Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA570392
`ESTTA Tracking number:
`11/12/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057485
`Plaintiff
`The Coca-Cola Corporation
`CYNTHIA R PARKS
`PARKS IP LAW LLC
`730 PEACHTREE STREET NE, SUITE 600
`ATLANTA, GA 30308
`UNITED STATES
`tmdocketing@parksiplaw.com, cparks@parksiplaw.com,
`vkeenan@coca-cola.com
`Other Motions/Papers
`Cynthia R. Parks
`tmdocketing@parksiplaw.com
`/s/Cynthia R. Parks
`11/12/2013
`Petitioner's Amended Petition To Cancel (2).pdf(318727 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA570392
`ESTTA Tracking number:
`11/12/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92057485
`Plaintiff
`The Coca-Cola Corporation
`CYNTHIA R PARKS
`PARKS IP LAW LLC
`730 PEACHTREE STREET NE, SUITE 600
`ATLANTA, GA 30308
`UNITED STATES
`tmdocketing@parksiplaw.com, cparks@parksiplaw.com,
`vkeenan@coca-cola.com
`Other Motions/Papers
`Cynthia R. Parks
`tmdocketing@parksiplaw.com
`/s/Cynthia R. Parks
`11/12/2013
`Petitioner's Amended Petition To Cancel (2).pdf(318727 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`1N THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re:
`Mark:
`
`Registration No. 4,259,407
`COCALEAF
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`Registered: December 11, 2012
`
`THE COCA-COLA COMPANY
`
`Petitioner,
`
`V.
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`JUAN RODRIGUEZ
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`Registrant.
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`WWWWH—IH—lH—DWWVI—V—IW
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`Cancellation No. 92057485
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`PETITIONER’S AMENDED PETITION TO CANCEL
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`Petitioner The Coca-Cola Company (“Petitioner”), by and through its undersigned
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`counsei and in accordance with Rule 2.127 of the Trademark Rules of Practice, files this
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`Amended Petition to Cancei in response to the Order issued by the Board on November
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`4, 2013 (the "Order").
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`In the Order, the Board provided for a period of twenty (20) days from the maiiing
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`date of the Order for Petitioner to fiie an Amended Petition to Cancei to assert a proper
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`claim of fraud and/or lack of bona fide intent to use.
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`Petitioner continues its previously established grounds of priority and likelihood of
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`confusion and dilution and amends its Petition to Cancel to include the ground of fraud,
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`as detailed below.
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`81257135
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`FRAUD
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`“in order to properly plead a ciaim of fraud, petitioner must plead respondent
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`made a false representation to the USPTO; the false representation is material to the
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`registrability of the mark; respondent had knowledge of the falsity of the representation;
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`and respondent made the representation with the intent to deceive the USPTO.” Order
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`at 7. The Board has indicated that Petitioner’s previous allegations of fraud were not
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`accompanied by allegations that the falsity is material to the registrability of the mark or
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`that the falsity was made with the intent to deceive the USPTO.
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`Id. Furthermore, the
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`Board has requested that any allegations based on "information and belief" must be
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`accompanied by a statement of facts upon which the beiief is based. id.
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`Upon information and belief, Registrant
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`Juan Rodriguez made a false
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`representation to the USPTO, the faise representation is material to the registrability of
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`the mark, Registrant had knowledge of the falsity of the representation, and Registrant
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`made the representation with the intent to deceive the USPTO.
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`Statement of Facts
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`False Statement: False identity of Registrant
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`The registrant of the subject registration is atleged to be "Juan Rodriguez." Upon
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`information and belief, the true owner of the subject registration is Alberto Solar, and
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`therefore the registrant made a false representation to the USPTO when he signed his
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`name to the subject appiication as well as to responses to office actions and other
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`communications with the USPTO. This
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`false representation is material
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`to the
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`registrability of the mark as it was made with the intent of disguising Mr. Soler’s pattern
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`81257135
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`
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`of applying for a family of marks similar
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`to Petitioner’s COCA-COLA family of
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`trademarks.
