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ESTTA Tracking number:
`
`Filing date:
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA212509
`05/20/2008
`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
`Entity
`Address
`
`Sell4Free Real Estate Systems, Inc.
`Corporation
`Citizenship
`10412 Allisonville Road
`Fishers, IN 46038
`UNITED STATES
`
`Indiana
`
`Attorney
`information
`
`Bradley M. Stohry
`Ice Miller LLP
`One American Square Suite 3100
`Indianapolis, IN 46282-0200
`UNITED STATES
`ipdocket@icemiller.com, stohry@icemiller.com Phone:317-236-2100
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3358220
`SELL OR FREE, INC.
`23 ORINDA WAY
`ORINDA, CA 94563
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`12/18/2007
`
`Class 035. First Use: 2007/06/06 First Use In Commerce: 2007/09/01
`All goods and services in the class are cancelled, namely: Franchising, namely, offering technical
`assistance in the establishment and/or operation of a real estate brokerage business
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`Registration Date
`
`2440562
`
`04/03/2001
`
`Application Date
`
`12/16/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SELL4FREE
`
`NONE
`
`Class 036. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`
`

`
`Real Estate Brokerage Services
`
`U.S. Registration
`No.
`Registration Date
`
`2398090
`
`10/24/2000
`
`Application Date
`
`12/16/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`SELL4FREE
`
`NONE
`
`Class 036. First use: First Use: 1998/01/00 First Use In Commerce: 1998/01/00
`Computer services, namely providing on-line information in the field of real
`estate
`
`Attachments
`
`75872048#TMSN.gif ( 1 page )( bytes )
`SELLORFREE - Petition to Cancel.pdf ( 5 pages )(17996 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/bms/
`Bradley M. Stohry
`05/20/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.:______________
`
`In the Matter of Trademark Registration No. 3,358,220
`For the Mark SELLORFREE (and Design)
`Registered on December 18, 2007
`
`))
`
`))
`
`)
`)
`
`))
`
`)
`
`Sell4Free Real Estate Systems, Inc.,
`
`Petitioner
`
`v.
`
`Sell Or Free, Inc.,
`
`Registrant
`
`PETITION TO CANCEL
`
`Sell4Free Real Estate Systems, Inc., an Indiana corporation, having a place of business at
`
`10412 Allisonville Road, Fishers, Indiana 46038 ("Petitioner"), believes that it will be damaged
`
`by the above-identified registration for
`
`the mark SELLORFREE (and Design)
`
`(the
`
`"SELLORFREE Mark"), and hereby petitions to cancel the same. To the best of Petitioner's
`
`knowledge, the registration for the SELLORFREE Mark (the "SELLORFREE Registration") is
`
`owned by Sell Or Free, Inc., which is a California corporation, having a place of business at 23
`
`Orinda Way, Orinda, California 94563 ("Registrant"). The grounds for cancellation are as
`
`follows:
`
`1.
`
`Petitioner is a franchisor in the real estate field. Petitioner's franchisees provide real
`
`estate brokerage services through offices in at least 14 states across the United States.
`
`2.
`
`Petitioner is the owner of Federal Trademark Registration No. 2,398,090, issued by
`
`the United States Patent and Trademark Office on October 24, 2000, for the trademark
`
`SELL4FREE in Class 36 for "computer services, namely providing on-line information in the
`
`field of real estate." This registration is incontestible within the meaning of 15 U.S.C. § 1065.
`
`

