Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1127037
`
`Filing date:
`
`04/14/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92068086
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Mahender Sabhnani
`
`SAM P ISRAEL
`SAM P ISRAEL PC
`180 MAIDEN LANE, 6TH FLOOR
`NEW YORK, NY 10038
`UNITED STATES
`Primary Email: samisrael@spi-pc.com
`646-787-9880
`
`Other Motions/Submissions
`
`Sam P. Israel
`
`samisrael@spi-pc.com
`
`/spi/
`
`04/14/2021
`
`4.14.21 - Notice of Fed. R. Civ. P. Rule 36 Motion.pdf(91368 bytes )
`4.14.21 - Israel Decl. in Support of Motion with Exhibits.pdf(5360353 bytes )
`4.14.21 - Petitioners Fed. R. Civ. P. Rule 36b Motion Memo_FILED.pdf(464576
`bytes )
`4.14.21 - Affidavit of Service_FILED.pdf(88477 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Petitioner,
`
`-against-
`
`
`
`In the matter of Registration No. 5,367,885
`For the Trademark M MIRAGE BRANDS
`Issued January 2, 2018
`
`In the matter of Registration No. 5,394,192
`For the Trademark MIRAGE BRANDS
`Issued February 6, 2018
`
`
`----------------------------------------------------------X
`MAHENDER SABHNANI,
` :
`
`
` : Cancellation No. 92068086
`
`
` :
`
`
`
` :
`
`
`
` :
`
`
`
` :
`
`MIRAGE BRANDS, LLC,
` :
`
`
`
` :
`
`Registrant.
`
`
` :
`
`----------------------------------------------------------X
`
`
`PETITIONER MAHENDER SABHNANI’S MOTION TO WITHDRAW
`ADMISSIONS PURSUANT TO TMBP §525 AND FED. R. CIV. P. RULE 36(B) OR,
`ALTERNATIVELY, TO PREVENT ADMISSIONS FROM BEING DISPOSITIVE
`WHERE CONTRADICTED BY EVIDENCE
`
`Petitioner, by its counsel, hereby moves before the Board pursuant to TMBP §525
`
`and Fed. R. Civ. P. 36(b), to withdraw and amend Fed. R. Civ. P. Rule 36 admissions
`based upon a default or, alternatively, to have the admissions be deemed non-
`dispositive in the face of contravening evidence.
`
`Dated: April 14, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted
`/s/ Sam P. Israel
`Sam P. Israel
`SAM P. ISRAEL, P.C.
`180 Maidan Lane, 6th Fl.
`New York, NY 10038
`646-787-9880
`samisrael@spi-pc.com
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Registration No. 5,367,885
`For the Trademark M MIRAGE BRANDS
`Issued January 2, 2018
`
`In the matter of Registration No. 5,394,192
`For the Trademark MIRAGE BRANDS
`Issued February 6, 2018
`
`
`----------------------------------------------------------X
`MAHENDER SABHNANI,
` :
`
`
` : Cancellation No. 92068086
`
`
` :
`
`
`
` :
`
`
`
` :
`
`
`
` :
`
`MIRAGE BRANDS, LLC,
` :
`
`
`
` :
`
`Registrant.
`
`
` :
`
`----------------------------------------------------------X
`
`
`DECLARATION OF SAM P. ISRAEL
`IN SUPPORT OF MOTION TO WITHDRAW ADMISSIONS
`
`
`Pursuant to 28 U.S.C. § 1746, Sam P. Israel, hereby declares under the penalties of perjury
`
`Petitioner,
`
`-against-
`
`
`
`as follows:
`1.
`
`I am an attorney at law duly licensed to practice before, among others, the
`
`United States Supreme Court, the Second and Third Circuit Courts of Appeal, the Courts
`
`of the State of New York and the United States District Courts for the Southern and
`
`Eastern Districts of New York.
`2.
`
`I work as an attorney at the law firm Sam P. Israel P.C., counsel for the
`
`Petitioner Mahender Sabhnani in this Proceeding.
`3.
`
`I submit this Declaration upon my personal knowledge and experience, and
`
`information obtained from my legal work and review of the documents and files
`
`maintained on behalf of the Petitioner in connection with this Proceeding. The statements
`
`
`
`
`
`

