Attorney/Correspondence Information

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1120575 Filing date: 03/15/2021

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Petition for Cancellation

Notice is hereby given that the following party has filed a petition to cancel the registration indicated below. Petitioner Information

Name Carousel Productions, Inc. Entity Corporation Citizenship Philippines Address 7 IDEAL STREET MANDALUYONG CITY, 1550 PHILIPPINES

Attorney informa- PAUL A. MCLEAN, ESQ. tion GREENBERG TRAURIG LLP 1900 UNIVERSITY AVENUE, FIFTH FLOOR EAST PALO ALTO, CA 94303 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected] 650-289-7890

Docket Number 169440-112 Registration Subject to Cancellation

Registration No. 5486051 Registration date 06/05/2018 Registrants Kristina Tenerowicz 1071 EAST GLADSTONE STREET AZUSA, CA 91702 UNITED STATES

Evan Skow 1071 EAST GLADSTONE STREET AZUSA, CA 91702 UNITED STATES Additional Registrant Information

Additional registrant in- EVAN L. SKOW formation provided by 334 EAST CHANDLER BLVD. the petitioner SUITE 5-D18 PHOENIX, AZ 85048 UNITED STATES No email provided. No phone number provided.

Goods/Services Subject to Cancellation

Class 041. First Use: 2016/10/01 First Use In Commerce: 2016/10/01 All goods and services in the class are subject to cancellation, namely: Entertainment in the nature of beauty pageants Grounds for Cancellation

Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d) Abandonment Trademark Act Section 14(3)

Marks Cited by Petitioner as Basis for Cancellation

U.S. Registration 3987564 Application Date 10/06/2008 No. Registration Date 07/05/2011 Foreign Priority NONE Date Word Mark MISS EARTH Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2002/10/20 First Use In Commerce: 2002/10/20 Entertainment services in the nature ofbeauty pageants

U.S. Application 90563402 Application Date 03/05/2021 No. Registration Date NONE Foreign Priority NONE Date Word Mark MISS EARTH USA Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 2002/10/20 First Use In Commerce: 2018/08/08 Entertainment in the nature of beauty pageants

Attachments Petition to Cancel TEEN EARTH.pdf(115095 bytes ) MISS EARTH Registration.pdf(26998 bytes ) MISS EARTH USA Pending Application.pdf(17132 bytes )

Signature /Paul A. McLean/ Name Paul A. McLean, Esq., Greenberg Traurig LLP Date 03/15/2021

In Re Registration No. 5486051- TEEN EARTH Registered on June 5, 2018 GT Ref.: 169440-900112

IN THE UNITED STATES PATENT AND TRADEMARK

OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

CAROUSEL PRODUCTIONS, INC. ) ) Petitioner, ) ) v. ) Cancellation No.: Not Yet Assigned ) EVAN L. SKOW, an individual, and ) KRISTINA TENEROWICZ, an individual ) ) Respondent. ) )

PETITION FOR CANCELLATION

CAROUSEL PRODUCTIONS, INC. (“Petitioner”), a Philippines corporation having its principal business address at 7 Ideal Street, Mandaluyong City 1550, Philippines, believes that it will be damaged by the continued presence on the Register of Registration No. 5486051 for the mark TEEN EARTH in class 41 (the “Infringing and Abandoned Registration”) for “Entertainment in the nature of beauty pageants”. Petitioner thus hereby petitions to cancel the Infringing and

Abandoned Registration.

Petitioner’s grounds for this Petition are as follows:

1. Petitioner has been using the trademark MISS EARTH in the United States in commerce for “Entertainment services in the nature of beauty pageants” since at least as early as October 20, 2002 and MISS EARTH USA since at least as early as August 8, 2018. The

ACTIVE 47691844v1 predecessor mark to MISS EARTH USA, MISS EARTH UNITED STATES, was in use by

Petitioner in the U.S. in commerce between 2005 and 2018.

2. Petitioner applied to register the mark MISS EARTH in the United States Patent and Trademark Office (“USPTO”) on or about October 6, 2008 for use on and in connection with

“Entertainment services in the nature of beauty pageants” in class 41, to which Application

Serial No. 77586446 was assigned.

3. On or about July 5, 2011, Application Serial No. 77586446 was registered by the

USPTO under Registration No. 3987564.

