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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA598253 Filing date: 04/13/2014 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 House Dance FX LLC d/b/a "House Dance International NYC" Entity Limited Liability Company Citizenship New York Address 3 Columbus Circle New York, NY 10019 UNITED STATES Attorney James H. Freeman information JH Freeman Law 3 Columbus Circle 15 FL New York, NY 10036 UNITED STATES [email protected] Phone:2129318535 Registration Subject to Cancellation Registration No 3605553 Registration date 04/14/2009 Registrant ROCHESTER, CONRAD A 212 EAST BROADWAY APT 1103-G NEW YORK, NY 10002 USX Goods/Services Subject to Cancellation Class 041. First Use: 2007/07/12 First Use In Commerce: 2007/07/12 All goods and services in the class are cancelled, namely: Dance events; Organization of dancing events Grounds for Cancellation Deceptiveness Trademark Act section 2(a) False suggestion of a connection Trademark Act section 2(a) Torres v. Cantine Torresella S.r.l.Fraud 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986) Dilution Trademark Act section 43(c) Other (A) MAIL AND WIRE FRAUD [18 U.S.C. §§ 1341, 1343] (B) FALSE ADVERTISING [15 U.S.C. § 1125(a)] (C) TRADE DRESS INFRINGEMENT [15 U.S.C. § 1125(a)] (D) TRADENAME DILUTION [15 U.S.C. § 1125(c)] (E) CYBERSQUATTING [15 U.S.C. § 1125(d)] (F) DECEPTIVE BUSINESS PRACTICES [N.Y. G.B.L. § 349] (G) UNAUTHORIZED COMMERCIAL EXPROPRIATION [N.Y. G.B.L. § 350] (H) CONVERSION OF INTELLECTUAL PROPERTY [New York Common Law] (I) TRADEMARK INFRINGEMENT [New York Common Law] (J) COPYRIGHT INFRINGEMENT [New York Common Law] Mark Cited by Petitioner as Basis for Cancellation U.S. Application/ NONE Application Date NONE Registration No. Registration Date NONE Word Mark HOUSE DANCE INTERNATIONAL NYC Goods/Services #Dance events; Organization of dancing events.# Attachments HDI Cancellation Petition(FINAL)_PDF_A.pdf(743829 bytes ) Ex. A_I.pdf(3533052 bytes ) Ex. J_R.pdf(5188042 bytes ) Exhibits S_BB.pdf(4933622 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by Overnight Courier on this date. Signature /jameshfreeman/ Name James H. Freeman Date 04/13/2014 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ------------------------------------------------------------------------------------------x HOUSE DANCE FX LLC : d/b/a HOUSE DANCE INTERNATIONAL NYC : (a New York Limited Liability Company) : : VERIFIED : PETITION Petitioner, : UNDER 37 C.F.R. : § 2.111 TO CANCEL : SERVICEMARK : REGISTRATION NO. 3605553 IN WHOLE CONRAD ROCHESTER : (an Individual Citizen of the State of New York) : : Respondent. : ------------------------------------------------------------------------------------------x IN THE MATTER OF CANCELLATION IN WHOLE OF SERVICEMARK REGISTRATION NO. 3605553 COMES NOW, Petitioner HOUSE DANCE FX LLC d/b/a HOUSE DANCE INTERNATIONAL NYC (“Petitioner” or “HDI”), by and through counsel JH FREEMAN LAW, 3 Columbus Circle, 15 FL, New York, New York 10019, to respectfully submit this Petition for Cancellation in Whole of Servicemark Registration No. 3605553 pursuant to 37 C.F.R. § 2.111, as against Conrad Rochester (“Respondent”), the purported individual owner of record of said registration with address listed at 212 East Broadway Apt. 1103G, New York, New York 10002. A. FALSE SERVICEMARK 1. The registered servicemark which Petitioner seeks to cancel in whole is “HOUSE DANCE INTERNATIONAL NYC”, bearing registration No. 3605553 on the Principal Register with registration date of April 14, 2009. Cancellation of Servicemark Registration No. 360553 House Dance International NYC vs. Rochester U.S. Trademark Trial and Appeal Board Dated: April 15, 2013 2. The registered servicemark, which was initially filed with the United States Trademark and Patent Office (“USPTO”) on August 25, 2008, has been designated for one class, I.C. 041 for “Dance events; Organization of dancing events.” 3. The first use and first use in commerce of the registered servicemark is listed as July 12, 2007. 4. The registered servicemark also consists of a drawing / logo consisting of a stylized version of the word mark “HOUSE DANCE INTERNATIONAL NYC” formatted with an iconic symbol of overlapping co- centric circles. [Attached hereto as Exhibit A is a true and correct copy of Servicemark Registration No. 3605553 as recorded on TESS] 5. The registered servicemark shall be referred to herein as the “False Registration”. B. PETITIONER’S STANDING 6. Pursuant to 37 C.F.R. § 2.111, “Any person who believes that he or she or it will be damaged by a registration may file a petition, addressed to the Trademark Trial and Appeal Board, for cancellation of the registration in whole or in part.” 7. Petitioner HOUSE DANCE FX LLC D/B/A HOUSE DANCE INTERNATIONAL NYC (“HDI”) is an active, domestic limited liability company organized under the laws of the State of New York on May 10, 2007. (NY DOS #3515464). [Attached hereto as Exhibit B is a true and correct copy of the entity status information from the New York Department of State, Division of Corporations, dated April 11, 2013] 8. Petitioner HDI conducts business in the State of New York, throughout the United States, and in international territory under the IDENTICAL word mark listed in the False Registration (“House Dance International NYC”) offering the IDENTICAL class of services pursuant to I.C. 041 (“Organization of dancing events”) and using the IDENTICAL trademark, logo and trade dress listed as the “drawing” on the face of the False Registration. 