`

`
`
`herein are true to the best of my knowledge.
`Petitioner Mahender Sabhnani (“Sabhnani” or the “Petitioner”), the owner
`4.
`of the design mark “ROYAL MIRAGE” (the “Royal Mirage Mark”), bearing Registration
`No. 2,546,642, moves the United States Trademark Trial and Appeal Board (the “Board”),
`to withdraw his alleged default in responding to requests for admission (the “RFAs”)
`issued by registrant, Mirage Brands, LLC (“MB LLC” or the “Registrant”) and to permit
`
`him to submit responses to same in the form of the accompanying declaration of
`Mahender Sabhnani. (The “Sabhnani Admissions Decl.” is Exhibit 1 hereto.)
`
`5.
`
`The Board should allow the alleged RFA defaults to be withdrawn. They
`
`are part of a calculated ambush to prevent the action from being resolved on the merits
`
`and withdrawal would not prejudice the Registrant because it never genuinely relied on
`the alleged RFA default. In fact, the matters supposedly “admitted” were contested on
`
`summary judgment (which occurred after the purported default), in the pleadings,
`
`through interrogatories, and during depositions. The Board should not be misled by the
`
`Registrant through a surprise resolution of issues that were plainly in dispute throughout
`
`the course of discovery and to this date; the ostensible admissions are utterly contradicted
`
`by actual evidence. The merits of this case would not be served by a determination
`cancelling it; nor would the Registrant’s case suffer a genuine prejudice by allowing the
`
`evidence to remain intact.
`6.
`I append hereto as Exhibit 1 a declaration of Mahender Sabhnani in which
`he responds in detail to the Respondent’s requests to admit.
`7.
`
`I append hereto as Exhibit 2 the trial declaration of Mahender Sabhnani
`
`dated December 1, 2020.
`8.
`9.
`
`Exhibit 3 hereto is left intentionally blank.
`
`I append hereto as Exhibit 4, excerpts from the deposition of Mahender
`
`Sabhnani.
`10.
`
`I append hereto as Exhibit 5 a letter from Petitioner’s counsel to Registrant’s
`
`counsel dated February 24, 2020, concerning discovery delays in the case.
`11.
`I append hereto as Exhibit 6 true and correct responses to the Respondent’s
`2
`
`
`
`

`

`
`
`interrogatory demands.
`12.
`I append hereto as Exhibit 7 a true and correct copy of Petitioner’s
`
`memorandum of law in opposition to summary judgment.
`13.
`I append hereto as Exhibit 8 a true and correct copy of Registrant’s Brief in
`
`Support of Summary Judgment.
`14.
`I append hereto as Exhibit 9 a true and correct copy of the declaration of
`Timothy Foster filed in opposition to the Registrant’s motion for summary judgment.
`15.
`
`I append hereto as Exhibit 10 a true and correct copy of the Summary
`
`Judgment Declaration of Diane Hamerling dated August 23, 2019 and Ex. A thereto.
`16.
`I append hereto as Exhibit 11 a true and correct copy of the Registrant’s
`
`Initial Disclosure dated August 18, 2018, naming only Dianne Hamerling as a potential
`
`witness to be used by the Registrant in its defense in this action.
`17.
`
`For its part, the Registrant never once during the course of this three-year
`
`litigation notified the Petitioner that RFAs which it had attached to an email also
`
`transmitting document demands had not been responded to; it never once met and
`
`conferred with Petitioner on the subject, and; it never moved to compel a response.
`18.
`
`Prior to their filing of the Notice of Reliance No. 12, neither the Registrant
`
`nor its counsel had mentioned that there were unanswered RFAs in TTAB filings, emails,
`
`or phone calls. And though the purported default occurred before summary judgment
`
`submissions were made, the Registrant made no mention of the RFAs in those
`submissions, no more relay an intent to rely thereon. See Exh. 8 (Registrant’s Brief in
`
`Support of Summary Judgment).
`19.
`To be sure, topics now claimed to have been supposedly “admitted” by the
`
`RFAs were discussed at length during depositions in the matter and addressed in
`interrogatory responses. See, e.g., Exh. 6 (the Petitioner’s Interrogatory Responses) at
`Resp. to Interr. No. 7 (describing the Petitioner’s goods that are available in the United
`States); No. 8 (concerning the Petitioner’s actual use of its mark); No. 9 (concerning the
`Petitioner’s suggested retail prices being between $14.99 and $19.99) No. 24 (setting forth
`
`facts supporting likelihood of confusion and the products similar retail prices). Based on
`3
`
`
`
`

