Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA406426
`ESTTA Tracking number:
`04/29/2011
`
`Filing date:
`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
`
`Kinesys Pharmaceutical, Inc.
`Corporation
`415-3771 Jacombs Road
`Richmond, BC V6V 2L9
`CANADA
`
`Citizenship
`
`Canada
`
`Attorney
`information
`
`J. Scott Gerien
`Dickenson, Peatman & Fogarty
`809 Coombs Street
`Napa, CA 94559
`UNITED STATES
`tmdept@dpf-law.com Phone:707-252-7122
`Registration Subject to Cancellation
`
`Registration No
`International
`Registration No.
`Registrant
`
`3671954
`NONE
`
`Registration date
`International
`Registration Date
`
`08/25/2009
`NONE
`
`Chapman, Sarah
`No. 2 Queensmill Road
`Fulham, London, SW66JS
`UNITED KINGDOM
`Goods/Services Subject to Cancellation
`
`Class 003.
`All goods and services in the class are cancelled, namely: Perfumes; soaps; cosmetics; non-
`medicated toilet preparations, namely, hand creams, body gels, body washes, shower gels, body
`exfoliants; body lotions; sun-tanning preparations; sunscreens; non-medicated massage
`preparations, namely, massage oils, massage lotions, massage creams; bath additives, namely,
`bubble bath, bath oils, and bath salts, not for medicated purposes; beauty masks; facial packs,
`namely, skin cleansing lotions, skin cleansing gels, toning preparations; skincare products, namely,
`skin exfoliants, moisturizers, oils, line plumper serums, eye-serums, creams, day creams, day creams
`with SPF, night creams, eye-creams, neck creams, lotions, cleansers, milks, balms, make-up
`removers, and anti-aging beauty treatments, namely, anti-aging serums; anti-aging cream, anti-aging
`lotion, anti-aging gel, anti-aging oils, anti-aging facial masks
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`Other
`
`Trademark Act section 2(d)
`Lack of bona fide intent to use the mark at time
`of filing; Trademark Act section 44(e).
`
`

`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`2008906
`
`10/15/1996
`
`KINESYS
`
`NONE
`
`Application Date
`
`06/28/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Class 003. First use: First Use: 1994/07/01 First Use In Commerce: 1996/02/21
`skin and body care products, namely sunscreens, [ after sun sprays ],
`moisturizers, [ hair shampoos, and body washes ]
`Class 005. First use: First Use: 1994/07/01 First Use In Commerce: 1996/02/21
`anti-fungal foot sprays, analgesic sticks, [ and pharmaceuticals, ointments,
`liniments, soaps, disinfectants anesthetics, antibiotics, and nonsteroidal anti-
`inflammatories for sports medical applications ]
`
`Attachments
`
`Petition for Cancellation - SKINESIS.pdf ( 4 pages )(255699 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
`
`/J. Scott Gerien/
`J. Scott Gerien
`04/29/2011
`
`

