Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA780886
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`Filing date:
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`11/03/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92059991
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`American Tibetan Health Institute, Inc.
`
`OTTO O LEE
`INTELLECTUAL PROPERTY LAW GROUP LLP
`12 SOUTH FIRST STREET, 12TH FLOOR
`SAN JOSE, CA 95113
`UNITED STATES
`tm_docket@iplg.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Otto O. Lee
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`tm_docket@iplg.com
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`/Otto O. Lee/
`
`11/03/2016
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`Notice of Judgment - Ng Composite Mark cancellation.pdf(28615 bytes )
`Ex. A - Judgment.pdf(1242326 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.: 92059991
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`PETITIONER’S NOTICE OF
`
`TERMINATION OF CIVIL
`
`PROCEEDINGS
`
`
`
`
`
`
`
`In the Matter of Registration No.: 4,247,693
`Registration Date: November 20, 2012
`Mark: TIBETAN BAICAO TEA and design
`
`AMERICAN TIBETAN HEALTH
`INSTITUTE, INC.
`
`
`Petitioner,
`
`
`
`v.
`
`
`KAM NG,
`
`
`Registrant.
`
`
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`Petitioner American Tibetan Health Institute, Inc. (“ATHI”), by and through its
`
`undersigned attorneys, hereby notifies the Board of the termination of and judgment in its favor
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`in the related civil action between the parties, and moves pursuant to TBMP § 510.02(b) for
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`judgment in this matter cancelling Registrant Kam Ng’s (“Ng”) Registration No. 4,247,693.
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`The parties hereto were involved in federal litigation concerning, inter alia, the continued
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`registrability of Ng’s Registration No. 4,247,693 in the parallel cases American Tibetan Health
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`Institute, Inc. v. Kam Ng, et al. (Case No. 13-CV-02763-LLS) and C&L International Trading
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`Inc., et al. v. American Tibetan Health Institute, Inc., et al. (Case No. 13-CV-02638-LLS) before
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`the United State District Court for the Southern District of New York. On July 19, 2016, the said
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`court issued judgment in ATHI’s favor, terminating the case and explicitly ordering cancellation
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`Cancellation No.: 92059991
`Petitioner’s Notice of Temination of Civil Case
`
`1
`
`

`

`of Registration No. 4,247,693. (See Exhibit A.) No appeal has been filed or is pending. Petitioner
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`accordingly moves pursuant to TBMP § 510.02(b) for judgment in this action cancelling
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`Registration No. 4,247,693 according to the court’s explicit order and striking the registration
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`from the register, and for judgment in its favor as to any remaining issues presented in this
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`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`By: /Otto O. Lee/
`Otto O. Lee
`Kevin Viau
`INTELLECTUAL PROPERTY LAW GROUP LLP
`12 South First Street, 12th Floor
`San Jose, CA 95113
`Tel: (408) 286-8933
`Fax: (408) 286-8932
`Email: tm_docket@iplg.com
`
`Attorneys for Petitioner
`
`proceeding.
`
`
`
`
`
`Dated: November 3, 2016
`
`Cancellation No.: 92059991
`Petitioner’s Notice of Temination of Civil Case
`
`2
`
`