`

`
`
`the forgoing, it is clear that the current filing of the RFAs during trial is a premediated
`
`ambush designed to have this three-year old case resolved on grounds other than its
`
`merits.
`20.
`The Registrant has long possessed all of the information which would
`comprise answers to the requests to admit in the form of Petitioner’s prior submissions
`in opposition to the Registrant’s motion for summary judgment as well as that of his son,
`
`Rahul Sabhnani, and in the form of other timely rendered discovery responses. See Exhs.
`
`2-3 comprised of true and correct copies of the foregoing declarations.
`21. Upon application to the TTAB, the discovery deadlines were repeatedly
`
`extended. See e.g., Exh. 5 hereto. The Registrant purportedly served its requests to admit
`
`as an appendage to an email which attached requests for production of documents and
`
`asked whether Petitioner would accept service of the discovery demands in this fashion.
`See Registrant’s Notice of Reliance 12 dated March 18, 2019, Exhibit 12-B which reads as
`
`follows:
`
`
`Thus, Registrant advanced its requests with an inquiry as to whether
`
`22.
`
`Petitioner would accept service of them as part of a multi-document email transmission.1
`
`Petitioner responded to the accompanying document demands, but never gave its assent
`
`
`
`
`
`1 The attachments to the email appending the requests appear in the top of the document as
`follows: Image 003. Png (21.9 KB)
`First Set of RFPs to Royal Mirage pdf. (165.KB) First Set of
`RFAs to Royal Mirage (100.7 KB).
`
`
`4
`
`
`
`

`

`
`
`to service of the Registrant’s requests in this manner and no date was set for a response
`
`to them.
`23. Here, there was no meet and confer nor any communication concerning the
`RFAs attached to Respondent’s email. In stark contrast, when the Registrant was in
`default of its discovery obligations by several months, the Petitioner’s counsel sent an
`
`email notifying them of the issue and attempting to resolve it in good faith. See Israel Decl.
`
`Ex. 6 (Feb. 24, 2020 email regarding the Registrants outstanding discovery defaults). To the
`
`extent there was a default, it is respectfully submitted that the Board should not reward
`
`the Registrant for its ambush; the requests should be deemed waived.
`24.
`
`Inasmuch as the RFAs were effectively answered by the Petitioner in his
`
`declarations and exhibits submitted in his opposition to summary judgment, as well as in
`deposition testimony based on the Registrant’s counsel own questioning as to topics, they
`now claim are “admitted” and given the strong preference of courts to resolve matters on
`
`substantive grounds, the Petition respectfully submits that any default should be deemed
`
`lifted pursuant to Fed. R. Civ. P. 36.
`
`
`
`
`
`
`
`
`
`
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 14, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` By:
`
`
`
`
`
`
`
`
`
`
`
`
`Sam P. Israel
`
`Sam P. Israel P.C.
`180 Maiden Lane, 6th Floor
`New York, New York 10038
`T: (646) 787-9880; F: (646) 787-9886
`samisrael@spi-pc.com
`Attorneys for Petitioner Mahender Sabhnani
`
`5
`
`

`

`Exhibit 1 to Israel Declaration
`Exhibit 1 to Israel Declaration
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Registration No. 5,367,885
`For the Trademark M MIRAGE BRANDS
`Issued January 2, 2018
`
`In the matter of Registration No. 5,394,192
`For the Trademark MIRAGE BRANDS
`Issued February 6, 2018
`
`
`Petitioner,
`
`-against-
`
`
`Design Mark:
`----------------------------------------------------------X
`MAHENDER SABHNANI,
` :
`
`
` : Cancellation No. 92068086
`
`
` :
`
`
`
`
` :
` :
`
`
`
`
`
` :
`
`MIRAGE BRANDS, LLC,
` :
`
`
`
` :
`
`Registrant.
`
`
` :
`
`----------------------------------------------------------X
`
`
`DECLARATION OF MAHENDER SABHNANI
`Pursuant to 28 U.S.C. § 1746, Mahender Sabhnani, hereby declares under the penalties of perjury
`
`
`
`in rebuttal to the submissions of Mirage Brands, LLC (“MB LLC” or the “Registrant”) in the
`
`above captioned cancellation action as follows:
`
`1.
`
`I am the Petitioner Mahender Sabhnani, and the owner of the design mark “ROYAL
`
`MIRAGE” (the “ROYAL MIRAGE Mark” or
`
`), which bears Registration No. 2,546,642
`
`(“Sabhnani” or “Petitioner”). I submit this declaration based on the records maintained by me in
`
`the ordinary course of business in furtherance of Petitioner’s petition to cancel the trademarks filed
`
`in 2018 by the Registrant for use in connection with fragrances and cosmetics on the basis that the
`
`

