BULKY DOCUMENTS
`
`(Exceeds 100 pages)
`
`Filed:
`
`8[17[2011
`
`A
`
`Title: RESPONDENT’S RESPONSE TO PETITIONER’S
`MOTION FOR PARTIAL SUMMARY IUDGEMENT.
`
`Part
`
`1of
`
`3
`
`
`
`

`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark Registration No. 3,170,149
`For the mark JEWELRY FOR LIFE
`
`Registered on November 7, 2006
`
`#73700 H06’
`
`Cancellation No. 92051437
`
`) )
`
`) )
`
`) )
`
`) )
`
`Henne Inc.,
`
`Petitioner,
`
`Vs.
`
`Worldwide JR Wood
`
`)
`Respondent.
`___m_)
`
`Respondent’s Response to Petitioner’s Motion for Partial Summary Judgement
`
`Worldwide JR Wood LLC (“Respondent”), organized under the laws of the State of
`
`Texas with its principal place of business at 14101 W. HWY 290, #900, Austin, Texas
`
`78737, Principal Register of the mark JEWELRY FOR LIFE (United States Registration
`
`No. 3,170,149) hereby responds to the Petitioner’s Motion for Partial Summary
`
`Judgement dated July 215‘, 2011 for Cancellation No.92051437.
`
`1. Referencing the 13 DuPont factors, fame of a mark can be a consideration in a
`
`trademark infringement dispute.
`
`2. Although Henne Inc. is requesting that partial summary judgment be entered
`
`in its favor in reference to the issue of likelihood of confusion, the Respondent
`
`hereby submits evidence in support of its position that, through a significant
`
`investment in advertising in national and international publications, the fame
`
`of the Respondent’s registered mark JEWLERY FOR LIFE should be
`
`Hlllllllllll|l|H1l1|lllllllllllllllIIIIHIIHIII
`
`08-17-2011
`
`U ‘S
`
`Fa.1.eL‘nl
`
`J3 TMDfc"TI‘z H511 Ficplz U: H5
`
`
`
`LLL“<1OOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOb.
`
`

`
`considered in this dispute. See Declaration of Turner C. Waugh, and exhibits
`
`attached hereto and incorporated herein by reference as “Exhibit A.”
`
`. Respondent also requests that Henne Inc.’s Motion for Summary Judgment on
`
`the issue of likelihood of confusion be denied.
`
`. Respondent also requests that the registration of the mark JEWELRY FOR
`
`LIFE (Registration No. 3170149) by Worldwide JR Wood LLC be upheld.
`
`OOOOOCOOOOOOOOCOOOOCOOOOOOOOCOCCOCOOiOOCCOCB
`
`

`
`Dated: August 15, 2011
`
`Respectfully Submitted
`
`WORLDWIDE JR WOOD
`
`dba JOHN CHRISTIAN
`
`dba CARVED CREATIONS
`
`By:
`
`T.C. Waugh, Me
`
`2 lg :
`
`er
`
`WORLDWIDE JR WOOD LLC
`
`14101 W. HWY 290, #900
`
`Austin, Texas 78737
`
`(888) 646-6466 — Phone
`(512) 858-4642 — Facsimile
`
`Representative for Respondent
`Worldwide JR Wood LLC
`
`

`
`CERTIFICATE OF TRANSMISSION AND SERVICE
`
`I certify that the foregoing RESPONSE TO MOTION FOR PARTIAL
`SUMMARY JUDGEMENT is being delivered by UNITED PARCEL SERVICE, 2"d day
`air, tracking number V2158/4 3301 ‘/36“ $3‘Kl
`to:
`
`Trademark Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`Madison East, Concourse Level Room C55
`600 Dulany Street
`Alexandria, Virginia 22314
`
`and that the foregoing RESPONSE TO MOTION FOR PARTIAL SUMMARY
`JUDGEMENT is being served by UNITED PARCEL SERVICE, 2"‘! day air, tracking
`number
`l%2E3A"l’5 01 ‘(V26
`l"l‘l5 to:
`.
`
`Stanley Ference III
`Ference and Associates
`
`409 Broad St.
`
`Pittsburg, PA 15143
`
`Attorney for the Petitioner
`
`This 15th day of August 2011.
`
`"TO
`
`T.C. Waugh
`
`'
`
`

`
`EXHIBIT A
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark Registration No. 3,170,149
`For the mark JEWELRY FOR LIFE
`
`Registered on November 7, 2006
`
`Cancellation No. 92051437
`
`) )
`
`) )
`
`) )
`
`Henne Inc.,
`
`Petitioner,
`
`Vs.
`
`Worldwide JR Wood
`'
`
`)
`)
`)
`Respondent.
`TH?)
`
`Declaration of Turner C. Waugh
`
`1. My name is Turner C. Waugh. 1 am over the age of eighteen, have never been
`convicted of a felony, and am fully qualified to make this Declaration. The
`following facts are within my personal knowledge, except as noted, and are true
`and correct. I file this Declaration under 28 U.S.C. §l746.
`
`2.
`
`I am an owner of Worldwide JR Wood LLC. 1 have personal knowledge of the
`matters contained herein.
`
`3. Respondent is the owner of registered mark JEWELRY FOR LIFE (Registration
`No. 3170149) for necklaces, pendants, bracelets, rings, watches earrings, pins
`being jewelry, in class 14 (U.S. CLS. 2, 27, 28 and 50).
`
`4. A true and correct copy of the file history of the Respondent’s Trademark
`Registration is attached hereto and incorporated herein as Exhibit 1.
`
`5. On August 25, 2005 the Application Serial No. 78700408 was filed on behalf of
`Worldwide JR Wood LLC for necklaces, pendants, bracelets, rings, watches
`earrings, pins being jewelry, in class 14 (U.S. CLS. 2, 27, 28 and 50).
`
`

