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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA811703 Filing date: 04/05/2017 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 requests to cancel indicated registration. Petitioner Information Name Swarthmore College Entity Corporation Citizenship PA Address 500 College Ave Swaarthmore, PA 19081-1397 UNITED STATES Correspondence Daniel Kegan information Kegan & Kegan, Ltd 79 W Monroe St #1310 Chicago, IL 60603-4931 UNITED STATES [email protected] Phone:312-782-6495 Registration Subject to Cancellation Registration No 4519049 Registration date 04/22/2014 Registrant Lee Shark NY Inc. 640 Crawford Avenue Brooklyn, NY 112235443 UNITED STATES Goods/Services Subject to Cancellation Class 018. First Use: 2013/11/05 First Use In Commerce: 2013/11/05 All goods and services in the class are cancelled, namely: Hand bags, athletic bags, clutch bags, shoulder bags, tote bags, duffel bags, traveling bags, suitcases, wallets, key cases made from leath- er Class 025. First Use: 2013/11/05 First Use In Commerce: 2013/11/05 All goods and services in the class are cancelled, namely: Clothing, namely, shirts, pants, shorts, jackets, vests, sweaters, non-denim jeans, jeans, dresses, blouses, coats, skirts, belts, swimwear, bikinis, socks, gloves; footwear; activewear, namely, sweatshirts, t-shirts Grounds for Cancellation Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d) No use of mark in commerce before application, Trademark Act Sections 14(1) and 1(a), (c), and amendment to allege use, or statement of use (d) was filed Abandonment Trademark Act Section 14(3) Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Marks Cited by Petitioner as Basis for Cancellation U.S. Registration 1599954 Application Date 03/13/1989 No. Registration Date 06/05/1990 Foreign Priority NONE Date Word Mark SWARTHMORE Design Mark Description of NONE Mark Goods/Services Class 041. First use: First Use: 1864/05/00 First Use In Commerce: 1864/05/00 EDUCATIONAL SERVICES, NAMELY PROVIDING COURSES, INSTRUC- TION, LECTURES, AND EDUCATIONAL TRAVEL SEMINARS AT THE COL- LEGE LEVEL, AND ENTERTAINMENT SERVICES, IN THEFORM OF SPORT- ING EVENTS, FILM SHOWINGS AND MUSICAL AND DRAMA PRODUC- TIONS U.S. Registration 5133478 Application Date 06/27/2016 No. Registration Date 01/31/2017 Foreign Priority NONE Date Word Mark SWARTHMORE Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1960/12/31 First Use In Commerce: 1960/12/31 Clothing, namely, shirts, sweatshirts, hoodies, pants, hats, jackets, shorts U.S. Application 87086274 Application Date 06/28/2016 No. Registration Date NONE Foreign Priority NONE Date Word Mark GARNET Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 2009/10/07 First Use In Commerce: 2009/10/07 Hats; Jackets; Shirts; Shorts; Sweatpants; Sweatshirts; T-shirts Attachments 87084898#TMSN.png( bytes ) 87086274#TMSN.png( bytes ) Smore-LeeShark-Tmc-5Apr2017.pdf(157831 bytes ) Smore-LeeShark Tmc-Exhibits 1-3 and 5-9.pdf(1480470 bytes ) Smore-LeeShark Tmc-Exhibit 4.pdf(4886311 bytes ) Signature /daniel Kegan/ Name Daniel Kegan Date 04/05/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD SWARTHMORE COLLEGE ) GARNET LONDON Petitioner, ) v ) Serial No. 85-875,940 LEE SHARK NY INC ) ® 4,519,049 Registrant. ) International Classes 18, 25 PETITION TO CANCEL Swarthmore College, a Pennsylvania nonprofit corporation, with address 500 College Ave, Swarthmore PA 19081-1397, believes that it is being damaged by registration of GARNET LONDON, ® 4,519,049, because the Trademark Examiner has refused registration of Swarthmore’s GARNET application in Class 25 for clothing. Moreover, it appears Registrant obtained its registration by fraud on the Trademark Office, submitting false specimens of use. Furthermore, on information and belief, Registrant is not now using and has not for at least three years used a GARNET LONDON trademark in the ordinary course of trade. Petitioner appoints as its attorneys in this proceeding Daniel L. Kegan and Jay R. Giusti, attorneys duly licensed by the Supreme Court of the State of Illinois, whose post office addresses are 79 W. Monroe St #1310, Chicago IL 60603-4931. All communications are to be held with lead attorney Daniel Kegan. As grounds for cancellation proceeding, Petitioner alleges the following. Swarthmore College v Lee Shark NY Inc • GARNET LONDON ® 4,519,049 • Petition to Cancel • Page 1 1. Petitioner, Swarthmore College, was established in 1864, and has become known as a highly selective, leading private liberal arts college (Exhibit 1, ® 1,599,954; Exhibit 2, Wikipedia, Swarthmore College). 2. Swarthmore has been known as the source of its Swarthmore clothing since at least 1960 (Exhibit 3, ® 5,133,478). 3. Swarthmore has also been known by its sports nickname, GARNET, since at least 1889. 