Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA660318
`ESTTA Tracking number:
`03/10/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92060542
`Defendant
`Natalie Niksa
`MARINA A LEWIS
`FINNEGAN HENDERSON ET AL
`3300 HILLVIEW AVE
`PALO ALTO, CA 94304-1203
`UNITED STATES
`marina.lewis@finnegan.com, theresa.reyes@finnegan.com, docket-
`ing@finnegan.com
`Response to Board Order/Inquiry
`Marina A. Lewis
`marina.lewis@finnegan.com, theresa.reyes@finnegan.com, docketup-
`dates@finnegan.com
`/Marina A. Lewis/
`03/10/2015
`Notice of Civil Complaint Filed.pdf(15460 bytes )
`2015.02.13 Complaint La Saison, LLC et al v. Saison Dining Group.pdf(1634725
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 4,393,247
`Mark: LA SAISON
`Published in the Official Gazette on: February 26, 2013
`
`Saison Dining Group, LLC,
`
`Cancellation No. 92/060,542
`
`v.
`
`Natalie Niksa,
`
`Petitioner,
`
`Respondent.
`
`Interlocutory Attorney:
`
`
`
`Robert Coggins
`
`NOTICE OF CIVIL COMPLAINT FILED
`
`NOTICE OF CIVIL COMPLAINT FILED
`
`Pursuant to the assigned Interlocutory Attorney’s request of today’s date, Respondent
`
`hereby submits a copy of the Complaint filed in U.S. District Court on February 13, 2015, 3:15-
`
`cv-00712-JCS La Saison, LLC et al v. Saison Dining Group LLC.
`
`Dated: March 10, 2015
`
`
`
`
`
`By:
`
`
`
`
`
`
`Julia Anne Matheson
`Marina A. Lewis
`Attorneys for Respondent
`
`Finnegan, Henderson, Farabow, Garrett
` & Dunner, LLP
`Stanford Research Park
`3300 Hillview Avenue
`Palo Alto, CA 94304-1203
`Telephone: 650.849.6766
`Facsimile: 650.849.6666
`
`Page 1 of 2
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that on March 10, 2015, a true copy of the foregoing
`
`NOTICE OF CIVIL COMPLAINT FILED
`
`was sent via first class mail to:
`
`Yano Rubinstein
`Rubinstein Law
`660 4th St # 302
`San Francisco, CA 94107-1618
`
` / Theresa M. Reyes /
`Theresa M. Reyes
`
`
`
`
`
`
`
`Page 2 of 2
`
`

`
`Case3:15-cv-00712 Document1 Filed02/13/15 Page1 of 9
`
`
`
`
`Julia Anne Matheson (State Bar No. 214163)
`julia.matheson@finnegan.com
`Marina A. Lewis (State Bar No. 248816)
`marina.lewis@finnegan.com
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, California 94304
`Telephone:
`(650) 849-6600
`Facsimile:
`(650) 849-6666
`
`
`
`Attorneys for Plaintiffs
`La Saison, LLC, Askin, Inc. dba La Saison
`Napa Valley, and Natalie Niksa
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`
`
`Defendant.
`
`
`
`
`
`
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
`
`Plaintiffs La Saison, LLC, Askin, Inc. dba La Saison Napa Valley, and Natalie Niksa
`
`(collectively, “La Saison” or “Plaintiffs”) by their undersigned attorneys, allege as follows, upon
`
`actual knowledge with respect to themselves and their own acts, and upon information and belief as
`
`to all other matters:
`
`/ / /
`
`
`
`
`
`1
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
`
`CASE NO.
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-
`INFRINGEMENT
`
`
`
`
`LA SAISON, LLC, ASKIN, INC. DBA LA
`SAISON NAPA VALLEY, and NATALIE
`NIKSA,
`
`
`Plaintiffs,
`
`
`v.
`
`
`SAISON DINING GROUP LLC.,
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page2 of 9
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`
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for declaratory judgment seeking relief under the Federal
`
`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, and Fed. R. Civ. P. 57, finding that La
`
`Saison has not infringed any of Defendant’s alleged trademark rights by using the mark LA SAISON
`
`for its products and services.
`
`THE PARTIES
`
`2.
`
`La Saison, LLC is a California limited liability company with a principal place of
`
`business at 748 California Boulevard, Napa, CA 94559.
`
`3.
`
`Askin, Inc. dba La Saison Napa Valley is a California corporation with a principal
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`place of business at 748 California Boulevard, Napa, CA 94559.
