Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1040181 Filing date: 03/05/2020 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 Weber Nutrition, LLC Entity limited liability company Citizenship Michigan Address 25751 Mary St. Chesterfield, MI 48051 UNITED STATES Attorney informa- David S. McDaniel tion Jaffe, Raitt, Heuer & Weiss, P.C. 27777 Franklin Road, Ste. 2500 Southfield, MI 48103 UNITED STATES [email protected] 2483513000 Registration Subject to Cancellation Registration No. 5560540 Registration date 09/11/2018 Registrant Jennifer Tippie 600 Central Ave, Apt #30 600 Central Ave, Apt #30 Riverside, CA 92507 UNITED STATES Email: [email protected] Goods/Services Subject to Cancellation Class 029. First Use: 2016/05/01 First Use In Commerce: 2016/05/01 All goods and services in the class are subject to cancellation, namely: Nut butters; Nut butters, namely, pistachio; Nut butters, namely, cashew; Nut butters, namely, macadamia nut; Nut butters, namely, almond; Nut butters, namely,pecan; Nut butters, namely, hazelnut; Nut butters, namely, seeds; Nut butters, namely, walnut; Nut-based spread also containing chocolate Grounds for Cancellation Priority and likelihood of confusion Trademark Act Sections 14(1) and 2(d) Mark Cited by Petitioner as Basis for Cancellation U.S. Application 88595877 Application Date 08/28/2019 No. Registration Date NONE Foreign Priority NONE Date Word Mark NAKEE BUTTER Design Mark Description of NONE Mark Goods/Services Class 029. First use: First Use: 2013/07/25 First Use In Commerce: 2013/07/25 legume-based spreads; nut-based spreads; seed butters; nut butters, namely, peanut butter, cashew butter, almond butter, hazelnut butter, pistachio butter, Brazil nut butter, walnut butter, pecan butter, macadamia nut butter; sunflower butter Attachments 88595877#TMSN.png( bytes ) Petition for Cancellation.pdf(201631 bytes ) Signature /s/ David S McDaniel Name David S. McDaniel Date 03/05/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Registration No. 5,560,540 __________________________________________ WEBER NUTRITION, LLC, ) ) Petitioner, ) ) v. ) Cancellation No.: ) JENNIFER TIPPIE, D/B/A, ) NAKIE FOODS, ) ) Registrant. ) __________________________________________) PETITION FOR CANCELLATION Weber Nutrition, LLC states the following for its Petition for Cancellation of U.S. Trademark Registration No. 5,560,540: PARTIES 1. Petitioner Weber Nutrition, LLC (“Petitioner”) is a Michigan limited liability company that maintains its place of business in Chesterfield, MI. 2. Registrant Jennifer Tippie, d/b/a Nakie Foods (“Registrant”), is an individual who resides in Riverside, California. BACKGROUND 3. Registrant is the owner of U.S. Trademark Registration No. 5,560,540 (the “‘540 Registration”) for the standard character mark NAKIE, in International Class 029, in association with: Nut butters; Nut butters, namely, pistachio; Nut butters, namely, cashew; Nut butters, namely, macadamia nut; Nut butters, namely, almond; Nut butters, namely, pecan; Nut butters, namely, hazelnut; Nut butters, namely, seeds; Nut butters, namely, walnut; Nut-based spread also containing chocolate. 4. The registration certificate for the NAKIE mark identifies May 1, 2016 as the alleged date of first use in commerce of the mark. 5. On August 28, 2019, Petitioner filed an application (the “Application”) for registration of the standard character mark NAKEE BUTTER, in International Class 029, in association with: legume-based spreads; nut-based spreads; seed butters; nut butters, namely, peanut butter, cashew butter, almond butter, hazelnut butter, pistachio butter, Brazil nut butter, walnut butter, pecan butter, macadamia nut butter; sunflower butter 6. Petitioner’s Application was assigned Serial No. 88/595,877. 7. As shown in Petitioner’s Application, as amended, Petitioner first used its NAKEE BUTTER mark in commerce in connection with the goods identified in the Application at least as early as July 25, 2013. 8. On December 6, 2019, the United States Patent and Trademark Office (“USPTO), issued a Nonfinal Office Action on Petitioner’s Application, refusing registration of Petitioner’s NAKEE BUTTER mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds of likelihood of confusion with Registrant’s NAKIE mark. GROUNDS FOR CANCELLATION 9. Petitioner seeks cancellation of Registrant’s NAKIE mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds of priority and likelihood of confusion. 10. Petitioner is the prior user for purposes of Section 2(d), having first used its NAKEE BUTTER mark in commerce at least as early as July 25, 2013, whereas Registrant asserts a date of first use of its NAKIE mark of May 1, 2016. 2 11. Petitioner’s mark is inherently distinctive or it acquired distinctiveness through secondary meaning prior to Registrant’s date of first use of the NAKIE mark. 12. Registrant’s registration and use of its NAKIE mark is likely to result in consumer confusion, to the detriment of Petitioner and its rights in its NAKEE BUTTER mark, because, among other things, the marks are highly similar in appearance, sound, connotation, and/or commercial impression and the goods with which the parties use their respective marks are identical or highly similar and travel in the same channels of trade. 13. Because Petitioner has priority and Registrant’s mark is confusingly similar, cancellation of Registrant’s mark under Section 2(d) is warranted. Accordingly, for the reasons stated above, Petitioner respectfully requests that the USPTO (a) cancel U.S. Trademark Registration No. 5,560,540, and (b) grant such other relief as the USPTO deems necessary or appropriate. Respectfully submitted, JAFFE, RAITT, HEUER & WEISS, P.C. /s/ David S. McDaniel David S. McDaniel (MI Bar No. P56994) Counsel for Petitioner 27777 Franklin Road, Ste. 2500 Southfield, MI 48034 (248) 351-3000 Dated: March 5, 2020 [email protected] 3 .