2 Cancellation of Servicemark Registration No. 360553 House Dance International NYC vs. Rochester U.S. Trademark Trial and Appeal Board Dated: April 15, 2013 9. Petitioner HDI avers that it is the rightful, exclusive and true owner - through use in commerce since November 2006 through present - of the trademark, tradename, trade dress, logo, design and servicemark rights arising out of, attendant to, or encompassed within False Servicemark Registration No. 3605553. 10. Petitioner HDI submits that its business tradename, trademark, trade dress, logo, design, and servicemark have all been unlawfully expropriated by Respondent, who acted with malice aforethought to convert Petitioner’s valuable business assets for his own unlawful commercial use. 11. Petitioner HDI therefore has a direct and personal stake in the outcome of this cancellation proceeding because it is irreparably harmed by the continued, unlawful registration of the False Registration. 12. The individual members of the limited liability company designated as the Petitioner are James Freeman (“Santiago”)1 and Kim Hayes (“RED”)2, both of whom are individual citizens of the State of New York. 13. Santiago has submitted a sworn affidavit in support of this Verified Petition. [Attached hereto as Exhibit C is the Verification of James Freeman, dated March 4, 2013]. 14. RED has submitted a sworn affidavit in support of this Verified Petition. [Attached hereto as Exhibit D is the Verification of Kimberly Hayes, dated March 4, 2013]. 15. Pursuant to 37 C.F.R.§ 2.6(a)(16), Petitioner herein submits the required fee of $300.00 in connection with this Verified Petition, which seeks cancellation of a servicemark registered in one class (041). 1 p/k/a “Santiago” 2 p/k/a “RED” 3 Cancellation of Servicemark Registration No. 360553 House Dance International NYC vs. Rochester U.S. Trademark Trial and Appeal Board Dated: April 15, 2013 C. GROUNDS FOR CANCELLATION 16. Petitioner submits that Respondent, a citizen of the State of New York who is listed as “owner of record” of Servicemark Registration No. 3605553, obtained such federal registration via false pretenses by making willful and knowing misrepresentations of fact to the USPTO with the intent to unlawfully deprive Petitioner of its legal interests to use the trademark, trade dress, servicemark and other intellectual property rights associated with Petitioner’s legal business and tradename, “HOUSE DANCE INTERNATIONAL NYC.” 17. As grounds for cancellation in whole of the False Registration, Petitioners aver that Respondent’s unauthorized commercial expropriation and use of the mark “HOUSE DANCE INTERNATIONAL NYC,” and its attendant trade dress and intellectual property materials, constitute manifest violations of U.S. federal and New York state laws, including but not limited to: (A) MAIL AND WIRE FRAUD [18 U.S.C. §§ 1341, 1343] (B) FALSE ADVERTISING [15 U.S.C. § 1125(a)] (C) TRADE DRESS INFRINGEMENT [15 U.S.C. § 1125(a)] (D) TRADENAME DILUTION [15 U.S.C. § 1125(c)] (E) CYBERSQUATTING [15 U.S.C. § 1125(d)] (F) DECEPTIVE BUSINESS PRACTICES [N.Y. G.B.L. § 349] (G) UNAUTHORIZED COMMERCIAL EXPROPRIATION [N.Y. G.B.L. § 350] (H) CONVERSION OF INTELLECTUAL PROPERTY [New York Common Law] (I) TRADEMARK INFRINGEMENT [New York Common Law] (J) COPYRIGHT INFRINGEMENT [New York Common Law] 4 Cancellation of Servicemark Registration No. 360553 House Dance International NYC vs. Rochester U.S. Trademark Trial and Appeal Board Dated: April 15, 2013 D. SUMMARY OF RESPONDENT’S UNLAWFUL CONDUCT 18. In October-November 2006, Petitioner adopted the tradename HOUSE DANCE INTERNATIONAL NYC with a written business plan to produce a multi-day dance festival called “HDI.” 19. In February 2007, Petitioner commissioned the design and artwork for its HDI logo, tradedress and trademark. 20. In or about February 2007, Petitioner also retained Respondent to work as a promoter and organizer for Petitioner’s New York-based dance festival event, HOUSE DANCE INTERNATIONAL NYC. Respondent was eventually assigned the nominal title of the festival’s “Co-Director” and paid $300.00 for his services in connection with the July 2007 festival. 21. In March 2008, Petitioner caused to register the page of www.facebook.com/housedancenyc as a Facebook Group page and shortly thereafter registered a Facebook Fanpage.

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