`
`4.
`
`Natalie Niksa is an individual citizen of the United States of America, with a mailing
`
`address of Post Office 60, St. Helena, CA 94574.
`
`5.
`
`Defendant Saison Dining Group LLC (“SDG” or “Defendant”) is a California limited
`
`liability company with a principal place of business at 178 Townsend Street, San Francisco, CA
`
`94107.
`
`JURISDICTION AND VENUE
`
`6.
`
`This Court has jurisdiction over the subject matter of this action pursuant to 15 U.S.C.
`
`§ 1121; 28 U.S.C. §§ 1331, 1338, and 1367; and under the Declaratory Judgment Act, 28 U.S.C.
`
`§§ 2201 and 2202.
`
`7.
`
`This Court has personal jurisdiction over SDG and venue is proper in this District
`
`pursuant to 28 U.S.C. §§ 1391(b) and 1391(c) because SDG operates a restaurant in the city and
`
`county of San Francisco and is therefore doing business in this District.
`
`INTRADISTRICT ASSIGNMENT
`
`8.
`
`Pursuant to Civil L.R. 3-2(c) and General Order No. 44, this case is properly assigned
`
`to any division of this Court.
`
`/ / /
`
`/ / /
`
`/ / /
`
`
`
`
`
`2
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`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page3 of 9
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`
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`BACKGROUND FACTS
`
`La Saison and its LA SAISON Mark
`
`9.
`
`La Saison is a family-owned and operated, Napa Valley-based specialty food and
`
`catering/events business located in Napa, California. Established in 2007 by Natalie Niksa, together
`
`with her husband and fellow CIA-trained private chef, Jonathan Niksa, La Saison is dedicated to
`
`making wholesome and delicious foods using only the finest local and seasonal ingredients. La
`
`Saison manufactures and sells a successful line of gourmet food products, including roasted nuts,
`
`cakes, date rolls, snack bars, and other foods. La Saison’s products are sold in specialty food stores
`
`throughout the San Francisco Bay Area such as Dean & Deluca, Whole Foods Market, Berkeley
`
`Bowl, and Cowgirl Creamery, as well as in retail stores located in Oregon, Washington, Colorado,
`
`and Illinois.
`
`10.
`
`La Saison has produced and sold gourmet food products under the LA SAISON mark
`
`since at least as early as 2007. Representative website screenshots featuring some of the food
`
`products offered under the LA SAISON mark are displayed below.
`
`3
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page4 of 9
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`
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`11.
`
`In addition to its specialty food products, La Saison also provides catering, private
`
`chef, event planning, and related services under its LA SAISON brand. La Saison has provided
`
`these services under the LA SAISON mark since at least as early as 2007. A screenshot describing
`
`some of those services offered under the LA SAISON mark is displayed below.
`
`4
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`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page5 of 9
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`12.
`
`La Saison registered the domain name <lasaison.net> on July 30, 2007 and has
`
`operated a website at that domain name since October 2007. La Saison sells its gourmet food
`
`products and promotes its catering and event services on its website located at www.lasaison.net (the
`
`“La Saison Website”). A page capture from the La Saison Website describing the company and its
`
`founders is captured below.
`
`
`
`13.
`
`Natalie Niksa is the owner of U.S. Trademark Registration No. 3,768,532 (the “‘532
`
`Registration”) for the mark LA SAISON (and Design) covering “raw, fresh, and unprocessed dates.”
`
`A copy of the ‘532 Registration is attached as Exhibit 1.
`
`14.
`
`Natalie Niksa is the owner of U.S. Trademark Registration No. 4,393,247 (the “‘247
`
`Registration”) for the mark LA SAISON covering the following goods and services:
`
`
`(Class 29) Roasted nuts; olive oil roasted almonds; nut-based snack bars; almond
`butter snack bars; almond butter; processed dates; dried dates; date rolls consisting of
`dried fruit, nuts, and spices;
`
`(Class 30) Cakes; salad dressings; sauces; dipping sauces; marinades;
`
`
`/ / /
`
` / /
`
` /
`
`
`
`
`
`5
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`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page6 of 9
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`
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`(Class 41) Special event planning services for social entertainment purposes; wedding
`consultation; floor plan design for special events for social entertainment purposes;
`menu development for special events for social entertainment purposes; arranging and
`conducting wine and food tasting events; conducting programs in the field of wine,
`wine and food pairing, and wineries; conducting wine tastings; and
`
`(Class 43) Catering services
`
`
`A copy of the ‘247 Registration is attached as Exhibit 2. Plaintiffs La Saison LLC and Askin, Inc.