`
`Certificate of Electronic Filing
`I hereby cei1ify that this correspondence is being electronically fied with the Trademark Trial and Appeal Board through
`the ESTTA system located at ~http://estta.uspto.gov/. I ~ I. /)
`
`Dated: f¡1i By ~L.7-=
`
`Jay e Kil ore
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Kinesys Pharmaceutical, Inc.,
`
`CANCELLA nON NO.
`
`Petitioner,
`
`vs.
`
`Sarah Chapman,
`
`Registrant.
`
`PETITION FOR CANCELLA nON
`
`TO THE COMMISSIONER OF TRADEMARKS:
`
`Kinesys Pharmaceutical, Inc., a corporation organized under the laws of Canada and
`
`located at 415-3771 Jacombs Road, Richmond, British Columbia V6v 2L9, Canada
`
`("Petitioner"), believes it is being damaged by registration of the mark SKINESIS for "perfumes;
`
`soaps; cosmetics; non-medicated toilet preparations, namely, hand creams, body gels, body
`
`washes, shower gels, body exfo1iants; body lotions; sun-tanning preparations; sunscreens; non-
`
`medicated massage preparations, namely, massage oils, massage lotions, massage creams; bath
`
`additives, namely, bubble bath, bath oils, and bath salts, not for medicated purposes; beauty
`
`masks; facial packs, namely, skin cleansing lotions, skin cleansing gels, toning preparations;
`
`skincare products, namely, skin exfoliants, moisturizers, oils, line plumper serums, eye-serums,
`
`creams, day creams, day creams with spf, night creams, eye-creams, neck creams, lotions,
`
`cleansers, milks, balms, make-up removers, and anti-aging beauty treatments, namely, anti-aging
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`serums; anti-aging cream, anti-aging lotion, anti-aging gel, anti-aging oils, anti-aging facial
`
`masks," shown in Registration No. 3,671,954, registered on August 25,2009, by Sarah Chapman,
`
`a United Kingdom citizen ("Registrant"), and hereby petitions to cancel such registration.
`
`Solely for the purpose of this proceeding, Petitioner alleges the following as grounds for
`
`cancellation:
`
`1. Petitioner is the owner of incontestable U.S. Trademark Registration No. 2,008,906
`
`for KINESYS in International Class 3 for "skin and body care products, namely
`
`sunscreens, moisturizers," issued October 15, 1996 and based on use in commerce as
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`early as July 1994.
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`2. Registrant's trademark SKINESIS (Registration No. 3,671,954), also for skin and
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`body care products in Class 3, was registered on August 25, 2009. Registrant's U.S.
`
`application for SKINESIS was fied on September 4,2008 based on Registrant's bona
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`fide intention to use the mark in commerce and foreign registration pursuant to
`
`Section 44( e).
`
`3. Petitioner's first use of the KINESYS mark on skin and body care products in U.S.
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`commerce precedes any known date of first use or constructive fiing date for
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`Registrant's SKINESIS mark for skin and body care products.
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`4. Petitioner alleges that Registrant's mark is likely to cause confusion, mistake or to
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`deceive the public. Petitioner's KINESYS mark for skin and body care products is
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`virtually identical to Registrant's SKINESIS mark for skin and body care products
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`and the respective goods on which the marks are used are identical, substantially
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`similar or related and said products are purchased by the same group of consumers.
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`Accordingly, Registrant's mark is confusingly similar to Petitioner's mark such that
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`Registrant is not entitled to the continued registration of its mark and Registrant's
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`mark should therefore be cancelled in accordance with Section 2( d) of the Trademark
`
`Act of 1946, 15 U.S.C.A § 1 052( d).
`
`5. Upon information and belief, Petitioner avers that Registrant lacked a bona fide intent
`
`to use the SKINESIS mark in U.S. commerce for all the specified goods in U.S.
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`

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`Registration No. 3,671,954 when the application for such mark was filed.
`
`Specifically, upon information and belief, the SKINESIS mark is not being used in
`
`U.S. commerce on or in connection with perfumes, soaps, shower gels, sun-tanning
`
`preparations, non-medicated massage preparations, namely, massage oils, massage
`
`lotions, massage creams, bath additives, namely, bubble bath, bath oils, and bath
`
`salts, not for medicated purposes, oils, milks, and balms. Accordingly, Registrant's
`
`mark should be cancelled in accordance with Section 44( e) of the Trademark Act of
`
`1946,15 U.S.C.A §1126(e).
`
`6. Petitioner avers that if Registrant's registration is maintained, it will interfere with
`
`Petitioner's exclusive right to use its KINESYS mark herein relied upon, all to the
`
`detriment and damage of Petitioner. Therefore, Petitioner avers for the reasons
`
`aforesaid that it wil be damaged by the continued registration of Registrant's mark
`
`that is the subject of
`
`Registration No. 3,671,954.
`
`WHEREFORE, Petitioner prays as follows:
`
`1. That this petition be sustained; and
`
`2. That registration of
`
`the trademark SKINESIS shown and specified in Registration
`
`No. 3,671,954 be cancelled.
`
`Dated LII~"t' 1\
`
`809 Coombs Street
`Napa, California 94559
`Telephone: (707) 252-7122
`Facsimile: (707) 255-6876
`
`Attorneys for Petitioner
`Kinesys Pharmaceutical, Inc.
`
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`PROOF OF SERVICE
`
`I declare that I am over the age of 18 years, employed in the County of Napa, and not a
`
`party to the within action; my business address is 809 Coombs Street, Napa, California 94559.
`
`On April
`
`29, 2011, I served the attached PETITION FOR CANCELLATION on the person(s)
`
`listed below:
`
`Robert W. Hoke
`Nyemaster Goode
`P.O. Box 8870
`Cedar Rapids, IA 52408-8870
`
`Sarah Chapman
`NO.2 Queensmil Road
`Fullham, London SW66JS
`United Kingdom
`
`by enclosing a true copy in a sealed envelope addressed as shown below and placing the envelope
`
`for collection and mailing following our ordinary business practices. I am readily familiar with
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`this business' practice for collecting and processing correspondence for mailing. On the same
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`day that correspondence is placed for collection and mailing, it is deposited in the ordinary course
`
`of business with the United States Postal Service in a sealed envelope with postage fully prepaid.
`
`I declare under penalty of perjury under the laws of the State of California that the
`
`foregoing is true and correct.
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`Executed April 29, 2011, at Napa, California.(~ ~'-- -?=
`Ja~Legal Secretary
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