Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA900624 Filing date: 06/04/2018 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 Panzeri Diffusion S.r.l. Entity limited liability company Citizenship Italy Address Via Brodolini, 30 Malnate (VA), 21046 ITALY Attorney informa- Kenneth F. Florek tion FLOREK & ENDRES PLLC 1156 Avenue of the Americas New York, NY 10036 UNITED STATES Email: [email protected], [email protected] Phone: 212-997-1000 Registration Subject to Cancellation Registration No. 2299519 Registration date 12/14/1999 Registrant SKIN AND CANCER ASSOCIATES 201 N.W. 82nd Avenue Suite 501 Plantation, FL 33324 UNITED STATES Goods/Services Subject to Cancellation Class 003. First Use: 1996/07/01 First Use In Commerce: 1996/07/01 All goods and services in the class are subject to cancellation, namely: non-medicated skin care pre- parations, namely, cleansers, toners, moisturizers, lotions, creams, gels, anti-wrinkle creams, anti- aging creams and gels, anti-oxidizing creams, anti-discoloration creams, sun screen preparations, body soothingcreams Grounds for Cancellation Abandonment Trademark Act Section 14(3) Attachments 2048-X-126 Petition for Cancellation.pdf(213635 bytes ) 2048-X-126 Petition Exhibits 1-5.pdf(1532657 bytes ) Signature /kenneth f. florek/ Name Kenneth F. Florek Date 06/04/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD U.S. Trademark Registration No.: 2,299,519 For the Mark: DERMATOLOGY DEPOT Registration Date: December 14, 1999 Attorney Docket No.: 2048-X-126 Panzeri Diffusion S.r.l., Petitioner, Cancellation No.: v. Skin and Cancer Associates, Registrant. PETITION FOR CANCELLATION Panzeri Diffusion S.r.l., a limited liability company having an address of Via Brodolini, 30, I-21046 Malnate (VA), Italy (hereinafter “Petitioner”), avers that it will be damaged by the continued registration of the mark “DERMATOLOGY DEPOT” by Skin and Cancer Associates (hereinafter “Registrant”) shown in Registration No. 2,299,519 (hereinafter “the Registration”), registered on December 14, 1999. Petitioner hereby petitions to cancel the Registration pursuant to 15 U.S.C. §1064. To the best of Petitioner’s knowledge, Registrant’s current address is 201 N.W. 82nd Avenue, Suite 501, Plantation, Florida 33324. Petitioner does not have a current address for Registrant, however, the last listed email correspondence address in the Registration is [email protected]. Notwithstanding, attempts to contact Mr. 1 Bryce Maynard, the last attorney of record listed in the Registration resulted in his advising that he had attempted to get in touch with the Registrant but was not successful. As grounds for this Petition, Petitioner, through its attorneys, alleges that: 1. Petitioner is the owner of U.S. Trademark Application Serial No. 79/210,479 filed on July 19, 2016 for the mark DEPOT for use on various goods in International Classes 3, 8, 11 and 21 (hereinafter “Petitioner’s Application”). The identification for Petitioner’s application reads as follows: Class 3: Shaving gel; lotions for beards; shaving cream; beard dyes; shaving foam; shaving soap; after-shave lotions; after-shave emulsions; astringents for cosmetic purposes, namely, shaving stones; after-shave creams; after-shave gel; hair conditioners; hair gels; hair mousses; hair styling spray; hair care lotions and products; scented body lotions and creams; oils for cosmetic purposes; cleaning preparations for body; body sprays; cologne; toilet water; cosmetic creams; dentifrices; deodorants for human beings or for animals; fragrances; massage gels other than for medical purposes; hair spray; massage oils; massage lotions; essential oils; oils for perfumes and scents; cosmetic tanning preparations; cosmetic preparations for body care; nail care preparations; perfumery; cosmetics; perfume; toilet soaps; deodorant soap; non-medicated soaps for body care; shampoos; hair dyes, all aforesaid products sold exclusively in beauty and hairdressing salons Class 8: Electric beard trimmers; beard clippers; electric hair clippers; depilation appliances, electric and non-electric; electrolysis apparatus for hair removal; electric irons for styling hair; hair cutting scissors; hand- operated hair clippers; electric hair straightening irons; hair clippers for personal use, electric and non-electric; cutlery, namely, forks, knives, and spoons; electric nasal hair trimmers; hand operated cutting tools; side arms, not including firearms, namely, swords; cuticle scissors; electric hair crimper; eyelash curlers; hair-removing tweezers; razors; mustache and beard trimmers Class 11: Hair steamers for beauty salon