Hovsepian v. Apple, Inc.

Filing 458

Hovsepian v. Apple, Inc.

Doc. 458 Att. 2

EXHIBIT C

Dockets.Justia.com

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SHEPPARD MULLI N
SHEPPARD MUL .UN RICHTER & HA MPTON LLP
ATT0RNCY5ATLA W

17th Floor I Four Embarcadero Center I San Francisco, CA 94111-4106 415-434-9100 office i 415-434-39471im I w wwsheppordmuRFn .com

Writer's Direct Line . 415-774-3246 a clad@sheppardmullin .com

March 17, 2003
Our File Number. 042E-076168

VIA CERTIFIED MA14 RETURN RECEIPT REQUESTED
President MD Skincar e

444 Madison Ave . 8th Floor

New York, NY 1002 2 Re : Dear Sir or Madam :
This firm acts as trademark counsel for Bare Escentuals, Inc. ("Bare Escentuals"). It has recently come to our client's attention that you have adopted and are using the "MD" designation as pa rt of your trade name and in connection with your line of cosme tics . As we suspect you knew when you adopted the term "MD", our client owns a family of trademarks, all of which contain the term "MD" (the "Marks"), for use in connection with cosmetics and related goods. The Marks have been registered with the Patent and Trademark Office, an example of which is the widely recognized MD FORMULATIONS mark, Registration No . 1,814,638 . Bare Escentuals has extensively promoted its cosmetics under the Marks for many years. As a result of such continued promotion and publicity, Bare Escentuals has developed a valuable reputation under the Marks that was established long before you began using the "MD" designation as part of your trade name and in connection with your cosmetics . The reputation and goodwill established by its promotional efforts under the Marks are extremely important to Bare Escentuals . It is therefore imperative that Bare Escentuals not permit the use of any third party designation in a manner that would likely cause confusion as to a sponsorship by or an affiliation with the source of the line of cosmetics under the Marks . It is our client's position that your use of the "MD" designation as part of your trade name and in connection with your cosmetics line is likely to confuse or deceive the publi c

nfrin em_ent of Mark Owned by Bare Escentuals, Inc . -

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as to a sponsorship by or an affiliation with Bare Escentuals in view of the fame which the Marks has achieved. Because your use of the "MD" designation infringes the Marks in violation of federal law and the law of the State of California, Bare Escentuals demands that you immediately cease all use of the "MD" designation, or any designation confusingly similar thereto, as your trade name, in connection with your cosmetics, or in any other manner related to your business . Under the provisions of federal law, Title 15, United States Code, Bare .Escentuals, as the owner of the registered mark, may obtain various remedies for infringement of the Mark. _ Among these are injunctive relief, an award of profits earned, an award of damages sustained by Bare Escentuals, costs and attorney's fees . Similar remedies are available under the statutory and common law of the State of California as well . Notwithstanding the above, Bare Escentuals would prefer to resolve this matter amicably. To that end, we must have your written assurances within fourteen (14) days of the date of this letter that all use of the "MD" designation as part of your trade name, for your line of cosmetics or in any other manner associated with your business will be terminated . If we do not hear from you in this regard within the specified time period, Bare Escentuals will have no choice but to pursue the alternatives available to it .

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Should you wish to discuss the foregoing prior to the expiration of the response term, please do not hesitate to contact me or my colleague, Michelle D . Kahn. We look forward to your prompt reply .

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Eileen Dorsey

Sheppard Mullin Richter & Haupton LLP our Embarcadero Center, Suite 1700 San Francisco, CA 9411 1

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IF YOV DO A10T R.ECEJ ME ALL TR-E PA G.ES, PLZASE CALL BACK AS SODA' ASPO.SSJ.BLE TO (2J2) 278- 0400.

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Avital glad, Esq . Sheppard, Mullin, Richter & Hampton LLP
1711 Floor Four Embalrcaderc Cente r

San Francisco, CA 94111-410 6
Re : Bare Escentuals, Inc . M .D . Skincare Dkt . 6923 0

Dear Attorney Elad : We represent M .D . Skincare in intellectual property matters . In that connection, we are responding to your letter to our client dated March 17, 2003 . We are somewhat prerplexed by your letter- Insofar as we were aware, the mark M .D . FORMULATIONS was in use by Allergaln . Our client, M .D . Skincare come to an accommodation with Allergan many years ago regarding the use of M .D . SKINCARE . As a result, ur client has used the mark for years without any objection or confusion . If Bare Escentuals is a successor to Allergan, them your client should be foreclosed from making the claim in your letter at this late date . If Saxe Escentuals is not related to Allergan, then what right does your client have to use the mark M .A . FORMULATIONS in view of Allergan's continued use of the associated mark M .D . FORTE . Certainly, M .D . FORTE and M .D . FORMULATIONS are more likely to be confused with each other than with M .D . SKINCARE, particularly in view of the-numerous users of the designation M .D . in connection with such products .