`
`On April 26, 2006 the mark JEWELRY FOR LIFE was published for opposition
`by the USPTO.
`
`On August 8, 2006, Worldwide JR Wood LLC was sent a Notice of Allowance by
`the USPTO.
`
`On August 18, 2006 a Trademark Statement of Use was submitted by Worldwide
`JR Wood LLC stating first use in commerce as early as August 15, 2005.
`
`On November 7, 2006, the mark JEWELRY FOR LIFE was registered as
`Registration No. 3170149 to Worldwide JR Wood LLC.
`
`On June 4, 2009 Worldwide JR Wood LLC received a letter from Henne Inc.’s
`legal representative, Stanley Ference III requesting that Worldwide JR Wood
`contact him to discuss how to resolve the issue of the rejection of his application
`for the mark JEWELERS FOR LIFE. This was the first time that the Respondent
`had heard of Henne Inc. or its use of the term “Jewelers for Life.” (See Exhibit 2)
`
`Respondent is the owner of the registered mark JEWELRY FOR LIFE
`(Registration No. 3170149).
`
`Since 2005 Worldwide JR Wood has invested significant time and money in the
`promotion of a product known as the John Christian JEWELRY FOR LIFE
`Necklace in national and international publications. (See Exhibits 3-17)
`
`Exhibit 3 shows advertisements taken from the pages of American Airline’s
`American Way magazine for the period of April 2006 through December 2010
`showing Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR
`LIFE.
`
`Exhibit 4 shows advertisements taken from the pages of US Air’s fiche
`magazine for the period of October 2005 through November 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 5 shows advertisements taken from the pages of American Airline’s
`Celebrated Living First Class cabin magazine for the period of Summer 2006
`through Winter 2010 showing Worldwide JR Wood LLC’s use of its registered
`mark JEWELRY FOR LIFE.
`
`Exhibit 6 shows advertisements taken from the pages of Coastal Living magazine
`for the period of December 2008 showing Worldwide JR Wood LLC’s use of its
`registered mark JEWELRY FOR LIFE.
`
`Exhibit 7 shows advertisements taken from the pages of Cortinental Airline’s
`magazine for the period of February 2008 through December 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`10.
`
`ll.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`

`
`18.
`
`19.
`
`20.
`
`Exhibit 8 shows advertisements taken from the pages of Delta Airlme’s Sk
`magazine for the period of November 2005 through December 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JE v‘/ELRY FOR LIFE.
`
`Exhibit 9 shows advertisements taken from the pages of United Airlines
`Hemispheres magazine for the period of April 2006 through November 2009
`showing Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR
`LIFE.
`
`Exhibit 10 shows advertisements taken from the pages of Men’: Fitness magazine
`for the period of December 2006/January 2007 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`. Exhibit 11 shows advertisements taken from the pages of The New Yorker
`magazine for the period of December 2008 through November 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`Exhibit 12 shows advertisements taken from the pages of Northwest Airline’s
`World Traveler magazine for the period of April 2006 through March 2009
`showing Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR
`LIFE.
`
`Exhibit 13 shows advertisements taken from the pages of Private Clubs magazine
`for the period of Summer 2010 showing Worldwide JR Wood LLC’s use of its
`registered mark JEWELRY FOR LIFE.
`
`Exhibit 14 shows advertisements taken from the pages of Soathwest Airline’s
`Spirit magazine for the period of April 2006 through I\oVember 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 15 shows advertisements taken from the pages of Texas Monthly
`magazine for the period of May 2006 through November 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 16 shows advertisements taken from the pages ofTown and Country
`magazine for the period of May 2008 showing Worldwide JR Wood LLC’s use of
`its registered mark JEWELRY FOR LIFE.
`
`Exhibit 17 shows advertisements taken from the pages of Westways magazine for
`the period of May 2008 showing Worldwide JR Wood LLC ‘s use of its registered
`mark JEWELRY FOR LIFE.
`
`Since 2008 Worldwide JR Wood has invested significant time and money in the
`promotion of the brand Carved Creations and its website www.ccfor1ife.com
`which uses JEWELRY FOR LIFE as its tagline. (See Exhibits 18-63)
`
`

