IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`T. Tucker, Inc.,
`
`TTAB
`
`Petitioner
`
`v.
`
`Registrant
`
`Cancellation No.
`
`Gelato Massimo Inc.,
`
`PETITION FOR CANCELLATION
`
`T. Tucker, Inc., a California corporation, having a principal place of business at
`
`13222 West Washington BlVd., by and through its undersigned attorneys believes it will
`
`be damaged by U.S. Reg. N0. 2,868,917 and hereby petitions for cancellation of such
`
`registration under 37 C.F.R. Section 2.111(b).
`
`As grounds therefor, it is alleged that:
`
`1.
`
`The Registrant has obtained U.S. Trademark Registration No. 2,868,917 on
`
`August 3, 2004, for the mark GELATO MASSIMO INC. for use with ”frozen
`
`confections, Italian ice cream, ice cream, and sorbet.” The first use of the mark
`
`anywhere by Registrant was January 29, 2003; the first use of the mark in commerce
`
`by the Registrant was April 11, 2003.
`
`2.
`
`Petitioner has adopted and continuously used the trademark MASSIMO’S
`
`DELECTABLES in commerce since at least as early as February, 2000, to the present
`
`time in connection with a wide variety of food products in International Class 30, and
`
`retail bakery services in International Class 35.
`00/23/2004 TSHITH
`00000114 2068917
`
`01 FC:6401
`
`3oo.oo on
`
`l|||||||||||||||l|||||||l|||||||||||||||||||||||||
`
`08-19-2004
`US. Patent & TMOfcITM Mail Rep! Dt. #22
`
`006954.GO02
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`T. Tucker, Inc.,
`
`TTAB
`
`Petitioner
`
`v.
`
`Registrant
`
`Cancellation No.
`
`Gelato Massimo Inc.,
`
`PETITION FOR CANCELLATION
`
`T. Tucker, Inc., a California corporation, having a principal place of business at
`
`13222 West Washington BlVd., by and through its undersigned attorneys believes it will
`
`be damaged by U.S. Reg. N0. 2,868,917 and hereby petitions for cancellation of such
`
`registration under 37 C.F.R. Section 2.111(b).
`
`As grounds therefor, it is alleged that:
`
`1.
`
`The Registrant has obtained U.S. Trademark Registration No. 2,868,917 on
`
`August 3, 2004, for the mark GELATO MASSIMO INC. for use with ”frozen
`
`confections, Italian ice cream, ice cream, and sorbet.” The first use of the mark
`
`anywhere by Registrant was January 29, 2003; the first use of the mark in commerce
`
`by the Registrant was April 11, 2003.
`
`2.
`
`Petitioner has adopted and continuously used the trademark MASSIMO’S
`
`DELECTABLES in commerce since at least as early as February, 2000, to the present
`
`time in connection with a wide variety of food products in International Class 30, and
`
`retail bakery services in International Class 35.
`00/23/2004 TSHITH
`00000114 2068917
`
`01 FC:6401
`
`3oo.oo on
`
`l|||||||||||||||l|||||||l|||||||||||||||||||||||||
`
`08-19-2004
`US. Patent & TMOfcITM Mail Rep! Dt. #22
`
`006954.GO02
`
`
`
`3.
`
`Petitioner has adopted and continuously used the trademark MASSIMO’S
`
`GELATO in commerce since at least as early as July, 2002, to the present time in
`
`connection with a wide variety of food products, including gelato, in International
`
`Class 30, and restaurant services including ice cream parlor services in International
`
`Class 43.
`
`4.
`
`Petitioner has applied to register its trademark and service mark
`
`MASSIMO’S GELATO in the United States Patent and Trademark Office, said
`
`applications bearing Ser. Nos. 78/ 468,301 and 78/468,300.
`
`5.
`
`Petitioner has developed extensive goodwill with respect to its
`
`trademarks MASSIMO’S DELECTABLES and MASSIMO’S GELATO.
`
`6.
`
`Petitioner has spent substantial sums in advertising and promotion of the
`
`goods and services, which bear the marks MASSIMO’S DELECTABLES and
`
`MASSIMO’S GELATO.
`
`7.
`
`By virtue of the excellent quality of its goods and services, and
`
`expenditures of considerable sums in promoting such goods and services by
`
`advertising, Petitioner has garnered a most valuable reputation for its marks
`
`MASSIMO’S DELECTABLES and MASSIMO’S GELATO.
`
`8.
`
`The goods on which the Petitioner uses the marks MASSIMO’S
`
`DELECTABLES and MASSIMO’S GELATO , namely, a wide variety of food products, in
`
`some instances are identical to the goods of the Registrant with respect to its use of
`
`GELATO MASSIMO INC. The services with which the Petitioner uses the marks
`
`MASSIMO’S DELECTABLES and MASSIMO’S GELATO , namely restaurant and ice
`
`cream parlor services, in some instances are identical, and in others highly related to
`
`the services of the Registrant with respect to its use of GELATO MASSIMO INC. While
`
`Petitioner is aware the Registrant’ s registration does not identify services, Petitioner
`
`contends such services are wholly tied to the offering of the food products, including
`
`gelato, that it is worthwhile to provide the Registrant with this information.
`
`2
`
`006954.G002
`
`
`
`9.