`
`3.
`
`Petitioner is the owner of Federal Trademark Registration No. 2,440,562, issued by
`
`the United States Patent and Trademark Office on April 3, 2001, for the trademark SELL4FREE
`
`in Class 36 for "real estate brokerage services." This registration is incontestible within the
`
`meaning of 15 U.S.C. § 1065.
`
`4.
`
`The SELL4FREE trademark is in use, is valid, and is in full force and effect. True
`
`and accurate copies of Petitioner's registration certificates for Federal Trademark Registration
`
`Nos. 2,398,090 and 2,440,562 (collectively, "SELL4FREE Registrations") are attached hereto as
`
`collective Exhibit A.
`
`5.
`
`The SELL4FREE Registrations were originally registered in the name of Gary
`
`Bieberich, Inc. However, effective as of November 9, 2005, Gary Bieberich, Inc. assigned all
`
`right, title and interest in and to the SELL4FREE mark to Petitioner, together with the goodwill
`
`of the business associated with or symbolized by the SELL4FREE mark, including the right to
`
`sue and collect for any past or future infringements of the SELL4FREE mark.
`
`6.
`
`This assignment was recorded with the United States Patent and Trademark Office
`
`("USPTO") on November 16, 2005. Copies of the USPTO's online Trademark Assignment
`
`Abstract of Title for the SELL4FREE Registrations are attached hereto as collective Exhibit B.
`
`7.
`
`Petitioner licenses the SELL4FREE mark to its franchisees for their use in connection
`
`with their offer and provision of real estate brokerage services within their respective franchised
`
`areas.
`
`8.
`
`Petitioner originally adopted the SELL4FREE mark in January, 1998. Since that
`
`time, Petitioner has established substantial goodwill in the SELL4FREE mark.
`
`9.
`
`The SELL4FREE mark has come to indicate and stand for the high quality services
`
`offered by Petitioner and its franchisees.
`
`

`
`10.
`
`As a result of the extensive use of the SELL4FREE mark by Petitioner and its
`
`franchisees, the SELL4FREE mark has become, and continues to be, a valuable property right of
`
`Petitioner.
`
`11.
`
`Similar to Petitioner, Registrant
`
`is a franchisor in the real estate field. More
`
`specifically,
`
`the description of services for the SELLORFREE Registration indicates that
`
`Registrant provides "franchising, namely, offering technical assistance in the establishment
`
`and/or operation of a real estate brokerage business."
`
`12.
`
`Registrant claims that June 6, 2007 is the date that it first used the SELLORFREE
`
`Mark in connection with its services anywhere. Similarly, Registrant claims that September 1,
`
`2007 is the date that it first used the SELLORFREE Mark in commerce.
`
`13.
`
`Upon information and belief, Petitioner's actual, continuous, and continuing use of
`
`the SELL4FREE mark began long prior to any use by Registrant of its SELLORFREE Mark.
`
`14.
`
`The use and registration of the SELLORFREE Mark is likely to cause confusion,
`
`mistake, and/or lead to deception as to the origin of Applicant's goods and/or services. The
`
`likelihood of confusion is especially apparent in this instance because the SELLORFREE Mark
`
`is nearly identical to the SELL4FREE Mark, the services sold by Registrant are nearly identical
`
`to those that are sold by Petitioner, Registrant's business model is nearly identical to Petitioner's
`
`business model, and Registrant targets the exact same market that is targeted by Petitioner.
`
`15.
`
`The SELLORFREE Registration is likely to result in confusion and substantial
`
`damage and injury to Petitioner. Persons familiar with Petitioner's SELL4FREE mark are likely
`
`to buy Registrant's services under the mistaken belief that they originate with, or are licensed,
`
`sponsored or approved by Petitioner. Any such confusion would inevitably result in loss of sales
`
`

`
`to Petitioner, and tarnish Petitioner's goodwill and reputation established in the SELL4FREE
`
`mark.
`
`WHEREFORE, Petitioner prays that Trademark Registration No. 3,358,220 be cancelled.
`
`Dated this 20th day of May, 2008.
`
`Respectfully submitted,
`
`By: s/Bradley M. Stohry
`Attorney for Petitioner
`Bradley M. Stohry
`ICE MILLER LLP
`One American Square
`Suite 3100
`Indianapolis, Indiana 46282-0200
`(317) 236-2100
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing was served upon the following by
`first-class United States mail, postage prepaid, on May 20, 2008:
`
`Reza Nazemi
`1640 Springbrook Road
`Lafayette, CA 94549-6265
`
`Charles L. Thoeming
`Bielen, Lampe & Thoeming, P.A.
`Two Corporate Centre
`1390 Willow Pass Road
`Suite 1020
`Concord, CA 94520
`
`By: s/Bradley M. Stohry
`Attorney for Petitioner

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