`
`29.
`
`30.
`
`31.
`
`32.
`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`39.
`
`Exhibit 18 shows advertisements taken from the pages of Allure magazine for the
`period of December 2008 showing Worldwide JR Wood LLC’s use of its
`registered mark JEWELRY FOR LIFE.
`
`Exhibit 19 shows advertisements taken from the pages of American Airlines
`American Way magazine for the period of July 2009 through December 2010
`showing Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR
`LIFE.
`
`Exhibit 20 shows advertisements taken from the pages of The Atlantic magazine
`for the period of May 2011 through August 2011 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 21 shows advertisements taken from the pages of Body and Sggl
`magazine for the period of May 2009 through May 2010 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 22 shows advertisements taken from the pages of Bon App-ii; magazine
`for the period of May 2009 through September 2009 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 23 shows advertisements taken from the pages of Coastal Living
`magazine for the period of July 2009 through January 2011 showing Worldwide
`JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 24 shows advertisements taken from the pages of Continental Airlines’
`magazine for the period of June 2009 through December 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEVVELRY FOR LIFE.
`
`Exhibit 25 shows advertisements taken from the pages of Cooking Light
`magazine for the period of May 2009 showing Worldwide JR Wood LLC’s use of
`its registered mark JEWELRY FOR LIFE.
`
`Exhibit 26 shows advertisements taken from the pages of Delta Airlines’ fly
`magazine for the period of July 2009 through December 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 2.7 shows advertisements taken from the pages of ESPN magazine for the
`period of July 2009 through June 2011 showing Worldwide JR Wood LLC’s use
`of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 28 shows advertisements taken from the pages of E_ll_e magazine for the
`period of July 2009 showing Worldwide JR Wood LLC’s use of its registered
`mark JEWELRY FOR LIFE.
`
`

`
`40.
`
`Exhibit 29 shows advertisements taken fiom the pages of Esquire magazine for
`the period of November 2008 through September 2011 showing Worldwidc JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`. Exhibit 30 shows advertisements taken from the pages of Family Circle magazine
`for the period of June May 2011 showing Worldwide JR Wood LLC’s use of its
`registered mark JEWELRY FOR LIFE.
`
`42.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`48.
`
`49.
`
`50.
`
`Exhibit 31 shows advertisements taken from the pages of Everyday Living
`magazine for the period of March 2009 through May 2011 showing Worldwide
`JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 32 shows advertisements taken from the pages of Golf Digest magazine
`for the period of May 2009 showing Worldwide JR Wood LLC’s use of its
`registered mark JEWELRY FOR LIFE.
`
`Exhibit 33 shows advertisements taken from the pages of United Airlines’
`Hemispheres magazine for the period of October 2009 through November 2009
`showing Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR
`LIFE.
`
`Exhibit 34 shows advertisements taken from the pages of Martha Stewart Living
`magazine for the period of July 2009 through May 2011 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 35 shows advertisements taken from the pages of Men’s Fitness magazine
`for the period of May 2009 through May 2011 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 36 shows advertisements taken from the pages of Men’s Journal magazine
`for the period of May 2010 through June 2011 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 37 shows advertisements taken from the pages of Midwest Living
`magazine for the period of May 2009 through August 2009 showing Worldwide
`JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 38 shows advertisements taken from the pages of Fitness magazine for the
`period of May 2009 showing Worldwide JR Wood LLC’s use of its registered
`mark JEWELRY FOR LIFE.
`
`Exhibit 39 shows advertisements taken from the pages of National Geographic
`magazine for the period of August 2008 through December 2009 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`

`
`51.
`
`52.
`
`53.
`
`54.
`
`55.
`
`56.
`
`57.
`
`58.
`
`59.
`
`Exhibit 40 shows advertisements taken from the pages of Newsweek magazine
`for the period of April 2009 showing Worldwide JR Wood LLC’s use of its
`registered mark JEWELRY FOR LIFE.
`
`Exhibit 41 shows advertisements taken from the pages of gi magazine for the
`period of October 2008 through April 2011 showing Worldwide JR Wood LLC’s
`use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 42 shows advertisements taken from the pages of Barents magazine for
`the period of November 2008 through May 2011 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 43 shows advertisements taken from the pages of Parent and Child
`magazine for the period of September 2009 through November 2009 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 44 shows advertisements taken from the pages of Rachel Ray magazine
`for the period of May 2009 through May 2010 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 45 shows advertisements taken from the pages of Real Simple magazine
`for the period of February 2009 through December 2010 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 46 shows advertisements taken from the pages of Rolling Stone magazine
`for the period of November 2009 through June 2011 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 47 shows advertisements taken from the pages of Runner’s World
`magazine for the period of June 2009 through July 2011 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 48 shows advertisements taken from the pages of fifmagazine for the
`period of November 2009 through December 2009 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`60.
`
`Exhibit 49 shows advertisements taken from the pages of Shape magazine for the
`period of November 2010 through May 2011 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`. Exhibit 50 shows advertisements taken from the pages of Smithsonigg magazine
`for the period of April 2011 through August 2011 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`

`
`62.
`
`63.
`
`64.
`
`65.
`
`66.
`
`67.
`
`68.
`
`69.
`
`70.
`
`Exhibit 51 shows advertisements taken from the pages of Southern Living
`magazine for the period of May 2009 showing Worldwide JR Wood LLC’s use of
`its registered mark JEWELRY FOR LIFE.
`'
`
`Exhibit 52 shows advertisements taken from the pages of $1 magazine for the
`period of October 2008 through June 2011 showing Worldwide JR Wood LLC’s
`use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 53 shows advertisements taken from the pages of Sunset magazine for the
`period of May 2009 through November 2010 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 54 shows advertisements taken from the pages of Southwest Airlines’
`Spirit magazine for the period of April 2009 through November 2010 showing
`Worldwide JR Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 55 shows advertisements taken from the pages of Tennis magazine for the
`period of November 2009 through May 2010 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 56 shows advertisements taken from the pages of Traditional Home
`magazine for the period of May 2009 through July 2009 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 57 shows advertisements taken from the pages of Texas Monthly
`magazine for the period of April 201l through May 2011 showing Worldwide JR
`Wood LLC’s use of its registeredmark JEWELRY FOR LIFE.
`
`Exhibit 58 shows advertisements taken fiom the pages of US Weekly magazine
`for the period of November 2008 through July 201 1 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 59 shows advertisements taken from the pages ofQ magazine for the
`period of September 2009 through June 201 1 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`. Exhibit 60 shows advertisements taken fiom the pages of Westways magazine for
`the period of May 2009 through December 2010 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`72.
`
`Exhibit 61 shows advertisements taken from the pages of Whole Living magazine
`for the period of November 2010 through July 201 1 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`

