ESTTA Tracking number: ESTTA1051195 04/24/2020 · was a book published 2006 by SVP’s owner...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1051195

Filing date: 04/24/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 91248396

Party DefendantKaren E. Reyna DBA Passport to Organics

CorrespondenceAddress

DALIAH SAPERSAPER LAW OFFICES LLC505 NORTH LASALLE STREET SUITE 350CHICAGO, IL 60654UNITED [email protected], [email protected], [email protected]

Submission Other Motions/Papers

Filer's Name Matthew R. Grothouse

Filer's email [email protected], [email protected]

Signature /Matthew R. Grothouse/

Date 04/24/2020

Attachments Supplement. 4.24.2020.pdf(136852 bytes )ExhibitA4.24.2020 .pdf(2080485 bytes )

http://estta.uspto.gov



SVP Global LLC, Opposition No. 91248396 Opposer/Counterclaim-Defendant, Mark: Passport to Organics

v. Serial No. 87956598 Publication Date: November 27, 2018 Karen E. Reyna DBA Passport to Organics, Filed: June 11, 2018 Applicant/Counterclaim-Plaintiff.

SUPPLEMENT TO COUNTERCLAIM-PLAINTIFF’S MOTION TO EXTEND THE

DEADLINE FOR PRETRIAL DISCLOSURES AND FOR LEAVE TO FILE MOTIONS

DURING THAT EXTENSION

Yesterday, April 23, 2020, Counterclaim-Plaintiff Karen E. Reyna DBA Passport to Organics

(“KER”) submitted a Motion To Extend The Deadline For Pretrial Disclosures and For Leave To

File Motions During that Extension to allow KER additional time to file a Motion to Compel, a

Motion for Summary Judgment, and its Pretrial Disclosures. This filing supplements that Motion.

Specifically, this supplement includes, as Exhibit A, KER’s nearly completed Motion for

Summary Judgment, in order to demonstrate to the Board that KER has diligently worked to obtain

evidence, witnesses testimony, and additional documents and responses from Counterclaim-

Defendant, third parties, and its own files over the last three months, notwithstanding the global

pandemic and the legal and physical limitations resulting therefrom.

Due to Covid-19, KER is still awaiting outstanding information, facts, documents, and

testimony from third-parties and from Counterclaim-Defendant that KER intends to include in its

Motion for Summary Judgment. Respecting the far-reaching and devastating impact of the global

pandemic on every single person and business, KER permitted other parties (including

Counterclaim-Defendant) additional time (that it would have not otherwise permitted) to respond

and provide its requested information, facts, documents, and testimony. The requested one-month

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extension would provide a reasonable time for KER to obtain this outstanding information,

evidence, documents, and testimony.

Date: April 24, 2020 Respectfully submitted, Karen E. Reyna DBA Passport to Organics

/s/ Matthew R. Grothouse Matthew R. Grothouse ARDC No. 6314834 Saper Law Offices, LLC, 505 N. LaSalle, Suite 350 Chicago, IL 60654 [email protected] (312) 527-4100

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CERTIFICATE OF SERVICE

I hereby certify that the foregoing SUPPLEMENT TO COUNTERCLAIM-PLAINTIFF’S MOTION TO EXTEND DEADLINE FOR PRETRIAL DISCLOSURES AND FOR LEAVE TO FILE MOTIONS DURING THAT EXTENSION was served on Counsel for Counterclaim-Defendant via electronic mail to the email address below:

Irene Y. Lee Justin E. Maio

RUSS AUGUST & KABAT 12424 Wilshire Boulevard

Los Angeles, California 90025 Telephone: 310.826.7474 Facsimile: 310.826.699

Date: April 24, 2020 By: Matthew R. Grothouse

Matthew R. Grothouse Saper Law Offices, LLC 505 N. LaSalle Suite 350 Chicago, IL 60654 [email protected] (312) 527-4100 Attorney for Applicant/Cross-

Plaintiff.

EXHIBIT A

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SVP Global LLC, Opposition No. 91248396 Opposer, Mark: Passport to Organics

v. Serial No. 87956598 Publication Date: November 27, 2018 Karen E. Reyna DBA Passport to Organics, Filed: June 11, 2018 Applicant.

APPLICANT’S MOTION FOR SUMMARY JUDGMENT

Pursuant to Fed. R. Civ. P. 56 and 37 C.F.R. § 2.127(e), Karen E. Reyna DBA Passport to

Organics (“KER”) hereby moves for summary judgment against Opposer SVP Global LLC

(“SVP”) on KER’s counterclaim because there is no genuine issue of material fact as to KER’s

priority in the “PASSPORT TO ORGANICS” mark for beauty and cosmetic products, and as to

the likelihood of confusion between SVP’s mark and KER’s mark. SVP’s registration (Reg. No.

4827519), therefore, should be cancelled in accordance with Trademark Trial and Appeal Board

Manual of Procedure (“TBMP”) § 309.03(c)(1). In support thereof, KER submits the following:

I. SUMMARY JUDGMENT STANDARD

“A motion for summary judgment is a pretrial device intended to save the time and expense

of a full trial when the moving party is able to demonstrate, prior to trial, that there is no genuine

dispute of material fact, and that it is entitled to judgment as a matter of law.” Daniel P. Matthews,

No. CANCELLATION 9205897, 2015 WL 4779216, at *1 (July 31, 2015) (citing Fed. R. Civ. P.

56(a); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847 (Fed. Cir. 1992)). “If

the moving party is able to meet this initial burden, the burden shifts to the nonmoving party to

demonstrate the existence of specific genuinely disputed facts that must be resolved at trial.” Id.

“The nonmoving party may not rest on mere allegations or assertions but must designate specific

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portions of the record or produce additional evidence showing the existence of a genuine dispute

of material fact for trial.” Id. “Should the nonmoving party fail to raise a genuine dispute of

material fact as to an essential element of the moving party’s case, judgment as a matter of law

may be entered in the moving party’s favor.” Id. As the Seventh Circuit has described it,

“summary judgment is the ‘put up or shut up’ moment in a [proceeding], when a party must show

what evidence it has that would convince a trier of fact to accept its version of events.” Johnson

v. Cambridge Indus., Inc., 325 F.3d 892, 901 (7th Cir. 2003).

II. STATEMENT OF UNDISPUTED FACTS

1. KER is a sole proprietorship with its principal place of business at 360 W Hubbard,

Apt 2608, Chicago, IL 60654. Declaration of Karen E. Reyna, ¶ 2 (“KER Decl. ¶ 2).

2. On August 31, 2009, KER filed a federal 1(b) “intent-to-use application” with the

United States Patent and Trademark Office (“the USPTO”) for the mark PASSPORT TO

ORGANICS for, among other things, organic beauty and body creams, cosmetic creams, face

creams, and oils for cosmetic use in Class 003 (Serial No. 77816982). See Exhibit 1.

3. KER first used its PASSPORT TO ORGANICS mark in commerce on June 10,

2010. KER Decl. ¶ 4.

4. By July of 2010, KER was advertising its PASSPORT TO ORGANICS-branded

products nationwide through Google AdWords while KER was penetrating markets nationwide

through its nationally accessible website. See Exhibit 2; KER Decl. ¶ 5.

5. By July 2010, KER had also sold products under the PASSPORT TO ORGANICS

mark to consumers in Texas, Illinois, Nebraska, California, Florida, and Iowa.

6. KER filed a Statement of Use on October 13, 2010. See Exhibit 3; KER Decl. ¶ 7.

8. On December 7, 2010, the USPTO issued a registration (Reg. No. 3887558) to KER

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for its PASSPORT TO ORGANICS mark. See Exhibit 4; KER Decl. ¶ 8.

9. By March of 2011, KER had sold PASSPORT TO ORGANICS products to over

half of the States in the U.S., plus Washington D.C. and Canada. KER Decl. ¶ 9.

10. By January of 2013, KER had sold its PASSPORT TO ORGANICS products to

consumers in nearly all fifty states. KER Decl. ¶ 10.

11. From June of 2010 to the present date, KER has continuously used the PASSPORT

TO ORGANICS mark for skin care preparations and beauty products. KER Decl. ¶ 11.

12. KER, however, inadvertently neglected to file a Section 8 renewal for its

PASSPORT TO ORGANICS registration by December of 2016, which resulted in the USPTO

cancelling KER’s registration on July 14, 2017. See Exhibit 5; KER Decl. ¶ 12.

13. Upon discovering its registration was cancelled, on June 11, 2018, KER submitted

a new application for PASSPORT TO ORGANICS (Serial No. 87956598) for substantially the

same products listed in its original registration, including skincare preparations and cosmetics such

as body and face lotion, eye cream, face oils, skin cleansers, and skin masks. See Exhibit 6.

14. However, after the USPTO approved KER’s new application for publication, and

after the USPTO published KER’s application for opposition on November 7, 2018, Exhibit 7,

SVP filed a Notice of Opposition against KER’s application. Opp’n ¶¶ 1-8.

15. SVP filed the Notice of Opposition in response to an email from KER demanding

that SVP stop using the PASSPORT TO BEAUTY mark. Exhibit 8; Opp’n ¶ 8; Opp’n, Ex. B.

16. Even though SVP did not use its PASSPORT TO BEAUTY mark for beauty or

cosmetic goods in commerce until November of 2014, Exhibit 12, SVP nevertheless filed an

Opposition against KER’s PASSPORT TO ORGANICS mark, claiming a likelihood of confusion

and incredulously stating that it first used its PASSPORT TO BEAUTY mark in 2005. Opp’n ¶ 1.

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17. SVP’s only evidence that it used the phrase “Passport to Beauty” prior to late 2014

was a book published 2006 by SVP’s owner Shalini Vadhera entitled “Passport to Beauty: Secrets

and Tips from Around the World for Becoming a Global Goddess,” as well as an eye kit previously

sold by Global Goddess Beauty, Inc., which included the phrase “Passport to Beauty” (along with

other phrases) in small text near the bottom of the packaging. See Exhibit 9; Opp’n ¶¶ 2-4.

18. SVP, however, admits that Ms. Vadhera’s book is only a single title and is not part

of a series. See Exhibit 10 (Admission No. 5).

19. SVP also admits that Global Goddess Beauty, Inc. did not assign or transfer any

rights or marks to Ms. Vadhera when she exited the company in 2008. See Oppsr’s Answer ¶ 18.