`

`MIRAGE BRANDS fragrance marks1 are confusingly similar to the ROYAL MIRAGE fragrance marks.
`
`2.
`
`Following are my responses to the Respondent’s requests to admit, which requests
`
`I received on March 17, 2001.
`
`REQUESTS FOR ADMISSION REQUEST NO. 1 calls for Petitioner to admit that:
`
`consumers do not purchase Respondent’s Fragrance Products under Respondent’s Mark on
`
`impulse.
`
`Because of consumer confusion and the low price point (of Petitioner) -- as attested
`
`to in my last Declaration, the Respondents goods are likely often purchased on impulse,
`
`with consumers not taking the time to learn that the Petitioner’s and Respondent’s brands
`
`are distinct, share no common owner, and are completely unrelated. As I stated in my
`
`last submission, “I would not recommend that anyone, no matter what their financial
`
`means, purchase a fragrance for $195.00 per ounce without sampling the product first or
`
`at least carefully researching and understanding the brand they are purchasing. At our
`
`price point, however, Royal Mirage fragrances and personal care items can be purchased
`
`spontaneously with a view towards experimentation and discovery of a new fragrance.”
`
`In other words, The Petitioner’s fragrance products are more than likely purchased on
`
`impulse, just as Respondent’s are. As I further said in my last submission, “while this
`
`lower price point makes our goods more accessible and subject to a consumer’s
`
`spontaneous purchases, it also increases the threat that a consumer mistakenly believes a
`
`
`
`1 Registration Number 5,394,192 for the mark “MIRAGE BRANDS” and Registration Number
`Registration Number 5,367,885 for the design mark “M MIRAGE BRANDS” are hereinafter
`collectively referred to as the “MIRAGE BRANDS Marks.”
`
`2
`
`
`
`

`

`product with a similar sounding brand, such as MIRAGE BRANDS, comes from the same
`
`source as ROYAL MIRAGE, is related to ROYAL MIRAGE, or is ROYAL MIRAGE. “
`
`REQUEST NO. 2: calls for Petitioner to admit that Respondent’s Mark is not
`
`identical to the Asserted Mark.
`
`Admitted, albeit as I understand it, the issue is one of consumer confusion, not the identity
`
`of goods and in this respect, as I said in my moving declaration: “I know from personal experience
`
`that customer confusion has, in fact, occurred. Beginning in or around 2016, I began receiving
`
`calls from prospective customers asking if “Mirage Brands” fragrance products were manufactured
`
`by RMP Ltd. or associated with me. On average, I have received approximately six to ten such
`
`calls per year.
`
`REQUEST NO. 3: calls for Petitioner to admit that consumers do not purchase
`
`Petitioner’s Fragrance Products under the Asserted Mark on impulse.
`
`Denied; often they do. See response to request no. 2 herein.
`
`REQUEST NO. 4 calls for Petitioner to: admit that there are differences in
`
`appearance between the Respondent’s Text Mark and the Asserted Mark.
`
`There are discernable differences but none likely to prevent consumer confusion. The issue
`
`is consumer confusion, not the identity of goods and in this respect, I know from personal
`
`experience that customer confusion has, in fact, occurred. Beginning in or around 2016, I began
`
`receiving calls from prospective customers asking if “Mirage Brands” fragrance products were
`
`manufactured by RMP Ltd. or associated with me. On average, I have received approximately six
`
`to ten such calls per year.
`
`REQUEST NO. 5 calls for Petitioner to: admit that there are differences in
`
`
`
`3
`
`