`
`73.
`
`74.
`
`75.
`
`76.
`
`77.
`
`78.
`
`79.
`
`80.
`
`81.
`
`82.
`
`83.
`
`84.
`
`Exhibit 62 shows advertisements taken from the pages of Wired magazine for the
`period of May 2009 through December 2009 showing Worldwide JR Wood
`LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 63 shows advertisements taken from the pages of Working Mother
`magazine for the period of May 2009 through May 2011 showing Worldwide JR
`Wood LLC’s use of its registered mark JEWELRY FOR LIFE.
`
`Exhibit 64 shows a page from Worldwide JR Wood LLC’s website for its brand
`John Christian as of August 10”‘ 2011. The website is www.john-christian.com.
`
`Exhibit 65 shows a page from Worldwide JR Wood LLC’s website for its brand
`Carved Creations as of August 10”‘ 2011. The website is www.ccforlife.com.
`
`Exhibit 66 shows a page from Henne Inc’s website as of August 10th 2011. The
`website is www.hennejewelers.com.
`'
`
`Exhibit 67 shows a comparison of web traffic between www.john-christian.co1n
`and www.hennejewelers.com for the period of June 2010 through June 2011. In
`most cases John Christian’s traffic is many times higher than Henne Inc.’s.
`
`Exhibit 68 shows a comparison of web traffic between www.ccforlife.com and
`www.hennejewelers.com for the period of June 2010 through June 2011. In most
`cases Carved Creations’ traffic is many times higher than Henne Inc.’s.
`
`Exhibit 69 is a list of US publications and their circulations. Many of the
`publications cited in Exhibits 3-63 can be found on this list.
`
`Exhibit 70 shows circulations of some of the in-flight magazines in which
`Worldwide JR Wood LLC advertises for its two brands John Christian and
`Carved Creations.
`
`Exhibit 71 shows the rates for advertising in Southwest Airline’s Spirit magazine.
`Most of Worldwide JR Wood LLC’s John Christian’s ads in Southwest are 1/3
`Page Square ads. Most of Worldwide JR Wood LLC’s Carved Creations’ ads in
`Southwest are 1/3 Vertical ads. This exhibit serves as an example of advertising
`rates, per month, per ad in airline magazines.
`
`Exhibit 72 shows the number of passengers each month who are regularly
`exposed to Worldwide JR Wood LLC’s John Christian and Carved Creations’ in-
`flight magazine advertising campaigns featuring the JEWELRY FOR LIFE mark.
`
`Exhibit 73 shows Worldwide JR Wood LLC’s John Christian brand amongst
`other nationally and internationally known brands.
`
`

`
`85. Exhibit 74 displays the circulation for a local publication in which Henne Inc.
`advertises, Pittsburg magazine.
`
`86. Exhibit 75 displays the circulation for a local publication in which Henne Inc.
`advertises, Whirl magazine.
`
`87. Exhibit 76 shows the Spring 2011 issue of the SkyMall catalog which is
`distributed in almost all domestic and international US airlines. In this issue there
`are 2 full-page advertisements for Worldwide JR Wood LLC’s two brands, John
`Christian and Carved Creations. The registered phrase JEWELRY FOR LIFE is
`featured on both pages.
`
`88. Exhibit 77 shows the Summer 2011 issue of the SkyMall catalog which is
`distributed in almost all domestic and intemational US airlines. In this issue there
`are 2 full-page advertisements for Worldwide JR Wood LLC’s two brands, John
`Christian and Carved Creations. The registered phrase JEWELRY FOR LIFE is
`featured on both pages.
`
`89. Exhibit 78 shows a letter from SkyMall indicating that 1.7 million passengers
`each day and 640 million passengers each year are exposed to its publication, in
`which Worldwide JR Wood LLC aggressively promotes its registered mark
`JEWELRY FOR LIFE.
`
`90. Exhibit 79 shows SkyMall insertion orders for 2011 indicating the level of
`advertising Worldwide JR Wood LLC is doing to promote its registered mark
`JEWELRY FOR LIFE under its two brands, John Christian and Carved Creations.
`The combined investment for both brands, each using JEWELRY FOR LIFE on
`its respective page is $35,000 per month.
`
`The undersigned being warned that willful false statements and the like are
`punishable by fine or imprisonment, or both, under 18 U.S.C. §l0O1, that such willful
`false statements and the like may jeopardize the validity of the document, declares
`that all statements made of his knowledge are true, and all statements made on
`information and belief are believed to be true.
`
`Executed this 15”‘ day of August, 2011 at Austin, Texas
`
`Turner C. Wau
`“TO.
`
`

