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Petition for Cancellation Petitioner Information Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov ESTTA Tracking number: ESTTA1136296 Filing date: 05/25/2021 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 Phillipines Address 7 IDEAL STREET MANDALUYONG CITY, 1550 PHILIPPINES Attorney informa- PAUL A. MCLEAN tion GREENBERG TRAURIG, LLP 1900 UNIVERSITY AVE, 5TH FLOOR EAST PALO ALTO, CA 94303 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected], [email protected] 650-289-7890 Docket Number 169440-113 Registration Subject to Cancellation Registration No. 4904518 Registration date 02/23/2016 Registrant STAFFORD, MICHAEL R 74 WALNUT STREET BRIDGEWATER, MA 02324 UNITED STATES Goods/Services Subject to Cancellation Class 041. First Use: 2007/10/01 First Use In Commerce: 2007/10/01 All goods and services in the class are subject to cancellation, namely: Entertainment in the nature of beauty pageants Grounds for Cancellation Abandonment Trademark Act Section 14(3) False suggestion of a connection with persons, Trademark Act Sections 14(3) and 2(a) living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrep- ute Related Proceed- Cancellation No. 92076712 ings 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 77586446#TMSN.png( bytes ) 90563402#TMSN.png( bytes ) Petition for Cancellation - UNITED STATES TEEN EARTH.pdf(81180 bytes ) Signature /Paul A. McLean/ Name Paul A. McLean Date 05/25/2021 In Re Registration No. 4904518 - UNITED STATES TEEN EARTH Registered on February 23, 2016 GT Ref.: 169440-900113 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 ) MICHAEL R. STAFFORD, 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. 4904518 for the mark UNITED STATES 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 1 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 MICHAEL R. STAFFORD, an individual, is the record owner of Registration No. 4904518 for the mark UNITED STATES TEEN EARTH which was filed on June 13, 2015 and registered on February 23, 2016. To the 2 best of Petitioner’s information, MICHAEL R. STAFFORD’s last known address was 74 Walnut Street, Bridgewater, Massachusetts 02324. 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 nearly 13 years prior to Respondent’s filing date of June 13, 2015 for its Registration No. 4904518 and five years prior to Respondent’s claimed first use date of UNITED STATES TEEN EARTH in commerce of October 1, 2007. 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 nearly seven years prior to Respondent’s filing date of June 13, 2015 for its Registration No. 4904518. 11. ABANDONMENT. Upon information and belief, Respondent discontinued use of the mark UNITED STATES 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. FALSE SUGGESTION OF CONNECTION. 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 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, creating a false suggestion of connection to Petitioner, all to the detriment of consumers and Petitioner. 3 14. 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 are offered in the same channels of trade and to the same prospective customers. 15. 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. 16. 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. 17. 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. 18. 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 UNITED STATES 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. 19. 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. 4 20. By virtue of the foregoing, Petitioner is now and will be damaged by the continued presence on the Register of Registration No. 4904518 for UNITED STATES TEEN EARTH. WHEREFORE, the Petitioner prays that Registration No. 4904518 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 Avenue, Fifth Floor, East Palo Alto, California 94303.
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