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Avital. Elad, Esq . April 8, 2003 page Z urther, your client, Bare Escentuals, does not even appear to be the owner of the registrations for M .D . FORMULATIONS . The Trademark Office records currently show tha t the title is in MDF Atquiaition Corp . What relationship, if any, exists between Bare Escentuals and MDF Acquisition Corp . ? in the absence of further and more compelling information concer'rling You r client and its alleged rights, M .D . Skincare is not prepared to take any action in response to your letter . Sincerely, 1

Norm n H . Zivin
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SHEPPARD MOWN RlCHM EE HAMFIDN . LLP : A T T O R N E Y S AT L A W

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17th Floor I Four Ernbarradero Center i San Francesco, U 94111-4106 415-434-9100 office 415-434-3947 fax A . w ww.sheppordmuNM .com

Writer's Direct Luke 415174-3246 aclad@sheppardmullin-co m

April .24, 2003
Our File Number: 042E.076968" '

YIA CERTIFIED MAIL RETURNRECEIPT REQUESTED

W. Norman H. Zivin OOPER & DUNHAM LLP 1185 Avenue of the Americas New York, New York 1003 6 Re : Bare Escentuals, Inc. v. MD SkincareInfringement of Mark Owned by Bare Esecntuals In c

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Dear Mr. Zivin: We are in receipt of your letter dated April 8, 2003 responding to our request that your client, No Skincare, cease all use of the "MD" designation as part of its trade name, for its line of cosmetics or in any other manner associated with its business. In your letter, you refer to an "accommodation" between your client and Allergan, Inc. concerning the mark M .D . FORMULATIONS . We find the word "accommodation" unacceptably vague. If you are referring to a written agreement between the parties that is binding on successor parties, please forward such an agreement for our review and we will certainly revisit the matter. If there is no such agreement, neither we nor our client can simply take your word for it. As to your inquiry regarding the ownership of the family of trademarks and related registrations which contain the term "MD" (the "Marks"), as you are undoubtedly aware, the assignment division of the Patent and Trademark Office is slow to reflect up to date information . In a spirit of cooperation, we have enclosed for your edification a copy of the Notice of Recordation of Assignment for two of the Marks (M .D . FORMULATIONS, Registration No . 1,814,638 ; and M.D . FORMULATIONS stylized, Registration No. 1,733,914) to Bioceutix Inc ., an affiliated company of Bare Escentuals, Inc . ("Bare Escentuals").

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in light of the foregoing, it continues to be our client's position that your client's use of the "MD" designation as part of its trade name and in connection with its cosmetics line is

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SMTARU MUM RtcMER & RAtG"M LLP Mr . Norman H . Zivin

April 24, 2003 Page 2

likely to confuse or deceive the public as to a sponsorship by or an affiliation with Bare Escentuals . Therefore, as requested in our previous correspondence, we must have your client's written assurances within seven (7) days of the date of this letter that all use of the "MD" designation as part of your client's trade name, for its line of cosmetics or in any other manner associated with its business will be terminated . If we do not hear from your client in this regard within the specified time period, Bare Escentuals will have no choice but to pursue the alternatives available to it. Should you wish to discuss the foregoing prior to the expiration of the response term, please do not hesitate to contact me or my colleague, Michelle D . Kahn . We look forward to your prompt reply-

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Mr. Norman H. Zivin April 24, 2003

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NITED STATES r PATENT AND TRADEMARK OFFIC E
APRIL 04, 2003 Chief Information Officer Washington, DC 2023 1 www.uspto.gov

PTAS SHEPPARD MULLIN RICHTER, ET AL . MICHELLE MACKENZI E 4 EMBARCADERO CENTER 17TH FLOO R
SAN FRANCISCO, CA 9411 1

1111111

UNITED STATES PATENT AND TRADEMARK OFFICE NOTICE OF RECORDATION OF ASSIGNMENT DOCUMENT THE ENCLOSED DOCUMENT HAS BEEN RECORDED BY THE ASSIGNMENT DIVISION OF, THE U .S . PATENT AND TRADEMARK OFFICE . A COMPLETE MICROFILM COPY IS AVAILABLE AT THE ASSIGNMENT SEARCH ROOM ON THE REEL AND FRAME NUMBER REFERENCED BELOW . PLEASE REVIEW ALL INFORMATION CONTAINED ON THIS NOTICE . THE INFORMATION CONTAINED ON THIS RECORDATION NOTICE REFLECTS THE DATA PRESENT IN THE PATENT AND TRADEMARK ASSIGNMENT SYSTEM . IF YOU SHOULD FIND-ANY ERRORS OR HAVE QUESTIONS CONCERNING THIS NOTICE, YOU MAY CONTACT THE EMPLOYEE WHOSE NAME APPEARS ON THIS NOTICE AT 703-308-9723 . PLEASE SEND REQUEST FOR CORRECTION TO : U .S . PATENT AND TRADEMARK OFFICE, ASSIGNMENT DIVISION, BOX ASSIGNMENTS, CG-4, 1213 JEFFERSON DAVIS HWY, SUITE 320, WASHINGTON, D .C . 20231 . RECORDATION DATE : 11/26/2002 E BRIEF : CHANGE OF NAM ASSIGNOR : MDF ACQUISITION CORP . DOC DATE : 07/12/2000 CITIZENSHIP : ENTITY : .CORPORATION CITIZENSHIP : DELAWARE ENTITY : CORPORATION EEL/FRAME : 002629/0183 NUMBFR OF PAGES : 3

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ASSIGNEE : BIOCEUTIX INC . .425 BUSH STREET 3RD FLOO R SAN FRANCISCO, CALIFORNIA 9410 8 APPLICATION NUMBER : 74357252 REGISTRATION NUMBER : 181463 8

FILING DATE : 02/05/1993 ISSUE DATE : 01/04/1994

MARK : M .D . FORMULATION S DRAWING TYPE : WORDS, LETTERS, OR NUMBERS IN TYPED FOR M

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002629 /0183 PAGE 2
APPLICATION NUMBER : 74149610

REGISTRATION NUMBER : 173391 4

FILING DATE : 03/20/199 1 ISSUE DATE : 11/17/1992

MARK : M . D . FORMULATIONS DRAWING TYPE : STYLIZED WORDS, LETTERS, OR NUMBERS

ANTIONE ROYALL, EXAMINER ASSIGNMENT DIVISION OFFICE OF PUBLIC RECORD S

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