`
`Exhibit 1
`
`
`
`

`
`Int. CL: 14
`
`Prior U.S. Cls.: 2, 27, 28, and 50
`
`Reg. No. 3,170,149
`United States Patent and Trademark Office Registered Nov. 7,2006
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`Jewelry for Life
`
`WORLDWIDE JR WOOD (TEXAS LTD LIAB CO)
`900
`14101 W. HWY 290
`
`AUSTIN. TX 78737
`
`FOR: NECKLACES, PENDANTS, BRACELETS,
`RINGS, WATCHES, EARRINGS, PINS BEING JEW-
`ELRY, IN CLASS 14 (U.S. CLS. 2, 27, 28 AND 50).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR CODOR.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "JEWELRY", APART FROM THE
`MARK AS SHOWN.
`
`SN 78-700,408, FILED 8-25-2005.
`
`FIRST USE 8-15-2005; IN COMMERCE 8-15-2005.
`
`MAUREEN DALL, EXAMINING ATTORNEY
`
`

`
`Side - 1
`
`MAILING DATE: Oct 4, 2006
`
`NOTICE OF ACCEPTANCE OF SOU
`
`The statement of use (SOU) filed for the trademark application identified below has been accepted. This
`acceptance means that the mark identified below is entitled to be registered. Accordingly, the registration
`will issue in due course barring any extraordinary circumstances.
`
`For further information, visit our website at: http:Ilwww.uspto.gov or call the Trademark Assistance Center
`at 1 -800-786-91 99.
`
`SERIAL NUMBER: 78700408
`
`MARK:
`
`OWNER:
`
`JEWELRY FOR LIFE
`
`Worldwide JR Wood
`
`Sme—2
`UNITED STATES PATENT AND TRADEMARK OFFICE
`COMMISSIONER FOR TRADEMARKS
`P.0. BOX 1451
`ALEXANDRIA, VA 2231 3~1451
`
`FIRST-CLASS
`MAIL
`u.s POSTAGE
`
`PAID
`
`
`
`
`
`
`
`
`
`WORLDWIDE JR WOOD
`14101 W HWY 290 STE 900
`
`AUSTIN, TX 78737-9375
`
`

`
`
`
`Trademark Snap Shot Pu.bli.cAation Stylesheet
`
`(Table presents the data on ‘Publication Approval)
`
`V -'W[
`EERIAL NUMBER
`[
`: REG NUMBER‘ ‘"7
`EGISTER ~—‘*_—T~_>A‘!
`#
`T
`A W - 0 F
`I TM ATTORNEY
`|
`
`-
`
`;
`OVERVIEW
`6
`T F.’ 08/25/2005
`TFILING DATE H
`78700408
`” g~——_’——r—:é
`0000000 I
`~ PRINCIPAL [ ’T——_ W -0_
`N/A
`I INTL REG DATE
`T F‘ .—.—*-‘N/A
`DALL, MAUREEN L
`i L.O. ASSIGNED
`I
`M80-NOT FOUND
`
`i
`
`' RUN DATE
`
`"Tm 09/19/2006
`
`PUB INFORMATION
`
` __— T" 05/16/2006
`
`W 818-SU - STATEMENT 0E USE ACEERTET;-AERREMELTEOR REGISTRATION
`
`
`STATUS‘
`
`A STATUS DATE
`V LITERAL MARK ELEMENT
`
`09/18/2006
`FJEWELRY FOR LIFE
`
`N/A
`ND
`N0
`
`N/A
`I
`1-DATE (;ANCET.LED
`N0
`{SECTION 2F IN PART V R
`NO
`[SEETTSN 8 IN PART
`N/A
`[REPUB 12c -
`NIA
`RENEW;.—0;rTEfl——-TWTT ‘
`NO
`2 ~m‘N7A*-*—H:[”..*”’*.“H’~{ H w~“»d~*~M~
`
`A
`
`A
`
`I
`DATE ABANDONED‘
`F
`»mSEcTIoN 2F
`"SECTION 8 *”m_}
`"SECTION 15
`A
`ITRENE\TV—l:\L—I;lEE‘0—:*_
`DATE AMENDREG
`
`[
`
`E
`
`W]
`&TED BASIS W
`i 1 (a)
`[_
`No
`' 1 (a)
`I 1 (b)
`F YES
`01 (b)
`::47D*—.~”~~[—-_‘_IT(>:*—* 44D
`VT44:-E__——mw T! 44E
`|
`“T”
`R“
`NO
`RR-«»a“AsIsTT::~o:‘:I“»«I»‘sxsvsrTTr'T~‘a““1"*“"T:
`
`FILING BASIS
`CURRENT BASIS
`F.
`YES
`N0
`_——‘T‘-“ No
`“M
`[—T
`NO 0
`
`T
`1(a)
`1 (b)
`_~.T[:1:Il)—-—-‘—-fl
`‘TATE
`
`:
`A AMENDED BASISFHMTT
`I
`p
`No
`I
`I
`NO
`No
`N0
`
`[
`
`STANDARD CHARACTER MARK
`0 LITERAL MARK ELEMENT
`
`MARK DATA
`
`[YES
`FJEWELRY FOR LIFE
`
`’T_TTTTTTT‘T
`
`