`

`appearance between the Respondent’s Design Mark and the Asserted Mark.
`
`There is, but not enough of a difference to prevent consumer confusion. The request is of
`
`no moment and not probative since what is at issue is consumer confusion, not the identity of
`
`goods. I know from personal experience that customer confusion has, in fact, occurred.
`
`Beginning in or around 2016, I began receiving calls from prospective customers asking
`
`if “Mirage Brands” fragrance products were manufactured by RMP Ltd. or associated
`
`with me. On average, I have received approximately six to ten such calls per year.
`
`REQUEST NO. 6 calls for Petitioner to: Admit that there are differences in sound
`
`between the Respondent’s Marks and the Asserted Mark.
`
`The word Mirage is only identical and it sounds the same. In any event, the request is of no
`
`moment and not probative since what is at issue is consumer confusion, not the identity of goods.
`
`REQUEST NO. 7 calls for Petitioner to: admit that there are differences in meaning
`
`between the Respondent’s Marks and the Asserted Mark.
`
`All of the Mirage goods denote fragrance products.
`
`REQUEST NO. 8 calls for Petitioner to: admit that there are differences in connotation
`
`between the Respondent’s Marks and the Asserted Mark.
`
`Denied.
`
`REQUEST NO. 9 calls for Petitioner to: admit that there are differences in commercial
`
`impression between the Respondent’s Text Mark and the Asserted Mark.
`
`Denied.
`
`REQUEST NO. 10 calls for the Petitioner to admit there are differences in commercial
`
`
`
`4
`
`

`

`impression between Respondent’s Design Mark and the Asserted Mark.
`
`Denied.
`
`REQUEST NO. 11 calls for the Petitioner to: admit that the word “Royal” is not
`
`present in Respondent’s Marks.
`
`Admitted, albeit Respondent uses the term Mirage and applies package confusingly similar
`
`to that of Petitioner.
`
`REQUEST NO. 12 calls for the Petitioner to: admit that the word “Brands” is not present
`
`in the Asserted Mark.
`
`Admitted albeit Respondent uses the term MIRAGE and applies packaging that is confusingly
`
`similar to that of Petitioner.
`
`REQUEST NO. 13 calls for the Petitioner to: admit that Respondent’s Fragrance
`
`Products have an individual brand name in addition to Respondent’s Marks.
`
`The Petitioner lacks an understanding of the meaning of this request.
`
`REQUEST NO. 14 calls for the Petitioner to: admit that packaging for goods sold or
`
`offered for sale under the Asserted Mark always include the Crown Element as part of the
`
`Asserted Mark.
`
`The Petitioner cannot attest to what the Respondent always does; it knows that Respondent is
`
`selling goods nearing marks confusingly similar to those applied to its own goods.
`
`Requests 15- 19 are addressed collectively.
`
`REQUEST NO. 15 calls for the Petitioner to: admit that you do not use the Asserted
`
`Mark in connection with toilet water.
`
`REQUEST NO. 16 calls for the Petitioner to: Admit that you do not use the Asserted
`
`5
`
`
`
`

`

`Mark in connection with aftershave.
`
`REQUEST NO. 17 calls for the Petitioner to: Admit that you do not use the Asserted
`
`Mark in connection with soaps.
`
`REQUEST NO. 18 calls for the Petitioner to: Admit that you do not use the Asserted
`
`Mark in connection with body lotions.
`
`REQUEST NO. 19 calls for the Petitioner to: Admit that you do not use the Asserted
`
`Mark in connection with body creams.
`
`The Petitioner defines toilet water is a lightly scented cologne used as a skin freshener. With
`
`this in mind, Petitioner applies its mark to packaging of toilet water. The Petitioner applies its mark
`
`to each of the other categories of goods referenced in request nos. 17-19.
`
`REQUEST NO. 21 calls for the Petitioner to: Admit that Petitioner’s Goods are not
`
`competitive with Respondent’s Goods.
`
`Denied.
`
`REQUEST NO. 22 calls for the Petitioner to: Admit that you do not sell or offer to sell
`
`your perfume or cologne products under the Asserted Mark through retail “brick and mortar”
`
`stores.
`
`Denied insofar as Petitioner sells its goods to distributers who, in turn, sell the goods to retail
`
`“brick and mortar” stores.
`
`REQUEST NO. 23 calls for the Petitioner to: Admit that there are differences in the
`
`actual purchasers of goods sold under Respondent’s Marks and under the Asserted Mark.
`
`Petitioner lacks an understanding of that which this request seeks to elicit. Purchasers are all different
`
`from each other.
`
`
`
`6
`
`