`
`dba La Saison Napa Valley each use the LA SAISON mark for their respective business divisions
`
`under license from, and the direction of, co-plaintiff Natalie Niksa.
`
`Defendant and its Saison Restaurant
`
`15.
`
`Since 2009, Defendant has operated a restaurant called SAISON in San Francisco,
`
`California. Defendant’s restaurant has received media attention including, most recently, coverage
`
`regarding its award of a three-star rating in the upcoming 2015 Michelin Guide.
`
`16.
`
`By 2012, the media attention surrounding Defendant’s restaurant was such that
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`Plaintiffs had begun to receive comments and questions from customers inquiring as to the
`
`connection between Plaintiffs’ specialty foods and catering/events business and Defendant’s
`
`restaurant. La Saison became concerned about the possibility of future consumer confusion and
`
`decided to contact SDG to address the issue proactively.
`
`17.
`
`On July 7, 2012, La Saison sent a letter to SDG, notifying SDG of its prior rights in
`
`the LA SAISON mark for specialty food products and events/catering services dating back to 2007,
`
`and of its receipt of communications from consumers confused about the relationship and/or
`
`association of the two companies. Attached as Exhibit 3 is a copy of Plaintiff’s July 7, 2012 letter.
`
`18.
`
`Thereafter, on September 29, 2012, SDG filed a trademark application with the U.S.
`
`Patent and Trademark Office (“USPTO”) to register the mark SAISON for “restaurant services.”
`
`19.
`
`On November 2, 2012, attorneys for SDG replied to La Saison, asserting that SDG
`
`intended to restrict its use of the SAISON mark solely to restaurant services and confirming that
`
`SDG “does not have any intention of selling any commercial food products nor hosting any off site
`
`catering events under the [SAISON] Mark.” In its letter, SDG also assured La Saison that “[g]iven
`
`the differences in products and services offered between the two companies, SDG believed there
`
`should be no reason for any trademark-related disputes.” A copy of SDG’s November 2, 2012 letter
`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
`
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page7 of 9
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`
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`is attached as Exhibit 4.
`
`20.
`
`In reliance on SDG’s representations, La Saison believed the parties could and would
`
`work together cooperatively to coexist in the marketplace and to avoid future consumer confusion.
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`Relying upon SDG’s presumably good faith intentions, and trusting that the matter had been
`
`resolved amicably, La Saison took no further enforcement or other action relative to SDG. La
`
`Saison received no further contact from Defendant for the next two years.
`
`Defendant’s Petition to Cancel the LA SAISON Mark
`
`21.
`
`On December 18, 2014, over two years after receiving SDG’s assurances that the
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`parties could coexist peacefully in the marketplace in their respective spheres and work together to
`
`avoid consumer confusion, La Saison learned of the filing by SDG of a Petition to Cancel the ‘247
`
`registration on likelihood of confusion grounds. A copy of the Petition to Cancel is attached as
`
`Exhibit 5 hereto.
`
`22.
`
`In the Petition to Cancel, although aware through the parties’ prior correspondence of
`
`La Saison’s prior use of, and rights in, its LA SAISON mark for various goods and services, SDG
`
`nevertheless alleges priority in the SAISON mark and alleges further that La Saison’s ‘247
`
`registration has caused and will continue to cause damage to SDG’s SAISON mark by “creating a
`
`likelihood of confusion with Petitioner’s trademark and casting a cloud on the prior trademark rights
`
`of Petitioner to use and register SAISON for restaurant services.” See Petition for Cancellation at
`
`Paragraph 7.
`
`23.
`
`Faced with the possibility of being deprived of its company name and trademark
`
`rights, La Saison was compelled to bring this action to defend its rights and to protect the company
`
`name and brand equity it has worked so hard to build over the last eight (8) years.
`
`
`
`CLAIM FOR RELIEF
`
`(Declaratory Judgment of Non-Infringement)
`
`24.
`
`25.
`
`La Saison repeats and incorporates the allegations set forth in the prior paragraphs.