4. Petitioner applied to register the mark MISS EARTH USA in the USPTO on or about March 5, 2021 for use on and in connection with “Entertainment services in the nature of beauty pageants” in class 41, to which Application Serial No. 90563402 was assigned.

5. The MISS EARTH, MISS EARTH USA, and MISS EARTH UNITED STATES trademarks are collectively referred to herein as “Petitioner’s Marks”.

6. In addition to any rights arising from the above registration and pending application, Petitioner has, with respect to its services, valid common law rights in Petitioner’s

Marks and various other marks containing MISS EARTH.

7. Petitioner has extensively advertised its services and has created widespread goodwill under Petitioner’s Marks throughout the United States. Petitioner’s Marks have become a valuable asset of Petitioner and a principal symbol of its extensive goodwill. By reason of widespread use of Petitioner’s Marks, the trade and purchasing public have come to recognize

Petitioner’s Marks as signifying Petitioner and as identifying Petitioner as the source of services offered under Petitioner’s Marks.

8. Upon information and belief, Respondent EVAN L. SKOW, an individual, and

Kristina Tenerowicz, an individual, are the record owners of Registration No. 5486051 for the mark TEEN EARTH which was filed on October 31, 2017 and registered on June 5, 2018. To the best of Petitioner’s information, EVAN L. SKOW’s last known addresses were 1334 East

ACTIVE 47691844v1 Chandler Blvd., Suite 5-D18, Phoenix, Arizona 85048, and 1071 East Gladstone Street, Azusa,

California 91702, and KRISTINA TENEROWICZ’s last known address was 1071 East

Gladstone Street, Azusa, California 91702.

9. Opposer has used the MISS EARTH trademark since at least as early as

October 20, 2002 to identify its services described in its Registration No. 3987564, among other things, which is 15 years prior to Respondent’s filing date of October 31, 2017 for its

Registration No. 5486051 and over 13 years prior to Respondent’s claimed first use date of

TEEN EARTH in commerce of January 1, 2016.

10. Petitioner first applied to register the mark MISS EARTH in the USPTO under

Application Serial No. 77586446 on or about October 6, 2008 for use on and in connection with

“Entertainment services in the nature of beauty pageants” in class 41, which is nine years prior to Respondent’s filing date of October 31, 2017 for its Registration No. 5486051.

11. ABANDONMENT. Upon information and belief, Respondent discontinued use of

the mark TEEN EARTH for all of the services in the Infringing and Abandoned Registration, with

an intent not to resume use and thereby abandoned the mark within the meaning of Section 45 of the United States Trademark Act of 1946, 15 U.S.C. § 1127.

12. LIKELIHOOD OF CONFUSION. The mark in the Infringing and Abandoned

Registration is visually and connotatively highly similar to Petitioner’s Marks, and the services in the Infringing and Abandoned Registration and the services offered by Petitioner and/or identified in Petitioner’s Registration No. 3987564 and Application Serial No. 90563402, are

identical and are of the type which could are offered in the same channels of trade and to the

same prospective customers.

13. If the Infringing and Abandoned Registration is allowed to continue to be registered, the public will reasonably believe that Petitioner’s services are provided, sponsored, or endorsed by Respondent, all to the detriment of consumers and Petitioner.

ACTIVE 47691844v1 14. In addition to any rights arising from Petitioner’s registration for MISS EARTH

and pending application for MISS EARTH USA, Petitioner has, with respect to its services, valid

common law rights in Petitioner’s Marks and various other marks containing MISS EARTH.

15. The Infringing and Abandoned Registration is in violation and derogation of those

common law rights and is likely to cause confusion, mistake and deception among purchasers

and users as to the source or origin of the services, or their affiliation with or sponsorship by

Petitioner, thereby causing loss, damage, and injury to Petitioner and the public.

16. Therefore, if Respondent’s Infringing and Abandoned Registration remains

registered on the Principal Register, Respondent would thereby maintain a prima facie exclusive

right to the TEEN EARTH mark to the detriment of Petitioner and Petitioner’s Marks and may

block the registration of Petitioner’s pending application to register MISS EARTH USA. Such

registration is therefore a past, present and continuing source of damage and injury to

Petitioner.

17. Given that the Infringing and Abandoned Registration has been abandoned by

Respondent, the Abandoned Registration is subject to cancellation under Section 14 of the

United States Trademark Act of 1946, as amended, U.S.C. § 1064.

18. By virtue of the foregoing, Petitioner is now and will be damaged by the continued presence on the Register of Registration No. 5486051 for TEEN EARTH.

