Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1103388 Filing date: 12/21/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91265866 Party Defendant Gretchen W Frieling MD LLC Correspondence ADRIANO PACIFICI Address INTELLECTUAL PROPERTY CONSULTING, LLC 400 POYDRAS STREET SUITE 1400 NEW ORLEANS, LA 70130 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected] 504-323-6600

Submission Answer and Counterclaim Filer's Name Adriano Pacifici Filer's email [email protected] Signature /APacifici/ Date 12/21/2020 Attachments Answer to Notice of Opposition GFACEMD and Counterclaim for Cancellat ion.pdf(298554 bytes ) Registration Subject to the filing

Registration No. 3500015 Registration date 09/09/2008 Registrant Langsdon, Phillip, R. 7499 POPLAR PIKE GERMANTOWN, TN 38138 UNITED STATES Email: [email protected] Goods/Services Subject to the filing

Class 003. First Use: 2007/12/21 First Use In Commerce: 2008/03/03 All goods and services in the class are requested, namely: After sun creams; After-shave creams; Age spot reducing creams; Anti-aging cream; Anti-aging creams; Anti-freckle creams; Anti-wrinkle cream; Anti-wrinkle creams; Aromatherapy body care products, namely, body , shower gel, cuticle cream, , conditioner, non-medicatedlip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Beauty creams; Beauty creams for body care; Body and beauty care ; Bodycream; Body cream soap; Body creams; Body deodorants; Body lotion; Body ; Body mask cream; Body mask lotion; Body mask powder; Body masks; Body milk; Body milks; Body oil; Body oils; ; Body scrub; Body spray used as a personal deodorant and as fragrance; Body sprays; Body washes; Cleansing creams; ; Cold creams; for face, skin, body; Cosmetic creams; Cosmetic creams for skin care; Cosmetic preparations for body care; Cream soaps; Creamyface powder; Deodorants for body care; Exfoliant creams; Eye cream; Face and body beauty creams; Face and body creams; Face and body lotions; Face and body milk; Face creams; Face creams for cosmeticuse; Face milk and lotions; Face powder; Face powder paste; cream; Facial creams; Fair complexion cream; Hair care creams; Hair creams; Hand cream; Hand- creams; Lip cream; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Loose face powder; Lotions for face and body care; Lotions for face,skin, body, hair; Make-up for the face and body; Make-up removing milk, gel, lotions and creams; Moisturizing creams; Night cream; Non- medicated body soaks; Non-medicated scalp treatment cream; Non-medicated skin care prepara- tions, namely,creams, lotions, gels, toners, cleanersand peels; Non-medicated skin creams; Per- fumed creams; Pre-shave creams; Pressed face powder; Retinol cream for cosmetic purposes; Scen- ted body lotions and creams; Scented body spray; cream; Shaving creams; Shower creams; Skin and body topical lotions, creams and oils for cosmetic use; Skin bronzing creams; Skin care pre- paration, namely, body polish; Skin care preparations, namely, body balm; Skin cleansing cream; Skin cream; Skin creams; Skin creams in liquid and insolid form; Skin creams in liquid and solid; Skin creams in liquid and solid form; Skin lightening creams; creams; Soaps for body care; Toning lotion, for the face, body and hands; Wrinkle resistant cream Grounds for Cancellation

Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

) PHILLIP R. LANGSDON, MD, ) ) Opposition No.: 91265866 Opposer, ) ) v. ) Serial No.: 88225451 ) Mark: GFACEMD GRETCHEN W FRIELING MD, LLC, ) ) Applicant. ) ______)

APPLICANT’S ANSWER TO THE NOTICE OF OPPOSITION AND AFFIRMATIVE DEFENSES AND APPLICANT’S COUNTERCLAIM TO CANCEL OPPOSER’S U.S. REGISTRATION NO. 3,500,015

Applicant Gretchen W Frieling MD, LLC “pplicant, owner of the Federal

Trademark Application No. 88225451 for the mark GFACEMD “pplicant’s Mark hereby answers the Notice of Opposition the Opposition filed by Phillip R. Langsdon,

MD Opposer as follows:

1. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 1 of the Opposition, and therefore denies all allegations therein

2. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 2 of the Opposition, and therefore denies all allegations therein.