`

`REQUEST NO. 24 calls for the Petitioner to: Admit that, in selling or offering to sell
`
`perfume, cologne or fragrance products under the Asserted Mark, you do not target retail “brick
`
`and mortar” stores.
`
`Denied insofar as Petitioner sells its goods to distributers who, in turn, sell the goods to retail
`
`“brick and mortar” stores.
`
`REQUEST NO. 25 calls for the Petitioner to: Admit that the average retail price of
`
`Fragrance Products sold or offered for sale under Respondent’s Marks is different from the
`
`average retail price of the perfume and cologne products sold under the Asserted Mark.
`
`Denied, insofar as the pricing differences are di minimis.
`
`REQUEST NO. 26 calls for the Petitioner to: Admit that consumers take care when
`
`deciding whether to purchase Respondent’s Fragrance Products under Respondent’s Marks.
`
`Petitioner lacks an understanding of that which this request seeks to elicit. It is assumed that
`
`all Purchasers “take some measure of care” when they buy goods.
`
`REQUEST NO. 27 calls for the Petitioner to: Admit that consumers take care when
`
`deciding whether to purchase Petitioner’s Fragrance Products under the Asserted Mark.
`
`Respondent lacks an understanding of that which this request seeks to elicit. It is assumed that
`
`all Purchasers “take some measure of care” when they buy goods.
`
`REQUEST NO. 28 calls for the Petitioner to: Admit that you are aware of no facts or
`
`evidence showing that consumers do not take care when deciding whether to purchase
`
`Respondent’s Fragrance Products under Respondent’s Marks.
`
`Petitioner lacks an understanding of that which this request seeks to elicit. It is assumed that
`
`all Purchasers “take some measure of care” when they buy goods.
`
`
`
`7
`
`

`

`REQUEST NO. 29 calls for the Petitioner to: Admit that you raised no objections to the
`
`use or registration of the mark HOLLISTER JASMINE MIRAGE in connection with perfumes
`
`or fragrances.
`
`Petitioner was not aware at the time that the mark HOLLISTER JASMINE MIRAGE was
`
`subject to a registration application.
`
`REQUEST NO. 30 calls for the Petitioner to: Admit that you raised no objections to the
`
`use or registration of the mark DESERT MIRAGE in connection with fragrance products.
`
`Petitioner was not aware at the time that the mark Desert MIRAGE was subject to a
`
`registration application.
`
`REQUEST NO. 31 calls for the Petitioner to: Admit that you have no documents
`
`demonstrating actual confusion between Respondent’s Marks and the Asserted Mark.
`
`Petitioner admits but states that the relevant standard is whether the Petitioner’s mark bears
`
`a likelihood of confusion with Respondents.
`
`REQUEST NO. 32 calls for the Petitioner to: Admit that you have no documents or
`
`information demonstrating actual confusion between the Asserted Mark and the DESERT
`
`MIRAGE mark in connection with fragrance products.
`
`Petitioner admits that it has no documents but denies that it has no information to this
`
`effect; it further states that the relevant standard is whether the Petitioner’s mark bears a likelihood
`
`of confusion with Respondents.
`
`REQUEST NO. 33 calls for the Petitioner to: Admit that you have no documents or
`
`information demonstrating actual confusion between the Asserted Mark and the HOLLISTER
`
`JASMINE MIRAGE mark in connection with fragrance products.
`
`Petitioner admits but states that the relevant standard is whether the Petitioner’s mark bears
`
`a likelihood of confusion with Respondents.
`
`
`
`8
`
`

