Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA545713
`ESTTA Tracking number:
`06/28/2013
`
`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
`
`The Coca-Cola Corporation
`Corporation
`One Coca-Cola Plaza, NW
`Atlanta, GA 30313
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Correspondence
`information
`
`Cynthia Parks
`Parks IP Law LLC
`730 Peachtree St NE Suite 600
`Atlanta, GA 30331
`UNITED STATES
`tmdocketing@parksiplaw.com,cparks@parksiplaw.com,vkeenan@coca-cola.co
`m
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`4259407
`Juan Rodriguez
`12000 NW 15TH CT
`Pembroke Pines, FL 330262598
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`12/11/2012
`
`Class 032. First Use: 2012/02/14 First Use In Commerce: 2012/02/14
`All goods and services in the class are cancelled, namely: Beverages containing coca extracts in
`whole or in part, namely, Aerated fruit juices; Aerated mineral waters; Aerated water; Aerated water;
`Aloe vera drinks; Aromatized beverages based on fruit, protein, cordial, sugar and other fluid
`nutrients, namely, carbohydrates drinks for use as a food fillers; Aromatized beverages based on
`fruit, protein, cordial, sugar and other fluid nutrients, namely, protein drinks for use as a food fillers
`and not for use as a meal replacement; Beauty beverages, namely, fruit juices and energy drinks
`containing nutritional supplements; Bottled artesian water; Bottled drinking water; Bottled water;
`Carbonated waters; Coffee-flavored soft drink; Cola; Colas; Concentrated fruit juice; Concentrates
`and powders used in the preparation of energy drinks and fruit-flavored beverages; Concentrates for
`making fruit drinks; Concentrates for making fruit juices; Concentrates, syrups or powders for making
`soft drinks or tea-flavored beverages; Concentrates, syrups or powders used in the preparation of
`soft drinks; Concentrates, syrups or powders used in the preparation of sports and energy drinks;
`Distilled drinking water; Drinking water; Drinking water with vitamins; Drinking waters; Energy drinks;
`Energy drinks enhanced with vitamins; Essences for making flavoured mineral water; Essences for
`the preparation of mineral waters; Essences for use in making soft drinks; Flavored bottled water;
`Flavored enhanced water; Flavored waters; Flavoured mineral water; Flavoured waters; Frozen fruit
`beverages; Frozen fruit drinks; Frozen fruit-based beverages; Fruit beverages; Fruit concentrates and
`purees used as ingredients of beverages; Fruit drinks; Fruit drinks and fruit juices; Fruit drinks and
`juices; Fruit flavored drinks; Fruit flavored soft drinks; Fruit flavoured carbonated drinks; Fruit
`flavoured drinks; Fruit juice; Fruit juice bases; Fruit juice concentrates; Fruit juices; Fruit juices and
`fruit drinks; Fruit nectars; Fruit punch; Fruit-based beverages; Fruit-based soft drinks flavored with
`
`

