Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA919246 Filing date: 08/30/2018

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 DEFU GAO Entity Individual Citizenship CHINA Address 1-23-2, No.16, Runjing Park Zhongshan District Dalian City, Liaoning Province, 116001 CHINA

Attorney informa- Simone Chen tion MUNCY, GEISSLER, OLDS & LOWE, P.C. 4000 Legato Road, Suite 310 Fairfax, VA 22033 UNITED STATES [email protected], [email protected] 7036217140

Registration Subject to Cancellation

Registration No. 5016362 Registration date 08/09/2016 Registrant Yu Liying Group 3,Dahuangdi Village, Gudianzi Town Changyi District, Jilin City Jilin Province CHINA Email: [email protected]

Goods/Services Subject to Cancellation

Class 043. First Use: 2014/05/07 First Use In Commerce: 2014/05/07 All goods and services in the class are subject to cancellation, namely: Bar services; Boarding houses; Cafeterias; Canteen services; Food and drink catering; Hotel accommodation services; Hotel and motel services; Hotels; Making hotel reservations for others; Rental of cooking apparatus; Res- taurant; Snack bars Grounds for Cancellation

Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d) Abandonment Trademark Act Section 14(3) Registrant not rightful owner of mark for identi- Trademark Act Sections 14(1) and 1 fied goods or services Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Mark Cited by Petitioner as Basis for Cancellation

U.S. Application 88031074 Application Date 07/10/2018 No. Registration Date NONE Foreign Priority NONE Date Word Mark XI JIA DE Design Mark

Description of The mark consists of a cartoon rendition of a Chinese inside a shaded Mark circle, and three Chinese characters on the right upper corner, the stylized word "XI JIA DE" on the right lower corner. Goods/Services Class 043. First use: First Use: 0 First Use In Commerce: 0 Bar services; Boarding for animals; Cafeteria services; Canteen services; Creche services; Food sculpting; Food and drink catering; Hotel services; Leas- ing of portable metal and portable non-metal buildings for use as storage and accommodation; Providing temporary lodging at holiday camps; Rental of cook- ing apparatus;Rental of meeting rooms; Rental of temporary accommodation; Restaurant services; Retirement home services; Self-servicerestaurant services; Snack-bar services; Washoku restaurant services

Attachments 88031074#TMSN.png( bytes ) 20180830 Petition for Cancellation.pdf(409813 bytes ) EXHIBIT A International Registrations.pdf(5049420 bytes ) EXHIBIT B Photos of Pet Restaurant.pdf(5128051 bytes ) EXHIBIT C Dianping Photo.pdf(652611 bytes )

Signature /Simone Chen/ Name Simone Chen Date 08/30/2018 Docket No. GAOD001US-001

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

GAO DEFU ) ) Petitioner, ) ) Cancellation No.: v. ) ) Yu, Liying ) ) Registrant. ) ) REGARDING: ) ) Registration No.: 5,016,362 ) ) Registered: August 9, 2016 ) )

Mark: ) ) Class: 43 )

PETITION FOR CANCELLATION

Gao Defu, (“Petitioner”), a Chinese individual with business address at 1-23-2, No.16,

Runjing Park, Zhongshan District, Dalian City, Liaoning Province, China 116001, believes that he is, and will continue to be, damaged by continued registration of the registration identified above

(“the Registrant’s Registration”), and hereby petitions for cancellation of same.

Registrant, Yu Liying, (“Registrant”), is an individual with an address at Group 3,

Dahuangdi Village, Gudianzi Town, Changyi District, Jilin City, Jilin Province, China.

The grounds for cancellation are as follows: Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 2

Count I: Registrant Is Not the Owner of the Mark

1. Petitioner is the owner of a chain of famous dumpling restaurants in China called XI

JIA DE (喜家德). The chain consists of over 480 restaurants located in over 40 cities in China,

employing over 8,000 employees, and growing.

2. Petitioner has valuable and longstanding common law trademark rights in and

numerous foreign and international trademark registrations for the 喜家德(XI JIA DE) Mark and other XI JIA DE related marks in connection with a variety of goods and services. A chart detailing

Petitioner’s registrations for its 喜家德(XI JIA DE) family of marks is attached as Exhibit A, as well as copies and translations thereof.

3. The Chinese characters “喜家德” are pronounced “XI”, “JIA”, “DE” which

translates to English as “Happy”, “Home” and “Virtues” respectively. In fact, the significance of the

last character “德” (DE) is that it is one of the characters of the name of the founder of the company.