20. Even so, SVP claims—without evidence—that SVP’s Founder and owner Shalini

Vadhera, at some indefinite time, in some unexplained way, and in some unidentified location,

used the PASSPORT TO BEAUTY mark in interstate commerce before Global Goddess Beauty,

Inc. was even formed. See Opp’n, ¶ 1; Oppsr’s Answer ¶ 18.

21. SVP also now claims—again without any evidence—that Ms. Vadhera at some

point granted a valid license to Global Goddess Beauty, Inc. to use the PASSPORT TO BEAUTY

mark at some indefinite time in some unexplained way.

22. SVP further claims—without evidence—that after Ms. Vadhera allegedly “used”

and “licensed” the PASSPORT TO BEAUTY mark, she at some indeterminate point transferred

her alleged rights to the mark to an entity called Sanan Holding Corp., and that this entity in some

explained way maintained use of the mark. See Oppsr’s Answer ¶ 18.

23. SVP also claims—without evidence—that when Sanan Holding Corp. dissolved,

the PASSPORT TO BEAUTY mark somehow “reverted back” to Ms. Vadhera, Oppsr’s Answer

¶ 18, even though there is no evidence that the asset was purchased upon the entity’s liquidation.

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24. Finally, SVP claims—without evidence—that at some point Ms. Vadhera then

transferred the mark to SVP, and that throughout this entire time, the mark was somehow in

continual use in commerce. See Oppsr’s Answer ¶ 18.

25. In short, SVP’s claim to priority in the PASSPORT TO ____ mark is based on a

string of incredulous and wholly unsupported uses and transfers from 2005-2013. See Opps’r

Answer ¶ 18.

26. Notably, SVP’s combination of unsupported uses and transfer claims directly

contradict SVP’s intent-to-use application that it filed on June 28, 2013. See Exhibit 11.

27. SVP’s combination of unsupported use and transfer claims also directly contradict

SVP’s filing of an Extension of Time filed on July 31, 2014. See Exhibit 12.

28. SVP’s combination of unsupported use and transfer claims also directly contradicts

SVP’s filing of its Statement of Use on August 4, 2015, wherein SVP stated under oath that its

first use of the mark in commerce was in November of 2014. See Exhibit 13.

29. Finally, both KER and SVP agreed—until it was dangerous for SVP to do so—that the

continued use and registration of both PASSPORT TO ORGANICS and PASSPORT TO

BEAUTY is likely to cause “consumer confusion, mistake, or deception as to the source of origin

of KER’s goods” and that “others are likely to believe that KER’s goods are the same goods as

SVP’s goods or provided by, sponsored by, approved by, licensed by, affiliated with, or in some

other way legitimately connected to SVP’s goods and/or services.” Opp. ¶ 3.

30. Indeed, as SVP asserted in its Opposition, consumers are high likely to confuse the

source of the goods due to the high similarity between the marks. See Opp’n ¶ 8.

31. Not surprisingly, the consumer has been confused by SVP’s use of its mark, with some

consumers mistakenly purchasing products from SVP instead of KER, other consumers mistaking

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KER as associated or affiliated with SVP, and still others simply misled. See KER Decl. ¶¶ 16-20.

32. Finally, such confusion will only increase as SVP expands and opens its own “Passport

to Beauty” Amazon.com store, which SVP has admitted it is doing. See Exhibit 11 (No. 24).

III. CANCELLATION STANDARD

In an opposition proceeding where the applicant counterclaims for cancellation of

opposer’s pleaded registration, the question of priority does arise. See Ultratan Suntanning

Centers Inc. v. Ultra Tan International AB, 49 USPQ2d 1313 (TTAB 1998); Massey Junior

College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399 n.6 (CCPA 1974). Where an

applicant seeks to prove a date earlier than the date alleged in its application, a heavier burden has

been imposed on the applicant than the common law burden of preponderance of the evidence. See

Rockwood Chocolate, 372 F.2d 552, 554 (CCPA 1967 (stating that “proof of such earlier date must

be clear and convincing”); Elder Mfg. Co. v. International Shoe Co., 194 F.2d 114, 118, 92 USPQ

330, 332 (CCPA 1952) (stating that “proof must be clear and convincing”). The reason for such

an increased evidentiary burden, supported by common sense, is that a change of position from

one “considered to have been made against interest at the time of filing of the application requires

enhanced substantiation.” Stanspec Co. v. American Chain & Cable Co., 531 F.2d 563, 567, 189

USPQ 420, 424 (CCPA 1976). Such evidence “should not be characterized by contradictions,

inconsistencies, and indefiniteness but should carry with it conviction of its accuracy and

applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 583 (CCPA 1945) (citation omitted).

IV. ARGUMENT

SVP does not dispute that KER has used the PASSPORT TO ORGANICS mark since 2010

and that the mark is inherently distinctive; in fact, SVP failed to plead any affirmative defenses.

See Opps’r Answer ¶ 8; see Shell Oil Co. v. United States, 896 F.3d 1299, 1315 (Fed. Cir. 2018)

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(“The failure to plead [an affirmative defense] can result in waiver.”) (internal citations omitted).

Further, as established by evidence that cannot be genuinely disputed, KER has priority in the

“PASSPORT TO ______” mark for beauty and cosmetic products because KER first used its

PASSPORT TO ORGANICS mark in interstate commerce in June of 2010, while SVP’s first date

of constructive use of its PASSPORT TO BEAUTY mark was June 28, 2013 (the filing date of its

intent-to-use application). Finally, in addition to the fact that SVP admitted and asserted for nearly

ten months that there is a likelihood of confusion between its PASSPORT TO BEAUTY mark and

KER’s PASSPORT TO ORGANICS mark (Opp’n, ¶ 6), the evidence in this proceeding

demonstrates that KER owners a protectable mark, that there is a likelihood of confusion between

KER’s mark and SVP’s registered mark, and that KER will be damaged by Opposer’s registration.

A. The PASSPORT TO ORGANICS Mark is Inherently Distinctive and

Protectable.

A trademark mark is “any word, name, symbol, or device, or any combination thereof”

used to “identify and distinguish” the goods of one person from those “manufactured or sold by

others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127.

“The critical inquiry in determining whether a designation functions as a mark is how the

designation would be perceived by the relevant public.” In re Eagle Crest Inc., 96 USPQ2d 1227,

1229 (TTAB 2010). “[A] mark is inherently distinctive if ‘[its] intrinsic nature serves to identify

a particular source.”’ Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 210 (2000). “Inherently

distinctive [marks] are entitled to protection.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.

763, 768 (1992). “Suggestive” marks are inherently distinctive because they do not “forthwith

conveys an immediate idea of the ingredients, qualities or characteristics of . . . goods” but instead

require “imagination, thought and perception to reach a conclusion as to the nature of the goods.”

DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1252 (Fed. Cir. 2012).

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Here, KER’s PASSPORT TO ORGANICS mark is, at the very least, suggestive of its

skincare preparations and cosmetic products because the term “passport” does not directly describe

any quality, characteristic, or function of Applicant’s goods, nor does the term constitute a product

genus or category of cosmetic products or skincare preparations. Id. Further, the USPTO originally

registered the mark on the Principal Register, with neither “Passport” nor “To” disclaimed because

those terms (and the mark as a whole) are inherently distinctive. See Exhibit 3. Further, SVP

explicitly maintained and relied on the fact that the term “PASSPORT” is inherently distinctive

when it applied for and registered PASSPORT TO BEAUTY. See Exhibit 10, 13.

Accordingly, there is no genuine dispute of fact that KER’s mark is valid and protectable.

C. Applicant Owns the PASSPORT TO ORGANICS Mark.

KER herein provides indisputable evidence that it (1) first used the PASSPORT TO

ORGANICS in commerce in 2010, (2) has continuously used the mark nationwide in commerce

from 2010 to the present, (3) never provided any express or implied authorization to SVP to use

its “PASSPORT” mark, (4) has not received nor found any competent evidence that SVP (or any

predecessor-in-interest) used the phrase “PASSPORT TO BEAUTY” as a source identifier prior

to 2013, and (5) has substantial evidence that SVP did not use the “Passport to Beauty” phrase as

a source identifier in commerce until November of 2014.

First, KER first used its PASSPORT TO ORGANICS marks in interstate commerce in

June of 2010—a full three years before SVP filed its intent-to-use application for PASSPORT TO

BEAUTY. Compare KER Decl. ¶ 4 with Exhibit 11. Moreover, KER advertised and offered

goods under its PASSPORT TO ORGANICS mark nationwide in July of 2010. See KER Decl. ¶

5. KER’s inadvertent failure to file a Section 8 affidavit (resulting in the cancellation of its federal

registration) did not affect KER’s well-established common law rights in the PASSPORT TO

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ORGANICS marks, which by January of 2013 were established in nearly every State in the U.S.

KER Decl. ¶ 10. See Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 1391 (Fed. Cir.

2010) (“[F]ailure to file a timely Section 8 declaration of use and/or excusable nonuse for the

marks does not negate Mattel’s intent to resume use of the mark.”); Miller Brewing Co. v. Oland's

Breweries (1971), Ltd., 548 F.2d 349, 352 n. 4 (CCPA 1976) (“Although Oland & Son’s

registration was cancelled in January of 1968 for failure to file a continued use affidavit, this, in

and of itself, does not show an intent to abandon.”).

Second, KER has used the PASSPORT TO ORGANICS marks in connection with its

cosmetic and skincare products continually and substantially exclusively between 2010 and the

present. KER Decl. ¶ 11. Third, KER never provided any express or implied authorization to SVP

to use its “PASSPORT” mark. KER Decl. ¶ 33. Fourth, although SVP claims priority based on

alleged prior uses of the phrase “Passport to Beauty” as a source identifier by a string of licenses

and transfers over the last 15 years, SVP has not provided—and cannot provide—any credible

evidence supporting this claim.

Fifth, the evidence in this proceeding shows that SVP did not use the phrase “Passport to

Beauty” as a source identifier until June 28, 2013 constructively, and late 2014/early 2015 actually.

See Exhibits 11-13; see also Oppsr’s Answer to Appl.’s Counterclaim ¶ 22 (admitting that SVP’s

Founder and owner listed, under the Passport to Beauty entry in the “Experience” tab on her private

LinkedIn page, the year “2015” as the year she was first involved with “Passport to Beauty”).

Indeed, the evidence on the record shows that prior to 2014, Shalini Vadhera was only involved in

two non-trademark uses of the phrase “Passport to Beauty.” The first was in the title of her single

book, “Passport To Beauty: Secrets and Tips from Around the World for Becoming a Global

Goddess,” which is not a trademark use but a book title. See Exhibit 9; Herbko International, Inc.