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3. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 3 of the Opposition, and therefore denies all allegations therein.

4. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 4 of the Opposition, and therefore denies all allegations therein.

5. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 5 of the Opposition, and therefore denies all allegations therein.

6. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 6 of the Opposition, and therefore denies all allegations therein.

7. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 7 of the Opposition, and therefore denies all allegations therein.

8. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 8 of the Opposition, and therefore denies all allegations therein.

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9. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 9 of the Opposition, and therefore denies all allegations therein.

10. Applicant admits that it provides services under the GFACEMD mark and denies the remaining allegations of ¶ 10 of the Opposition.

11. “pplicant admits that the initial application for “pplicant’s Mark included

International Class but denies that this class of goods is still present in “pplicant’s

Mark.

12. Applicant denies the allegations of ¶ 12 of the Opposition.

13. Applicant does not believe an answer to ¶ is necessary as “pplicant’s application speaks for itself. However, out of an abundance of caution, Applicant admits that it seeks to register the GFACEMD mark.

14. Applicant does not believe an answer to ¶ 14 is necessary as the information is a matter of public record. However, out of an abundance of caution, Applicant admits that it first began using the GFACEMD mark in October 2017 and denies the remaining allegations there.

15. Applicant does not believe an answer to ¶ is necessary as “pplicant’s

Mark speaks for itself. However, out of an abundance of caution, Applicant admits that its application was filed on October 23, 2019 and denies the remaining allegations in ¶ 15.

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16. Applicant denies the allegations of ¶ 16 of the Opposition as “pplicant’s

Mark was approved for publication.

17. Applicant does not believe an answer to ¶ 17 is necessary as the record history of “pplicant’s Mark speaks for itself. However, out of an abundance of caution,

Applicant admits that it amended its application.

18. Applicant does not believe an answer to ¶ 18 is necessary. However, out of an abundance of caution, Applicant admits that its application was published on July 14,

2020.

19. Applicant does not believe an answer to ¶ 19 is necessary. However, out of an abundance of caution, Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 19 of the Opposition, and therefore denies all allegations therein.

20. Applicant does not believe an answer to ¶ 20 is necessary. However, out of an abundance of caution, Applicant denies the allegations in ¶ 20 of the Opposition.

21. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 21 of the Opposition, and therefore denies all allegations therein.

22. Applicant denies the allegations in ¶ 22 of the Opposition.

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23. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 23 of the Opposition, and therefore denies all allegations therein.

24. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 24 of the Opposition, and therefore denies all allegations therein.

25. Applicant denies the allegations of ¶ 25 of the Opposition.

26. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 26 of the Opposition, and therefore denies all allegations therein.

27. Applicant denies the allegations of ¶ 27 of the Opposition.

28. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 28 of the Opposition, and therefore denies all allegations therein.

29. Applicant is without knowledge or information sufficient to form a belief as to the truth of allegations in ¶ 29 of the Opposition, and therefore denies all allegations therein.

AFFIRMATIVE DEFENSES

Applicant asserts that the following affirmative defenses bar Opposer’s requested relief:

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FIRST AFFIRMATIVE DEFENSE

30. Opposer has failed to state a claim upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE Lack of Confusion and No Priority

31. The parties’ respective marks have entirely different sounds, meanings, pronunciations, and commercial impressions.

32. Specifically, “pplicant’s Mark is pronounced GFace-MD whereas the mark cited by Opposer are pronounced Face-MD.

33. The parties provide entirely different goods and services under their respective marks.

34. The parties’ market to entirely different consumers.

35. The parties’ respective channels of trade are entirely different.

36. “s the parties’ marks are entirely different, Opposer cannot claim priority as grounds for refusal to register “pplicant’s Mark.

