Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA729138
`
`Filing date:
`
`02/24/2016
`
`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
`
`Attorney informa-
`tion
`
`MedStar Health, Inc.
`
`Corporation
`
`Citizenship
`
`Maryland
`
`5565 Sterrett Place
`Columbia, MD 21044
`UNITED STATES
`
`Tanya Marie Curcio
`VORYS, SATER, SEYMOUR AND PEASE LLP
`IPLAW@VORYS - PO BOX 2255
`COLUMBUS, OH 43216
`UNITED STATES
`iplaw@vorys.com, tmcurcio@vorys.com Phone:202-467-8800
`
`Registration Subject to Cancellation
`
`Registration No
`
`3785703
`
`Registration date
`
`05/04/2010
`
`Registrant
`
`Fearsome Fivesome, LC
`13812 Flat Top Ranch Road
`Austin, TX 78732
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 036. First Use: 2010/02/01 First Use In Commerce: 2010/02/01
`All goods and services in the class are cancelled, namely: Medical accounts receivable financing,
`namely, the purchase of receivables secured by assignment from medical providersand subsequent
`resell of the receivables to third parties
`
`Grounds for Cancellation
`
`Abandonment
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used.
`
`Trademark Act section 14
`
`Trademark Act section 14(3)
`
`Related Proceed-
`ings
`
`Cancellation Nos. 92062102 and 92062990
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`1498006
`
`Application Date
`
`04/28/1986
`
`Registration Date
`
`07/26/1988
`
`Foreign Priority
`
`NONE
`
`
`
`ESTTA Tracking number:
`
`ESTTA729138
`
`Filing date:
`
`02/24/2016
`
`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
`
`Attorney informa-
`tion
`
`MedStar Health, Inc.
`
`Corporation
`
`Citizenship
`
`Maryland
`
`5565 Sterrett Place
`Columbia, MD 21044
`UNITED STATES
`
`Tanya Marie Curcio
`VORYS, SATER, SEYMOUR AND PEASE LLP
`IPLAW@VORYS - PO BOX 2255
`COLUMBUS, OH 43216
`UNITED STATES
`iplaw@vorys.com, tmcurcio@vorys.com Phone:202-467-8800
`
`Registration Subject to Cancellation
`
`Registration No
`
`3785703
`
`Registration date
`
`05/04/2010
`
`Registrant
`
`Fearsome Fivesome, LC
`13812 Flat Top Ranch Road
`Austin, TX 78732
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 036. First Use: 2010/02/01 First Use In Commerce: 2010/02/01
`All goods and services in the class are cancelled, namely: Medical accounts receivable financing,
`namely, the purchase of receivables secured by assignment from medical providersand subsequent
`resell of the receivables to third parties
`
`Grounds for Cancellation
`
`Abandonment
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used.
`
`Trademark Act section 14
`
`Trademark Act section 14(3)
`
`Related Proceed-
`ings
`
`Cancellation Nos. 92062102 and 92062990
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`1498006
`
`Application Date
`
`04/28/1986
`
`Registration Date
`
`07/26/1988
`
`Foreign Priority
`
`NONE
`
`
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Date
`
`MEDSTAR
`
`NONE
`
`Class 036. First use: First Use: 1985/07/10 First Use In Commerce: 1985/07/10
`INSURANCE BROKERAGE AND INSURANCE ADMINISTRATION SERVICES
`
`U.S. Registration
`No.
`
`2828750
`
`Registration Date
`
`04/06/2004
`
`Application Date
`
`12/21/1998
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`MEDSTAR
`
`NONE
`
`Class 042. First use: First Use: 1979/06/00 First Use In Commerce: 1979/06/00
`medical and hospital services
`
`U.S. Registration
`No.
`
`3009989
`
`Registration Date
`
`11/01/2005
`
`Application Date
`
`08/15/2003
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`MEDSTAR SPORTSHEALTH
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2003/06/00 First Use In Commerce: 2003/06/00
`Medical and healthcare services offeredto active individuals, athletes and athlet-
`ic teams
`
`U.S. Registration
`No.
`
`1327545
`
`Registration Date
`
`03/26/1985
`
`Word Mark
`
`Design Mark
`
`MEDSTAR
`
`Application Date
`
`03/16/1984
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 042. First use: First Use: 1979/06/00 First Use In Commerce: 1979/06/00
`Providing an Emergency Care Facility for Critically Ill and Injured Persons
`
`U.S. Application/ Registra-
`tion No.
`
`NONE
`
`Application Date
`
`NONE
`
`
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`MEDSTAR
`
`medical and hospital services
`
`76538519#TMSN.png( bytes )
`73470690#TMSN.png( bytes )
`Petition to Cancel MEDSTAR FUNDING (Green Star Design)
`(3785703).pdf(117260 bytes )
`
`Certificate of Service
`
`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.