4. Petitioner first adopted the mark “XI JIA DE” in 2002 in China, and has continued

to use the mark in commerce in connection with restaurant and food related goods and services for

over sixteen years.

5. Petitioner has used the above mark and similar marks at its website, at

https://www.xijiade.com.cn/ , available to global consumers, to propagate their products and

services, since 2015.

6. Petitioner has established a strong reputation and loyal customer base in China, and

has a plan to use the mark in the United States in connection with its restaurant services thereby Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 3 expanding on the goodwill established by its mark. Petitioner intends to use its mark in U.S. commerce in connection with services such as bar services; boarding for animals; cafeteria services; canteen services; creche services; food sculpting; food and drink catering; hotel services; leasing of portable metal and portable non-metal buildings for use as storage and accommodation; providing temporary lodging at holiday camps; rental of cooking apparatus; rental of meeting rooms; rental of temporary accommodation; restaurant services; retirement home services; self-service restaurant services; snack-bar services; and washoku restaurant services.

7. Petitioner is also the owner of Application No. 88/031,074 (the “Petitioner’s

Application”) for the mark , filed on July 10, 2018 in the USPTO, with the

Chinese characters pronounced as “XI JIA DE” (Petitioner’s Mark), for “Bar services; Boarding for

animals; Cafeteria services; Canteen services; Creche services; Food sculpting; Food and drink

catering; Hotel services; Leasing of portable metal and portable non-metal buildings for use as

storage and accommodation; Providing temporary lodging at holiday camps; Rental of cooking

apparatus; Rental of meeting rooms; Rental of temporary accommodation; Restaurant services;

Retirement home services; Self-service restaurant services; Snack-bar services; Washoku restaurant

services” (the “Petitioner’s Services).

8. Accordingly, Petitioner is the rightful owner of the marks identified above.

Count II: Likelihood of Confusion

9. Upon information and belief, Registrant has registered a confusingly similar mark Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 4

in Registration No. 5,016,362 (the “Registrant’s Mark”) in conjunction with Bar services; Boarding houses; Cafeterias; Canteen services; Food and drink catering; Hotel accommodation services; Hotel and motel services; Hotels; Making hotel reservations for others;

Rental of cooking apparatus; Restaurant; Snack bars (the “Registrant’s Services”). Registrant filed the application, Application No. 86/800,143 on October 27, 2015. The mark was registered on

August 9, 2016. The Chinese characters “喜家德” in the Registrant’s Mark are pronounced as “XI

JIA DE” and are identical to Petitioner’s Mark.

10. Petitioner recently uncovered the registration of Registrant’s Mark and believes the

Registrant’s Mark would likely cause confusion and mistake, and deceive as to the source of the

Petitioner’s Services. Due to the registration of the Registrant’s Mark, Petitioner believes

Petitioner’s Mark will unfortunately be refused to register by a Trademark Examining Attorney in

the USPTO based on the Registrant’s Mark.

11. Based on a comparison of the Registrant and Petitioner Marks, the respective marks

are similar in appearance and have the same pronunciation and meaning. Specifically, both marks

contain the identical Chinese characters “喜家德”, with same sound and meaning. Moreover, as

discussed above in paragraph 2, Petitioner has used the mark “ ” and continues to

since at least as early as 2012, in connection with its food related goods and business and restaurant

services in China, thereby possessing valuable Chinese federal and common law trademark rights to Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 5 this mark. See Exhibit B for Petitioner’s restaurants bearing the above mark. These similarities all cause damage to the Petitioner based on a likelihood of confusion as to the source of the services.

12. Furthermore, the Registrant and Petitioner respective services are closely related.

Specifically, Petitioner’s Services are “Bar services; Boarding for animals; Cafeteria services;

Canteen services; Creche services; Food sculpting; Food and drink catering; Hotel services; Leasing

of portable metal and portable non-metal buildings for use as storage and accommodation;

Providing temporary lodging at holiday camps; Rental of cooking apparatus; Rental of meeting

rooms; Rental of temporary accommodation; Restaurant services; Retirement home services; Self-

service restaurant services; Snack-bar services; Washoku restaurant services” and Registrant’s

Services are for “Bar services; Boarding houses; Cafeterias; Canteen services; Food and drink

catering; Hotel accommodation services; Hotel and motel services; Hotels; Making hotel

reservations for others; Rental of cooking apparatus; Restaurant; Snack bars.” These cumulative

similarities all cause damage to the Petitioner based on a likelihood of confusion as to the source of

the services.