37. “pplicant’s GFACEMD mark is not likely to cause confusion, mistake, or deception with the FACEMD mark cited by Opposer.

THIRD AFFIRMATIVE DEFENSE

38. Opposer’s claims are barred by the doctrines and equitable defenses of laches, waiver, acquiescence, and estoppel.

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FOURTH AFFIRMATIVE DEFENSE

39. Opposer’s claims are barred by the doctrine of unclean hands because the registration relied on by Oppose is invalid and subject to cancellation based on fraud.

FIFTH AFFIRMATIVE DEFENSE

40. The above defenses and affirmative defenses are based on the facts and information currently known to Applicant. Applicant reserves all affirmative defenses under Rule 8(c) of the Federal Rules of Civil Procedure, the Lanham Act, and any other defenses or counterclaims at law or in equity that may now exist or in the future be available based on discovery and further factual investigation in this case, and hereby reserves its right to amend this Answer to assert such defense(s).

WHEREFORE, Applicant prays that the Notice of Opposition be dismissed with prejudice because Opposer is not entitled to any relief requested in the Notice of

Opposition.

COUNTERCLAIMS FOR CANCELLATION

Applicant-Counterclaimant Gretchen W Frieling MD, LLC, a Massachusetts limited liability company, believes that it will be damaged by the continued registration of the trademark FACEMD in U.S. Registration No. 3,500,015, and thus for its counterclaims against Opposer-Counterclaim Defendant, Phillip R. Langsdon, petitions to cancel the same.

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As grounds for its counterclaim for cancellation, Applicant-Counterclaimant alleges as follows:

I. BACKGROUND

1. Applicant-Counterclaimant Gretchen W Frieling MD LLC Applicant-

Counterclaimant) is a Massachusetts limited liability company with a principal business address of 33 Highland Avenue Needham, MA 02494.

2. Since at least as early as October 2017, Applicant-Counterclaimant has provided a wide-variety of dermatology and related cosmetic services under the mark

GFACEMD.

3. Applicant-Counterclaimant has amassed great fame and consumer goodwill under the GFACEMD trademark for its dermatology and related cosmetic services.

4. On October 23, 2019, Applicant-Counterclaimant applied for the mark

GFACEMD (Serial No. 88665461) (the GFACEMD Mark at the United States Patent and Trademark Office USPTO with a first use in commerce date of October 1, 2017 in international class 044 for:

Health spa services, namely, laser treatments for , rejuvenation, scars, tattoo removal and for and massage; Medical clinic providing weight loss solutions, services and programs, nutrition counseling, hormone therapy, including, bioidentical hormone replacement, anti-aging therapy, and natural hormone therapy, medical aesthetic procedures, including, laser , laser peels, treatments, microdermabrasion, liposuction, vein treatments, vein therapy, cellulite treatments, body contouring treatments, injectable filler treatments, facials, and skin care; Providing medical aesthetic

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procedures, namely, treating the skin with dermal fillers and botulinum toxin; Skin treatments, namely, the injection of dermal filling agents and neuromuscular blocking agents to reduce the appearance of facial lines and wrinkles; Laser skin tightening services; Laser skin rejuvenation services; Providing laser and intense pulse light skin enhancement procedures; Facial treatment services, namely, cosmetic peels; Cosmetic surgery services; Cosmetic face care services; Cosmetic body care services; Performing non- invasive cosmetic medical procedures; Medical services in the field of dermatology, dermatopathology; Medical consultations; Providing medical information in the field of dermatology, dermatopathology; Providing medical advice in the field of dermatology, dermatopathology; Providing a website featuring medical information; Provide a website featuring information about holistic cosmetic and practice.