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v. Kappa Books, Inc., 308 F.3d 1156, (Fed. Cir. 2002) (“In sum, this court’s case law prohibits

proprietary rights for single book titles.”); see also Mattel Inc. v. Brainy Baby Co., 101 USPQ2d

1140, 1142 (TTAB 2011) (“The title of a single creative work is not considered a trademark . . .

.”). The only other pre-2013 use of the “Passport to Beauty” phrase involving Ms. Vadhera

consists of the phrase being included in tiny letters (along with other phrases) at the bottom of a

box containing an eye kit that at some point was sold by Global Goddess Beauty Inc. See Exhibit

10. However, upon “inspecting” the use of the phrase on this box, it is clear that the phrase was

simply not “used in such a manner that it would be readily perceived as identifying” the goods.

Id.; In Re Frankish Enterprises Ltd., 113 U.S.P.Q.2d 1964 (T.T.A.B. 2015); see also In re Volvo

Cars of North America Inc., 46 USPQ2d 1455, 1458 (TTAB 1998) (emphasizing that a mark “must

be used in a manner calculated to project to purchasers or potential purchasers a single source or

origin” for the services, but mere intent that it function as a mark is not sufficient).

Furthermore, even if this use were somehow source-identifying, the use was by Global

Goddess Beauty, Inc., and SVP has failed to come forward with any evidence that Ms. Vadhera

validly licensed the mark to Global Goddess Beauty, Inc. or, in the alternative, that Global Goddess

Beauty, Inc. transferred such rights to SVP; instead, SVP has explicitly rejected the notion that

Global Goddess Beauty, Inc. ever owned or transferred any rights to the PASSPORT TO

BEAUTY mark. Oppsr’s Answer to Appl.’s Counterclaim ¶ 20. Finally, even if the use of the

phrase in tiny letters at the bottom of the box constituted a source-identifying trademark use, and

even if Ms. Vadhera were able to establish she granted a valid, non-naked license to Global

Goddess Beauty, Inc., there is no documented evidence that Ms. Vadhera continued to use and

maintain her rights in the PASSPORT TO BEAUTY mark after she “exited” Global Goddess

Beauty, Inc. in 2008. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir.

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2000) (citing 15 U.S.C. § 1127). In short, SVP failed to produce compelling evidence that it (or

some predecessor-in-interest) had any right to a PASSPORT mark prior to its 2013 ITU

application. Thus, KER owns a valid and protectable mark.1

D. There is a Likelihood of Confusion Between KER’s PASSPORT TO ORGANICS Mark and SVP’s PASSPORT TO BEAUTY Mark.

The Board bases its determination under Section 2(d) on an analysis of all of the probative

evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co.,

476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re Majestic Distilling

Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of

confusion analysis, however, two key considerations are the similarities between the marks and

the similarities between the goods. See In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944

(Fed. Cir. 2004). When appropriate, the Board will “focus ... on dispositive factors, such as

similarity of the marks and relatedness of the goods.” Herbko Int'l, Inc. v. Kappa Books, Inc., 308

F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v. Alberto-Culver

Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001)).

Here, the two marks are substantially similar and the good are identical. Moreover, for ten

months, SVP expressly admitted and actively asserted there was a likelihood of confusion between

the marks. Indeed, when KER first emailed SVP’s owner and demanded SVP cease and desist

using the PASSPORT TO BEAUTY mark in November of 2018, SVP acknowledged there was a

likelihood of confusion between the marks but claimed that Opposer had priority in the

“PASSPORT TO _____” mark. SVP then filed a Notice of Opposition against KER’s mark based

on the sole ground of priority and a likelihood of confusion between the PASSPORT marks. See

1 For these reasons, KER has a personal stake, and therefore standing in this proceeding. See General

Mills Inc. v. Nature’s Way Products, Inc., 202 USPQ 840 (TTAB 1979).

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Opp’n ¶ 8. SVP, moreover, did not plead, and arguably therefore waived, any “no likelihood of

confusion” affirmative defense against KER’s counterclaim. See Shell, 896 F.3d at 1315.

Most tellingly, months after SVP filed its Opposition, and upon realizing that KER was not

going to quickly fold but rather was likely to prevail on the issue of priority, Opposer abruptly

filed a Motion to Withdraw its Opposition so it could immediately “switch” and argue “no

likelihood of confusion” between the marks. This switch was not genuine or in good faith.2

Finally, in addition to SVP’s admissions, the evidence on the record demonstrates there is

a likelihood of confusion between the marks. First, the marks are substantially similar in

appearance, sounds, and meaning as both marks (i) use the dominant term “PASSPORT” as the

first word of the mark, (ii) use the three-word phrase “PASSPORT TO _____”, and (iii) use an

industry generic term as the last word in the three-word phrase (“Organics” and “Beauty”). See

Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-

73, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (affirming TTAB’s holding that VEUVE ROYALE

for sparkling wine is likely to cause confusion with VEUVE CLICQUOT and VEUVE

CLICQUOT PONSARDIN for champagne, is likely to cause confusion due to the strong

distinctive term VEUVE and the non-source identifying significance of ROYALE).

Second, KER and SVP sell identical goods, namely, face and body lotions, skin masks,

cosmetic creams, and other cosmetics. Century 21 Real Estate v. Century Life of Am., 970 F.2d

874, 877 (Fed.Cir.1992) (“When marks would appear on virtually identical goods or services, the

degree of similarity necessary to support a conclusion of likely confusion declines.”). The fact

that KER provides products with “some” organics ingredients is immaterial as it does not affect

2 Specifically, SVP cited the use of marks by third parties as the reason for withdrawing its Opposition. However, SVP presumably exercised its requisite due diligence before filing the Opposition so it knew, or reasonably should have known, about any alleged third-party marks before it filed a Notice of Opposition. Further the alleged third-party “uses” cited by SVP are not in use or constitute mere advertising copy.

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where and how the product is sold or purchased. KER Decl. ¶ 10. See, e.g., In Re Mother Earth

Brewing, LLC, No. 77716598, 2013 WL 6979638, at *2 (Dec. 30, 2013) (finding that “organic

beer and non-organic beer are essentially the same goods”).

Third, KER and SVP sell their products through overlapping trade channels. Indeed,

because the at-issue goods are legally identical, and because neither SVP’s registration nor the

KER’s registration contain any limitations on the channels of trade and classes of purchasers, the

Board must presume that the channels of trade and classes of purchasers are the same. See Stone

Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014); see also

In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (same); In re Yawata

Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally

identical goods, the channels of trade and classes of purchasers are considered to be the same);

American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101

USPQ2d 1022, 1028 (TTAB 2011). Moreover, both KER and SVP primarily market and sell their

products on their own websites, through Facebook, through Pinterest, through Instagram, and at

trade shows. See Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1166 (Fed. Cir. 2002)

(stating that the “overlap in trade channels and class of purchasers bolsters the likelihood of

confusion”). Further still, both KER and SVP use similar advertising and target similar consumers.

See Opp’n ¶ 6 (recognizing that both KER and SVP use their marks to advertise “beauty secrets

from around the word,” use turmeric-based preparations to create “glowing skin,” and use the

descriptive “jet setter” for travel makeups kits and bags3).

Fourth, the majority of both KER’s and SVP’s products are offered to the general public

3 KER did not “copy” these marketing phrases from Opposer; instead, she developed them independently

of, and in many instances well before, SVP. KER Decl. ¶¶ 11-15.

14

(not sophisticated buyers or specialized consumers) and sell for between $20-$50; therefore, unlike

items costing hundreds, thousands, or even tens of thousands of dollars, the ordinary consumers

of KER’s and SVP’s products do not exercise elevated levels of care in purchasing products.

Moreover, consumers can purchase both Parties’ items instantaneously online with no contract

negotiation, approval process, or waiting period. See Top Tobacco, L.P. v. N. Atl. Operating Co.,

Inc., 101 U.S.P.Q.2d 1163 (T.T.A.B. 2011); see also Clifton v. Plough, Inc., 341 F.2d 934, 144

USPQ 599, 600 (CCPA 1965) (finding relevant that “[t]he products of the parties are sold over the

counter to the general public and either may be purchased without a doctor’s prescription”).

Therefore, purchasing conditions, in this case, increase the likelihood of confusion, particularly

since the Board focuses on “on the least sophisticated potential purchasers.” Stone Lion Capital

Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014).

Finally, in addition to the fact that “it is often difficult to adduce reliable evidence of actual

confusion,” Zabars & Co., Inc., No. 78358819, 2008 WL 2817087, at *12 (July 10, 2008), and the

fact that there is likely a significant amount of unreported confusion in this case, KER has evidence

of actual confusion, including brand confusion, diversion of sales, and even reverse confusion.

See KER Decl. ¶¶ 28-32. Such confusion, moreover, will only increase since SVP intends to

expand its sale of PASSPORT TO BEAUTY products on Amazon, where KER actively sells its

products. See Exhibit 10 (Admission No. 24).

Accordingly, because SVP originally admitted a likelihood of confusion between the

marks, because SVP waived any affirmative defense that there is no confusion, and because the

undisputed evidence of the case demonstrates that the most important and dispositive factors in

the likelihood of confusion analysis confirm a likelihood of confusion in this case, there is no

genuine dispute of fact as to the likelihood of confusion in this case.

15

E. Because KER has Priority in the PASSPORT TO ORGANICS Mark, the

Board Must Cancel SVP’s Registration as a Matter of Law.

To prevail on a motion for summary judgment for the cancellation of a registration, the

moving party must establish that” there is no genuine dispute that [it] has standing to maintain the

proceeding, that [it] has prior proprietary rights in [its] pleaded mark, and that contemporaneous

use of the parties’ respective marks on their respective goods and/or services would be likely to

cause confusion or mistake or to deceive consumers.” Daniel P. Matthews, No. CANCELLATION

9205897, 2015 WL 4779216, at *2 (July 31, 2015) (citing Hornblower & Weeks, Inc. v.

Hornblower & Weeks, Inc., 60 USPQ2d 1733, 1735 (TTAB 2001)).

Here, as established in detail above, KER has standing, KER uses and owns a protectable

trademark, KER has priority in PASSPORT TO ORGANICS mark, and the Parties’ use of their

substantially similar marks on the same goods has caused, and is likely to continue to cause,

consumer confusion or mistake or to deceive customers as to source, affiliation, or sponsorship.

