Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA557199 Filing date: 08/30/2013 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Notice of Opposition

Notice is hereby given that the following party opposes registration of the indicated application. Opposer Information

Name KARIZIA S.P.A. Granted to Date 09/04/2013 of previous extension Address VIA PEROSI, 18/20 CASSOLA (VI), 36067 ITALY

Domestic William J. Seiter Representative Seiter Legal Studio 2500 Broadway, Bldg F, Suite F-125 Santa Monica, CA 90404 UNITED STATES [email protected] Applicant Information

Application No 85797373 Publication date 05/07/2013 Opposition Filing 08/30/2013 Opposition 09/04/2013 Date Period Ends Applicant Shah Diamonds, Inc. 590 Fifith Avenue New York, NY 10036 UNITED STATES Goods/Services Affected by Opposition

Class 014. All goods and services in the class are opposed, namely: Jewelry Class 035. All goods and services in the class are opposed, namely: Distributorship services in the field of jewelry Grounds for Opposition

Priority and likelihood of confusion Trademark Act section 2(d) Mark Cited by Opposer as Basis for Opposition

U.S. Application 85919445 Application Date 04/30/2013 No. Registration Date NONE Foreign Priority NONE Date Word Mark KARIZIA Design Mark Description of The mark consists of the fanciful word "Karizia" in fanciful letters, above which Mark there is a stylized image of the blindfolded face of a woman. Goods/Services Class 014. First use: First Use: 2007/01/00 First Use In Commerce: 2007/01/00 Precious metals and their alloys and goods in precious metals or coated therewith, namely, wire of precious metal, gold thread, unwrought and beaten gold, platinum, spun silver, silver wire, unwrought and beaten silver, all for use in the making of jewelry; statuettes of precious metal; copper tokens; badges of precious metal; ingots of precious metals; coins; works of art of precious metal; boxes of precious metal; busts of precious metal; jewelry cases; caskets; statues of precious metal; jewellery, namely, amulets, rings, bracelets, chains, charms, necklaces, cloisonné, medals, medallions, earrings, key rings, trinkets, fobs, jewelry of yellow amber, jewelry of ivory, jewelry of paste, ornaments, ornaments of jet, shoe ornaments of precious metal, hat ornaments of precious metal, tie clips, tie pins, pins, ornamental pins, cuff links, brooches, pearls, semi-precious stones, pearls made of ambroid, jewelry beads, watch bands, watch chains and watch cases; precious stones, namely, diamonds, agates, unwrought or semi-wrought jet, iridium, olivine, osmium, palladium, rhodium, ruthenium, spinel; horological and chronometric instruments, namely, clocks, atomic clocks, master clocks, wristwatches, watches, chronographs, chronometers, stopwatches, chronoscopes, alarm clocks, watch glasses, electric clocks and watches, clock cases, presentation cases for watches, sundials, and pendulums, clock hands, dials, movements, springs, cases, clockworks, anchors and barrels for clock and watch making

Attachments Notice of Opposition (US TM App 85797373).pdf(123124 bytes )

Certificate of Service

The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature /wjs/ Name William J. Seiter Date 08/30/2013 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of Application Serial No. 85797373 Mark: CARIZIA Published: May 7, 2013

------KARIZIA S.P.A. ) (an Italian società per azioni (spa)) ) ) Opposer, ) ) v. ) Opposition No. ______) Shah Diamonds, Inc. ) (a New York corporation) ) ) Applicant. ) ------

Box TTAB FEE

NOTICE OF OPPOSITION

Opposer KARIZIA S.P.A., a società per azioni (spa) organized under the laws of

Italy, located and doing business at Via Perosi, 18/20 Cassola, Province of Vicenza, Italy

36067, believes that it would be damaged by the issuance of a registration for the trademark CARIZIA as applied for by Applicant Shah Diamonds, Inc., a New York corporation, in Application Serial No. 85797373, and therefore opposes the application as to all of the applied for goods and services in International Classes 14 and 35. As grounds for its opposition, Opposer, by its attorneys Seiter Legal Studio, alleges as follows:

1. Opposer is the owner of the trademark KARIZIA & Design, under U.S.

Trademark Application Serial No. 85919445, filed on April 30, 2013, in International Class

14 for “Precious metals and their alloys and goods in precious metals or coated therewith, namely, wire of precious metal, gold thread, unwrought and beaten gold, platinum, spun silver, silver wire, unwrought and beaten silver, all for use in the making of jewelry;