5. Applicant-Counterclaimant seeks cancellation of Registration No. 3,500,015 based on fraud.

II. FRAUD

6. Upon information and belief, Opposer-Defendant Phillip R. Langsdon

Defendant, is an individual domiciled in the United States with a principal address of 7499 Poplar Pike Germantown, TN 38138.

7. On November 12, 2007, Defendant filed U.S. Application Serial No.

/, the “pplication for the mark F“CEMD the Mark. The “pplication was filed on an intent-to-use basis.

8. On July 22, 2008, Defendant filed a statement of use for the Application stating that Defendant is using the Mark in commerce with all of the following goods:

After sun creams; After-shave creams; Age spot reducing creams; Anti-aging cream; Anti-aging creams; Anti-freckle creams; Anti-wrinkle cream; Anti- wrinkle creams; Aromatherapy body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated , soap,

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body polish, body and foot scrub and non-medicated foot cream; Beauty creams; Beauty creams for body care; Body and beauty care cosmetics; Body cream; Body cream soap; Body creams; Body deodorants; Body lotion; Body lotions; Body mask cream; Body mask lotion; Body mask powder; Body masks; Body milk; Body milks; Body oil; Body oils; Body powder; Body scrub; Body spray used as a personal deodorant and as fragrance; Body sprays; Body washes; Cleansing creams; Cold cream; Cold creams; Concealers for face, skin, body; Cosmetic creams; Cosmetic creams for skin care; Cosmetic preparations for body care; Cream soaps; Creamy face powder; Deodorants for body care; Exfoliant creams; Eye cream; Face and body beauty creams; Face and body creams; Face and body lotions; Face and body milk; Face creams; Face creams for cosmetic use; Face milk and lotions; Face powder; Face powder paste; Facial cream; Facial creams; Fair complexion cream; Hair care creams; Hair creams; Hand cream; Hand creams; Lip cream; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Loose face powder; Lotions for face and body care; Lotions for face, skin, body, hair; Make-up for the face and body; Make- up removing milk, gel, lotions and creams; Moisturizing creams; Night cream; Non-medicated body soaks; Non-medicated scalp treatment cream; Non- medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin creams; Perfumed creams; Pre-shave creams; Pressed face powder; Retinol cream for cosmetic purposes; Scented body lotions and creams; Scented body spray; ; Shaving creams; Shower creams; Skin and body topical lotions, creams and oils for cosmetic use; Skin bronzing creams; Skin care preparation, namely, body polish; Skin care preparations, namely, body balm; Skin cleansing cream; Skin cream; Skin creams; Skin creams in liquid and in solid form; Skin creams in liquid and solid; Skin creams in liquid and solid form; Skin lightening creams; Skin whitening creams; Soaps for body care; Toning lotion, for the face, body and hands; Wrinkle resistant cream.

9. In Defendant’s statement of use filing, Defendant represented that either

Defendant or Defendant’s related company or licensee, is using the [M]ark in commerce on or in connection with all goods and/or services listed in the [A]pplication or Notice of

“llowance or as subsequently modified.

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10. Defendant represented in the statement of use that Defendant is using the

[M]ark in commerce on or in connection with the goods/services identified above, as evidenced by the attached specimen(s) showing the [M]ark as used in commerce.

11. Defendant represented in the statement of use that [t]he undersigned being hereby 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 this document, 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.

12. Upon information and belief, each of the representations Defendant identified above in the statement of use filing for the Application were false and

Defendant knew they were false because neither Defendant nor any of Defendant’s related companies or licensees were using or had ever used the Mark at the time of filing the statement of use in connection with each and every one of the goods listed in the statement of use.