Id. Accordingly, the Board should cancel SVP’s registration.

CONCLUSION

WHEREFORE, the Board should grant KER’s Motion for Summary Judgment and

cancel SVP’s registration.

Date: April 23, 2020 Respectfully submitted, Karen E. Reyna DBA Passport to Organics

/s/ Matthew R. Grothouse Matthew R. Grothouse ARDC No. 6314834 Saper Law Offices, LLC, 505 N. LaSalle, Suite 350 Chicago, IL 60654 [email protected] (312) 527-4100




v. Serial No. 87/956,598 Publication Date: November 27, 2018 Karen E. Reyna DBA Passport to Organics, Filed: June 11, 2018 Applicant.

DECLARATION OF KAREN E. REYNA

I, Karen E. Reyna, under penalty of perjury, declare as follows:

1. I am an adult citizen of the United States and resident of Illinois, I am of sound mind and capacity, and I have personal knowledge of the facts stated herein.

2. Karen E. Reyna DBA “Passport to Organics” (herein, “KER”) is a sole proprietorship with its principal place of business at 1140 N Wells St, Apt 603, Chicago, IL 60610.

3. On August 31, 2009, KER filed an intent-to-use application for PASSPORT TO ORGANICS for use in connection with organic body and beauty soaps, creams, cleansers, gels, lotions, and creams and oils for cosmetic use in International Class 003. Attached as Exhibit 1 to KER’s Motion for Summary Judgment (“MSJ”), and to this declaration, is a true and correct copy of KER’s intent-to-use application (Serial No. 77816982).

4. KER first used the trademark “Passport to Organics” on goods that it offered for sale

in or around June 10, 2010, when it made an in-person sale of a “Passport to Organics” Clear Face Turmeric Lotion to Stacy Wells, an Illinois resident. Attached as Exhibit A is a true and correct copy of the closest sales invoice to that date, July 8, 2010.

5. By July of 2010, KER had advertised its products using the “Passport to Organics”

trademark throughout the U.S. via its website and Google AdWords. Attached as Exhibit 2 to KER’s MSJ, as well as this declaration, is a true and correct screen capture of KER’s website as it existed in July of 2010, as well as a true and accurate copy of KER’s receipt from Google AdWords for KER’s August 2010 “Passport to Organics” online advertising campaign.

6. By the end of July 2010, KER had sold products under the “Passport to Organics”

trademark to customers in Texas, Illinois, Nebraska, California, Florida, and Iowa. 7. On October 13, 2010, KER filed a Statement of Use for its mark. Attached as Exhibit

3 to KER’s MSJ, as well as this declaration, is a true and correct copy of KER’s

ｄｯ｣ｵ

2

Statement of Use KER, as stored on the USPTO’s TSDR and accessed by me on April 3, 2020.

8. On December 7, 2010, the USPTO issued a registration (Reg. No. 3887558) to KER

for its PASSPORT TO ORGANICS mark. Attached as Exhibit 4 to KER’s MSJ, as well as this declaration, is a true and correct copy of KER’s 2010 registration.

9. By March of 2011, KER had sold products using the PASSPORT trademark to over

half of the States in the U.S., plus Washington D.C. and Canada. 10. By January of 2013, KER had sold products using the PASSPORT trademark to

customers in nearly all fifty states. 11. Since June of 2010, KER has continuously used the PASSPORT trademark for skin

care preparations and other beauty products. 12. In 2016, however, KER unintentionally forgot to file a renewal form for the “Passport

to Organics” registration, and so the registration was cancelled on July 14, 2017. Attached as Exhibit 5 to KER’s MSJ, as well as this declaration, is a true and correct prosecution history of KER’s registration, as stored on the USPTO’s TSDR and accessed by me on April 3, 2020.

13. Upon discovery the registration was cancelled, KER submitted a new application. Attached as Exhibit 6 to KER’s MSJ, as well as this declaration, is a true and correct copy of KER’s June 11, 2018 application for PASSPORT TO ORGANICS (Serial No. 87956598).

14. Attached as Exhibit 7 to KER’s MSJ, as well as this declaration, is a true and accurate

copy of the Notice of Publication of KER’s PASSPORT TO ORGANICS trademark application, issued by the USPTO, as stored on the USPTO’s TSDR and accessed by me on April 3, 2020.


copy of the email exchange between KER and SVP that took place in November of 2018.


copy of a Ms. Vadhera’s book, as shown on goodreads.com, accessed on April 3, 2020, at https://www.goodreads.com/book/show/910442.Passport_to_Beauty. Also included in Exhibit No. 9 are the photographs contained in SVP’s Opposition that show Ms. Vadhera’s book and Global Goddess Beauty, Inc.’s travel kit box allegedly sold in 2005 or 2006. .

17. Attached as Exhibit 10 to KER’s MSJ, as well as this declaration, is a true and correct copy of SVP Global LLC’s Supplemental Responses to KER’s First Set of Requests for Admission.

ｄｯ｣ｵ

3

18. Attached as Exhibit 11 to KER’s MSJ, as well as this declaration, is a true and correct copy of the intent-to-use application filed by SVP on June 28, 2013 (85973481), as stored on the USPTO’s TSDR and accessed by me on April 3, 2020.

19. Attached as Exhibit 12 to KER’s MSJ, as well as this declaration, is a true and correct

copy of the two Extensions of Time to File SOU that SVP filed on filed by SVP on July 31, 2014 and February 4, 2015, as stored in the USPTO’s TSDR and accessed by me on April 3, 2020.


copy of the Statement of Use filed by SVP Global LLC on August 4, 2015, as stored in the USPTO’s TSDR and accessed by me on April 3, 2020.


copy of SVP Global LLC’s PASSPORT TO BEAUTY registration, as stored in the USPTO’s TSDR and accessed by me on April 3, 2020.

22. There is little difference between cosmetics and skincare preparations marked as

“organic” and those that are not because (i) the products are ordinarily sold in the same stores, platforms, and trade shows, (ii) the products are sold to largely the same consumers, (iii) the products are usually sold for the same or similar cost, and (iv) the term “organic” does not require the use of 100% organic ingredients.

23. I thought of the name “Passport to Organics” for my brand of skincare and cosmetic

products. 24. KER began using the phrase “beauty secrets from around the world” in July of 2010,

years before SVP was even formed. 25. KER began selling turmeric face cream after my friend, Jyoti Gupta, told me about the

benefits of turmeric and talked about how she used a turmeric face mask in her wedding.

26. KER began using the term “glowing skin” to describe the benefit of its turmeric screen

cream as soon as it began selling its turmeric skin cream in July of 2010, since “glowing skin” is widely known as one of the main benefits of turmeric cream.

27. KER began using the phrase “jet setter” in 2017, well before KER had any knowledge

that SVP Global LLC was using the phrase, to describe the travel nature of some of its products and because such a phrase is generic for a particular type of product in the industry.

28. In February 2016, Monica Cho, an employee of KER, informed me that she received a

phone inquiry to Passport to Organics 800 number from a woman who wanted to purchase the “gold mask” that she believed KER sold; however, the customer called

ｄｯ｣ｵ

4

the wrong Passport company because Passport to Organics was not selling (and has never sold a gold mask) and Passport to Beauty at the time was selling a gold mask.

29. In May of 2018, I was contacted via a phone call by my sister, Linda Reyna, who mistakenly believed that Passport to Organics owned the PASSPORT TO BEAUTY brand, operated the “Passport to Beauty” Instagram account, and owned the www.passportbeauty.com website. As a result of this phone call, I looked online what to do if someone copies your brand.

30. On July 28, 2019, at around 3:00 p.m. at the CosmoProf Beauty Convention in Las

Vegas, Fab Fit Fun co-founder Katie Ann Rosen and her co-worker approached me at the “Passport to Organics” booth and asked if I “worked with Shalini” of Passport to Beauty and emphasized how the companies sound alike and have similar themes while pointing to the products being displayed. I told her I did not work with Shalini.

31. Finally, as recently as March 25, 2020, I received a text message from Lee Kinser, a

customer who mistakenly ordered a lip gloss product from Passport to Beauty’s website instead of KER’s Passport to Organic’s website. See Exhibit B.

32. One of my biggest concerns with the “Passport to Organics” mark and business continues to be that consumers who only vaguely remember my mark as “Passport to ____” will be confused when they search for Passport in online searches, since such searches routinely produce results of links to Passport to Organics’ website and products.

33. Neither KER nor any of its agents has ever provided SVP Global LLC any express or

implied authorization or consent to use KER’s PASSPORT TO ORGANICS mark, to use the PASSPORT TO BEAUTY mark, to use any “PASSPORT TO ______” mark, or any other mark containing the term PASSPORT.

34. SVP Global LLC’s initial focus on subscription-based boxes has prevented KER to

enter into the subscription-based box channels of trade. 35. SVP Global LLC’s intention to sell its products on Amazon.com in the near future will

only intensify the consumer confusion between the marks.

I declare under penalty of perjury that the foregoing is true and correct. Executed this twenty-third day of April 2020 in Austin, Texas.

_______________________________ Karen E. Reyna

ｄｯ｣ｵ

EXHIBIT A

10/15/2019 Passport to Organics ~ Orders ~ #1020 ~ Shopify

https://passport-to-organics.myshopify.com/admin/orders/2979475779 1/1

Turmeric Lotion

SKU: 02 Lotion

$24.99 × 1 $24.99

Subtotal 1 item $24.99

Shipping Shipping Method #500 (6.6 oz) $0.00

Tax Tax 0% $0.00

Total $24.99

Paid by customer $0.00

Customer

Tanja Mordeson

2 orders

CONTACT INFORMATION

SHIPPING ADDRESS

Tanja Mordeson

108 North 52nd Street

Omaha NE 68132

United States

402-345-9639

BILLING ADDRESS

Same as shipping address

[email protected]

m

#1020

July 8, 2010 at 3�44 pm from Migration (via import) Unfulfilled

1

JUNE 21, 2016

Jennifer Bunger archived this order. 1�24 pm

MAY 26, 2016

APP Migration voided the authorization on the card. 10�10 pm

APP Tanja Mordeson placed this order on Migration. 10�10 pm

https://passport-to-organics.myshopify.com/admin/customers/3280774211

https://passport-to-organics.myshopify.com/admin/orders?customer_id=3280774211

EXHIBIT B

EXHIBIT 1

PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2011)

Trademark/Service Mark Application, Principal Register

TEAS Plus Application

Serial Number: 77816982

Filing Date: 08/31/2009

NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory

under the facts of the particular application.

