Petition for Cancellation Petitioner Information Registration Subject To
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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 dumpling 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;