`

`tea; Fruit-flavored beverages; Fruit-flavoured beverages; Glacial water; Guarana drinks; Ice cream
`soda; Iced fruit beverages; Isotonic drinks; Isotonic non-alcoholic drinks; Italian soda; Lithia water;
`Magnetically treated water for human consumption and not for medical purposes; Mineral and
`aerated water; Mineral and aerated waters; Mineral and carbonated waters; Mineral water; Mineral
`waters; Mixed fruit juice; Non-alcoholic beverages containing fruit juices; Non-alcoholic beverages
`with tea flavor; Non-alcoholic drinks, namely, energy shots; Non-alcoholic fruit extracts used in the
`preparation of beverages; Non-alcoholic fruit juice beverages; Oat-based beverages with fruit juice
`not for food purposes; Pop; Powders used in the preparation of fruit-based beverages; Powders used
`in the preparation of isotonic sports drinks and sports beverages; Prepared entrees consisting of fruit
`drinks and fruit juices, fruit-based beverages, non-alcoholic beverages containing fruit juices, non-
`alcoholic fruit extracts used in the preparation of beverages, non-alcoholic fruit juice beverages,
`vegetable juices, vegetable-fruit juices and smoothies; Purified bottled drinking water; Quinine water;
`Ramune (Japanese soda pops); Scented water for making beverages; Seltzer water; Smoothies;
`Soda pops; Soda water; Soft drinks; Soft drinks flavored with tea; Soft drinks, namely, sodas;
`Sparkling water; Sports drinks; Sports drinks containing electrolytes; Sports drinks enhanced with
`vitamins; Sports drinks, namely, energy drinks; Sports drinks, namely, performance drinks; Sports
`drinks, namely, recovery drinks; Spring water; Still water; Still waters; Syrups for making flavoured
`mineral waters; Syrups for making fruit-flavored drinks; Syrups for making soft drinks; Table water;
`Table waters; Vegetable drinks; Vegetable-fruit juices; Water beverages
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Dilution
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`1260160
`
`12/06/1983
`
`DIET COKE
`
`NONE
`
`Application Date
`
`09/23/1982
`
`Foreign Priority
`Date
`
`NONE
`
`Class 032. First use: First Use: 1982/07/00 First Use In Commerce: 1982/08/09
`Soft Drinks ( AND SYRUPS AND CONCENTRATES FOR MAKING THE SAME
`)
`
`U.S. Registration
`No.
`Registration Date
`
`1432152
`
`03/10/1987
`
`Application Date
`
`05/27/1986
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COCA-COLA
`
`NONE
`
`Class 032. First use: First Use: 1986/01/14 First Use In Commerce: 1986/01/14
`SOFT DRINKS [ AND SYRUPS AND CONCENTRATES FOR MAKING THE
`SAME ]
`
`U.S. Registration
`
`1824556
`
`Application Date
`
`06/08/1993
`
`

`

`No.
`Registration Date
`
`03/01/1994
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COKE CLASSIC
`
`NONE
`
`Class 032. First use: First Use: 1985/07/19 First Use In Commerce: 1985/07/19
`soft drinks and syrups and concentrates for making the same
`
`U.S. Registration
`No.
`Registration Date
`
`2757341
`
`08/26/2003
`
`Application Date
`
`05/10/2002
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`VANILLA COKE
`
`NONE
`
`Class 032. First use: First Use: 2002/05/08 First Use In Commerce: 2002/05/08
`[ Beverages, namely, drinking waters, bottled waters, flavored waters, mineral
`and aerated waters; and other] non-alcoholic beverages, namely, soft drinks [,
`energy drinks and sports drinks; fruit drinks and fruit juices; syrups, concentrates
`and powders for making beverages, namely, mineral and aerated waters, soft
`drinks, energy drinks, sports drinks, fruit drinks and fruit juices ]
`
`U.S. Registration
`No.
`Registration Date
`
`3347889
`
`12/04/2007
`
`Application Date
`
`04/11/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COKE
`
`NONE
`
`Class 032. First use: First Use: 1941/12/10 First Use In Commerce: 1941/12/10
`Non-alcoholic beverages, namely, soft drinks; syrups and concentrates for
`making non-alcoholic beverages, namely, soft drinks
`
`U.S. Registration
`No.
`Registration Date
`
`238146
`
`01/31/1928
`
`Application Date
`
`09/13/1927
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COCA-COLA
`
`NONE
`
`Class U045 (International Class 032). First use: First Use: 1886/05/00 First Use
`In Commerce: 1886/05/00
`BEVERAGES AND SYRUPS FOR THE MANUFACTURE OF SUCH
`BEVERAGES
`
`