WHEREFORE, the Petitioner prays that Registration No. 5486051 be cancelled and that this Petition for Cancellation be sustained in favor of the Petitioner.

Please recognize as attorneys for Petitioner Paul A. McLean, Esq., member of the Bar of the State of California, and the law firm of Greenberg Traurig LLP, 1900 University

ACTIVE 47691844v1 Avenue, Fifth Floor, East Palo Alto, California 94303. All communications regarding this petition should be addressed to Paul A. McLean, Esq. at the foregoing address.

Dated: March 15, 2021

GREENBERG TRAURIG, LLP

/Paul A. McLean/

By: Paul A. McLean, Esq.

GREENBERG TRAURIG, LLP 1900 University Avenue, Fifth Floor East Palo Alto, CA 94303 Telephone: (650) 289-7890

Attorneys for Petitioner CAROUSEL PRODUCTIONS, INC.

ACTIVE 47691844v1 Generated on: This page was generated by TSDR on 2021-03-15 20:26:17 EDT Mark: MISS EARTH

US Serial Number: 77586446 Application Filing Oct. 06, 2008 Date: US Registration 3987564 Registration Date: Jul. 05, 2011 Number: Register: Principal Mark Type: Service Mark TM5 Common Status LIVE/REGISTRATION/Issued and Active Descriptor: The trademark application has been registered with the Office.

Status: The registration has been renewed. Status Date: Aug. 24, 2020 Publication Date: Apr. 19, 2011

Mark Information

Mark Literal MISS EARTH Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Goods and Services

Note: The following symbols indicate that the registrant/owner has amended the goods/services: Brackets [..] indicate deleted goods/services; Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and Asterisks *..* identify additional (new) wording in the goods/services.

For: Entertainment services in the nature of beauty pageants International 041 - Primary Class U.S Class(es): 100, 101, 107 Class(es): Class Status: ACTIVE Basis: 1(a) First Use: Oct. 20, 2002 Use in Commerce: Oct. 20, 2002 Basis Information (Case Level)

Filed Use: Yes Currently Use: Yes Filed ITU: No Currently ITU: No Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information

Owner Name: Carousel Productions, Inc. Owner Address: 7 Ideal Street Mandaluyong City PHILIPPINES 1550 Legal Entity Type: CORPORATION State or Country PHILIPPINES Where Organized: Attorney/Correspondence Information

Attorney of Record Attorney Name: Paul A. McLean, Esq. Docket Number: 169440-104 Attorney Primary [email protected] Attorney Email Yes Email Address: Authorized: Correspondent Correspondent Paul A. McLean, Esq. Name/Address: Greenberg Traurig, LLP 1900 University Avenue, Fifth Floor East Palo Alto, CALIFORNIA UNITED STATES 94303 Phone: 650.289.7890 Fax: 650.462.7890 Correspondent e- [email protected] [email protected] lanej@ Correspondent e- Yes mail: gtlaw.com [email protected] mail Authorized: Domestic Representative Domestic Paul A. McLean, Esq. Phone: 650.289.7890 Representative Name: Fax: 650.462.7890 Domestic [email protected] Domestic Yes Representative e- Representative e- mail: mail Authorized: Prosecution History

Proceeding Date Description Number Aug. 24, 2020 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED Aug. 24, 2020 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 76985 Aug. 24, 2020 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 76985 Aug. 24, 2020 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76985 Jul. 08, 2020 TEAS SECTION 8 & 9 RECEIVED Jul. 05, 2020 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED Dec. 17, 2016 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED Dec. 17, 2016 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 71378 Dec. 17, 2016 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 71378 Oct. 10, 2016 TEAS SECTION 8 & 15 RECEIVED Sep. 29, 2016 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED Sep. 29, 2016 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED Jul. 05, 2016 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED Aug. 17, 2015 TEAS CHANGE OF CORRESPONDENCE RECEIVED Jul. 05, 2011 REGISTERED-PRINCIPAL REGISTER Apr. 19, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Apr. 19, 2011 PUBLISHED FOR OPPOSITION Mar. 11, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 70629 Mar. 07, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER Jan. 31, 2011 LIE CHECKED SUSP - TO ATTY FOR ACTION 70629 Jan. 26, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Jan. 26, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Jan. 26, 2011 TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED Jul. 27, 2010 REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED 70629 Jan. 23, 2010 REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED 70629 Jan. 23, 2010 ASSIGNED TO LIE 70629 Jul. 23, 2009 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Jul. 23, 2009 LETTER OF SUSPENSION E-MAILED 6332 Jul. 23, 2009 SUSPENSION LETTER WRITTEN 78353 Jul. 07, 2009 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Jul. 06, 2009 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Jul. 06, 2009 TEAS RESPONSE TO OFFICE ACTION RECEIVED Jan. 05, 2009 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Jan. 05, 2009 NON-FINAL ACTION E-MAILED 6325 Jan. 05, 2009 NON-FINAL ACTION WRITTEN 78353 Jan. 05, 2009 ASSIGNED TO EXAMINER 78353 Oct. 09, 2008 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information