`

`REQUEST NO. 34 calls for the Petitioner to: Admit that you are aware of no facts or
`
`evidence demonstrating actual confusion between Respondent’s Marks and the Asserted Mark.
`
`Denied.
`
`REQUEST NO. 35 calls for the Petitioner to: Admit that Petitioner does not have in its
`
`custody, possession or control any documentary evidence of actual confusion between
`
`Respondent’s Marks and the Asserted Mark.
`
`Admit.
`
`REQUEST NO. 36 calls for the Petitioner to: Admit that products sold in the marketplace
`
`under Petitioner’s Marks have coexisted with products sold under Asserted Mark for more than
`
`two (2) years.
`
`Admit.
`
`REQUEST NO. 37 calls for the Respondent to: Admit that at no time did any third party
`
`state or otherwise express a belief to Petitioner that Petitioner is the source of Respondent’s
`
`Fragrance Products.
`
`Denied.
`
`REQUEST NO. 38 calls for the Petitioner to: Admit that at no time did any third party
`
`state or otherwise express a belief that Petitioner is affiliated with Respondent or Respondent’s
`
`Fragrance Products.
`
`Denied.
`
`REQUEST NO. 39 calls for the Petitioner to: Admit that no one ever stated or otherwise
`
`expressed that he or she purchased goods because he or she was confused between Respondent’s
`
`Marks and the Asserted Mark.
`
`Denied.
`
`
`
`9
`
`

`

`REQUEST ND. 4!} enlls for the Petitioner to: Admit that the Asserted Hark is not
`
`famous, as that term is defined in the Lauham hot i I5 l'.S.C.§ IiZS’it‘iiliixfl}.
`
`sdmil
`
`REQL'EST N0. 4]: Admit
`
`that you have no doeulnents that show dilution of the
`
`Arise-fled “ark as H result of Respondent's use of Respondent's Marks in eonneetiolt with
`
`fragrant-es. perfumes or cologne-s.
`
`Admit
`
`REQUEST ND. 42 cells For the Petitioner to: Admit that you have not entered into a
`
`eonsent agreement. coexistence agreement or settlement agreement with a third-p311}
`
`regarding use of the Assorted NI ark.
`
`Adam I
`
`Executed Do: Marti: It), 2321
`
`New PUP-{LIQ- 5“???15311939
`
`.‘rlahender Sahhndni
`
`1D
`
`

`

`Exhibit 2 to Israel Declaration
`
`Exhibit 2 to Israel Declaration
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Registration No. 5,367,885
`For the Trademark M MIRAGE BRANDS
`Issued January 2, 2018
`
`In the matter of Registration No. 5,394,192
`For the Trademark MIRAGE BRANDS
`Issued February 6, 2018
`
`
`Petitioner,
`
`-against-
`
`
`Design Mark:
`----------------------------------------------------------X
`MAHENDER SABHNANI,
` :
`
`
` : Cancellation No. 92068086
`
`
` :
`
`
`
` :
`
`
`
` :
`
`
`
` :
`
`MIRAGE BRANDS, LLC,
` :
`
`
`
` :
`
`Registrant.
`
`
` :
`
`----------------------------------------------------------X
`
`
`
`
`
`DECLARATION OF MAHENDER SABHNANI
`
`Pursuant to 28 U.S.C. § 1746, Mahender Sabhnani, hereby declares under the penalties of
`
`perjury as follows:
`
`I.
`
`Introduction
`
`1.
`
`I am the Petitioner in the above captioned cancellation action and the owner
`
`of the design mark “ROYAL MIRAGE” (the “ROYAL MIRAGE Mark” or
`
`), which
`
`bears Registration No. 2,546,642. I submit this declaration based on my personal
`
`knowledge and on the records maintained by me in the ordinary course of business in
`
`

`

`furtherance of my petition to cancel the trademarks filed by Mirage Brands, LLC (“MB
`
`LLC” or the “Registrant”) in 2018 for use in connection with fragrances and cosmetics
`
`because the MIRAGE BRANDS fragrance marks1 are confusingly similar to the ROYAL
`
`MIRAGE fragrance marks.
`
`2.
`
`I first founded my company, Royal Mirage Parfums, Ltd. (a Delaware
`
`Corporation, hereinafter “RMP Ltd.”), in 1980. Our initial line of “Royal Mirage” brand
`
`fragrances sold primarily throughout Southeast Asia and the Middle East for the first
`
`twenty years of the company’s existence. We began focusing more on selling Royal
`
`Mirage fragrances in the United States through wholesalers in the 1990s and, in 2002, I
`
`duly registered the ROYAL MIRAGE Mark with the USPTO. We have been selling
`
`continuously in the United States ever since. I remain the company’s sole owner, though
`
`now my son Rahul Sabhnani handles many of the day to day operations of RMP Ltd. as
`
`its President.
`
`3.
`
`A little over a year ago I discovered that in 2018 a series of MIRAGE BRANDS
`
`trademarks were registered in relation to fragrances, personal care, and cosmetic products
`
`by Registrant MB LLC. I subsequently commenced this cancellation proceeding because
`
`the Registrant’s MIRAGE BRANDS Marks are confusingly similar to the ROYAL MIRAGE
`
`mark and the purchasing public is undoubtedly assuming that its goods originate from
`
`the same source as, or are associated with, each other. These two Mirage brand fragrances
`
`
`
`1 Registration Number 5,394,192 for the mark “MIRAGE BRANDS” and Registration
`Number Registration Number 5,367,885 for the design mark “M MIRAGE BRANDS” are
`hereinafter collectively referred to as the “MIRAGE BRANDS Marks.”
`
`2
`
`
`
`

