Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1120575 Filing date: 03/15/2021 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 Philippines Address 7 IDEAL STREET MANDALUYONG CITY, 1550 PHILIPPINES Attorney informa- PAUL A. MCLEAN, ESQ. tion GREENBERG TRAURIG LLP 1900 UNIVERSITY AVENUE, FIFTH FLOOR EAST PALO ALTO, CA 94303 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected], [email protected] 650-289-7890 Docket Number 169440-112 Registration Subject to Cancellation Registration No. 5486051 Registration date 06/05/2018 Registrants Kristina Tenerowicz 1071 EAST GLADSTONE STREET AZUSA, CA 91702 UNITED STATES Evan Skow 1071 EAST GLADSTONE STREET AZUSA, CA 91702 UNITED STATES Additional Registrant Information Additional registrant in- EVAN L. SKOW formation provided by 334 EAST CHANDLER BLVD. the petitioner SUITE 5-D18 PHOENIX, AZ 85048 UNITED STATES No email provided. No phone number provided. Goods/Services Subject to Cancellation Class 041. First Use: 2016/10/01 First Use In Commerce: 2016/10/01 All goods and services in the class are subject to cancellation, namely: Entertainment in the nature of beauty pageants Grounds for Cancellation Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d) Abandonment Trademark Act Section 14(3) 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 Petition to Cancel TEEN EARTH.pdf(115095 bytes ) MISS EARTH Registration.pdf(26998 bytes ) MISS EARTH USA Pending Application.pdf(17132 bytes ) Signature /Paul A. McLean/ Name Paul A. McLean, Esq., Greenberg Traurig LLP Date 03/15/2021 In Re Registration No. 5486051- TEEN EARTH Registered on June 5, 2018 GT Ref.: 169440-900112 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 ) EVAN L. SKOW, an individual, and ) KRISTINA TENEROWICZ, 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. 5486051 for the mark 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 ACTIVE 47691844v1 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 EVAN L. SKOW, an individual, and Kristina Tenerowicz, an individual, are the record owners of Registration No. 5486051 for the mark TEEN EARTH which was filed on October 31, 2017 and registered on June 5, 2018. To the best of Petitioner’s information, EVAN L. SKOW’s last known addresses were 1334 East ACTIVE 47691844v1 Chandler Blvd., Suite 5-D18, Phoenix, Arizona 85048, and 1071 East Gladstone Street, Azusa, California 91702, and KRISTINA TENEROWICZ’s last known address was 1071 East Gladstone Street, Azusa, California 91702. 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 15 years prior to Respondent’s filing date of October 31, 2017 for its Registration No. 5486051 and over 13 years prior to Respondent’s claimed first use date of TEEN EARTH in commerce of January 1, 2016. 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 nine years prior to Respondent’s filing date of October 31, 2017 for its Registration No. 5486051. 11. ABANDONMENT. Upon information and belief, Respondent discontinued use of the mark 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. 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 could 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, all to the detriment of consumers and Petitioner. ACTIVE 47691844v1 14. 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. 15. 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. 16. 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 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. 17. 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. 18. By virtue of the foregoing, Petitioner is now and will be damaged by the continued presence on the Register of Registration No. 5486051 for TEEN EARTH. WHEREFORE, the Petitioner prays that Registration No. 5486051 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 ACTIVE 47691844v1 Avenue, Fifth Floor, East Palo Alto, California 94303. All communications regarding this petition should be addressed to Paul A. McLean, Esq. at the foregoing address. Dated: March 15, 2021 GREENBERG TRAURIG, LLP /Paul A. McLean/ By: Paul A. McLean, Esq. GREENBERG TRAURIG, LLP 1900 University Avenue, Fifth Floor East Palo Alto, CA 94303 Telephone: (650) 289-7890 Attorneys for Petitioner CAROUSEL PRODUCTIONS, INC.