The table below presents the data as entered.

Input Field Entered

TEAS Plus YES

MARK INFORMATION

*MARK Passport to Organics

*STANDARD CHARACTERS YES

USPTO-GENERATED IMAGE YES

LITERAL ELEMENT Passport to Organics

*MARK STATEMENTThe mark consists of standard characters, without claim to any

particular font, style, size, or color.

REGISTER Principal

APPLICANT INFORMATION

*OWNER OF MARK Reyna, Karen E.

*STREET 1 E. Scott #1802

*CITY Chicago

*STATE

(Required for U.S. applicants)Illinois

*COUNTRY United States

*ZIP/POSTAL CODE

(Required for U.S. applicants only)60610

PHONE 512-431-8283

EMAIL ADDRESS [email protected]

AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

LEGAL ENTITY INFORMATION

*TYPE INDIVIDUAL

* COUNTRY OF CITIZENSHIP United States

GOODS AND/OR SERVICES AND BASIS INFORMATION

*INTERNATIONAL CLASS 003

Bar soap; Bath cream; Bath soaps in liquid, solid or gel form;

Beauty creams; Beauty creams for body care; Body cream;

../FTK0002.JPG

IDENTIFICATION

Body cream soap; Body creams; Body lotion; Cleansing

creams; Cosmetic creams for skin care; Cream soaps; Face and

body beauty creams; Face and body lotions; Skin and body

topical lotions, creams and oils for cosmetic use; Skin

cleansers; Skin cream; Skin creams in liquid and in solid form;

Skin lotion; Soaps for body care

*FILING BASIS SECTION 1(b)

ADDITIONAL STATEMENTS INFORMATION

*TRANSLATION

(if applicable)

*TRANSLITERATION

(if applicable)

*CLAIMED PRIOR REGISTRATION

(if applicable)

*CONSENT (NAME/LIKENESS)

(if applicable)

*CONCURRENT USE CLAIM

(if applicable)

CORRESPONDENCE INFORMATION

*NAME Reyna, Karen E.

*STREET 1 E. Scott #1802

*CITY Chicago

*STATE



*ZIP/POSTAL CODE 60610

PHONE 512-431-8283

*EMAIL ADDRESS [email protected]

*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

FEE INFORMATION

NUMBER OF CLASSES 1

FEE PER CLASS 275

*TOTAL FEE PAID 275

SIGNATURE INFORMATION

* SIGNATURE /Karen E Reyna/

* SIGNATORY'S NAME Karen Reyna

* SIGNATORY'S POSITION Owner

* DATE SIGNED 08/31/2009

PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2011)





To the Commissioner for Trademarks:

MARK: Passport to Organics (Standard Characters, see mark)

The literal element of the mark consists of Passport to Organics.

The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, Karen E. Reyna, a citizen of United States, having an address of

1 E. Scott #1802

Chicago, Illinois 60610

United States

requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register

established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

For specific filing basis information for each item, you must view the display within the Input Table.

International Class 003: Bar soap; Bath cream; Bath soaps in liquid, solid or gel form; Beauty creams; Beauty creams for body care; Body

cream; Body cream soap; Body creams; Body lotion; Cleansing creams; Cosmetic creams for skin care; Cream soaps; Face and body beauty

creams; Face and body lotions; Skin and body topical lotions, creams and oils for cosmetic use; Skin cleansers; Skin cream; Skin creams in liquid

and in solid form; Skin lotion; Soaps for body care

Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on

or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

The applicant's current Correspondence Information:

Reyna, Karen E.

1 E. Scott #1802


512-431-8283(phone)

[email protected] (authorized)

A fee payment in the amount of $275 has been submitted with the application, representing payment for 1 class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under

18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting

registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be

the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she

believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or

association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely,

when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all

statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Signature: /Karen E Reyna/ Date Signed: 08/31/2009

Signatory's Name: Karen Reyna

Signatory's Position: Owner

../FTK0002.JPG

RAM Sale Number: 6376

RAM Accounting Date: 09/01/2009


Internet Transmission Date: Mon Aug 31 21:48:26 EDT 2009

TEAS Stamp: USPTO/FTK-XX.XXX.XX.XX-20090831214826788

762-77816982-40001f9e96fa5bede43a8882a2d

5e4cdf-CC-6376-20090831212151951369

EXHIBIT 2

more>>

Featured ProductTurmeric Lotion

The Secret of TurmericTurmeric is one of nature's most powerful herbs. It has been used for centuries in India and Asia for clear, glowing skin.

Our Testimonials

Free ShippingTurmeric Lotion

At Passport to Organics we find beauty secret ingredients from around the world, passed down from one generation to the next.

We search for tried and true natural organic solutions, since natural is better.

These worldly botanicals, essential oils, herbs, and minerals are formulated to develop the most powerful and effective skin and body care products which are 100% natural.

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View Cart| My Account / Order Status| Help My Shopping Cart has:

(Your shopping cart is empty)Search

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Copyright ©2010 All Rights Reserved Volusion.

http://www.passporttoorganics.com/ Go JUN JUL OCT

162009 2010 2011

68 captures

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16 Jul 2010 - 27 Jun 2019 ▾ About this capture

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www.passporttoorganics.com

http://www.passporttoorganics.com/ Go JUN JUL OCT

162009 2010 2011

68 captures

� ⍰❎f�

16 Jul 2010 - 27 Jun 2019 ▾ About this capture

Google Inc.

Department No 33654

PO Box 39000

San Francisco, CA 94139-3181

United States

Bill To:

Karen Reyna

1 E Scott #1802

Chicago, IL 60610

United States

Monthly invoiceAug 1, 2010 - Aug 31, 2010Services Google AdWords

Billing ID 6358-8560-5958

Google AdWords ID 757-326-1380

Invoice Number Ads-7172095280-201008

Invoice Date Aug 31, 2010

Record of payments received

Date Description Amount

Aug 1, 2010 Automatic payment: Visa • • • • 8591 ($24.37)


Record of Costs and Tax

Date Description Cost State sales tax (0%) Total

Aug 1, 2010 Google AdWords cost $24.37 $0.00 $24.37


Totals $27.32 $0.00 $27.32

EXHIBIT 3

PTO Form 1553 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 09/30/2011)

Trademark/Service Mark Statement of Use

(15 U.S.C. Section 1051(d))


Input Field Entered

SERIAL NUMBER 77816982

LAW OFFICE ASSIGNED LAW OFFICE 106

EXTENSION OF USE NO

MARK SECTION

MARK PASSPORT TO ORGANICS

OWNER SECTION (current)

NAME Reyna, Karen E.

STREET 1 E. Scott #1802

CITY Chicago

STATE Illinois

ZIP/POSTAL CODE 60610

COUNTRY US

PHONE 512-431-8283

EMAIL [email protected]

OWNER SECTION (proposed)

NAME Reyna, Karen E.

STREET 1 E. Scott #1802

CITY Chicago

STATE Illinois


COUNTRY United States

PHONE 512-431-8283

EMAIL [email protected]

GOODS AND/OR SERVICES SECTION

INTERNATIONAL CLASS 003

CURRENT IDENTIFICATION

Organic Bar soap, Bath cream, Bath soaps in liquid, solid or gel form,

Beauty creams, Beauty creams for body care, Body cream, Body cream

soap, Body creams, Body lotion, Cleansing creams, Cosmetic creams for

skin care, Cream soaps, Face and body beauty creams, Face and body

lotions, Skin and body topical lotions, creams and oils for cosmetic use,

Skin cleansers, Skin cream, Skin creams in liquid and in solid form, Skin

lotion, Soaps for body care

GOODS OR SERVICES KEEP ALL LISTED

FIRST USE ANYWHERE DATE 06/10/2009

FIRST USE IN COMMERCE DATE 06/10/2010

SPECIMEN FILE NAME(S)\\TICRS\EXPORT11\IMAGEOUT 11\778\169\77816982\xml1\

SOU0002.JPG

\\TICRS\EXPORT11\IMAGEOUT 11\778\169\77816982\xml1\

SOU0003.JPG

SPECIMEN DESCRIPTIONPassport to Organics Trademark on label of bottle, Passport to Organics

Trademark on hand tag.

REQUEST TO DIVIDE NO

PAYMENT SECTION

NUMBER OF CLASSES IN USE 1

SUBTOTAL AMOUNT [ALLEGATION OF USE FEE] 100

TOTAL AMOUNT 100

SIGNATURE SECTION

DECLARATION SIGNATURE /Karen E Reyna/

SIGNATORY'S NAME Karen E Reyna

SIGNATORY'S POSITION CEO, Founder

DATE SIGNED 10/13/2010

FILING INFORMATION

SUBMIT DATE Wed Oct 13 12:03:06 EDT 2010

TEAS STAMP

USPTO/SOU-XX.XXX.X.XXX-20

101013120306845937-778169

82-4704f321a56ac76934e489

a9fb70630dc-CC-10384-2010

1013114142027095

../SOU0002.JPG

../SOU0002.JPG

../SOU0003.JPG

../SOU0003.JPG

PTO Form 1553 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 09/30/2011)


(15 U.S.C. Section 1051(d))To the Commissioner for Trademarks:

MARK: PASSPORT TO ORGANICS

SERIAL NUMBER: 77816982

The applicant, Reyna, Karen E., having an address of

1 E. Scott #1802


United States

is submitting the following allegation of use information:

For International Class 003:

Current identification: Organic Bar soap, Bath cream, Bath soaps in liquid, solid or gel form, Beauty creams, Beauty creams for body care, Body

cream, Body cream soap, Body creams, Body lotion, Cleansing creams, Cosmetic creams for skin care, Cream soaps, Face and body beauty

creams, Face and body lotions, Skin and body topical lotions, creams and oils for cosmetic use, Skin cleansers, Skin cream, Skin creams in liquid

and in solid form, Skin lotion, Soaps for body care

The mark is in use in commerce on or in connection with all goods or services listed in the application or Notice of Allowance or as subsequently

modified for this specific class

The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 06/10/2009,

and first used in commerce at least as early as 06/10/2010, and is now in use in such commerce. The applicant is submitting one specimen for the

class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) Passport to Organics Trademark on

label of bottle, Passport to Organics Trademark on hand tag..

Specimen File1

Specimen File2

The applicant is not filing a Request to Divide with this Allegation of Use form.