`
`La Saison has previously attempted to address and resolve with Defendant any
`
`potential conflict in the marketplace by the parties’ respective uses of their trademarks. Regrettably,
`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
`
`7
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page8 of 9
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`
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`Defendant has demonstrated by its actions in petitioning to cancel the ‘247 Registration that
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`Defendant is not willing to comply with its own previous representations to Plaintiffs that no basis
`
`for a trademark controversy between the parties exists.
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`26. Moreover, it appears that Plaintiffs can no longer rely upon Defendant to respect the
`
`parties’ separate trademark rights, or their earlier agreement to peacefully coexist in the marketplace
`
`and to work together cooperatively to avoid consumer confusion. As such, Plaintiffs are compelled
`
`to seek judicial intervention in order to protect their rights.
`
`27.
`
`Based on the foregoing, La Saison is entitled to judgment, pursuant to
`
`28 U.S.C. § 2201 and Fed. R. Civ. P. 57, declaring that La Saison’s use and registration of the mark
`
`LA SAISON for the goods and services listed in the ‘247 registration do not infringe upon any
`
`trademark rights that Defendants can viably assert in the SAISON mark for “restaurant services,”
`
`and therefore do not constitute trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et
`
`seq., or trademark infringement, false designation of origin, or unfair competition under state or
`
`common law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, La Saison respectfully requests that the Court grant the following relief:
`
`A. An order declaring that La Saison’s use of LA SAISON for its goods and services does
`
`not constitute trademark infringement or false designation of origin under the Lanham Act, 15
`
`U.S.C. § 1051 et seq., or trademark infringement or unfair competition under state or common law;
`
`B. An order awarding La Saison its costs and attorneys’ fees incurred in connection with this
`
`action; and
`
`C. An order awarding such other relief as the Court may deem just and proper.
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
`
`/ / /
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`
`
`
`
`8
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`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
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`Case3:15-cv-00712 Document1 Filed02/13/15 Page9 of 9
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`
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`Plaintiff demands a trial by jury for all claims for relief herein on all issues that are properly
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`JURY DEMAND
`
`triable to a jury.
`
`
`
`
`Dated: February 13, 2015
`
`
`
`By: / Marina A. Lewis /
`Julia Anne Matheson
`Marina A. Lewis
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, LLP
`3300 Hillview Avenue
`Palo Alto, California 94304
`Telephone:(650) 849-6600
`Facsimile: (650) 849-6666
`
`Attorneys for Plaintiffs
`La Saison, LLC, Askin, Inc., dba La Saison
`Napa Valley, and Natalie Niksa
`
`
`
`
`
`9
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`OF NON-INFRINGEMENT
`Case No.
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`Case3:15-cv-00712 Document1-1 Filed02/13/15 Page1 of 2
`Case3:l5—cv—OO712 Document1—1 Fi|ed02/13/15 Pagel of2
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`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`

`
`Case3:15-cv-00712 Document1-1 Filed02/13/15 Page2 of 2
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`Reg_ No_ 3,768,532 NIKSA, NATALIE (UNITED STATES II\DIVIDUAL)
`Registered Mar. 30, 2010 2633 HA KN“-‘SS DRIVE
`POPE VALLEY, CA 94567
`
`Int. Cl.: 31 FOR: FRESH, RAW AND UI\‘I>RoCEss3D DATES, IN CLASS 3
`
`(Us. CLS. 1 AND 46).
`
`FIRST USE 1()—31—2()()7; IN COMM]-IRCH 5-31-2008.
`
`TRADEMARK
`PRINCIPAL REGISTER TIIE MARK CONSISTS 0» HI; WORD “LA SAISON" II\sID:: A CLOUD sIIAP:
`PLAQUARD WITH SCROLL oRNAME\ITATIoN AND LEAF DESIGNS.
`
`THE ENGLISH TRANSLATION OF THE WORD "LA SAISON“ IN T {E MARK IS THE SEA-
`SON.
`
`SN 77-567,697, FILED 9-11-2008.