Count III: Abandonment

13. Upon information and belief, Registrant is not using, and has no intent to resume use

of the Registrant’s Mark in connection with the services identified in the Registrant’s Registration.

Based on an Internet search on various search engines, no evidence of use in United States

commerce was found for Registrant’s Mark in connection with Registrant’s Services.

14. Upon information and belief, Registrant has abandoned Registrant’s Mark in Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 6

connection with services identified in the Registrant’s Registration.

15. Upon information and belief, Registrant has not made use of Registrant’s Mark in

connection with the services identified in the Registrant’s Registration for more than three

consecutive years, thereby constituting prima facie evidence of abandonment of Registrant’s Mark.

Count IV: Fraud in the Application

A. Fraudulent Allegation of Use in Commerce

16. Registrant’s application for Registrant’s Mark, filed on October 27, 2015, contains

the statement “[t]he applicant is using the mark in commerce on or in connection with the identified

goods/services,” and “the mark was first used by the applicant … at least as early as 05/07/2014,

and first used in commerce at least as early as 05/07/2014, and is now in use in such commerce.”

The application also contains a declaration as to the truth of applicant’s statements in the application.

17. Upon information and belief, Registrant did not use Registrant’s Mark in connection

with Registrant’s Services in commerce on or anytime prior to the October 27, 2015 filing date.

Upon information and belief, Registrant has not used Registrant’s Mark in connection with

Registrant’s Services in interstate commerce in the United States.

18. Upon information and belief, Registrant fraudulently used the May 7, 2014 date as

its date of first use in commerce.

19. Upon information and belief, Registrant’s false statements were made knowingly.

Upon information and belief, Registrant made the false statements as to the use of its mark in

commerce with the intent to obtain a registration to which Registrant was not entitled, and Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 7

Registrant was successful in obtaining favorable examination, allowance, and publication of the application.

20. Upon information and belief, the Trademark Examining Attorney relied on

Registrant’s statements and believed them to be true. Upon information and belief, based on these

willful fraudulent statements, the United States Patent and Trademark Office issued the Registrant’s

Registration.

B. Fraudulent Specimen of Use

21. Upon information and belief, Registrant submitted an alleged specimen of use on

October 27, 2015 with Registrant’s application. The alleged specimen consisted of a photo of the

outside of a restaurant bearing the Registrant’s Mark. The application contained a signed declaration

stating that “the specimen(s) shows the mark as used on or in connection with the goods/services in

the application” and that the statements in the declaration were true.

22. Upon information and belief, the alleged specimens were not in use in commerce at

least as early as October 27, 2015.

23. Upon information and belief, the restaurant photo originates from a popular website

called Dianping in China (www.dianping.com) similar to Yelp in the U.S., which posts restaurant

information including restaurant photographs, including this particular photograph of one of

Petitioner’s many restaurants located in Shenzhen:

Table: Comparison of Registrant’s Specimen Photograph with Petitioner’s Restaurant Photograph

Available on Dianping.com Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 8

Registrant’s Specimen (filed October 27, 2015)

A screenshot of Petitioner’s restaurant in Shenzhen, available at URL: http://www.dianpin g.com/photos/1010 64620 (posted in November 2014)

See Exhibit C: Photograph of Petitioner’s Restaurant on Dianping.com, posted November

2014. Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 9

24. As is clearly shown in the Table above, the respective photographs are identical. The only difference is the replacement of Petitioner’s identifying sign with the Registrant’s mark, which

Petitioner believes was digitally altered by the Registrant.

25. Upon information and belief, Registrant appropriated the Dianping photograph and in bad faith, used it as its specimen of use. Upon information and belief, in particular, Registrant downloaded the photo of from Dianping.com and edited the image by replacing Petitioner’s identifying information on the sign with Registrant’s logo in order to deceptively make the restaurant appear as if it belonged to Registrant. This alteration is clearly visible when Registrant’s specimen is magnified, showing digital blurring.

26. As further evidence, in the photograph of Registrant’s alleged restaurant, the sign in blue shows Chinese writing, not English, which shows it was not in use in the United States.

Registrant’s restaurant photo shows no address, no location in the United States, and should not be recognized as evidence of use.