A fee payment in the amount of $100 will be submitted with the form, representing payment for the allegation of use for 1 class.

Declaration

Applicant requests registration of the above-identified trademark/service mark in the United States Patent and Trademark Office on the Principal

Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq., as amended). Applicant is the owner of the mark sought to be

registered, and is using the mark in commerce on or in connection with the goods/services identified above, as evidenced by the attached

specimen(s) showing the mark as used in commerce.


18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the form or any resulting registration, declares that

he/she is properly authorized to execute this form on behalf of the applicant; he/she believes the applicant to be the owner of the

trademark/service mark sought to be registered; and that all statements made of his/her own knowledge are true; and that all statements made on

information and belief are believed to be true.

Signature: /Karen E Reyna/ Date Signed: 10/13/2010

Signatory's Name: Karen E Reyna

Signatory's Position: CEO, Founder

../SOU0002.JPG

../SOU0003.JPG




Internet Transmission Date: Wed Oct 13 12:03:06 EDT 2010

TEAS Stamp: USPTO/SOU-XX.XXX.X.XXX-20101013120306845

937-77816982-4704f321a56ac76934e489a9fb7

0630dc-CC-10384-20101013114142027095

EXHIBIT 4

EXHIBIT 5

STATUS DOCUMENTS MAINTENANCE Back to Search Print

BULK DATA: Since May 7 at 12 a.m., the TSDR Application Programming Interface (API) has not included all information. Images of trademark registration certificates issued since July 2016 and some office actions are absent in the API. Customers who need to retrieve a copy of a registration certificate or an office action should download it directly from the TSDR documents tab.

INTERMITTENT SYSTEM ISSUES: Due to high-volume usage, you may experience intermittent issues on the Trademark Status and Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need assistance accessing a document, email [email protected] include your serial number, the document you are looking for, and a screenshot of any error messages you have received.

Generated on: This page was generated by TSDR on 2020-04-02 11:14:36 EDT

Mark: PASSPORT TO ORGANICS

US Serial Number: 77816982 Application Filing Date: Aug. 31, 2009

US Registration Number: 3887558 Registration Date: Dec. 07, 2010

Filed as TEAS Plus: Yes Currently TEAS Plus: Yes

Register: Principal

Mark Type: Trademark

TM5 Common Status Descriptor:

DEAD/REGISTRATION/Cancelled/Invalidated

The trademark application was registered, but subsequently it was cancelled or invalidated and removed from the registry.

Status: Registration cancelled because registrant did not file an acceptable declaration under Section 8. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.

Status Date: Jul. 14, 2017

Publication Date: Feb. 09, 2010 Notice of Allowance Date: May 04, 2010

Date Cancelled: Jul. 14, 2017

Mark Information

Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

Attorney/Correspondence Information

Prosecution History

TM Staff and Location Information

Assignment Abstract Of Title Information - Click to Load

Date Description Proceeding Number

Jul. 14, 2017 CANCELLED SEC. 8 (6-YR)

Dec. 07, 2015 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED

Dec. 07, 2010 REGISTERED-PRINCIPAL REGISTER

Nov. 03, 2010 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED

Nov. 02, 2010 LAW OFFICE REGISTRATION REVIEW COMPLETED 70138

Oct. 29, 2010 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED

Oct. 28, 2010 STATEMENT OF USE PROCESSING COMPLETE 76874

Oct. 13, 2010 USE AMENDMENT FILED 76874

Oct. 28, 2010 CASE ASSIGNED TO INTENT TO USE PARALEGAL 76874

Oct. 13, 2010 TEAS STATEMENT OF USE RECEIVED

May 04, 2010 NOA MAILED - SOU REQUIRED FROM APPLICANT

Feb. 09, 2010 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Feb. 09, 2010 PUBLISHED FOR OPPOSITION

Jan. 02, 2010 LAW OFFICE PUBLICATION REVIEW COMPLETED 70138

Dec. 31, 2009 ASSIGNED TO LIE 70138

Dec. 11, 2009 APPROVED FOR PUB - PRINCIPAL REGISTER

Dec. 10, 2009 EXAMINER'S AMENDMENT ENTERED 88888

Dec. 10, 2009 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328

Dec. 10, 2009 EXAMINERS AMENDMENT E-MAILED 6328

Dec. 10, 2009 EXAMINERS AMENDMENT -WRITTEN 76584

Dec. 03, 2009 ASSIGNED TO EXAMINER 76584

Sep. 04, 2009 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Sep. 03, 2009 NEW APPLICATION ENTERED IN TRAM

Proceedings - Click to Load

Privacy - Terms

EXHIBIT 6

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)





NOTE: Data fields with the * are mandatory under TEAS Plus. The wording "(if applicable)" appears where the field is only mandatory

under the facts of the particular application.


Input Field Entered

TEAS Plus YES

MARK INFORMATION

*MARK Passport to Organics

*STANDARD CHARACTERS YES


LITERAL ELEMENT Passport to Organics

*MARK STATEMENTThe mark consists of standard characters, without claim to any

particular font style, size, or color.

REGISTER Principal


*OWNER OF MARK Reyna, Karen E.

DBA/AKA/TA/FORMERLY DBA Passport to Organics

*STREET 70 West Huron, APT 1010

*CITY Chicago

*STATE



*ZIP/POSTAL CODE

(Required for U.S. and certain international addresses)60654

PHONE 800-809-4704



WEBSITE ADDRESS www.passporttoorganics.com


*TYPE INDIVIDUAL

* COUNTRY OF CITIZENSHIP United States


../FTK0002.JPG

*INTERNATIONAL CLASS 003

*IDENTIFICATION

Body lotion; Eye cream; Face oils; Face and body lotions; Skin

bronzer; Skin cleansers; Skin creams; Skin fresheners; Skin

lotion; Skin masks; Skin moisturizer; Skin moisturizing gel;

Skin toners; Non-medicated skin toners

*FILING BASIS SECTION 1(a)

FIRST USE ANYWHERE DATE At least as early as 06/10/2009

FIRST USE IN COMMERCE DATE At least as early as 06/10/2010

SPECIMEN

FILE NAME(S)

\\TICRS\EXPORT17\IMAGEOUT

17\879\565\87956598\xml1\ FTK0003.JPG

SPECIMEN DESCRIPTION Passport to Organics mark on top of label

ADDITIONAL STATEMENTS INFORMATION

*TRANSLATION

(if applicable)

*TRANSLITERATION

(if applicable)

*CLAIMED PRIOR REGISTRATION

(if applicable)

*CONSENT (NAME/LIKENESS)

(if applicable)

*CONCURRENT USE CLAIM

(if applicable)


*NAME Reyna, Karen E.

*STREET 70 West Huron, APT 1010

*CITY Chicago

*STATE

(Required for U.S. addresses)Illinois


*ZIP/POSTAL CODE 60654

PHONE 800-809-4704

*EMAIL ADDRESS [email protected]

*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes

FEE INFORMATION

APPLICATION FILING OPTION TEAS Plus

NUMBER OF CLASSES 1

FEE PER CLASS 225

*TOTAL FEE PAID 225


* SIGNATURE /Karen E Reyna/

* SIGNATORY'S NAME Founder

* SIGNATORY'S POSITION Owner

SIGNATORY'S PHONE NUMBER 512-431-8283

../FTK0003.JPG

../FTK0003.JPG

* DATE SIGNED 06/11/2018

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)

OMB No. 0651-0009 (Exp 02/28/2021)






MARK: Passport to Organics (Standard Characters, see mark)

The mark in your application is Passport to Organics.

The applicant, Karen E. Reyna, DBA Passport to Organics, a citizen of United States, having an address of

70 West Huron, APT 1010


United States

800-809-4704(phone)

[email protected]



For specific filing basis information for each item, you must view the display within the Input Table.

International Class 003: Body lotion; Eye cream; Face oils; Face and body lotions; Skin bronzer; Skin cleansers; Skin creams; Skin

fresheners; Skin lotion; Skin masks; Skin moisturizer; Skin moisturizing gel; Skin toners; Non-medicated skin toners

Use in Commerce: The applicant is using the mark in commerce on or in connection with the identified goods/services. The applicant attaches, or

will later submit, one specimen as a JPG/PDF image file showing the mark as used in commerce on or in connection with any item in the class of

listed goods/services, regardless of whether the mark itself is in the standard character format or is a stylized or design mark. The specimen image

file may be in color, and the image must be in color if color is being claimed as a feature of the mark.

In International Class 003, the mark was first used by the applicant or the applicant's related company or licensee predecessor in interest at least

as early as 06/10/2009, and first used in commerce at least as early as 06/10/2010, and is now in use in such commerce. The applicant is

submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed

goods/services, consisting of a(n) Passport to Organics mark on top of label.

Specimen File1

For informational purposes only, applicant's website address is: www.passporttoorganics.com


Reyna, Karen E.

70 West Huron, APT 1010


800-809-4704(phone)


E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant or the applicant's

attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address

must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the

Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Plus status and a requirement to submit an

additional processing fee of $125 per international class of goods/services.


Declaration

../FTK0002.JPG')

../FTK0003.JPG

Basis:

If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):

The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered;

The mark is in use in commerce on or in connection with the goods/services in the application;

The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and

To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.

AND/OR

If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d),

and/or § 1126(e):

The signatory believes that the applicant is entitled to use the mark in commerce;

The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the

application; and

To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.

To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the

mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the

goods/services of such other persons, to cause confusion or mistake, or to deceive.

To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the

allegations and other factual contentions made above have evidentiary support.

The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §

1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration

resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and

belief are believed to be true.

Declaration Signature

Signature: /Karen E Reyna/ Date: 06/11/2018

Signatory's Name: Founder

Signatory's Position: Owner

Signatory's Phone Number: 512-431-8283

Payment Sale Number: 87956598

Payment Accounting Date: 06/11/2018


Internet Transmission Date: Mon Jun 11 13:06:17 EDT 2018

TEAS Stamp: USPTO/FTK-XX.XX.XX.XX-201806111306179379

69-87956598-610ece017b2f3dc9030c2cb204c3

0be3172a9d487420ec763fb540af6b4c851-CC-1

1701-20180611124248315289

EXHIBIT 7

From: [email protected]

Sent: Tuesday, November 27, 2018 00:59 AM

To: [email protected]

Subject: Official USPTO Notice of Publication Confirmation: U.S. Trademark SN 87956598: PASSPORT TO ORGANICS

TRADEMARK OFFICIAL GAZETTE PUBLICATION CONFIRMATION

U.S. Serial Number: 87956598Mark: PASSPORT TO ORGANICSInternational Class(es): 003Owner: Reyna, Karen E.Docket/Reference Number:

The mark identified above has been published in the Trademark Official Gazette (TMOG) on Nov 27, 2018.