1 statuettes of precious metal; copper tokens; badges of precious metal; ingots of precious metals; coins; works of art of precious metal; boxes of precious metal; busts of precious metal; jewelry cases; caskets; statues of precious metal; jewellery, namely, amulets, rings, bracelets, chains, charms, necklaces, cloisonné, medals, medallions, earrings, key rings, trinkets, fobs, jewelry of yellow amber, jewelry of ivory, jewelry of paste, ornaments, ornaments of jet, shoe ornaments of precious metal, hat ornaments of precious metal, tie clips, tie pins, pins, ornamental pins, cuff links, brooches, pearls, semi-precious stones, pearls made of ambroid, jewelry beads, watch bands, watch chains and watch cases; precious stones, namely, diamonds, agates, unwrought or semi-wrought jet, iridium, olivine, osmium, palladium, rhodium, ruthenium, spinel; horological and chronometric instruments, namely, clocks, atomic clocks, master clocks, wristwatches, watches, chronographs, chronometers, stopwatches, chronoscopes, alarm clocks, watch glasses, electric clocks and watches, clock cases, presentation cases for watches, sundials, and pendulums, clock hands, dials, movements, springs, cases, clockworks, anchors and barrels for clock and watch making,” which Opposer has used since at least as early as April 2007, and has used in U.S. commerce since at least as early as April 2007.

2. Opposer’s mark KARIZIA & Design has been promoted extensively, and the mark is well known to the consuming public. Opposer has invested substantial time, effort and money in promoting the mark. As a result, the mark has become distinctive of

Opposer’s goods, and has come to represent substantial goodwill for Opposer, widely recognized by the consuming public of the United States as a designation of source of the goods of Opposer.

2 3. On December 7, 2012, Applicant Shah Diamonds, Inc. filed Application

Serial No. 85797373 for the mark CARIZIA on an intent-to-use basis in International

Class 14 for “Jewelry” and in International Class 35 for “Distributorship services in the field of jewelry.”

4. Upon information and belief, Applicant made no use of the mark

CARIZIA in Application Serial No. 85797373 on or before January 2007, the date of first use and the date of first use in United States commerce of Opposer’s mark KARIZIA &

Design in Trademark Application Serial No. 85919445.

5. Upon information and belief, Applicant made no use of the mark in

Application Serial No. 85797373 on or before October 30, 2012, the priority date of

Opposer’s Trademark Application Serial No. 85919445.

6. Upon information and belief, Applicant made no use of the mark in

Application Serial No. 85797373 prior to its filing date of December 7, 2012.

7. Upon information and belief, Applicant made no use of the mark in

Application Serial No. 85797373 on or before April 30, 2013, the filing date of

Opposer’s Trademark Application Serial No. 85919445.

8. The mark that Applicant seeks to register is identical in sound, and is similar in appearance, meaning and commercial impression to Opposer’s mark, and could be used in connection with goods and services identical or closely related to Opposer’s goods. Based on the confusing similarity of the two marks and identity or relatedness of the parties’ respective goods and services, the public is likely to associate the goods and services of Applicant under the mark CARIZIA with Opposer and/or its licensees or with

Opposer’s and/or its licensees’ goods under its mark KARIZIA & Design, or to believe

3 that Applicant’s goods and services are sponsored, endorsed or licensed by Opposer or its licensees, or that there exists some relationship between Applicant and Opposer and/or its licensees.

9. For the above reasons, any use of the mark CARIZIA by Applicant is likely to cause confusion, cause mistake or deceive the public, and cause the public to believe that the goods and services offered under the mark by Applicant emanate from or are otherwise sponsored or endorsed by Opposer, in violation of Section 2(d) of the

Lanham Act, 15 U.S.C. § 1052(d).

REQUEST FOR RELIEF

10. Opposer is the owner of U.S. Trademark Application Serial No.

85919445, filed on April 30, 2013, in International Class 14 for the aforementioned goods, which Opposer has used in U.S. commerce since at least as early as April 2007, and is using such mark in U.S. commerce.

11. Opposer will be irreparably harmed and financially damaged by

Applicant’s Application Serial No. 85797373, because Applicant’s mark has been cited against Opposer’s pending Application Serial No. 85919445, as a potential ground for refusal. Therefore, Application Serial No. 85797373 should be ordered denied as to all goods and services listed therein.

WHEREFORE, Opposer believes that it will be damaged by the registration of the mark in Application Serial No. 85797373, and respectfully requests that this opposition be sustained and that the registration sought by Application Serial No.

85797373 be denied as to all of the applied for goods and services in International

Classes 14 and 35.

4 The Opposition fee in the amount of $600.00 for two classes is filed electronically herewith.

DATED: August 30, 2013 Respectfully submitted, SEITER & CO.

By: /s/ William J. Seiter Attorneys for Opposer 220 26th Street, Suite 202 Santa Monica, California 90402 Phone: (310) 395-6100

CERTIFICATE OF SERVICE

I hereby certify tha a copy of the foregoing Notice of Opposition has been forwarded via First Class Mail, postage prepaid, to the Applicant, to the attention of its attorney of record:

BERNARD MALINA, ESQ. MALINA & ASSOCIATES, PLLC 305 MADISON AVE STE 1420 NEW YORK, NEW YORK 10165-1444

on this 30th day of August, 2013.

/s/ William J. Seiter

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