27. Upon information and belief, Registrant’s false statements with regard to its specimen were made knowingly. Upon information and belief, Registrant made the false statements as to the use of the specimen in commerce with the intent to obtain registration to which Registrant was not entitled, and Registrant was successful in obtaining favorable examination, allowance, publication and registration of the application.

28. Upon information and belief, the Trademark Examining Attorney relied on

Registrant’s statements and believed them to be true. Upon information and belief, based on these willful fraudulent statements, the United States Patent and Trademark Office issued the Registrant’s Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 10

Registration.

29. Petitioner believes it is being, and will continue to be, damaged by the continued

registration of Reg. No. 5,016,362.

WHEREFORE, Gao Defu petitions for cancellation of U.S. Reg. No. 5,016,362 on the

grounds stated above.

Dated: August _29_, 2018 GAO DEFU

By Petitioner:

/GAO DEFU/

GAO DEFU 1-23-2, No.16, Runjing Park Zhongshan District, Dalian City Liaoning Province CHINA 116001 Petitioner Serial No. 88/031,074 Attorney Docket No. GAOD001US-001 Page 11

CERTIFICATE OF SERVICE

I hereby certify that on this _____30th day of ______2018,August a copy of the foregoing

PETITION FOR CANCELLATION was served upon the following person, the Correspondent of record, via electronic mail as follows:

GLOBAL IP LAW LTD. TORONTO, ONTARIO, M5E 1W7 1 YONGE STREET, SUITE 1801 ONTARIO CANADA [email protected]

By counsel:

/Simone Chen/ Simone Chen MUNCY, GEISSLER, OLDS & LOWE, P.C. 4000 Legato Road, Suite 310 Fairfax, VA 22033 (703) 621-7140 (703) 470-5555 (direct) Email: [email protected]; [email protected] Attorney for Petitioner EXHIBIT A

Petitioner’s (XI JIA DE) Mark Registrations

Reg. No. and Jurisdiction International Class Registration Status Date 9759250 P.R. China 30: Tea; Coffee; Nutrition powder, not for November 28, Registered/Active medical purpose; Condiments; Aromatic 2012 preparations for food 9759253 P.R. China 35: Promotion for others; Advertising; Business September 21, Registered/Active management assistance; Personnel management 2012 consultancy; Relocation services for businesses district (providing information); Word processing; Accounting; Sponsorship search; Import-export agency services; Advertising agency services 17213371 P.R. China 43: Hotel services; Snack-bar services; Retirement August 14, Registered/Active home services; Moving for food supply; Bar; 2016 Teahouse; Café services; Day-nursery [crèche] services; Accommodation services [hotels, boarding houses]; Motel services 1379868 International 30: (stuffed ); (stuffed October 20, Registered/Active Bureau/ buns); pies; ribbon vermicelli; instant . 2017 WIPO 43: Accommodation bureau services (hotels, boarding houses); café services; hotel services; motel services; snack-bar services; bar services. 303462020 Hong Kong 30: Coffee-based beverages; tea; Tea-based July 3, 2015 Registered/Active beverages; sugar; honey; Cereal preparations; Jiaozi [stuffed dumplings]; rice; ice cream; condiment. 43: Accommodation bureau services [hotels, boarding houses]; Café services; Hotel services; Snack-bar services; Bar services; Moving for food supply; Teahouse; Retirement home services; Day-nursery[crèche] services; Rental of cooking apparatus 01750813 Taiwan 30: Coffee-based beverages; tea; Tea-based January 16, Registered/Active beverages; sugar; honey; Cereal preparations; 2016 Jiaozi [stuffed dumplings]; rice; ice cream; condiment 01751581 Taiwan 43: Accommodation services; hotels; Café January 16, Registered/Active services; Hotel services; Snack-bar services; Bar 2016 services; Moving for food supply; Teahouse; Retirement home services; Day-nursery [crèche] services; Rental of cooking apparatus

(Translation of Trademark Certificate)

*ZC9759250 ZC* Registration Number: 9759250

Certificate of Trademark Registration

List of Goods & Services (International class 30) Class 30: Tea; Coffee; Nutrition powder, not for medical purpose; Condiments; Aromatic preparations for food (end).