To Review the Mark in the TMOG:

Click on the following link or paste the URL into an internet browser: https://tmog.uspto.gov/#issueDate=2018-11-27&serialNumber=87956598

On the publication date or shortly thereafter, the applicant should carefully review the information that appears in the TMOG for accuracy. If any information is incorrect due toUSPTO error, the applicant should immediately email the requested correction to [email protected]. For applicant corrections or amendments after publication,please file a post publication amendment using the form available at http://teasroa.uspto.gov/ppa/. For general information about this notice, please contact the TrademarkAssistance Center at 1-800-786-9199.

Significance of Publication for Opposition:

* Any party who believes it will be damaged by the registration of the mark may file a notice of opposition (or extension of time therefor) with the Trademark Trial and Appeal

Board. If no party files an opposition or extension request within thirty (30) days after the publication date, then eleven (11) weeks after the publication date a certificate ofregistration should issue.

To check the status of the application, go to http://tsdr.uspto.gov/#caseNumber=87956598&caseType=SERIAL_NO&searchType=statusSearch or contact the TrademarkAssistance Center at 1-800-786-9199. Please check the status of the application at least every three (3) months after the application filing date.

To view this notice and other documents for this application on-line, go tohttp://tsdr.uspto.gov/#caseNumber=87956598&caseType=SERIAL_NO&searchType=documentSearch. NOTE: This notice will only become available on-line the next business

day after receipt of this e-mail.

https://tmog.uspto.gov/#issueDate=2018-11-27&serialNumber=87956598

mailto:[email protected]

http://teasroa.uspto.gov/ppa/

http://tsdr.uspto.gov/#caseNumber=87956598&caseType=SERIAL_NO&searchType=statusSearch

http://tsdr.uspto.gov/#caseNumber=87956598&caseType=SERIAL_NO&searchType=documentSearch

EXHIBIT 8

From: Liz Reyna <[email protected]> Date: Tue, Nov 27, 2018, 4:14 PM Subject: Message for Owner - Shalini Vadhera To: <[email protected]> Cc: <[email protected]>

Hello Passport to Beauty, This message is for the owner Shalini Vadhera. As business owner to business owner, I am reaching out directly and as the first method to discuss the trademark infringement for Passport to Organics. I have owned this mark in commerce coming up for 10 years now. The name Passport to Beauty and Passport to Organics, along with the running theme are too similar in nature and cause confusion for customers. I am asking you to rebrand on account of this trademark confusion. Your products look lovely and I am sorry to ask you to do this, but it is entirely too similar to my company. Please let me know your response within 5 business days. It would be ideal finalize a swift solution ourselves, however, if none is made I will pass this along to my attorney. Best Regards, Liz Reyna Founder Passport to Organics 512-431-8283




From: Passport Beauty <[email protected]> Sent: Tuesday, November 27, 2018 5:05 PM To: Liz Reyna <[email protected]> Cc: Daliah Saper <[email protected]> Subject: Re: Message for Owner - Shalini Vadhera Hi Liz- We own the trademark Passport To Beauty and I also wrote a best selling book Passport To Beauty in 2004 that hit #1 on the health and beauty lists. I would say that you may be infringing on our trademark as this has been out much longer than 10 years, we do regular segments on national tv shows and once again, we are fully trademarked. Happy to put you in touch with our attorneys. Thank you, Shalini




EXHIBIT 9

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GENRES

ABOUT SHALINI VADHERA

BOOKS BY SHALINI VADHERA

Home My Books Browse ▾ Community ▾ Sign In JoinSearch books

Shalini Vadhera’s Book





No Reference to Shalini Vadhera’s Book

Reference to Shalini Vadhera’s Book

Reference to Shalini Vadhera’s Book

EXHIBIT 2

Google Inc.

Department No 33654

PO Box 39000

San Francisco, CA 94139-3181

United States

Bill To:

Karen Reyna

1 E Scott #1802

Chicago, IL 60610

United States

Monthly invoiceAug 1, 2010 - Aug 31, 2010Services Google AdWords

Billing ID 6358-8560-5958

Google AdWords ID 757-326-1380

Invoice Number Ads-7172095280-201008

Invoice Date Aug 31, 2010

Record of payments received

Date Description Amount



Record of Costs and Tax

Date Description Cost State sales tax (0%) Total



Totals $27.32 $0.00 $27.32

EXHIBIT 11

PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2014)





Input Field Entered


MARK INFORMATION

*MARK PASSPORT TO BEAUTY

STANDARD CHARACTERS YES


LITERAL ELEMENT PASSPORT TO BEAUTY

MARK STATEMENTThe mark consists of standard characters, without claim to any

particular font, style, size, or color.

REGISTER Principal


*OWNER OF MARK SVP Global LLC

INTERNAL ADDRESS c/o Stubbs Alderton & Markiles, LLP

*STREET 1453 3rd Street Promenade, Suite 310

*CITY Santa Monica

*STATE

(Required for U.S. applicants)California


*ZIP/POSTAL CODE

(Required for U.S. applicants only)90401


TYPE limited liability company

STATE/COUNTRY WHERE LEGALLY ORGANIZED California



*IDENTIFICATION

Cosmetics; Cosmetic preparations; shampoos; hair

conditioners; bath soaps in liquid, solid or gel form; fragrances

and perfumery; lip balm, lip block, lip gloss; face and body

lotions; make-up; sun creams

FILING BASIS SECTION 1(b)

ATTORNEY INFORMATION

NAME Konrad Gatien

FIRM NAME Stubbs Alderton & Markiles, LLP

STREET 1453 3rd Street Promenade, Suite 310

../APP0002.JPG

CITY Santa Monica

STATE California



PHONE (310) 746-9810

FAX (310) 746-9820




NAME Konrad Gatien

FIRM NAME Stubbs Alderton & Markiles, LLP


CITY Santa Monica

STATE California



PHONE (310) 746-9810

FAX (310) 746-9820



FEE INFORMATION

NUMBER OF CLASSES 1

FEE PER CLASS 325

*TOTAL FEE DUE 325

*TOTAL FEE PAID 325


SIGNATURE /s/

SIGNATORY'S NAME Konrad Gatien

SIGNATORY'S POSITION Attorney of Record, CA Bar member


PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2014)





MARK: PASSPORT TO BEAUTY (Standard Characters, see mark)

The literal element of the mark consists of PASSPORT TO BEAUTY.

The mark consists of standard characters, without claim to any particular font, style, size, or color.

The applicant, SVP Global LLC, a limited liability company legally organized under the laws of California, having an address of

c/o Stubbs Alderton & Markiles, LLP,

1453 3rd Street Promenade, Suite 310

Santa Monica, California 90401

United States



International Class 003: Cosmetics; Cosmetic preparations; shampoos; hair conditioners; bath soaps in liquid, solid or gel form; fragrances

and perfumery; lip balm, lip block, lip gloss; face and body lotions; make-up; sun creams

Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on

or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

The applicant's current Attorney Information:

Konrad Gatien of Stubbs Alderton & Markiles, LLP



United States


Konrad Gatien

Stubbs Alderton & Markiles, LLP



(310) 746-9810(phone)

(310) 746-9820(fax)



Declaration


18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting

registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be

the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she

believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or

association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely,

when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all

statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Declaration Signature

../APP0002.JPG

Signature: /s/ Date: 06/28/2013

Signatory's Name: Konrad Gatien

Signatory's Position: Attorney of Record, CA Bar member




Internet Transmission Date: Fri Jun 28 19:54:48 EDT 2013

TEAS Stamp: USPTO/BAS-XX.XX.XXX.XXX-2013062819544821

7598-85973481-500768d7392a4d8f7a3d1e733c

ea0a93c71c12d60acd050a2ce89684f2a4ecd69-

DA-8477-20130628194804497075

EXHIBIT 12

PTO Form 1581 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 10/31/2017)

Request for Extension of Time to File a Statement of Use



Input Field Entered



MARK SECTION

MARK PASSPORT TO BEAUTY




OWNER SECTION (current)

NAME SVP Global LLC


CITY Santa Monica

STATE California



OWNER SECTION (proposed)

NAME SVP Global LLC

INTERNAL ADDRESS c/o Stubbs Alderton & Markiles, LLP


CITY Santa Monica

STATE California






cosmetics; cosmetic preparations; shampoos; hair conditioners; bath soaps

in liquid, solid or gel form; fragrances and perfumery; lip balm, lip block in

the nature of sun block for lips, lip gloss; face and body lotions; make-up;

sun creams


EXTENSION SECTION

EXTENSION NUMBER 1

ALLOWANCE MAIL DATE 02/04/2014

STATEMENT OF USE NO

PAYMENT SECTION

NUMBER OF CLASSES 1

SUBTOTAL AMOUNT 150

TOTAL AMOUNT 150

SIGNATURE SECTION

SIGNATURE /s/


SIGNATORY'S POSITION Attorney of record, California bar member


SIGNATORY'S PHONE NUMBER (310) 746-9810

FILING INFORMATION

SUBMIT DATE Thu Jul 31 15:43:16 EDT 2014

TEAS STAMP

USPTO/ESU-XXX.XX.X.XX-201

40731154316807351-8597348

1-500664f705da4ebfb127cc4

3ce7c2e764b7f358fd882014a

ea6e8c89746de99c99a-DA-20

39-20140731133815802580

PTO Form 1581 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 10/31/2017)

SOU Extension Request


MARK: PASSPORT TO BEAUTY


The applicant, SVP Global LLC, having an address of

c/o Stubbs Alderton & Markiles, LLP



United States

requests a six-month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application. The Notice of Allowance

mailing date was 02/04/2014.


Current identification: cosmetics; cosmetic preparations; shampoos; hair conditioners; bath soaps in liquid, solid or gel form; fragrances and

perfumery; lip balm, lip block in the nature of sun block for lips, lip gloss; face and body lotions; make-up; sun creams

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection

with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification

mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or

in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this

specific class.

This is the first extension request.

A fee payment in the amount of $150 will be submitted with the form, representing payment for 1 class.

Declaration

STATEMENTS: The signatory believes that: the applicant has a continued bona fide intention to use or use through the applicant's related

company or licensee the mark in commerce on or in connection with all the goods/services under Section 1(b) in the notice of allowance or as

subsequently modified; and that to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce,

either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other

person, to cause confusion or mistake, or to deceive.