`

`CERTIFICATE OF SERVICE
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`I, the undersigned, hereby certify that:
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`I am over the age of 18 years and not a party to this action. My business address is
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`12 South First Street, 12th Floor, San Jose, California, which is located in Santa Clara
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`County and where the mailing described below occurred.
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`I filed the document PETITIONER’S NOTICE OF TERMINATION OF CIVIL
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`PROCEEDINGS with the Trademark Trial and Appeal Board electronically via ESTTA on
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`November 3, 2016.
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`
`
`On November 3, 2016, I served the document PETITIONER’S NOTICE OF
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`TERMINATION OF CIVIL PROCEEDINGS via U.S. First Class Mail by depositing the
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`document in the mail at San Jose, California in a sealed envelope, with postage fully prepaid,
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`addressed to the person listed below.
`
`Mitchell M. Wong, Esq.
`The Exeter Law Group LLP
`Forty Wall Street, Floor 28
`New York, New York 10005
`
`Attorneys for Registrant
`
` I
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` declare under penalty of perjury under the laws of the United States that the foregoing is
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`
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`true and correct.
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`
`
`Dated: November 3, 2016
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`
`
`
`
`
`
`
`
`
`By: /Otto O. Lee/
`Otto O. Lee
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No.: 92059991
`Petitioner’s Notice of Temination of Civil Case
`
`3
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Kevin Viau
`
`From:
`Sent:
`To:
`Subject:
`
`tm_docket@iplg.com on behalf of NYSD_ECF_Pool@nysd.uscourts.gov
`Tuesday, July 19, 2016 3:49 PM
`CourtMail@nysd.uscourts.gov
`Activity in Case 1:13-cv-02763-LLS American Tibetan Health Institute, Inc. v. Ng et al AO
`120 Form Trademark - Case Terminated - Submitted
`
`This is an automatic e-mail message generated by the CM/ECF system. Please DO NOT RESPOND to
`this e-mail because the mail box is unattended.
`***NOTE TO PUBLIC ACCESS USERS*** Judicial Conference of the United States policy permits
`attorneys of record and parties in a case (including pro se litigants) to receive one free electronic copy of
`all documents filed electronically, if receipt is required by law or directed by the filer. PACER access fees
`apply to all other users. To avoid later charges, download a copy of each document during this first
`viewing. However, if the referenced document is a transcript, the free copy and 30 page limit do not
`apply.
`
`U.S. District Court
`
`Southern District of New York
`
`Notice of Electronic Filing
`
`The following transaction was entered on 7/19/2016 at 6:48 PM EDT and filed on 7/19/2016
`American Tibetan Health Institute, Inc. v. Ng et al
`Case Name:
`1:13-cv-02763-LLS
`Case Number:
`Filer:
`
`WARNING: CASE CLOSED on 07/19/2016
`Document Number: 282
`
`Docket Text:
`AO 120 FORM TRADEMARK - CASE TERMINATED - SUBMITTED. In compliance with the
`provisions of 15 U.S.C. 1116, the Director of the U.S. Patent and Trademark Office is hereby
`advised that a final decision was rendered on 7/19/2016 in a court action filed on the following
`trademark(s) in the U.S. District Court Southern District of New York. Director of the U.S.
`Patent and Trademark Office electronically notified via Notice of Electronic Filing (NEF). (lmb)
`
`
`1:13-cv-02763-LLS Notice has been electronically mailed to:
`
`David William Kloss dwkloss@klosslaw.com
`
`Mitchell M. Wong mwong@exeterlawgroup.com
`
`Anthony Nicholas Elia, III Anthony@anelaw.com, eliaanthony@hotmail.com
`
`Philip B. Abramowitz pabramowit@aol.com, office@klosslaw.com
`
`
`1
`
`

`

`Bonnie Lynn Mohr bonnie@mohresq.com
`
`Otto Lee olee@iplg.com, tm_docket@iplg.com
`
`Bonnie Jean Wolf bonniewolf@iplg.com
`
`Justin David Kloss jdkloss@klosslaw.com
`
`1:13-cv-02763-LLS Notice has been delivered by other means to:
`
`The following document(s) are associated with this transaction:
`
`Document description:Main Document
`Original filename:n/a
`Electronic document Stamp:
`[STAMP dcecfStamp_ID=1008691343 [Date=7/19/2016] [FileNumber=16831874-
`0] [72f72db4032f75aadf47b82c74ec379137d5b52545acedbeabf21cab40854b8b2a
`255675b97016dc2da2c83b764e3c1d3795d67067ca6e6e242841cf3bdaf233]]
`
`
`
`2
`
`

