring 1996 credit approved, confirmed and sized orders as ofJanuary 1, 1996 provided
`such merchandise meets first quality standards, is available on a timely basis and is or can be
`shipped within the required delivery windows as set forth in the orders and (ii) all orders relating
`
`3337.1
`
`CC
`
`858
`
`

`
`
`
`Dennis P. McNamara, Esq.
`
`Page 2
`January 25, 1996
`
`to said merchandise. To the extent merchandise meeting this definition has been shipped prior to
`closing, Buyer will be purchasing the proceeds derived from the said sales and/or the accounts
`receivable relating to same.
`
`B.
`
`Program Merchandise (filazers and Slaclg)
`
`Buyer will also purchase program merchandise as listed in Schedule “A” of
`the Calvin Youthwear Bid Sheet a copy ofwhich is attached héreto and incorporated herein by
`reference. This program merchandise will include only active (non-discontinued) styles and
`models in normal, reasonable commercial sizes as determined by Buyer.
`
`C.
`
`In-Stock Piece Goods
`
`Buyer will purchase piece goods as referenced in Schedule “B” ofthe
`Calvin Youthwear Bid Sheet, 8. copy ofwhich is attached hereto and incorporated herein by
`reference and as selected by Buyer with a maximum manufacturer's cost value of $233,700 at a
`50% discount in price so that the maximum purchase price for said in-stock piece goods will be
`$116,850.
`
`D.
`
`Cara-Over Piece Goods and Trim
`
`Buyer will purchase piece goods selected by it that are carried over from
`prior seasons and as are listed on Schedule “C” of the Calvin Youthwear Bid Sheet a copy of
`which is attached hereto, made part hereof and incorporated herein by reference. As listed on the
`Bid Sheet, the total aggregate cost to Seller for said piece goods was $111,696. The price to be
`paid for same will be 50% of said cost to Seller, or a maximum of $55,848.
`
`E.
`
`Intangible Assets
`
`Buyer will also purchase all of Seller's trade names, trademarks and
`associated goodwill, customer lists, patterns, models, trade secrets and other general intangibles
`relating to the Calvin Youthwear Division. Also, to the extent Buyer requires same, the Seller
`will provide the Buyer with its vendor numbers- The trade names will include but not be limited
`to a royalty-free 99-year license for the name Palm Beach Company and all logos relating thereto
`for use in the United States or other jurisdictions where Buyer may determine to do business
`under a licensing agreement on terms acceptable to Buyer and with no cost to Buyer. The Buyer
`recognizes that Seller will continue in business in its men’s division using the name Palm Beach
`Company.
`
`3387.!
`
`CC
`
`859
`
`

`
`Dennis P. McNamara, Esq.
`
`Page 3
`January 25, 1996
`
`F.
`
`Fixed Qsets
`
`Such omce fiirnitute, fixtures and equipment as are located at the Calvin
`,
`Youthwear sales oflice in New York City and as listed on Schedule “D" of the Calvin Youthwear
`Bid Sheet :1 copy ofwhich is attached hereto and made part hereof.
`
`G.
`
`Miscellaneous
`
`_‘
`
`To the extent not otherwise covered, the Seller shall also turn over to
`Buyer all of its unregistered trade names, patents, copyrights and tickets, labels and findings, all
`advertising materials, in-stock brochures and all packaging materials relating to the Assets being
`sold hereunder.
`
`All of the said Assets will be sold tree and clear of all liens (with liens to attach only to the
`proceeds), encumbrances, debts, liabilities, responsibilities and obligations. Except as specifically
`set forth hereirg the Buyer shall not assume any debts, liabilities, responsibilities or obligations
`(the “Liabilities”) ofthe Seller including. without limitation, any leases, contracts and other
`executory agreements, any pension liability, workers’ compensation liability or other retiremt
`benefits, any liability for employees’ severance pay or violations ofERISA, OSHA or similar
`regulations, income and other taxes, tmdisclosed or contingent liabilities, indebtedness for
`borrowed money, inter-company obligations or any and all liabilities to creditors ofthe Seller
`arising prior to or subsequent to the Seller filing for Chapter ll under the Bankruptcy Code.
`
`2.
`
`Purchase Price.
`
`It is currently anticipated that all ofthe assets referred to in Paragraph 1 hereof (the
`“Assets”) are to be purchased on the following basis and subject to the following terms and
`conditions:
`
`As to the finished goods for the Spring 1996 advance and program orders,
`A
`the Buyer will pay 45% ofthe net wholesale price for the merchandise as specified in Paragraph
`IA above to a maximum of $11,800,000. As indicated in Paragraph 1A, this includes proceeds
`and accounts receivable from shipments made on or after January 1, 1996 and up to the closing
`date.
`
`For the program merchandise as defined in Paragraph 1B above, Buyer will
`B.
`pay 45% ofthe average wholesale price billed to customers during January and February of 1996
`(and to the time ofthe Closing) to a maximum purchase price of $450,000.
`
`3331.1
`
`CC
`
`860
`
`

`
`
`
`Dennis P. McNamara, Esq.
`
`Page 4
`January 25, 1996
`
`The in-stock piece goods and the carry-over piece goods and trim will be
`C.
`purchased at the purchase prices described in Paragraphs 1C and ID.
`
`The purchase price will also include an additional payment of$200,000 to
`D.
`be allocated to the Assets being sold hereunder as determined by the Seller and Buyer. The
`allocation of the pu