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under

18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any

resulting registration, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief

are believed to be true.

Signature: /s/ Date Signed: 07/31/2014


Signatory's Position: Attorney of record, California bar member

Signatory's Phone: (310) 746-9810




Internet Transmission Date: Thu Jul 31 15:43:16 EDT 2014

TEAS Stamp: USPTO/ESU-XXX.XX.X.XX-201407311543168073

51-85973481-500664f705da4ebfb127cc43ce7c

2e764b7f358fd882014aea6e8c89746de99c99a-

DA-2039-20140731133815802580

PTO Form 1581 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 10/31/2017)

Request for Extension of Time to File a Statement of Use



Input Field Entered



MARK SECTION

MARK PASSPORT TO BEAUTY




OWNER SECTION

NAME SVP Global LLC

STREET c/o Stubbs Alderton & Markiles, LLP

CITY Santa Monica

STATE California









sun creams


EXTENSION SECTION

EXTENSION NUMBER 2

ONGOING EFFORT product or service research or development

ALLOWANCE MAIL DATE 02/04/2014

STATEMENT OF USE NO

PAYMENT SECTION

NUMBER OF CLASSES 1

SUBTOTAL AMOUNT 150

TOTAL AMOUNT 150

SIGNATURE SECTION

SIGNATURE /s/





FILING INFORMATION

SUBMIT DATE Wed Feb 04 15:20:18 EST 2015

TEAS STAMP

USPTO/ESU-XX.XX.XXX.XXX-2

0150204152018085446-85973

481-530ee8d66aa833d17ad44

c556b1f450f1cc1432841b462

e7ab2eba15840ddab913e-DA-

22474-2015020415120877040

0

PTO Form 1581 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 10/31/2017)

SOU Extension Request


MARK: PASSPORT TO BEAUTY





United States

requests a six-month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application. The Notice of Allowance

mailing date was 02/04/2014.




For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection

with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification

mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or

in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this

specific class.

This is the second extension request. The applicant has made the following ongoing efforts to use the mark in commerce on or in connection with

each of those goods/services covered by the extension request: product or service research or development

A fee payment in the amount of $150 will be submitted with the form, representing payment for 1 class.

Declaration


18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any

registration resulting therefrom, declares that all statements made of his/her own knowledge are true and that all statements made on information

and belief are believed to be true.




Signatory's Phone: 310-746-9810




Internet Transmission Date: Wed Feb 04 15:20:18 EST 2015

TEAS Stamp: USPTO/ESU-XX.XX.XXX.XXX-2015020415201808

5446-85973481-530ee8d66aa833d17ad44c556b

1f450f1cc1432841b462e7ab2eba15840ddab913

e-DA-22474-20150204151208770400

EXHIBIT 13

PTO Form 1553 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 10/31/2017)




Input Field Entered



EXTENSION OF USE NO

MARK SECTION

MARK http://tmng-al.uspto.gov/resting2/api/img/85973481/large




MARK STATEMENTThe mark consists of standard characters, without claim to any particular

font style, size or color.

OWNER SECTION

NAME SVP Global LLC

INTERNAL ADDRESS 1453 3rd Street Promenade, Suite 300

STREET c/o Stubbs Alderton & Markiles, LLP

CITY Santa Monica

STATE California









sun creams

GOODS OR SERVICES DELETED FROM THE

APPLICATION

shampoos; hair conditioners; bath soaps in liquid, solid or gel form;

fragrances and perfumery;

GOODS OR SERVICES IN USE IN COMMERCECosmetics; cosmetic preparations; lip balm, lip block in the nature of sun

block for lips, lip gloss; face and body lotions; make-up; sun creams

FIRST USE ANYWHERE DATE 11/00/2014

FIRST USE IN COMMERCE DATE 11/00/2014

SPECIMEN FILE NAME(S)\\TICRS\EXPORT16\IMAGEOUT 16\859\734\85973481\xml21

\SOU0002.JPG

SPECIMEN DESCRIPTION website page showing the products

../SOU0002.JPG

../SOU0002.JPG

REQUEST TO DIVIDE NO

PAYMENT SECTION

NUMBER OF CLASSES IN USE 1

SUBTOTAL AMOUNT [ALLEGATION OF USE FEE] 100

TOTAL AMOUNT 100

SIGNATURE SECTION

DECLARATION SIGNATURE /s/





FILING INFORMATION

SUBMIT DATE Tue Aug 04 15:19:45 EDT 2015

TEAS STAMP

USPTO/SOU-XX.XX.XXX.XXX-2

0150804151945331985-85973

481-5402343f59d8780e9d196

d0f4c912b6d67951b41d7528b

c381c063e120866aeb6c-DA-1

503-20150804145617258811

PTO Form 1553 (Rev 9/2005)

OMB No. 0651-0054 (Exp. 10/31/2017)



MARK: PASSPORT TO BEAUTY(Standard Characters, see http://tmng-al.uspto.gov/resting2/api/img/85973481/large)






United States

is submitting the following allegation of use information:




This allegation of use does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently

modified for this specific class; these goods/services are permanently deleted: shampoos; hair conditioners; bath soaps in liquid, solid or gel

form; fragrances and perfumery;

The mark is in use in commerce on or in connection with the following goods/services listed in either the application or Notice of Allowance or

as subsequently modified for this specific class: Cosmetics; cosmetic preparations; lip balm, lip block in the nature of sun block for lips, lip gloss;

face and body lotions; make-up; sun creams

The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 11/00/2014,

and first used in commerce at least as early as 11/00/2014, and is now in use in such commerce. The applicant is submitting one specimen for the

class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) website page showing the

products.

Specimen File1

The applicant is not filing a Request to Divide with this Allegation of Use form.

A fee payment in the amount of $100 will be submitted with the form, representing payment for the allegation of use for 1 class.

Declaration

STATEMENTS: The signatory believes that: if the applicant is filing the amendment to allege use under 15 U.S.C. §1051(c) or a statement of

use under 15 U.S.C. §1051(d), the applicant is the owner of the mark sought to be registered; the mark is in use in commerce; for a trademark

or service mark application, the applicant is using the mark in commerce on or in connection with all the goods/services in the application or

notice of allowance, or as subsequently modified; for a collective trademark, collective service mark, collective membership mark

application, the applicant is exercising legitimate control over the use of the mark in commerce by members on or in connection with all the

goods/services/collective membership organization in the application or notice of allowance, or as subsequently modified; for a certification

mark application, the applicant is exercising legitimate control over the use of the mark in commerce by authorized users on or in connection

with the all goods/services in the application or notice of allowance, or as subsequently modified, and the applicant is not engaged in the

production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification

program or of the goods/services that meet the certification standards of the applicant; that to the best of the signatory's knowledge and belief, no

other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the

identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership

organization of such other persons, to cause confusion or mistake, or to deceive; and the specimen(s) shows the mark as used on or in connection

with the goods/services/collective membership organization in commerce.


../SOU0002.JPG

18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any

registration resulting therefrom, declares that all statements made of his/her own knowledge are true and that all statements made on information

and belief are believed to be true.




Signatory's Phone: 310-746-9810




Internet Transmission Date: Tue Aug 04 15:19:45 EDT 2015

TEAS Stamp: USPTO/SOU-XX.XX.XXX.XXX-2015080415194533

1985-85973481-5402343f59d8780e9d196d0f4c

912b6d67951b41d7528bc381c063e120866aeb6c

-DA-1503-20150804145617258811

EXHIBIT 14





DECLARATION OF LINDA REYNA

I, Linda Reyna, under penalty of perjury, declare as follows:

1. I am an adult citizen of the United States and resident of Austin, TX I am of sound mind and capacity, and I have personal knowledge of the facts stated herein.

2. I am a Registered Nurse for Maxim Healthcare Services, and I have worked in the nursing industry for 3 years.

3. I have been familiar with Passport to Organics brand and products since 2010, as I am

the sister of the founder and owner of Passport to Organics, Ms. Karen Reyna. 4. In May of 2018, I attempted to look up “Passport to Organics” on Instagram by typing

in “Passport” and then the word “To” in the Instagram search bar. 5. Upon typing in these two words, “Passport to Beauty” showed up as a result, and so I

clicked on the Passport to Beauty Instagram page, mistakenly thinking it was Passport to Organics, or at least owned by Passport to Organics.

6. Upon reviewing the Passport to Beauty Instagram page, I was convinced that it was

Passport to Organics or at least owned by Passport to Organics because it was the same basic name and because the products were extremely similar and, in some cases such as skincare products, the same.

7. I later contacted Ms. Karen Reyna in May of 2018 and congratulated her on the

expanding her brand and purchasing www.passportobeauty.com 8. However, during the phone call, Ms. Reyna stressed to me that “Passport to Beauty”

was not her brand.

I declare under penalty of perjury that the foregoing is true and correct.

Executed this fifteenth day of April 2020 in Austin, Texas.

____________________________

ｄｯ｣ｵ

Linda Reyna

ｄｯ｣ｵ





DECLARATION OF LEE KINSER

I, Lee Kinser, under penalty of perjury, declare as follows:

1. I am an adult citizen of the United States and resident of Austin,Texas , I am of sound mind and capacity, and I have personal knowledge of the facts stated herein.

2. I am retired from Butler Pitch and Putt, and I had worked in the golf industry for 35

years.

3. On March 23, 2020, I heard about a promotional deal for Passport to Organics products

and so I purchased what I thought was the lip gloss on the Passport website.

4. However, the website was www.passportbeauty.com, which I thought was either the

same thing or somehow connected to Passport to Organics.

5. I realized that I mistakenly purchased the lip gloss from the wrong company when I

reached out to Passport to Organic’s owner Karen Reyna and told her that the lip gloss

promotion coupon code did not work. Attached as Exhibit A is a true and accurate copy

of that text message communication.

6. Ms. Reyna then informed me that I bought the lip gloss from her competitor, Passport

to Beauty.

ｄｯ｣ｵ

7. I was confused by the Passport to Beauty brand and website because it sounds almost

the name as Passport to Organics, it sells the same products as Passport to Organics,

and it comes up in a google search for Passport skincare.

I declare under penalty of perjury that the foregoing is true and correct.

Executed this fifteenth day of April 2020 in Austin, Texas.

____________________________ Lee Kinser

ｄｯ｣ｵ

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