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`Mr. Soier has indicated in communications with Petitioner’s representatives that
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`he has purposefulty used other identities to disguise his ownership of a group of related
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`trademark firings with the USPTO, as he believed that he was forbidden from owning
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`the applications by US.
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`law. Furthermore, he has recently signed documents in the
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`current cancellation action on behalf of Registrant without specifying the connection
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`between himself and Juan Rodriguez, indicating that Mr. Soler believes he is the true
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`owner of the registration. Petitioner believes that discovery will confirm that Mr. Soler is
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`the true owner of the registration and that Juan Rodriguez signed statements to the
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`contrary with full knowledge of the falsity of the statements. Therefore, the decision to
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`file the application under the name “Juan Rodriguez“ was made purposefully with the
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`intent to deceive the USPTO.
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`False Statement: Amendment to Aliege Use
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`Upon
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`information and beiief, Registrant made false statements
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`in
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`the
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`Amendment to Allege Use. Specifically, Registrant stated that the mark COCALEAF
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`was in use with a long list of beverage products, namely:
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`“Beverages containing coca extracts in whole or in part, namely, Aerated fruit
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`juices; Aerated mtnerai waters; Aerated water; Aerated water; Atoe vera drinks;
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`Aromatized beverages based on fruit, protein, cordial, sugar and other fluid nutrients,
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`namely, carbohydrates drinks for use as a food fillers; Aromatized beverages based on
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`fruit, protein, cordiai, sugar and other fluid nutrients, namely. protein drinks for use as a
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`food filters and not for use as a meal replacement; Beauty beverages, namely, fruit
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`81257135
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`juices and energy drinks containing nutritionai supplements; Bottled artesian water;
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`Bottled drinking water; Bottied water; Carbonated waters; Coffee—flavored soft drink;
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`Cola; Colas; Concentrated fruit
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`juice; Concentrates and powders used in
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`the
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`preparation of energy drinks and fruit—flavored beverages; Concentrates for making fruit
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`drinks; Concentrates for making fruit juices; Concentrates, syrups or powders for
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`making soft drinks or tea-flavored beverages; Concentrates, syrups or powders used in
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`the preparation of soft drinks; Concentrates, syrups or powders used in the preparation
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`of sports and energy drinks; Distilled drinking water; Drinking water; Drinking water with
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`vitamins; Drinking waters; Energy drinks; Energy drinks enhanced with vitamins;
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`Essences for making flavored mineral water; Essences for the preparation of mineral
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`waters; Essences for use in making soft drinks; Flavored bottled water; Fiavored
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`enhanced water; Flavored waters; Flavored mineral water; Fiavored waters; Frozen fruit
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`beverages; Frozen fruit drinks; Frozen fruit-based beverages; Fruit beverages; Fruit
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`concentrates and purses used as ingredients of beverages; Fruit drinks; Fruit drinks and
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`fruit juices; Fruit drinks and juices; Fruit flavored drinks; Fruit flavored soft drinks; Fruit
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`flavored carbonated drinks; Fruit flavored drinks; Fruitiuice; Fruitjuice bases; Fruit juice
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`concentrates; Fruit juices; Fruit juices and fruit drinks; Fruit nectars; Fruit punch; Fruit—
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`based beverages; Fruit-based soft drinks flavored with tea; Fruit-flavored beverages;
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`Fruit-flavored beverages; Glaciai water; Guarana drinks;
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`ice cream soda;
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`iced fruit
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`beverages;
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`lsotonic drinks;
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`lsotonic non-alcoholic drinks;
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`Italian soda; Lithia water;
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`Magnetically treated water for human consumption and not for medical purposes;
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`Mineral and aerated water; Minerai and aerated waters; Minerai and carbonated waters;
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`Mineral water; Mineral waters; Mixed fruitjuice; Non—alcoholic beverages containing fruit
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`81257135
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`juices; Non-alcoholic beverages with tea fiavor; Non—alcoholic drinks, nameiy, energy