4. It is common for colleges and universities to be known by their nicknames (Exhibit 2, Wikipedia, Swarthmore, “Nickname: Garnet”; Exhibit 4, Nicknames of other colleges and universities). 5. A nickname well associated with an entity acquires secondary meaning and creates trademark rights (Volkswagenwerk Aktiengesellschaft v Rickard, 181 USPQ 611 (TTAB, 1974). 6. Swarthmore has used its nickname, GARNET for its educational and entertainment services since at least 1889, and for diverse types of clothing since at least 2009. 7. Swarthmore has applied to register its nickname GARNET in Class 25, Sn 87-086,274. The Trademark Examiner refused registration 11 October 2016, citing Lee Shark’s GARNET LONDON registration. 8. Registrant Lee Shark NY Inc, has informed the Trademark Office its address is 640 Crawford Ave, Brooklyn NY 11223, with email [email protected], website <leeshark.com>. Swarthmore College v Lee Shark NY Inc • GARNET LONDON ® 4,519,049 • Petition to Cancel • Page 2 9. Registrant is known, to the extent it might be known, as “a small organization in the business services industry located in Brooklyn, NY” with “2 employees” (Exhibit 5, FindTheCompany.com). 10. Registrant presents itself as a computer and information technology company (Exhibit 6, Lee Shark web home pages and services). If Lee Shark sells GARNET LONDON clothing and handbags, such cannot easily be found on the Internet. Count I, Priority 11. Petitioner, Swarthmore College, has more than a century priority over registrant in use of GARNET. 12. Swarthmore has alumni, students, applicants, and colleagues throughout the United States. 13. Swarthmore has for decades played other schools in Pennsylvania and other states. Swarthmore is now affiliated with NCAA Division III and ECAC, in the Centennial Conference. 14. Swarthmore teams have been competing since the 1860s and have won eight national championships. 15. Registrant claimed first use of GARNET LONDON as of 5 November 2013. 16. Swarthmore has clear priority over Registrant. Swarthmore College v Lee Shark NY Inc • GARNET LONDON ® 4,519,049 • Petition to Cancel • Page 3 Count II, Fraudulent Use Statement 17. Registrant filed its Use Statement 6 January 2014. 18. Its only use specimen showing any clothing items is a photo of the top of a pair of pants (Exhibit 7, 6Jan2014, Specimen, Page 5). 19. The photo on the inside of the waistband displays a white rectangle with the words “Garnet London” and an asymmetric blue underline. 20. The “Garnet London” label appears to be a photo-edited addition to a photo of pants, it does not appear to be a label affixed to the pants. 21. The button in the photo displays a E21 logo; E21 appears to have no connection with Registrant. 22. On information and belief, the jeans photo used to obtain registration was not “used in commerce,” and was not a bona fide use of the mark in the ordinary course of trade, but was photographed merely to reserve a right in the mark. 23. On information and belief, Registrant's use specimen was a material misrepresentation made with the intent to deceive the Trademark Examiner in order to obtain a federal trademark registration. Count III, Invalid Declarations 24. Applicant Lee Shark filed its trademark application 11 March 2013 with a Declaration allegedly signed by Naseer Almed, described as “Officer” (Exhibit 8, 14Mar2013, Application, Page 9). Swarthmore College v Lee Shark NY Inc • GARNET LONDON ® 4,519,049 • Petition to Cancel • Page 4 25. Applicant Lee Shark filed its Use Statement 6 January 2014 with a Declaration allegedly signed by Naseer Ahmed, described as “Officer” (Exhibit 9, 6Jan2014, Specimen, Page 7). 26. The signatures of Naseer Ahmed in Exhibits 8 and 9 completely differ. 27. The signature of Naseer Ahmed in Exhibit 8 has a dotted “I”, there is no I in Naseer Ahmed. 28. On information and belief at least one of the two Declarations was not signed by Naseer Ahmed. 29. It is not unlikely that neither of the two Declarations was signed by Naseer Ahmed. 30. The signatory for a trademark application and the signatory for a use statement “must personally sign his or her own name. 37 CFR §§2..193(a)(1), (c)(1); TMEP §804.04. 31. “It is unacceptable for a person to sign another person’s name to a verification pursuant to a general power of attorney. See In re Cowan, 18 USPQ2d 1407, 1409 (Comm’r Pats. 1990). 32. That the Trademark Examiner might not notice an inconsistency in Declaration signatory does not relieve the Applicant from the duty to file proper application and use statement Declarations if the resulting registration is to be valid. TMEP §804.04 (“The USPTO presumes that the verification or declaration is properly signed.”) Swarthmore College v Lee Shark NY Inc • GARNET LONDON ® 4,519,049 • Petition to Cancel • Page 5 33.