`
`MARGERY A. TIERNEY, EXAMINING ATIORNEY
`
`Director ofme United Slates Pulem and I':'ademLu'1< Office
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page1 of 4
`Case3:l5—cv—OO712 Document1—2 Fi|ed02/13/15 Page1of4
`
`EXHIBIT 2
`EXHIBIT 2
`
`
`
`
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page2 of 4
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`LA SAISON
`
`Reg. No. 4,393,247
`
`Registered Aug. 27, 2013
`
`Int. Cls.: 29, 30, 41, and
`43
`
`TRADEIVIARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`NIKSA. NATALIE (UNITED STATES INDIVIDUAL)
`P.O. BOX 60
`ST. HELENA, C.A 94574
`
`FOR: ROASTED NUTS; OLIVE OIL ROASTED ALMONDS; NUT-BASED SNACK BARS;
`ALMOND BUTTER SNACK BARS; ALMOND BUTTER; PROCESSED DATES; DRIED
`DATES; DATE ROLLS CONSISTING OF DRIED FRUIT, NUTS, AND SPICES, IN CLASS 29
`(US. CL. 46).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`FOR: CAKES; SALAD DRESSINGS; SAUCES; DIPPING SAUCES; MARINADES, IN CLASS
`30 (U.S. CL. 46).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`FOR: SPECIAL EVENT PLANNING SERVICES FOR SOCIAL ENTERTAINMENT PURPOSES;
`WEDDING CONSULTATION; FLOOR PLAN DESIGN FOR SPECIAL EVENTS FOR SOCIAL
`ENTERTAINMENT PURPOSES; MENU DEVELOPMENT FOR SPECIAL EVENTS FOR SO-
`CIA I. ENTERTAINMENT PURPOSES; /\ RRANGING A ND CONDUCTING WINE AND FOOD
`TASTING EVENTS; CONDUCTING PROGRAMS IN THE FIELD OF WINE, WINE AND
`FOOD PAIRING, AND WINERIES; CONDUCTING WINE TASTING S, IN CLASS 41 (US.
`CLS. 100, 101 AND 107).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`FOR: CATERING SERVICES. IN CLASS 43 (US. CI,S. 100 AND 101).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`Arting DIlElS1Dl'Dr1IIE Unilull Stale; Patent and Tnuh-umlk Ol'FL'e
`
`,-45
`
`OWNER OF U.S. REG. NO. 3,768,532.
`
`THE ENGLISH TRANSLATION OF "LA SAISON" IN THE MARK IS "THE SEASON".
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page3 of 4
`
`Reg_ No_
`
`SN 85-564,457, FILED 3-8-2012.
`TINA MAI, EXA MINING ATTORNEY
`
`Page: 2 / RN # 4,393,247
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page4 of 4
`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADENIARK REGISTRATION
`
`WARNIN G: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO N OT FILE THE
`DOCUNIENTS BELOVV DURING THE SPECIFIED TINIE PERIODS.
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141l<.
`If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and em
`Application for Renewal between the 9th and 10th years after the registration date.*
`See 15 U.S.C. §l059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration ofUse (or Excusable Nonuse) and an Application for Renewal between
`every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the USPTO. The time periods for filing are
`based on the U.S. registration date (not the international registration date). The deadlines and grace periods
`for the Declarations of Use (or Exeusable Nonuse) are identical to those for nationally issued registrations.
`See 15 U.S.C. §§1058._ 1141l<. However, owners of international registrations do not file renewal applications
`at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Propelty Organization, under A lticle 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,
`see http://www.wipo.int/madrid/ervl
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions ofprotection, you can file the registration maintenance documents referenced above online
`at http://www.uspto.gov.
`
`Page: 3 / RN # 4,393,247
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page1 of 4
`Case3:l5—cv—OO712 Document1—2 Fi|ed02/13/15 Page1of4
`
`EXHIBIT 2
`EXHIBIT 2
`
`
`
`
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page2 of 4
`
`LA SAISON
`
`Reg. No. 4,393,247
`
`Registered Aug. 27, 2013
`
`Int. Cls.: 29, 30, 41, and
`43
`
`TRADEIVIARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`NIKSA. NATALIE (UNITED STATES INDIVIDUAL)
`P.O. BOX 60
`ST. HELENA, C.A 94574
`
`FOR: ROASTED NUTS; OLIVE OIL ROASTED ALMONDS; NUT-BASED SNACK BARS;
`ALMOND BUTTER SNACK BARS; ALMOND BUTTER; PROCESSED DATES; DRIED
`DATES; DATE ROLLS CONSISTING OF DRIED FRUIT, NUTS, AND SPICES, IN CLASS 29
`(US. CL. 46).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`FOR: CAKES; SALAD DRESSINGS; SAUCES; DIPPING SAUCES; MARINADES, IN CLASS
`30 (U.S. CL. 46).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`FOR: SPECIAL EVENT PLANNING SERVICES FOR SOCIAL ENTERTAINMENT PURPOSES;
`WEDDING CONSULTATION; FLOOR PLAN DESIGN FOR SPECIAL EVENTS FOR SOCIAL
`ENTERTAINMENT PURPOSES; MENU DEVELOPMENT FOR SPECIAL EVENTS FOR SO-
`CIA I. ENTERTAINMENT PURPOSES; /\ RRANGING A ND CONDUCTING WINE AND FOOD
`TASTING EVENTS; CONDUCTING PROGRAMS IN THE FIELD OF WINE, WINE AND
`FOOD PAIRING, AND WINERIES; CONDUCTING WINE TASTING S, IN CLASS 41 (US.