13. Upon information and belief, neither Defendant nor any of Defendant’s related companies or licensees were using or have ever used the Mark at the time of filing the statement of use in connection with, inter alia, Aromatherapy body care products, namely, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, and non-medicated foot cream; Body mask powder; Body masks; Body milk; Body milks;

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Body powder; Body scrub; Body spray used as a personal deodorant and as fragrance;

Body sprays; Body washes; Cream soaps; Creamy face powder; Deodorants for body care; Face powder; Face powder paste; Hair care creams; Hair creams; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Loose face powder; Make-up removing milk, gel, lotions and creams; Non-medicated body soaks; Non- medicated scalp treatment cream; Pre-shave creams; Pressed face powder; Shaving cream; Shaving creams; Shower creams; Skin bronzing creams; Skin whitening creams; Soaps for body care collectively, Defendant’s Fraudulent Goods.

14. The Mark was fraudulently registered on September 9, 2008 (Reg. no.

the Registration.

15. On September 10, 2013, Defendant filed a Combined Declaration of Use and

Incontestability under Sections & the 2013 “ffidavit in support of the Registration representing that:

the mark is in use in commerce on or in connection with all of the goods/all of the services, or to indicate membership in the collective membership organization, listed in the existing registration for this specific class: After sun creams; After- shave creams; Age spot reducing creams; Anti-aging cream; Anti- aging creams; Anti-freckle creams; Anti-wrinkle cream; Anti-wrinkle creams; Aromatherapy body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Beauty creams; Beauty creams for body care; Body and beauty care cosmetics; Body cream; Body cream soap; Body creams; Body deodorants; Body lotion; Body lotions; Body mask cream; Body mask lotion; Body mask powder; Body masks; Body milk; Body milks; Body oil; Body oils; Body powder; Body scrub; Body spray used as a personal deodorant and as fragrance; Body sprays; Body washes; Cleansing creams; Cold cream; Cold creams; Concealers for face, skin, body; Cosmetic creams; Cosmetic creams for skin care; Cosmetic preparations for body care; Cream soaps; Creamy face powder; Deodorants for body care; Exfoliant creams; Eye cream; Face and

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body beautycreams; Face and body creams; Face and body lotions; Face and body milk; Face creams; Face creams for cosmetic use; Face milk and lotions; Face powder; Face powder paste; Facial cream; Facial creams; Fair complexion cream; Hair care creams; Hair creams; Hand cream; Hand creams; Lip cream; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Loose face powder; Lotions for face and body care; Lotions for face, skin, body, hair; Make-up for the face and body; Make-up removing milk, gel, lotions and creams; Moisturizing creams; Night cream; Non-medicated body soaks; Non-medicated scalp treatment cream; Non- medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin creams; Perfumed creams; Pre-shave creams; Pressed face powder; Retinol cream for cosmetic purposes; Scented body lotions and creams; Scented body spray; Shaving cream; Shaving creams; Shower creams; Skin and body topical lotions, creams and oils for cosmetic use; Skin bronzing creams; Skin care preparation, namely, body polish; Skin care preparations, namely, body balm; Skin cleansing cream; Skin cream; Skin creams; Skin creams in liquid and in solid form; Skin creams in liquid and solid; Skin creams in liquid and solid form; Skin lightening creams; Skin whitening creams; Soaps for body care; Toning lotion, for the face, body and hands; Wrinkle resistant cream; and the mark has been continuously used in commerce for five (5) consecutive years after the date of registration, or the date of publication under Section 12(c), and is still in use in commerce on or in connection with all goods/all services, or to indicate membership in the collective membership organization, listed in the existing registration for this class.

16. Defendant represented in the 2013 “ffidavit that the Mark is in use in commerce on or in connection with the goods and/or services identified above, as evidenced by the attached specimens showing the [M]ark as used in commerce.

17. Defendant represented in the 2013 “ffidavit that the Mark has been in continuous use in commerce for five (5) consecutive years after the date of registration, or the date of publication under Section c, and is still in use in commerce.

18. Defendant represented in the 2013 “ffidavit that [t]he undersigned being hereby 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 this document, declares that …all

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

19. Upon information and belief, each of the above-identified representations of Defendant made in the 2013 Affidavit were false and Defendant knew they were false because neither Defendant nor any of Defendant’s related companies or licensees were using or had ever used the Mark at the time of filing the 2013 Affidavit in connection with each and every good listed in the 2013 Affidavit including, inter alia, Defendant’s

Fraudulent Goods.