`
`Purchasers are likely to consider the goods of the Registrant bearing the
`
`mark GELATO MASSIMO INC. as emanating from Petitioner and will believe such
`
`goods to be those of Petitioner.
`
`10.
`
`If the Registrant is permitted to retain the registration sought to be
`
`cancelled, a cloud will be placed on Petitioner's title in and to its trademark and service
`
`marks MASSIMO’S DELECTABLES and MASSIMO’S GELATO and on its right to enjoy
`
`the free and exclusive use thereof in connection with the sale of its goods and services,
`
`all to the great injury of Petitioner. Persons familiar with Petitioner's marks would be
`
`likely to buy Registrant’ s goods as and for a good rendered, sold by, or associated
`
`with the Petitioner. Any such confusion in trade might result in a loss of sales to the
`
`Petitioner.
`
`11.
`
`Furthermore, any defect, objection, or fault found with Registrant’s goods
`
`marketed under its mark would necessarily reflect upon and seriously injure the
`
`reputation that the Petitioner has established for its goods and services merchandised
`
`under its MASSIMO’S DELECTABLES and MASSIMO’S GELATO marks.
`
`12.
`
`If the Registrant is permitted to maintain its registration, the same may be
`
`deemed incontestable after five (5) years from the date of the registration, and
`
`Registrant would thereby obtain an incontestable right to use of its mark in commerce.
`
`The continued existence of such registration casts a cloud upon Petitioner's right to
`
`continue to use, register, and expand the use of the marks MASSIMO’S DELECTABLES
`
`and MASSIMO’S GELATO . Such registration would thus be a source of damage and
`
`injury to the Petitioner.
`
`13.
`
`Registrant obtained U.S. Registration No. 2,868,917 fraudulently in that
`
`Registrant has not used the mark GELATO MASSIMO INC. with the goods identified
`
`in the subject registration in interstate commerce.
`
`3
`
`006954.G002
`
`
`
`14.
`
`A duplicate copy of this Petition and the fee required in Section 2.6(1) are
`
`enclosed herewith. Wherefore, the Petitioner prays that Registration No. 2,868,917
`
`issued on August 3, 2004 be cancelled.
`
`Please charge any fees, or credit any overpayment to our Deposit Account No.
`
`02-2666.
`
`T. TUCKER, INC.
`
` Dated: August 17, 2004
`
`By:
`
` BLAKEL , S OFF, TAYLOR 8: ZAFMAN
`
`
`Dax Alvarez
`Counsel for Petitioner
`
`I hereb
`States ost
`STOP: TT
`Arlingto
`
`-.
`
`CERTIFICATE OF MAILING:
`'
`orrespondence is being deposited with the United
`s fir t‘c1ass mail in an envelo e addressed to: MAIL
`e, mrnissioner for Trademagks, 2900 Crystal Drive,
`02-3513 on August 17, 2004.
`
`
`
`Erika Brenner
`
`August 17, 2004
`
`
`
`12400 Wjlshjre Boulevard
`Seventh Floor
`-
`-
`Los Angeles’ Cahforma 90025
`(310) 207-3800
`
`
`
`4
`
`006954.G002
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing document entitled:
`
`PETITION FOR CANCELLATION
`
`was served on counsel for Registrant by first class mail, postage prepaid, in a sealed
`
`enveloped addressed as follows:
`
`Warren S. Heit, Esq.
`WI-HTE & CASE LLP
`3000 El Camino Real
`
`5 Palo Alto SQ, 10th Floor
`Palo Alto, California 94306
`
`Executed on August 17, 2004, at
`
`
`
`Erika Brennner
`
`5
`
`006954.G002
`
`
`
`
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`Serial/Reg No.2 _
`Client:
`
`
`"'
`
`Title:
`
`BSTZ File No.:
`_
`Atty/Secty Initials:
`Date Mailed:
`.
`'
`Docket Due Date:
`
`The Following has been received in the U.S. Patent &Trademark Office on the date stamped hereon:
`U Amendment/Response (# ofpages:_____ )
`D Notice ofOpposition (Original & Copy) 4? Check No.
`D Answer to Cancellation (# ofpages: _____ )
`.
`(# ofpages:__ )
`Amt: n
`El Answer to Opposition (# ofpages: _j)
`U
`# ofTM/SM Specimens
`U Check No.
`Cl Appointment ofDomestic Representation
`K Postcard
`Amt:
`U Assignment (# ofpages:
`)
`D. Power ofAttorney
`XCancellation Petition (Orig & Copy) (# ofpgs: _S__) U ProofofService
`K Certification ofMailing
`CI Section 8 & 15 Affidavits (# ofpages:
`
`U Certjlixpress Mail #
`D Statement ofUse (# ofpages: ___)
`CI Declaration (# ofpages: __j)
`D Trademark/Service Mark Application (# ofpages: __ )
`Cl Drawings page
`D Trademark/Service Mark Intent to UseApplication (# ofpages:___ )
`El Extension ofTime (Request #___) ‘attach request’ U Trademark/Service Mark Renewal Application (# ofpages:____)
`U Notice ofAppeal
`E] Transmittal Letter (original & copy)
`C] Other
`
`' 00
`
`Filing/Reg. Date:
`
`-
`
`)
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