`CLS. 100, 101 AND 107).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`FOR: CATERING SERVICES. IN CLASS 43 (US. CI,S. 100 AND 101).
`
`FIRST USE 5-1-2013; IN COMMERCE 5-1-2013.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`Arting DIlElS1Dl'Dr1IIE Unilull Stale; Patent and Tnuh-umlk Ol'FL'e
`
`,-45
`
`OWNER OF U.S. REG. NO. 3,768,532.
`
`THE ENGLISH TRANSLATION OF "LA SAISON" IN THE MARK IS "THE SEASON".
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page3 of 4
`
`Reg_ No_
`
`SN 85-564,457, FILED 3-8-2012.
`TINA MAI, EXA MINING ATTORNEY
`
`Page: 2 / RN # 4,393,247
`
`

`
`Case3:15-cv-00712 Document1-2 Filed02/13/15 Page4 of 4
`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADENIARK REGISTRATION
`
`WARNIN G: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO N OT FILE THE
`DOCUNIENTS BELOVV DURING THE SPECIFIED TINIE PERIODS.
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141l<.
`If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and em
`Application for Renewal between the 9th and 10th years after the registration date.*
`See 15 U.S.C. §l059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration ofUse (or Excusable Nonuse) and an Application for Renewal between
`every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the USPTO. The time periods for filing are
`based on the U.S. registration date (not the international registration date). The deadlines and grace periods
`for the Declarations of Use (or Exeusable Nonuse) are identical to those for nationally issued registrations.
`See 15 U.S.C. §§1058._ 1141l<. However, owners of international registrations do not file renewal applications
`at the USPTO. Instead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Propelty Organization, under A lticle 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,
`see http://www.wipo.int/madrid/ervl
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions ofprotection, you can file the registration maintenance documents referenced above online
`at http://www.uspto.gov.
`
`Page: 3 / RN # 4,393,247
`
`

`
`Case3:15-cv-00712 Document1-3 Filed02/13/15 Page1 of 2
`Case3:l5—cv—OO712 Document1—3 Fi|ed02/13/15 Pagel of2
`
`EXHIBIT 3
`EXHIBIT 3
`
`
`
`
`
`

`
`Case3:15-cv-00712 Document1-3 Filed02/13/15 Page2 of 2
`Case3:l5—cv—OO712 Document1—3 Fi|edO2/13/15 Page2 of2
`
`.3.
`j;
`
`LA SAIS®l\l
`NAPA VALLEY - CAUFORNIA
`
`Attn: Joshua Skenes
`
`Saison Restaurant
`
`2124 Folsom St. @ 17th
`
`San Francisco. CA 94110
`
`July 7. 2012
`
`Dear Chef Joshua Skenes:
`
`We are Chef-Owners Natalie & Jonathan Niksa of La Saison, Napa Valley.
`
`Our business was established in 200?.
`
`We have been using the LA SAISON brand for our Specialty Food Products & Custom Events
`since 2007.
`
`Our specialty food products and catered services are offered throughout the Bay Area.
`
`we applaud you on your recent achievements as SAISON.
`As you can see. our business names are very similar.
`Do you intend to have any commercial food products and/or offer any custom eventsfotf site
`catering under the SAISON name?
`
`We do not wish for the similarity between our business names to be a conflict or a violation of
`trademarking protection however, do need to address the situation as we have recently
`received some concerning questions & confusion from our clients.
`
`Please submit a letter addressing the nature of SAlSON as a business in San Francisco to the
`address below.
`
`Thank you for your time 8i understanding.