TM Staff Information - None File Location Current Location: GENERIC WEB UPDATE Date in Location: Aug. 24, 2020 Proceedings

Summary Number of 1 Proceedings:

Type of Proceeding: Cancellation

Proceeding 92051195 Filing Date: Jul 06, 2009 Number: Status: Terminated Status Date: Nov 09, 2010 Interlocutory ELIZABETH A DUNN Attorney: Defendant Name: Michael R. Stafford Correspondent MICHAEL R. STAFFORD Address: P.O. BOX 723 BRIDGEWATER MA UNITED STATES , 02324 Correspondent e- [email protected] mail: Associated marks Serial Registration Mark Application Status Number Number MRS. EARTH Cancelled - Section 8 77234413 3452529 Plaintiff(s) Name: Carousel Productions, Inc. Correspondent NATE A. GARHART Address: COBLENTZ, PATCH, DUFFY & BASS LLP ONE FERRY BUILDING, SUITE 200 SAN FRANCISCO CA UNITED STATES , 94111 Correspondent e- [email protected] , [email protected] mail: Associated marks Serial Registration Mark Application Status Number Number MISS EARTH REGISTERED AND RENEWED 77586446 3987564 Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Jul 06, 2009 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Jul 08, 2009 Aug 17, 2009 3 PENDING, INSTITUTED Jul 08, 2009 4 ANSWER Aug 10, 2009 5 WITHDRAWAL OF PETITION FOR CANCELLATION Sep 27, 2010 6 RESPONSE DUE 30 DAYS (DUE DATE) Sep 28, 2010 Oct 28, 2010 7 WITHDRAWAL OF PETITION FOR CANCELLATION Oct 27, 2010 8 BOARD'S DECISION: DISMISSED W/O PREJ Nov 09, 2010 9 TERMINATED Nov 09, 2010 Generated on: This page was generated by TSDR on 2021-03-15 20:27:25 EDT Mark: MISS EARTH USA

US Serial Number: 90563402 Application Filing Mar. 05, 2021 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Service Mark TM5 Common Status LIVE/APPLICATION/Awaiting Examination Descriptor: The trademark application has been accepted by the Office (has met the minimum filing requirements) and has not yet been assigned to an examiner.

Status: New application will be assigned to an examining attorney approximately 3 months after filing date. Status Date: Mar. 09, 2021

Mark Information

Mark Literal MISS EARTH USA Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Related Properties Information

Claimed Ownership 3987564 of US Registrations: Goods and Services

For: Entertainment in the nature of beauty pageants International 041 - Primary Class U.S Class(es): 100, 101, 107 Class(es): Class Status: ACTIVE Basis: 1(a) First Use: Oct. 20, 2002 Use in Commerce: Aug. 08, 2018 Basis Information (Case Level)

Attorney of Record Attorney Name: Paul A. McLean, Esq. Docket Number: 169440-105 Attorney Primary [email protected] Attorney Email Yes Email Address: Authorized: Correspondent Correspondent PAUL A. MCLEAN, ESQ. Name/Address: GREENBERG TRAURIG LLP 1900 UNIVERSITY AVENUE, FIFTH FLOOR EAST PALO ALTO, CALIFORNIA UNITED STATES 94303 Phone: 650-289-7890 Correspondent e- [email protected] [email protected] lanej@ Correspondent e- Yes mail: gtlaw.com [email protected] mail Authorized: Domestic Representative - Not Found Prosecution History

Proceeding Date Description Number Mar. 09, 2021 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information

TM Staff Information - None File Location Current Location: NEW APPLICATION PROCESSING Date in Location: Mar. 09, 2021