`

`Case 1:13-cv-02763-LLS Document 282 Filed 07/19/16 Page 1 of 3
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`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`Southern District Of New York
`
`filed in the U.S. District Court
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`on the following
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`IZ Trademarks or
`
`D Patents.
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`( D the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`13cv2763
`PLAINTIFF
`
`DATE FILED
`4/25/2013
`
`U.S. DISTRICT COURT
`Southern District of New York
`DEFENDANT
`
`American Tibetan Health Institute, Inc.
`a California corporation
`
`Kam Ng et al
`
`PATENT OR
`TRADEMARK NO
`142M693
`
`DATE OF PATENT
`0R TRADEMARK
`HOLDER OF PATENT OR TRADEMARK
`«18/2012 _
`
`——
`HOLDER OF PATENT OR TRADEMARK
`Case closed pursuant to attached Judgment. CLERK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK N0.
`
`I] Amendment
`DATE OF PATENT
`0R TRADEMARK
`
`[I Answer
`
`I] Cross Bill
`
`I] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`Ruby J. Krajick
`
`(BY) DEPUTY CLERK
`
`L. Brown
`
`DATE
`
`7/19/2016
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`

`

`Case 1:13-cv-02763-LLS Document 282 Filed 07/
`
`SOUTHERN DISTRICT OF NEW YORK
`------------------------------------------------------------X
`AMERICAN TIBETAN HEALTH INSTITUTE,
`
`i
`
`‘
`
`‘
`
`~ UNITED STATES DISTRICT COURT
`
`ELECTRONICALLY FILED
`DOC #,
`DATE “LED'
`
`/ y /6
`
`,
`
`INC.,
`
`Plaintiff,
`
`—against-
`
`.
`
`13 CIVIL 2763 (LLS)
`
`JUDGMENT
`
`KAM NG, C&L INTERNATIONAL TRADING,
`
`INC., KANG LI TRADING, INC., and K&C
`
`INTERNATIONAL TRADING, INC.,
`Defendants.
`__________________________________________________________ -_X
`
`Whereas after twojury trials concluding on March 27, 2014 and June 18, 2015, respectively,
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`the first jury trial determined that American Tibetan Health Institute, Inc. (“ATHI”) first used the
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`trademarks (entitling it to an injunction against defendants and cancelation of Kam Ng’s trademark
`
`No. 4,247,693 on the supplemental register), and the second jury trial determined that ATHI is not
`
`entitled to C&L International Trading, Inc.’s profits; the only remaining issue is whether ATHI can
`
`recover the profits Ms. Ng and her companies obtained by their infringement of ATHI’s trademarks
`
`and trade dress, and that issue having been brought on for trial before the Honorable Louis L.
`
`Stanton, United States District Judge, and a jury on July 1 1, 2016, and at the conclusion of the trial
`
`on July 14, 2016, the jury having returned a verdict in favor of the plaintiff ATHI in the amount of
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`$363,300.00, it is,
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`ORDERED, ADJUDGED AND DECREED: That ATHI havejudgment against
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`Kam Ng, Kang Li Trading, Inc., and K&C International Trading Inc., jointly and severally, in the
`
`amount $363,300.00 and that trademark registration No. 4,247,693 on the supplemental register,
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`Ms. Ng’s composite mark, is canceled.
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`Pursuant to 15 U.S.C. §§ 1116(c) and 1119, the Clerk shall certify and transmit to the
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`Director of the United States Patent and Trademark Office the order dated October 5, 2015 and this
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`Judgment directing cancelation of trademark registration No. 4,247,693.
`
`

`

`Case 1:13-cv-02763-LLS Document 282 Filed 07/19/16 Page 3 of 3
`
`DATED: New York, New York
`
`July 19, 2016
`
`SO ORDERED
`
`5 L '
`USDJ
`
`RUBY J. KRAJICK
`
`
`Clerk ofCourt
`BY: d/ if,“
`
`
`
`Deputy Clerk
`
`