`Natalie & Jonathan Niksa
`
`Chef- Owners - La Salson. Napa Valley
`PO Box 60
`
`St. Helena. CA 94574
`
`" Both icons on each letter are trademarked under our La Saison brand
`
`PO 50100 » ST l'-l.E-*l~*- C-\
`
`--=59-1 -
`
`'..‘or.I.-:3; 3:22 - rm-_u=msA:5o~ui::
`
`. L.:smsm:.wr1
`
`

`
`Case3:15-cv-00712 Document1-4 Filed02/13/15 Page1 of 2
`Case3:l5—cv—OO712 Document1—4 Fi|ed02/13/15 Pagel of2
`
`EXHIBIT 4
`EXHIBIT 4
`
`
`

`
`Case3:15-cv-00712 Document1-4 Filed02/13/15 Page2 of 2
`Case3:l5—cv—OO712 Document1—4 Fi|edO2/13/15 Page2 of,2
`
`RUBINSTEIN LAW
`
`
`November 2, 2012
`
`VIA U.S. MAIL
`
`Natalie & Jonathan Niksa
`Chef—Owners
`
`La Saison, Napa Valley
`PO Box 60
`
`St. Helena. CA 94574
`
`Re:
`
`SA [SON Tmdemrrrrk
`
`Natalie & Jonathan:
`
`Please be advised this firm represents Saison Dining Group LLC, dba Saison in
`San Francisco. California with regards to trademark matters. Our client has received
`your correspondence ot'.luiy ?, 2012 regarding your concerns with our eIient’s use ofthe
`SAISON mark (the "'Mark'") in conjunction with its restaurant by the same name.
`
`As you are aware, Saison is a restaurant. Saison intends to only offer restaurant
`services under the Mark. Saison does not have any intention ofselling any Commercial
`food products nor hosting any offsite catering events under the Mark.
`
`Given the (liffCl'Cl1(:cS in products and services olTcred between the two
`companies, Saison agrees that there should be no reason for any trade1nark~re]ated
`disputes. Please feel free to contact us should you wish to discuss this matter further.
`
`Sincerely,
`
`<@/A
`
`Yano Rubinstein
`
`660 4T"STREI-2T# 302 F SAN FRANCISCO, CA 94107 I TEL:4l5.967.l97D [ FAX: 415.236.6409
`
`

`
`Case3:15-cv-00712 Document1-5 Filed02/13/15 Page1 of 14
`Case3:l5—cv—OO712 Document1—5 Fi|edO2/13/15 Pagel of 14
`
`EXHIBIT 5
`EXHIBIT 5
`
`
`
`
`
`

`
`Case3:15-cv-00712 Document1-5 Filed02/13/15 Page2 of 14
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA645678
`ESTTA Tracking number:
`12/18/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Saison Dining Group, LLC
`Limited liability company
`178 Townsend St.
`San Francisco, CA 94107
`UNITED STATES
`
`Citizenship
`
`CALIFORNIA
`
`Attorney informa-
`tion
`
`Yano Rubinstein
`Rubinstein Law
`660 4th St. #302
`San Francisco, CA 94107
`UNITED STATES
`info@rublaw.com Phone:4159671970
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`4393247
`Niksa, Natalie
`P.O. Box 60
`St. Helena, CA 94574
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`08/27/2013
`
`Class 029. First Use: 2013/05/01 First Use In Commerce: 2013/05/01
`All goods and services in the class are cancelled, namely: Roasted nuts; olive oil roasted almonds;
`nut-based snack bars; almond butter snack bars; almond butter; processed dates; dried dates; date
`rolls consisting of dried fruit, nuts, and spices
`Class 030. First Use: 2013/05/01 First Use In Commerce: 2013/05/01
`All goods and services in the class are cancelled, namely: Cakes; salad dressings; sauces; dipping-
`sauces; marinades
`Class 041. First Use: 2013/05/01 First Use In Commerce: 2013/05/01
`All goods and services in the class are cancelled, namely: Special event planning services for social
`entertainment purposes; wedding consultation; floor plan design for special events for social enter-
`tainment purposes; menu development for special events for social entertainment purposes; arran-
`ging and conducting wine and food tasting events; conducting programs in the fieldof wine, wine and
`food pairing, and wineries; conducting wine tastings
`Class 043. First Use: 2013/05/01 First Use In Commerce: 2013/05/01
`All goods and services in the class are cancelled, namely: Catering services
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`

`
`Case3:15-cv-00712 Document1-5 Filed02/13/15 Page3 of 14
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`85742035
`
`NONE
`
`SAISON
`
`Application Date
`
`09/29/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`