`

`U.S. Registration
`No.
`Registration Date
`
`238145
`
`01/31/1928
`
`Application Date
`
`09/13/1927
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COCA-COLA
`
`NONE
`
`Class U045 (International Class 032). First use: First Use: 1886/05/00 First Use
`In Commerce: 1886/05/00
`BEVERAGES AND SYRUPS FOR THE MANUFACTURE OF SUCH
`BEVERAGES
`
`U.S. Registration
`No.
`Registration Date
`
`415755
`
`08/14/1945
`
`Application Date
`
`03/27/1944
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COKE
`
`NONE
`
`Class U045 (International Class 032). First use: First Use: 1941/12/10 First Use
`In Commerce: 1941/12/10
`NON-ALCOHOLIC MALTLESS BEVERAGES AND THE SYRUPS FOR
`MAKING SUCH BEVERAGES
`
`U.S. Registration
`No.
`Registration Date
`
`3434466
`
`05/27/2008
`
`Application Date
`
`06/06/2007
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`CHERRY COKE
`
`NONE
`
`Class 032. First use: First Use: 1985/02/19 First Use In Commerce: 1985/02/19
`Non-alcoholic beverages, namely, soft drinks; concentrate for making non-
`alcoholic beverages, namely, soft drinks
`
`U.S. Registration
`No.
`Registration Date
`
`3490468
`
`08/19/2008
`
`Application Date
`
`03/15/2006
`
`Foreign Priority
`Date
`
`02/06/2006
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`DIET COKE PLUS
`
`NONE
`
`Class 032. First use: First Use: 2007/05/01 First Use In Commerce: 2007/05/01
`Non-alcoholic beverages, namely, carbonated soft drinks; syrups and
`concentrates for making beverages, namely, carbonated soft drinks
`
`

`

`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`3820750
`
`07/20/2010
`
`DIET COKE
`
`NONE
`
`Application Date
`
`09/17/2009
`
`Foreign Priority
`Date
`
`NONE
`
`Class 032. First use: First Use: 1982/07/00 First Use In Commerce: 1982/08/09
`Non-alcoholic beverages, namely, soft drinks; and syrups and concentrates for
`making non-alcoholic beverages namely soft drinks
`
`U.S. Registration
`No.
`Registration Date
`
`2607376
`
`08/13/2002
`
`Application Date
`
`08/03/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`Design Mark
`Description of
`Mark
`Goods/Services
`
`COCA-COLA FAN LOT
`
`NONE
`
`Class 032. First use: First Use: 2000/03/01 First Use In Commerce: 2000/03/01
`[ SOFT DRINKS, SYRUPS AND CONCENTRATES FOR USE IN THE
`PREPARATION OF SOFT DRINKS ]
`Class 041. First use: First Use: 2000/03/01 First Use In Commerce: 2000/03/01
`ENTERTAINMENT SERVICES IN THE NATURE OF AN INTERACTIVE AREA
`AT BASEBALL STADIUMS, NAMELY A STRUCTURE COMPOSED OF WOOD
`BEAMS, CLIMBING AREAS AND SLIDES; ENTERTAINMENT IN THE
`NATURE OF A YOUTH BASEBALL THEME PARK FEATURING MINIATURE
`BASEBALL FIELDS ON WHICH CHILDREN CAN HIT, RUN AND CATCH
`BASEBALLS; AND ENTERTAINMENT SERVICES, NAMELY, PROVIDING
`STATIC EXHIBITS OF EMBOSSED SIGNATURES OF FAMOUS BASEBALL
`PLAYERS THAT CAN BE RUBBED TO CREATE AUTOGRAPHS
`
`Attachments
`
`Petition to Cancel COCALEAF Registration.pdf(309901 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
`
`/cynthia r parks/
`Cynthia Parks
`06/28/2013
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
` Registration No. 4,259,407
`In re:
` COCALEAF
`Mark:
`Registered: December 11, 2012
`
`
`THE COCA-COLA COMPANY
`
`Petitioner,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`JUAN RODRIGUEZ
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Registrant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`}
`}
`} Cancellation No.
`}
`}
`}
`}
`}
`}
`}
`}
`}
`
`
`
`
`
`
`
`
`
`
`
`
`PETITION TO CANCEL
`
`
`
`
`
`THE COCA-COLA COMPANY (“TCCC,” or “Petitioner”), a Delaware corporation
`
`having its principal place of business at One Coca-Cola Plaza, Atlanta Georgia 30313,
`
`believes that it is being damaged by registration of the mark COCALEAF (“Registrant’s
`
`Mark”) for:
`
`“Beverages containing coca extracts in whole or in part, namely, Aerated fruit
`juices; Aerated mineral waters; Aerated water; Aerated water; Aloe vera drinks;
`Aromatized beverages based on fruit, protein, cordial, sugar and other fluid
`nutrients, namely, carbohydrates drinks for use as a food fillers; Aromatized
`beverages based on fruit, protein, cordial, sugar and other fluid nutrients, namely,
`protein drinks for use as a food fillers and not for use as a meal replacement;
`Beauty beverages, namely, fruit juices and energy drinks containing nutritional
`supplements; Bottled artesian water; Bottled drinking water; Bottled water;
`Carbonated waters; Coffee-flavored soft drink; Cola; Colas; Concentrated fruit
`juice; Concentrates and powders used in the preparation of energy drinks and
`fruit-flavored beverages; Concentrates for making fruit drinks; Concentrates for
`making fruit juices; Concentrates, syrups or powders for making soft drinks or
`tea-flavored beverages; Concentrates, syrups or powders used in the preparation
`of soft drinks; Concentrates, syrups or powders used in the preparation of sports
`
`81247988
`
`1
`
`