`
`,
`
`I
`_
`
`I
`
`5"
`
`' MARK DRAWING CODE
`I COLOR DRAWING FLAG
`
`I 4-STANDARD CHARACTER MARK
`
`CURRENT OWNER INFORMATION
`
`I-20-OWNER AT PUBLICATION
`I—WorIdwide JR Wood
`
`
`
`14101 W. Hwy 290
`austin, TX 78737
`
`16-LTD LIAB CO
`I Texas
`John T. Waugh USA Wesley P. Weaver USA Turner C.
`Waugh USA
`
`GOODS AND SERVICES
`I014
`Necklaces, pendants, bracelets, rings, watches, earrings,
`pins being jewelry
`
`GOODS AND SERVICES CLASSIFICATION
`
`A PARTY TYPE
`» NAME
`ADDRESS
`
`I ENTITY
`' CITIZENSHIP
`COMPOSED OF
`
`INTERNATIONAL CLASS
`DESCRIPTION TEXT
`
`INTERNATIONAL 014
`CLASS
`
`FIRST USE
`I DATE
`
`08/15/2005
`
`I
`
`I FIRST USE
`IN
`I COMMERCE
`
`DATE
`
`08/15/2005
`
`CLASS
`STATUS
`
`6-ACTIVE
`
`____
`
`_ _
`
`.
`
`._
`
`.
`
`.
`
`.
`
`I
`_L_._~__I
`
`,.
`
`A
`
`__._.___.__J
`
`MISCELLANEOUS INFORMATION/STATEMENTS
`
`CHANGE IN REGISTRATION
`DISCLAIMER WIPREDETER TXT
`
`I—N.O
`FJEWELRY"
`
`PROSECUTION HISTORY
`
`DATE
`
`09/18/2006
`09/14/2006
`I 08/17/2006
`4 08/17/2006
`
`I 08/08/2006
`05/16/2006
`04/26/2006
`
`I
`
`I DESCRIPTION
`
`ENT
`I ENT CD I
`TYPE
`I
`,
`I ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`P
`I CNPR I
`ISTATEMENT OF USE PROCESSING COMPLETE
`I
`I SUPC
`I
`IUSE AMENDMENT FILED
`S
`I IUAF
`I
`I TEAS STATEMENT OF USE RECEIVED
`I
`EISU
`I
`NOTICE OF ALLOWANCE-MAILED
`O
`I-_NOAM
`I PUBLISHED FOR OPPOSITION
`A
`I PUBO
`I NOTICE OF PUBLICATION
`O
`I
`I NPUB
`1-” “—I—T'TI"'_‘—“’"
`
`" ’" ’
`
`ENT NUM
`
`017
`016
`015
`014
`013
`012
`011
`
`I
`
`I
`
`I"
`
`

`
`"
`
`]1_Aw OFFICE PUBLICATION REVIEW COMPLETED
`1
`010
`o
`1
`PREV 3
`03/29/2006
`ASSIONEIDTOIEIERIII " T I ’"":"""-T no?"
`A
`] me"
`10672172006
`1
`[X?pTa3veB}oR'i$uB§p}§1'»1E.pALRee.sTfi;E'7""'”[ TEE”
`[b§;}1‘é/‘23o?“T"[’E:'N?F[” p
`
`_ EXAMlNER'S AIRENDITAENTIENATERED
`Rm 007
`:03l16lE006
`{ XPTE-C‘
`In
`
`EXAMINERS AMENDMENT E-MAILED
`M’
`006
`Q 03/16/2006
`GNEA I
`o
`"B6/1t;§0E;‘#_r_(_?_~’ ANIENDMENT-WRl1TEN‘-
`005
`I3/as/§oBE""'"'TB11E?"17""E
`{NON-FINALACTION 14:11"/iAiLe’15
`‘
`MTV‘
`I
`03/15/2006”
`{ CNRT
`R
`NON-FINAL RCTIOMBIWRITTAEN
`I
`003
`P0371;/‘2T)0es-.—:I’—Do‘c?I FTP“ ASSIGNED T0 E)k<A_11/V1Tr~1E—1a~*_’_.—~—_._.#--1
`00;-A
`.o§;62/zooé "
`1' NM» 7|’
`1
`{New APPLICATION :n+E§:BTGaRT"’" “TRESTT
`
`I
`
`CURRENT CORRESPONDENCE INFORMATION
`
`T
`A1+6r{ne'v
`CORRESPONDENCE ADDRESS
`
`"'
`
`’Eoi;FsfiEi2EpREse~TA+*.§/1:
`
`IR
`
`'
`
`‘R
`’
`7
`INONEM
`WORLDWIDE JR WOOD
`14101 W HWY 290 STE 900
`
`AUSTIN, TX 78737-9375
`'0[.1.¢;;E”‘0‘"' "*7
`
`1
`
`"R" "R-1
`
`PRIOR OWNER INFORMATION
`
`I N
`H
`I\1r-IKE/E—fi‘V“._wqVvW *4’ v_. “H”,
`3§b6{aE§§'
`‘
`
`W
`
`"E11111?
`ci+iz]ai1'sF”""
`
`I
`
`"
`
`IT
`
`I
`
`'
`
`I
`
`— _Rk10-ORIOINALRIVIIVDPLIOANT
`[Worldwide JR W:)1)d
`’ A900
`" 7 T
`14101 w. Hwy 290
`austin, TX 78737
`1
`”'“”"'”’
`”
`"(1s-L¥oL]A"s¢B I
`*""‘MT?4,;.;’“""’ ’TT"”"””"—_'"_“‘”_|
`
`‘J
`1
`
`’
`
`_
`
`"
`
`