Owner’s Name: Hegang City Gongnong District Xijiade Dumplings Catering Chain Agency

Owner’s Address: 1st Floor, Yanbin Building, Wudao Road, Gongnong District, Hegang City, Heilongjiang province

Registration Date: November 28, 2012 Expiry Date: November 27, 2022

Director of Trademark Office: Xu, Ruibia STATE ADMINISTRATION FOR INDUSTRY AND COMMERCE RADEMARK OFFICE (sealed)

(Translation of Trademark Certificate)

(Translation of Trademark Certificate)

*ZC9759253 ZC* Registration Number: 9759253

Certificate of Trademark Registration

List of Goods & Services (International class 35) Class 35: Promotion for others; Advertising; Business management assistance; Personnel management consultancy; Relocation services for businesses district (providing information); Word processing; Accounting; Sponsorship search; Import-export agency services; Advertising agency services (end).

Owner’s Name: Hegang City Gongnong District Xijiade Dumplings Catering Chain Agency

Owner’s Address: 1st Floor, Yanbin Building, Wudao Road, Gongnong District, Hegang City, Heilongjiang province

Registration Date: September 21, 2012 Expiry Date: September 20, 2022

Director of Trademark Office: Xu, Ruibia STATE ADMINISTRATION FOR INDUSTRY AND COMMERCE RADEMARK OFFICE (sealed) (Translation of Trademark Certificate)

(Translation of Trademark Certificate)

*TMZC17213371D01T160906* Registration Number: 17213371

Certificate of Trademark Registration

Owner’s Name: Gao Defu 230403197210160236

Owner’s Address: A26, Dalian International Business Park, No. 57, Xinkang Park, Lizi Mountain, Ganjingzi District, Dalian City, Liaoning Province

Registration Date: August 14, 2016 Expiry Date: August 13, 2026

Director of Trademark Office: Liu Junchen STATE ADMINISTRATION FOR INDUSTRY AND COMMERCE RADEMARK OFFICE (sealed) *TMZC17213371D01T160906* Registration Number: 17213371

Goods/services: Class 43: Hotel services; Snack-bar services; Retirement home services; Moving for food supply; Bar; Teahouse; Café services; Day-nursery [crèche] services; Accommodation services [hotels, boarding houses]; Motel services (end).

CERTIFICATE OF REGISTRATION OF TRADEMARK

Trade Mark No.: 303462020

Mark：

Mark Type: Ordinary

Mark Description: None

Series Mark: None

Gao Defu Owner's Name, Address: A26 Dalan International Business Park, No.57 Xinkang Park, Ganjingzi District, Dalian City, Liaoning Province

HENGWEI REGISTRATION CO., LTD. Owner's Address for HONG KONG Service: A30, Floor 9, Yingao International Building, NO. 707-713, Nathan Road, Mong Kok, Kowloon

Class 30 Coffee-based beverages; tea; Tea-based beverages; sugar; honey; Cereal preparations; Jiaozi [stuffed dumplings]; rice; ice cream; condiment Class & Specifications: Class 43 Accommodation bureau services [hotels, boarding houses]; Café services; Hotel services; Snack-bar services; Bar services; Moving for food supply; Teahouse; Retirement home services; Day-nursery [crèche] services; Rental of cooking apparatus Disclaimer: None

Limitation: None

Condition： None

Others： None

Date of Registration: 03.07.2015 Dates of priority None claimed: Priority Application no.: None

Country, territory, area None of Priority Applications:

Date: 29 December, 2015

Signature

Ada K.L. Leung Registrar of Trade Marks

CERTIFICATE OF REGISTRATION OF TRADEMARK

Registration No.: 01750813 Owner: GAO, DEFU

Mark: 喜家德 Drawing:

Validity: From January 16, 2016 to January 15, 2026 Class: 30 Goods/services: Coffee-based beverages; tea; Tea-based beverages; sugar; honey; Cereal preparations; Jiaozi [stuffed dumplings]; rice; ice cream; condiment

INTELLECTUAL PROPERTY OFFICE Director January 16, 2016

CERTIFICATE OF REGISTRATION OF TRADEMARK

Registration No.: 01751581 Owner: GAO, DEFU

Mark: 喜家德 Drawing:

Validity: From January 16, 2016 to January 15, 2026 Class: 43 Goods/services: Accommodation services; hotels; Café services; Hotel services; Snack-bar services; Bar services; Moving for food supply; Teahouse; Retirement home services; Day-nursery [crèche] services; Rental of cooking apparatus

INTELLECTUAL PROPERTY OFFICE Director January 16, 2016 EXHIBIT B:

PHOTOGRAPHS OF PETITIONER’S RESTAURANT AND SIGN SHOWING THE CONTESTED MARK

EXHIBIT C