`

`and energy drinks; Distilled drinking water; Drinking water; Drinking water with
`vitamins; Drinking waters; Energy drinks; Energy drinks enhanced with vitamins;
`Essences for making flavoured mineral water; Essences for the preparation of
`mineral waters; Essences for use in making soft drinks; Flavored bottled water;
`Flavored enhanced water; Flavored waters; Flavoured mineral water; Flavoured
`waters; Frozen fruit beverages; Frozen fruit drinks; Frozen fruit-based beverages;
`Fruit beverages; Fruit concentrates and purees used as ingredients of
`beverages; Fruit drinks; Fruit drinks and fruit juices; Fruit drinks and juices; Fruit
`flavored drinks; Fruit flavored soft drinks; Fruit flavoured carbonated drinks; Fruit
`flavoured drinks; Fruit juice; Fruit juice bases; Fruit juice concentrates; Fruit
`juices; Fruit juices and fruit drinks; Fruit nectars; Fruit punch; Fruit-based
`beverages; Fruit-based soft drinks flavored with tea; Fruit-flavored beverages;
`Fruit-flavoured beverages; Glacial water; Guarana drinks; Ice cream soda; Iced
`fruit beverages; Isotonic drinks; Isotonic non-alcoholic drinks; Italian soda; Lithia
`water; Magnetically treated water for human consumption and not for medical
`purposes; Mineral and aerated water; Mineral and aerated waters; Mineral and
`carbonated waters; Mineral water; Mineral waters; Mixed fruit juice; Non-alcoholic
`beverages containing fruit juices; Non-alcoholic beverages with tea flavor; Non-
`alcoholic drinks, namely, energy shots; Non-alcoholic fruit extracts used in the
`preparation of beverages; Non-alcoholic fruit juice beverages; Oat-based
`beverages with fruit juice not for food purposes; Pop; Powders used in the
`preparation of fruit-based beverages; Powders used in the preparation of isotonic
`sports drinks and sports beverages; Prepared entrees consisting of fruit drinks
`and fruit juices, fruit-based beverages, non-alcoholic beverages containing fruit
`juices, non-alcoholic fruit extracts used in the preparation of beverages, non-
`alcoholic fruit juice beverages, vegetable juices, vegetable-fruit juices and
`smoothies; Purified bottled drinking water; Quinine water; Ramune (Japanese
`soda pops); Scented water for making beverages; Seltzer water; Smoothies;
`Soda pops; Soda water; Soft drinks; Soft drinks flavored with tea; Soft drinks,
`namely, sodas; Sparkling water; Sports drinks; Sports drinks containing
`electrolytes; Sports drinks enhanced with vitamins; Sports drinks, namely, energy
`drinks; Sports drinks, namely, performance drinks; Sports drinks, namely,
`recovery drinks; Spring water; Still water; Still waters; Syrups for making
`flavoured mineral waters; Syrups for making fruit-flavored drinks; Syrups for
`making soft drinks; Table water; Table waters; Vegetable drinks; Vegetable-fruit
`juices; Water beverages”
`
`in International Class 32, which mark is the subject of Registration No. 4,259,407 (the
`
`“Registration”), issued on December 11, 2012 to Juan Rodriguez as an individual
`
`(“Registrant”). By and through its undersigned attorney, TCCC hereby petitions to
`
`cancel the Registration. As the Registration issued on the supplemental register,
`
`Petitioner submits that this petition may be filed at any time and is therefore timely,
`
`according to 15 U.S.C. §1092 and §307 of the TTAB Rules of Procedure.
`
`The grounds for this Cancellation are as follows:
`
`81247988
`
`2
`
`