20. Upon information and belief, contrary to Defendant’s representation in the

2013 Affidavit, the Mark had not been continuously used in commerce for five (5) consecutive years after the date of registration of the Mark, or the date of publication of the Mark under Section 12(c), on or in connection with all of the goods listed in the 2013

Affidavit.

21. On September 15, 2017, Defendant filed a Combined Declaration of Use for

Renewal of the Mark under Sections 8 & 9 the “ffidavit. In support of the declaration of use for renewl, Defendant falsely represented that:

the mark is in use in commerce on or in connection with all goods/services, or to indicate membership in the collective membership organization, listed in the existing registration for this specific class: After sun creams; After-shave creams; Age spot reducing creams; Anti-aging cream; Anti-aging creams; Anti- freckle creams; Anti-wrinkle cream; Anti-wrinkle creams; Aromatherapy body care products, namely, body lotion, shower gel, cuticle cream, shampoo, conditioner, non-medicated lip balm, soap, body polish, body and foot scrub and non-medicated foot cream; Beauty creams; Beauty creams for body care; [14]

Body and beauty care cosmetics; Body cream; Body cream soap; Body creams; Body deodorants; Body lotion; Body lotions; Body mask cream; Body mask lotion; Body mask powder; Body masks; Body milk; Body milks; Body oil; Body oils; Body powder; Body scrub; Body spray used as a personal deodorant and as fragrance; Body sprays; Body washes; Cleansing creams; Cold cream; Cold creams; Concealers for face, skin, body; Cosmetic creams; Cosmetic creams for skin care; Cosmetic preparations for body care; Cream soaps; Creamy face powder; Deodorants for body care; Exfoliant creams; Eye cream; Face and body beauty creams; Face and body creams; Face and body lotions; Face and body milk; Face creams; Face creams for cosmetic use; Face milk and lotions; Face powder; Face powder paste; Facial cream; Facial creams; Fair complexion cream; Hair care creams; Hair creams; Hand cream; Hand creams; Lip cream; Liquid soaps for hands and face; Liquid soaps for hands, face and body; Loose face powder; Lotions for face and body care; Lotions for face, skin, body, hair; Make-up for the face and body; Make-up removing milk, gel, lotions and creams; Moisturizing creams; Night cream; Non-medicated body soaks; Non- medicated scalp treatment cream; Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; Non-medicated skin creams; Perfumed creams; Pre-shave creams; Pressed face powder; Retinol cream for cosmetic purposes; Scented body lotions and creams; Scented body spray; Shaving cream; Shaving creams; Shower creams; Skin and body topical lotions, creams and oils for cosmetic use; Skin bronzing creams; Skin care preparation, namely, body polish; Skin care preparations, namely, body balm; Skin cleansing cream; Skin cream; Skin creams; Skin creams in liquid and in solid form; Skin creams in liquid and solid; Skin creams in liquid and solid form; Skin lightening creams; Skin whitening creams; Soaps for body care; Toning lotion, for the face, body and hands; Wrinkle resistant cream; or, the owner is making the listed excusable nonuse claim.

22. Defendant represented in the 2017 “ffidavit that the Mark is in use in commerce on or in connection with the goods and/or services identified above, as evidenced by the attached specimen(s) showing the [M]ark as used in commerce.

23. Defendant represented in the 2017 Affidavit that [t]he 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 [15] jeopardize the validity of this submission and the registration, 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.

24. Upon information and belief, each of the above-identified representations

Defendant made in the 2017 Affidavit were false and Defendant knew they were false because neither Defendant nor any of Defendant’s related companies or licensees were using or had ever used the Mark at the time of filing the 2017 Affidavit in connection with each and every good listed in the 2017 Affidavit including, inter alia, Defendant’s

Fraudulent Goods.