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`shots; Non—aicohoiic fruit extracts used in the preparation of beverages; Non—aicoholic
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`fruit juice beverages; Oat-based beverages with fruit juice not for food purposes; Pop;
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`Powders used in the preparation of fruit—based beverages; Powders used in the
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`preparation of isotonic sports drinks and sports beverages; Prepared entrees consisting
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`of fruit drinks and fruit juices, fruit-based beVerages, non—aicohoiic beverages containing
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`fruit juices, non—aicoholic fruit extracts used in the preparation of beverages, non-
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`alcoholic iruit juice beverages, vegetable juices, vegetable-fruit juices and smoothies;
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`Purified bottled drinking water; Quinine water; Ramune (Japanese soda pops); Scented
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`water for making beverages; Seltzer water; Smoothies; Soda pops; Soda water; Soft
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`drinks; Soft drinks flavored with tea; Soft drinks, namely, sodas; Sparkling water; Sports
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`drinks; Sports drinks containing electrolytes; Sports drinks enhanced with vitamins;
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`Sports drinks, namely, energy drinks; Sports drinks, nameiy, performance drinks; Sports
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`drinks, nameiy, recovery drinks; Spring water; Stilt water; Stilt waters; Syrups for making
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`flavored mineral waters; Syrups for making fruit—flavored drinks; Syrups for making soft
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`drinks; Table water; Table waters; Vegetabie drinks; Vegetabie-fruit
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`juices; Water
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`beverages."
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`Registrant obtained the subject registration based upon this Amendment to Aliege Use,
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`and therefore the statement was material
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`to the registrabiiity of the mark. Upon
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`information and beiief, this statement was a false representation. An Internet search
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`reveals no use whatsoever of the mark COCALEAF in connection with any of these
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`products. The oniy evidence submitted by Registrant to establish use was a photograph
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`of three botties of opened water showing the mark “COCA-LEAF“ (not COCALEAF).
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`81257135
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`
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`Alberto Soler,
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`in his discussions with Petitioner, has never indicated that the
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`mark COCALEAF is in use.
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`it appears that the specimen submitted was a token use
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`rather than a bona fide use of a simiiar mark, and that Registrant has not made bona
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`fide use in commerce of COCALEAF in connection with any of the above-referenced
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`products. Petitioner believes that discovery will confirm that Registrant has not made
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`bona fide use of the mark COCALEAF in connection with ail of the above~referenced
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`products.
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`Therefore, Registrant made a false representation in his Amendment to Ailege
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`Use, intended to deceive the USPTO into granting a registration. The statement was
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`made with knowledge of the faisity of the statement, as Registrant appears to have
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`created a sample label purely for the purposes of submitting the false statement.
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`Without this statement, the appiication would not have proceeded to registration, and
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`therefore, the statement was material to the registrabiiity of the mark.
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`CONCLUSION
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`Accordingiy, Petitioner requests that
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`the Petition to Cancel be amended to
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`include this claim of fraud.
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`Respectfuliy submitted this 12‘“ day of November, 2013.
`
`PARKS IP LAW LLC
`
`ls/Cynthia R. Parks
`Cynthia R. Parks
`
`730 Peachtree Street NE
`
`Suite 600
`
`Atlanta, Georgia 30308
`Phone: 678-365-4444;
`Fax:
`678—365-4450
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`81257135
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`
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`CERTIFICATE OF SERVICE
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`This is to certify, in accordance with Rule 2.101(b) of the Trademark Rules of Practice,
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`that I have this day served the foregoing by electronic mail to the addresses of record
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`and by causing a true and correct copy thereof to be deposited in the United States
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`Mail, postage prepaid, addressed to the Applicant as follows:
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`This 12th day of November, 2013.
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`The Red Luna (KO)
`Soler Law Firm
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`11003 NW 33 Street
`
`Doral, FL 33172
`solerlawfirm@att.net
`redunalaw@att.net
`
`ls/Cynthia R. Parks
`Cynthia R. Parks
`
`81257135
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`
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