use; infrared hair drying apparatus; electric hair dryers; hair dryers for household purposes; hand- held electric hair dryers; portable electric warm air dryer; stationary hair dryers for domestic use; warm air driers for drying hair; hair dryers for use in beauty salons 2 Class 21: Cases adapted for cosmetic utensils; shaving dishes; material for brush-making; eyelash combs; hair brushes; cosmetic brushes; shaving brushes; lip brushes; nail brushes; eyebrow brushes; sponges used for applying make-up; cattle hair for brushes; synthetic fibers for the manufacture of brushes, namely, hair brushes and beard brushes; cosmetic utensils, namely, cosmetic spatulas; shaving brush stands; combs; electric combs; electric hair combs; hair combs; combs for back-combing hair; shaving brush holders. 2. Petitioner has been, and continues to be, damaged by Registrant’s registration of the DERMATOLOGY DEPOT mark because the subject Registration has been cited against Petitioner’s Application as a basis for refusal of registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). 3. Petitioner has devoted substantial time, money and effort in the development of Petitioner’s goods on which Petitioner’s applied-for mark will be used, and is continuing to spend substantial amounts of time, money and efforts marketing and promoting the same. 4. The trademark of the subject Registration was registered on December 14, 1999, and the Registration is currently active. The filing of the present Petition for Cancellation is timely under the rules. REGISTRANT’S NON-USE 5. On December 14, 1999, Registrant’s U.S. Trademark Application Serial No. 75/472,136 issued on the Principal Register as U.S. Registration No. 2,299,519 for the mark DERMATOLOGY DEPOT, for use in connection with “non-medicated skin care preparations, namely, cleansers, toners, moisturizers, lotions, creams, gels, anti-wrinkle creams, anti-aging creams and gels, anti-oxidizing creams, anti-discoloration creams, sun screen preparations, body soothing creams” in International Class 3. 6. A Declaration of Use and Renewal under Sections 8 and 9 was last filed on January 26, 2009, and the next renewal is not due on the Registration until December 14, 2019. 3 7. On information and belief, there is no current use of the mark by the Registrant on the goods identified in the Registration. 8. On information and belief, Registrant has not sold any of the goods identified in the subject Registration under the DERMATOLOGY DEPOT trademark for more than three years. 9. An internet search of “dermatology depot” on Google® revealed references only dealing with various dermatology clinics, none of which appeared to be related to Registrant (see Exhibit 1 hereto). No results were found for goods bearing or being offered or sold under the mark DERMATOLOGY DEPOT by Registrant. 10. A review of the website apparently owned by Registrant, the home page of which being attached as Exhibit 2, does not show any products being offered under the DERMATOLOGY DEPOT trademark. 11. A search for “depot” on the website apparently owned by Registrant turned up only two references, none of which related to goods being offered under the DERMATOLOGY DEPOT trademark. Instead, both of the references related to a satellite office with a location described as “in the Home Depot/Publix Shopping Plaza.” A copy of the search results and the links referenced is attached as Exhibit 3. 12. The specimen filed by Registrant at the time the Registration was renewed in 2009 comprised a brochure, attached as Exhibit 4. The brochure, which contains photographs of various items bearing the DERMATOLOGY DEPOT trademark, designates the website www.dermdepot.com “to learn more about the product.” 13. Entering www.dermdepot.com in an internet browser redirects the user to a website using the name DERMSTORE, at the URL https://www.dermstore.com/?utm_source=cj&utm_medium=affiliate (the DERMSTORE website). 4 14. On information and belief, there are no goods being sold on the DERMSTORE website under the DERMATOLOGY DEPOT trademark. Copies of relevant portions of pages from the DERMSTORE website are attached as Exhibit 5. These include the home page, the “Brands” page, which make no reference to the brand DERMATOLOGY DEPOT, and a search of “depot” indicating no results on the website. 15. Petitioner’s representative has tried to contact Registrant on numerous occasions. These included several emails and a telephone conversation with Registrant’s attorney of record, in which Registrant’s attorney told Petitioner’s representative that he was not able to contact Registrant and that Petitioner’s