`

`1.
`
`Petitioner is the world’s largest beverage company, serving more than 1.6
`
`billion consumers each day, in more than 200 countries around the world. Petitioner’s
`
`COCA-COLA, COKE and DIET COKE brands are cornerstones of its portfolio, which
`
`presently includes fifteen billion dollar brands. COCA-COLA and DIET COKE are the
`
`top two soft drink brands in the world.
`
`2.
`
`Petitioner is the owner of numerous federal registrations and pending
`
`applications for its COCA-COLA and COKE family of trademarks (collectively, the
`
`“COCA-COLA Marks”), including:
`
`Trademark
`
`Registration Date
`
`Goods
`
`Reg. No. 238,146
`
`January 31, 1927 Class 32
`
`Incontestable
`
`
`
`
`
`Beverages and syrups for the
`manufacture of such beverages
`
`COCA-COLA Reg. No. 238,145
`
`January 31, 1928 Class 32
`
`Incontestable
`
`Beverages and syrups for the
`manufacture of such beverages
`
`
`
`Reg. No. 415,755 August 14, 1945
`
`Class 32
`
`
`
`Incontestable
`
`Non-alcoholic maltless beverages
`and the syrups for making such
`beverages
`
`Reg. No. 1,260,160
`
`December 6, 1983
`
`Class 32
`
`Incontestable
`
`
`
`Soft Drinks
`
`
`
`Reg. No. 1,432,152
`
`Incontestable
`
`
`
`
`
` December 16,
`1986
`
`Class 32
`
`Soft drinks
`
`COKE CLASSIC Reg. No. 1,824,556
`
`March 1, 1994
`
`Class 32
`
`Incontestable
`
`
`
`Soft drinks and syrups and
`concentrates for making the
`same.
`
`81247988
`
`3
`
`

`

`Trademark
`
`Registration Date
`
`Goods
`
`
`
`VANILLA COKE Reg. No. 2,757,341 December 31, 2002 Class 32
`
`Incontestable
`
`Non-alcoholic beverages, namely,
`soft drinks
`
`COKE
`
`
`
`Reg. No. 3,347,889 December 4, 2007 Class 32
`
`Incontestable
`
`Non-alcoholic beverages, namely,
`soft drinks; syrups and
`concentrates for making non-
`alcoholic beverages, namely, soft
`drinks.
`
`
`
`CHERRY COKE Reg. No. 3,434,466 March 11, 2008
`
`Class 32
`
`
`
`Non-alcoholic beverages, namely,
`soft drinks; concentrate for making
`non-alcoholic beverages, namely,
`soft drinks.
`
`DIET COKE PLUS Reg. No. 3,490,468 August 19, 2008
`
`Class 32
`
`Non-alcoholic beverages, namely,
`carbonated soft drinks; syrups and
`concentrates for making
`beverages, namely, carbonated
`soft drinks.
`
`DIET COKE
`
`Reg. No. 3,820,750 July 20, 2010
`
`Class 32
`
`Non-alcoholic beverages, namely,
`soft drinks; syrups and
`concentrates for making non-
`alcoholic beverages, namely, soft
`drinks.
`
`81247988
`
`4
`
`