`

`compete in the same market (the U.S. fragrance market), at the same price point (appx.
`
`$3-$5 per fluid ounce), and in the same channels (the Amazon Marketplace for example).
`
`4.
`
`By this proceeding I am seeking the USPTO’s cancellation of the MIRAGE
`
`BRANDS Mark in order to protect my sixteen-year senior ROYAL MIRAGE Mark and
`
`prevent further injury to my company’s brand.
`
`II.
`
`Petitioner Registered the ROYAL MIRAGE Mark with the USPTO
`Sixteen Years Before the MIRAGE BRANDS Marks
`
`5.
`
`My company RMP Ltd. oversees the manufacture and distribution of Royal
`
`Mirage brand fragrances, talcum powders, lotions, and soaps all bearing the ROYAL
`
`MIRAGE Mark. RMP Ltd. has been operational in the fragrance industry since its founding
`
`in 1980.
`
`6.
`
`The name Royal Mirage was created by me simply because I liked the way
`
`it sounded. The visual phenomenon of a mirage has no link to a fragrance or the way
`
`something smells, but I liked the feel, so to speak, of the word choice and took it as a
`
`brand name.
`
`7.
`
`Though I initially registered the ROYAL MIRAGE Mark with the USPTO in
`
`the early 1980’s, the mark was at some point deemed abandoned by the USPTO.
`
`Seventeen years or so later, in the late 1990s/early 2000s, I decided to re-register the
`
`ROYAL MIRAGE Mark.
`
`8.
`
`However, my first attempt to register the ROYAL MIRAGE Mark with the
`
`USPTO in the late 1990’s/early 2000’s was a failure. Upon preparing for registration, my
`
`3
`
`

`

`attorneys discovered that a pre-existing “MIRAGE” mark had already been registered in
`
`the fragrances category which prevented registration of my ROYAL MIRAGE Mark. My
`
`attorneys continued to monitor the senior mark and in the early 2000’s discovered that
`
`the company that registered “MIRAGE,” Perfume Workshop, had decided to abandon the
`
`name.
`
`9.
`
`On October 27, 2000, through my counsel at the time, I filed an application
`
`with the USPTO to register “ROYAL MIRAGE” as a trademark. I received the registration
`
`for the ROYAL MIRAGE Mark on March 12, 2002 (the “Registration Date”) assigning the
`
`Registration Number 2,546,642 and the Serial Number 76154785 and with the listed date
`
`of first use of July 1, 1980 (the “Date of First Use”); Notice of Reliance 1. The ROYAL
`
`MIRAGE Mark has been in continuous commercial use since that date.
`
`10. As registered, the ROYAL MIRAGE Mark is a composite mark most
`
`prominently containing both the words “ROYAL MIRAGE” in capital letters and a design
`
`of a crown above the stylized text:
`
`See Notice of Reliance 1 (affixing the application’s drawing and specimens).
`
`11.
`
`The specimen of use submitted by the Petitioner in connection with the
`
`applications for the ROYAL MIRAGE Mark (the “Royal Mirage Specimen”) depicts a
`
`
`
`
`
`4
`
`

`

`flattened-out fragrance box as shown below:
`
`Notice of Reliance 1.
`
`
`
`12.
`
`The portion of the Royal Mirage Specimen showing the double-lined
`
`rectangle in the above image is the front of the box, as it would be seen on store shelves.
`
`The top portion of the Royal Mirage Specimen, which appears here as a plain black
`
`background with the crown symbol in the center, would comprise the top of the box
`
`when folded