`
`Jewelry for Life "
`
`

`
`JEWELRY FOR LIFE” NECKLACE
`
`
`
`JOHN .1. CHRISTIAN
`DESIGNERS 8: CRAFTSMEN
`
`
`
`‘wur wcc|(l:ra:1. C]‘.L‘ hm]: cl 5:-m LHIMIII‘.
`ymn n‘l1h’~‘l:Y!‘2C .z:1tnu-r~'A:—:c»
`[.131 is J
`mu:m*:u IU cL'luhr.1:r
`.md «hcI'c5i1
`ihv
`
`lohn <'!x::su.m l~_'wclr.\' [er Cm ‘ tnllmnuzi
`.1Hnu*~ you In an-.:r
`4.2] oi gum l.m-mv
`mcunurxcs on one uuzqmr wxu-flry nc.'num1
`§:at1 _\uu: mlfmzun by unizrnq as 11111:;
`is-wulny In: 1151:
`‘ pwucx .15 yuu wnla ;:l.vn»3
`mm mur MK Link] mzmd 0I:Ic;1.1 :xn£~<l.m~.
`which mLll|4l.‘.\ :3 ap,-L;L.I} (Lisp ‘.h,I‘, xx7L~gx\-.1‘
`.~;x‘rilr.'.11|y [H nmvn1I11mfl;11c car]: :u£‘c|lLinn..xE
`jvwciry Em’ Lie‘ gnhlm ELL:
`llnzvr.
`:11nr\'
`plan can ix; nddrd, .-uLh .2- for aha‘ hmh
`
`ufl él rlnkfl nr :1 spL'ual .::n1ivcr:'~.u)-.
`‘~\'::h uur .\%n:bc!'s Jcm-1:) (1-1 am -' mum,
`mzh gjnfdm Eur rum».-u.ml» .1 xlxllcsun". clzlid.
`wsth .: um; um tits Punk and I 1: .1p;u:u3:n.u:v
`lvltzhstmc on tile Hum.
`111::
`'.\lnlh:'."-
`mllmtmnxm\7:d;n|1?;~ m 1-BK or IBK (unki
`
`(.nJ.'::m‘n.u
`Wu’ Men Chnumn frurin for I 5'{v
`Hrs ;rm‘s|fnIuu*s ma‘ Jannmé amh PI} nun‘
`éamlgmutlnn
`
`u,‘!’J¢-aw ncfrr an aim .m'\'I [mgr [on print‘: uI1dnr¢flo'rIn1g iIIlqm:mI:'ovI.!
`
`
`
`Tin‘ IinnmIIuU'rwd'n'jnr
`
`|.i;‘r’ pfcm: rm‘ p€afr41 In:
`any 4 o*h'hmII'ma_ We‘ will
`1 nlfl your amu"n'rsm 3'
`date in Rumcm m Amfrit
`
`nlunncrls in liar circégaa, or
`Iv! us fwgr _xmu ncum‘.-
`tngq1hs,'r m J-PK (Tami. ISK
`(luld or hulfiund l’Jmimurn.
`
`Em h 0] thcsr t vraunm
`r‘m Indra um‘ Iwcsclvwi
`
`cffzuumid ml thr fuml,
`MN: llwjvhvl (Jamlicua
`
`smmlmd of qnufia}: (2
`mlm. 1-‘hi clmin-.
`
`