`

`Trademark
`
`Registration Date
`
`Goods
`
`COCA-COLA FAN
`LOT
`
`Reg. No. 2,607,376 August 13,2002
`
`Class 32
`
`
`
`Soft drinks, syrups and
`concentrates for use in the
`preparation of soft drinks
`
`
`
`Class 41
`
`Entertainment services in the
`nature of interactive area at
`baseball stadiums, namely a
`structure composed of wood
`beams, climbing areas and slides;
`Entertainment in the nature of a
`youth baseball theme park
`featuring miniature baseball fields
`on which children can hit, run and
`catch baseballs; and
`entertainment services, namely,
`providing static exhibits of
`embossed signatures of famous
`baseball players that can be
`rubbed to create autographs.
`
`All of these filings are valid and subsisting, in full force and effect, and are conclusive
`
`evidence of Petitioner’s exclusive right to use the COCA-COLA Marks for the goods and
`
`services referenced therein as well as for related goods and services.
`
`3.
`
`Petitioner has used the COCA-COLA Marks continuously in interstate
`
`commerce, and is and has been at all pertinent times the owner of all right, title and
`
`interest in and to the COCA-COLA Marks for a wide range of goods and services,
`
`primarily beverages in Class 32.
`
`4.
`
`Petitioner has invested a substantial amount of time, effort and money to
`
`promote its products and services offered under the COCA-COLA Marks, as well as to
`
`promote its corporate identity. In fact, Petitioner spends hundreds of millions of dollars
`
`each year on measured media in connection with the COCA-COLA Marks, along with
`
`81247988
`
`5
`
`