25. Upon information and belief, the representations Defendant made in the statement of use filing, in the 2013 Affidavit filing, and in the 2017 Affidavit filing

collectively the Representations were made by an authorized agent of Registrant with the knowledge and belief that said statements were false.

26. Defendant knew that the Representations were false.

27. Defendant knowingly made a material misrepresentation to the Trademark

Office to procure a registration for the Mark.

28. Defendant knowingly made material misrepresentations to the Trademark

Office to procure renewals for the Mark.

29. Defendant intended to deceive the Trademark Office when Defendant made the fraudulent Representations.

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30. The Trademark Office relied on the veracity of Defendant’s Representations when issuing a registration for the Mark.

31. The Trademark Office would not have registered the Mark but for

Defendant’s fraudulent Representations.

32. The Trademark Office would not have twice renewed the Mark but for

Defendant’s fraudulent Representations.

33. Defendant’s actions in the filing of the statement of use for the Mark constitute fraud ab initio, thereby invaliding Defendant’s registration for the Mark.

Accordingly, Defendant’s registration for the Mark should be struck from the register in its entirety.

34. Defendant’s actions in the filing of the 2013 Affidavit and 2017 Affidavit also constitute fraud thereby invaliding Defendant’s registration for the Mark.

Accordingly, Defendant’s registration for the Mark should be struck from the register in its entirety.

35. On November 10, 2020, Defendant filed Opposition Proceeding No.:

91265866 the Opposition against Applicant-Counterclaimant’s GF“CEMD application. As grounds for opposition, Defendant asserted a claim of priority and likelihood of confusion on the basis of Defendant’s so-called rights in the Mark.

36. Upon information and belief, Defendant’s representation in the Opposition that Defendant has continuously used the Mark in commerce since 2007 is false.

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37. In fact, rather than listing out all of the goods covered in the Mark, which

Defendant previously did in a different opposition proceeding, Defendant stated in

Paragraph of the Opposition that [Defendant] has continuously used the FACEMD mark in connection with his regimen of skin care products….

38. Upon information and belief, Defendant’s statement in Paragraph of the

Opposition is all but an admission to its previous misrepresentations and fraudulent claims to the Trademark Office.

39. Upon information and belief, the Mark has not been continuously used since December of 2007 in connection with all of the goods covered by Defendant’s registration.

40. Upon information and belief, Defendant’s misrepresentations to the

USPTO and the Board are part of a scheme to fraudulently broaden Defendant’s rights in the Mark.

41. Because Defendant made and continues to make fraudulent representations to the USPTO in U.S. Registration No. 3,500,015 and in the Opposition, the Opposition must be dismissed for unclean hands and fraud and Defendant’s U.S. Registration No.

3,500,015 must be cancelled.

III. CONCLUSION

42. The continued registration of the Mark will cause damage to Applicant-

Counterclaimant’s trademark and business.

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43. U.S. Registration No. 3,500,015 should be cancelled because Defendant fraudulently procured the registration.

WHEREFORE, Applicant-Counterclaimant respectfully prays that its counterclaim for cancellation be sustained and that the Board cancel U.S. Registration No.

3,500,015.

Dated: December 21, 2020

Applicant-Counterclaimant submits herewith the requisite filing fee of $400.00 for this counterclaim for cancellation.

Respectfully submitted,

s/APacifici Adriano Pacifici Intellectual Property Consulting, L.L.C. 400 Poydras Street, Suite 1400 New Orleans, LA 70130 T: (504) 323-6600 E-mail: [email protected] [email protected] Attorney for Applicant-Counterclaimant

CERTIFICATE OF SERVICE

I hereby certify that a true copy of this pleading has been served upon counsel for

Petitioner-Defendant via the email address of record on this 21st day of December 2020.

/s/ Adriano Pacifici Adriano Pacifici

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