`
`I
`L
`
`..
`
`L1 fi~J@ UN i?=‘©{%?? M
`_--,_
`____.,__ , -
`
`5T[EP U
`lnvt-Ivy fur l.ifuN ','}(.'lld;1m'5 am .1\'.1iL1h|L' m MK Whste or Yellow Gold, IHK Vcllmv Guld, Lu l“L1|mum As
`Tn?-«v.xy::. the dmmunds used in the ]cw('h'y Eur lglcl‘-1 cullcuiorl nm:1 lh:.-joflm Cllmwmx qunhny smmlarnl of C»
`min; VS! clzlmy. You can nls-u m-piau: H11: ¢JJm:nund with a hnthswnc If your ]cwv:|ry Tm’ Iufc-M pcrnclnnl will
`fcaum‘ n ghlklk nmm‘. l’flc.1sn: in(|Lu:1u.' your selection hcltnv.
`
`PRICING, STYLE AND METAL SELECTION
`
`_
`
`.
`
`-
`
`T ‘
`
`‘
`
`1
`
`‘
`\
`‘ ’ I}
`
`DIAMOND JEWELRY FOR LIF'E"“ NECKLACE
`lnc|udcs.03 L! G. Vsfl D1-.1mna1d
`D 14K ‘Mine Nndmu -«uh Maxching 16" RuuxI:l011IL‘g,tChain
`D MK \’»clbmv P€!:tL‘u1I w11lI!\1aluhi11gl6' Round On‘.t5;..1 (Ihain
`CI
`IHK ‘1'cl!m\' l‘un:Lml with HK Matching 16" Rnuncl ()nN.'g.1Ch:\1n
`Cl H.:Inuun l‘cnn:£'.ml wnh 14K .\1ntChim:, H)‘ Rmmd (‘!mq,;,1 Chum:
`D E:I£h.‘\dd!ltUn:il MK, Pcudmn
`CI IE.-mi-1 .-kclduwcml 18K I‘c’nd.ml
`U Etch Additnrmnl I-‘launum Pundunt
`
`'\~\_
`’ ‘~
`
`‘
`1
`
`4‘
`
`g
`‘I
`1'
`,.
`‘
`if ‘:
`W
`
`V‘
`$1
`l
`‘V
`
`.
`
`»
`1;
`K‘
`,
`
`/4 BIRTHSTONE JEWELRY FOR LIFE‘'‘'' NECKLACE
`With Child's .\'.um- (Includes I Birllmuulc}
`D MK Whiw Pcmtmt with ‘.‘-1:uclung I6‘ Rmmd (Dmcgp chain
`D MK wunw Pcndnm mzh Muldung I6" Round QI1’1‘?§'.z'i (lluxn
`E] {SK Yufiluw Pcnalam with MK .\1.1xthing I6" Ruuncfi Ormzga Chum
`CD Plmmum P(.‘FL(L1nl\‘-iih 1-1K .\1.mh1ng!($"Ruuntz'l Om-g,\Ch.1In
`ED E.1clx.-\€xInIon.\l MK m~..Lm:
`D F.1L‘|‘..~'\::‘.:lni<1r:.nl ISR‘ E‘:-mtlm
`[11 l.':4ch.-‘\(](i1l|v.1n;1l Plzuunun Pcl1dal11
`
`$690
`$690
`$790
`$990
`$350
`$450
`5650
`
`5590
`$990
`$690
`$890
`$250
`$350
`$850
`
`BIRTHSTON E SELECTION
`].1mL\ry - 4' Eu rm"!
`1"'cbm.ny - «*5-m.1h_:s!
`\'1.In-h ~ m._uL;zn:zrirxz'
`
`.~\pul - \W1|.':‘ Kpmrl
`\‘.‘:1;r ~ Iznwvuld
`jurtc - Aukruvudntr
`
`Juiy » Rufvy
`August - P.-min!
`Scpm~:1m - fla‘ucS,rrr.u‘
`
`Oqufxr » PW: ?'mmv1uJIn.'
`NOV‘t‘mItL'r -
`fig.-41;
`D:-ccn\bz*r - Film’ Tfumln
`
`
`
`ST E [P 2
`
`lndtmlc your indwiu.1aEly pa-nsasnahzcd inscripuon.
`(.\iaximum inscnpaion length is appm>.'irmu-2|)’ I5
`chamrhsna am-luding spaces).
`
`Somr examples of inscriptions am:
`-e\lt'x:u1dm (A Child's Name}
`ofloh .SIJ:mcn O’: Cr.mp?r‘s Nunzrs)
`-6 27 I998 (Spmrai Auunmrsury or mrrhday)
`-VI XXIX-' M(‘..\1K(.V (6 24 1995 In Rfl?l'1(il1 Nmm~mJ<)
`-(.ougr.nL1l~.a:io:1s (finmfzcaaimn, Bapxism. Pmmminn)
`-Tuzmi:-., ‘mchung (Special Interest)
`
`PENDANT 1:
`
`, -
`
`._.
`
`[huh M-zmth EI;!'fi‘an.mng a zluiicik mama‘) __,_
`PENDANT 2:
`,.., ._
`
`Binh Mam!» -11,1’{mm ring :1 rJ:lM'£ name)
`PENDANT 3: __________.-
`
`num Mn-am (lI[:::r2:r1v:gcr c|'u.'d's name)
`P E N D A N T 4:
`
`.
`
`—
`
`—
`
`.
`
`Bird: Mnnrh flf_fmr1uu;.; u LFnrlJ's mum‘)
`P E N DA N T 52
`
`r'a':9rhMnnrF1 (l_{_{rr:ru:u:_L; n :?I:M'.~» Jtumr) .
`
`El (‘mm-rt my dam: to Roman I\ll1‘l1v?I‘.\‘~.
`
`{DE LUVERY NOWTE: Smndlanfs dCH\'C|*;’ is 3 xvecbm Rush :~7:r\'n.‘r.' LS n\'.ulai'»lc.p1L-zvsc Lali for clu;uI.»a.
`
`PIRHCE NOTE: I‘r.r.*~'. ~.h.'.v.‘11 -van .1‘ .1 ;::Iu.L'l1:1c l.V'.'1'_\'. dam‘ In l‘;1;I.1.':x:vm1 m :n.u.-.v| pm A vi!
`.z*
`pzm mu-. '.m'!.1l:~.
`.~‘.u.Inu IL‘?-tr rm v.-.:|w-.m> .-vr I
`
`FASTEST WAY TO ORER!
`ormzn OMLINE: WWW.RlNGBOX.COM
`CALL ‘TOLL 0-‘WEE: 13-883-GAGFGAGG
`FAX: ‘I-5 I 3'85E~4G-432
`
`

`
`PTO Form 1553 {Rev 9/2005)
`OMB No. 0051-0054 (Exp. 11/30/2008)
`
`Trademark/Service Mark Statement of Use
`
`(15 U.S.C. Section 1051(d))
`
`
`The