`

`millions more on other media touchpoints, such as sponsorships, product placement,
`
`premiums, and coupons.
`
`5.
`
`Accordingly, consumers exclusively associate Petitioner’s COCA-COLA
`
`Marks with Petitioner, and the COCA-COLA Marks have established good will and enjoy
`
`fame of incalculable value in the U.S. and throughout the world.
`
`
`
`FIRST BASIS FOR CANCELLATION – OWNERSHIP OF PRIOR REGISTRATIONS
`
`6.
`
`The Registration
`
`is based on
`
`the Registrant’s purported use of
`
`Registrant’s Mark claiming a date of first use of February 14, 2012.
`
`7.
`
`Accordingly, Registrant is unable to establish priority of use of Registrant’s
`
`Mark with respect to Petitioner’s COCA-COLA Marks.
`
`8.
`
`Petitioner has clear priority, given the longstanding use and registrations
`
`of the COCA-COLA Marks.
`
`SECOND BASIS FOR CANCELLATION – LIKELIHOOD OF CONFUSION
`
`9.
`
`Petitioner is being damaged by registration of Registrant’s Mark because
`
`Registrant’s Mark is confusingly similar in appearance, sound and meaning to the
`
`COCA-COLA Marks, which
`
`the public exclusively associates with Petitioner.
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`Specifically, the “COCA” term in Registrant’s Mark is nearly identical in sight, sound,
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`and meaning to the Petitioner’s famous COCA-COLA and COKE marks, and the
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`“COCALEAF” combination is nearly identical to the COCA-COLA portion of the
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`COCA-COLA Marks. Given that Registrant’s goods are beverage-related, it appears
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`likely that the COCA term was incorporated into Registrant’s Mark primarily to cause
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`confusion with Petitioner’s famous COCA-COLA Marks.
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`10.
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`The similarities between Registrant’s Mark and the COCA-COLA Marks, in
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`conjunction with Registrant’s alleged use of its mark in connection with beverages
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`including identical products to those that Petitioner offers under its COCA-COLA Marks,
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`is likely to cause confusion, or to cause mistake, or to deceive with respect to the
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`source or origin of Registrant’s services, and is likely to cause consumers to believe
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`Petitioner sponsors or is affiliated with the Registrant. Such confusion would irreparably
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`harm Petitioner, particularly because Petitioner has no control over the nature or quality
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`of the goods provided or produced by Registrant under Registrant’s Mark. Petitioner
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`takes extensive measures to ensure the quality of any goods and services offered under
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`its COCA-COLA Marks, and it would suffer irreparable harm if Registrant is allowed to
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`offer the alleged goods under Registrant’s Mark without any quality control by Petitioner.
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`11. Upon information and belief, the services that Registrant allegedly offers
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`under the COCALEAF mark and those offered by the Petitioner under certain of the
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`COCA-COLA Marks are closely identical, are or may be offered through the same,
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`substantially the same, and/or related channels of distribution, and to the same,
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`substantially the same, and/or related classes of purchasers; and are or may be
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`advertised, marketed and promoted through the same media channels. The risk of
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`confusion with Petitioner’s famous COCA-COLA Marks is especially high given that the
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`products involved are non-alcoholic beverages, which are generally inexpensive and do
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`not involve extensive purchasing consideration on the part of the consumer.
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`THIRD BASIS FOR CANCELLATION – DILUTION
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`12.
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`The COCA-COLA Marks are famous marks within the meaning of Section
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`43(c) of the Lanham Act, and became famous long before the date of the application to
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`register Registrant’s Mark. The alleged use by Registrant of Registrant’s Mark for
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`Registrant’s proposed services would be likely to cause dilution by blurring the
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`distinctive quality of Petitioner’s famous COCA-COLA Marks, by tarnishing the
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`reputation of Petitioner’s famous COCA-COLA Marks, or both. The low-quality labels
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`shown in the image submitted by Registrant as a specimen of use for the subject
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`Registration serve as evidence of the hasty, sub-par quality of packaging of the
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`products as compared to Petitioner’s careful and high-quality brand promotion.
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`FOURTH BASIS FOR CANCELLATION - FRAUD
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`13. Upon information and belief, the Registration is related to several other
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`pending applications for trademarks that also infringe Petitioner’s rights in and to the
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`COCA-COLA Marks, including trademark application Serial No. 85/848,317 for COCA
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`COLA, 85/813,590 for UR COCA COLA, 85/619,035 for COKI, 85/097,514 for COCALEAF,
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`85/095,398 for COCA LEAF WATER, 85/607,106 for COLA DE COKI, 86/672,347 for COKI
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`COLA HAPPY MOTION, 85/734,620 for KO, 85/738,874 for DKO, 85/756,565 for COCA-
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`LISCIOUS, 85/756,528 for COCA and 85/741,161 for DOKE. [Among other indications that
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`the applications are commonly owned, Registrant submitted an agreement between
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`himself and GS Waters, the listed owned of the previously filed applications for
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`COCALEAF and COCA LEAF WATER, and the original address for the Registration
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`was listed as 33 Montilla Ave., Coral Gables, FL, 33134, which is the same address
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`used for the applicants of the application for DOKE, listed above. Furthermore, the
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`owner of the domain name www.cocaleafcola.com is listed as Alberto Soler (applicant
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`on several of the above-referenced applications) at the 33 Montilla Ave. address.]
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`Accordingly, Petitioner has reason to believe
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`that Registrant has
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`intentionally
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`misidentified the true owner of the Application, and may have otherwise committed
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`fraud in the attempt to register Registrant’s Mark. It has also come to Petitioner’s
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`attention that this pattern of fraud extends to an entire family of applications for COCA
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`formative marks all filed by entities that appear to have misrepresented the nature of
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`their relationship to one another.
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`FIFTH BASIS FOR CANCELLATION – LACK OF BONA FIDE INTENT TO USE
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`14. Upon information and belief, and in view of the forgoing, Registrant lacks a
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`bona fide intent to use Registrant’s Mark. In particular, intentional selection of an
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`infringing mark and misidentification of the true owner(s) of the present application
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`belies Registrant’s claim that Registrant has any real and legitimate stake in acquiring a
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`registration. Given the pattern of behavior of Registrant and the parties believed to be
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`related to Registrant, and based upon the low quality of the specimen of use submitted
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`by Registrant, it furthermore appears unlikely that Registrant is using the mark on each
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`of the items listed in the Registration. If Registrant submitted a signed declaration
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`stating that he is using the mark on each of these goods when in fact he is not, such
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`declaration would also constitute fraud and would invalidate the Registration.
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`CONCLUSION
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`15.
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`For at least the forgoing reasons, Petitioner will be damaged by
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`Registrant’s continued registration of Registrant’s Mark.
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`WHEREFORE, Petitioner respectfully requests that this Petition be accepted and
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`that the Registration be cancelled.
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`Respectfully submitted, this 28th day of June, 2013.
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`PARKS IP LAW LLC
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`/s/ Cynthia R. Parks
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`Cynthia R. Parks
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`730 Peachtree Street NE
`Suite 600
`Atlanta, Georgia 30308
`Telephone: 678-365-4444
`Facsimile: 678-365-4450
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