`
`Signature
`
`/tmc/
`
`Name
`
`Date
`
`Tanya Marie Curcio
`
`02/24/2016
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. ____________
`
`In the matter of Trademark Registration No. 3,785,703
`
`Mark:
`Registration Date: May 4, 2010
`
`
`(cid:21)
`
`
`
`
`
`
`MEDSTAR HEALTH, INC.,
`
`
`Petitioner,
`
`v.
`
`
`
`
`FEARSOME FIVESOME, LC,
`
`
`Registrant.
`
`
`
`PETITION TO CANCEL
`
`MedStar Health, Inc. (“Petitioner”) is a Maryland corporation with an address of 5565 Sterrett
`
`
`
`
`
`
`
`Place, 5th Floor, Columbia, Maryland 21044.
`
`According to the Trademark Office Records, Fearsome Fivesome, LC (“Registrant”) is a Texas
`
`limited liability company with an address of 13812 Flat Top Ranch Road, Austin, Texas 78732 and owns
`
`U.S. Trademark Registration No. 3,785,703 (the “Registration”) for the mark MEDSTAR FUNDING
`
`(Green Star Design).
`
`Petitioner believes that it is and will continue to be damaged by the Registration and petitions to
`
`cancel it as set forth below.
`
`FACTUAL BACKGROUND
`
`1.
`
`Petitioner operates various hospitals and health-related businesses in Maryland, Virginia,
`
`and Washington, DC.
`
`
`
`2.
`
`Petitioner has used the mark MEDSTAR (“Petitioner’s Mark”) in connection with various
`
`medical and hospital services since at least as early as June 1979.
`
`3.
`
`Opposer is the owner of several prior incontestable registrations for the mark MEDSTAR
`
`for medical and hospital services (“Petitioner’s Services”) the earliest of which was registered March 26,
`
`1985, Registration Number 1,327,545. The other prior incontestable registrations for or incorporating the
`
`mark MEDSTAR owned by Petitioner for medical related goods and services include: Copies of the TESS
`
`records are attached as Exhibit A.
`
`Mark
`
`Registration No. Registration Date
`
`MEDSTAR
`
`1,498,006
`
`July 26, 1988
`
`MEDSTAR
`
`2,828,750
`
`April 6, 2004
`
`MEDSTAR
`SPORTSHEALTH
`
`3,009,989
`
`November 1, 2005
`
`On December 5, 2008, Registrant filed an intent to use application for the mark
`
`
`
`4.
`
`MEDSTAR FUNDING (Green Star Design) (“Mark”) that ultimately matured to the Registration for use
`
`in connection with Medical accounts receivable financing, namely, the purchase of receivables secured
`
`by assignment from medical providers and subsequent resale of the receivables to third parties
`
`(“Services”), claiming to have used the mark in commerce since February 1, 2010.
`
`5.
`
`Upon information and belief, Registrant has expanded its Services to provide funding of
`
`medical and surgical procedures for hospital and medical patients using the Mark.
`
`6.
`
`7.
`
`8.
`
`The Application was published for opposition on April 14, 2009.
`
`The Registration was issued May 4, 2010.
`
`COUNT I: ABANDONMENT
`
`Petitioner re-alleges and incorporates by reference paragraphs 1 through 7 of this Petition
`
`as if fully set forth herein.
`
`
`
`9.
`
`Upon information and belief, Registrant is not currently using the Mark in commerce in the
`
`United States in connection with any of the Services.
`
`10.
`
`Upon information and belief, Registrant has not used the Mark in commerce in the United
`
`States in connection with the Services for more than three (3) years.
`
`11.
`
`Upon information and belief, Registrant has no intent to resume use of the Mark in
`
`commerce in the United States with any of the Services.
`
`12.
`
`Upon information and belief, Registrant has discontinued use of the Mark with no intent to
`
`resume that use and therefore, has abandoned the Mark as a service mark under §45 of the Trademark
`
`Act.
`
`COUNT II: MISLEADING USE
`
`13.
`
`Petitioner re-alleges and incorporates by reference paragraphs 1 through 7 of this Petition
`
`as if fully set forth herein.
`
`14.
`
`Petitioner has used the colors blue and gold in connection with Petitioner’s Services and
`
`the Petitioner’s Mark since at least as early as 2006.
`
`15.
`
`In 2008, Registrant filed an intent to use trademark application for the Mark, incorporating
`
`the words MEDSTAR FUNDING in blue with the letter “a” in the word “medstar” replaced with a green
`
`star which matured into the Registration.
`
`16.
`
`Registrant has since changed the color of its logo on its website to incorporate Petitioner’s
`
`signature colors, blue and gold and in 2010, filed a new trademark application for its MEDSTAR
`
`FUNDING design mark but now claiming Petitioner’s signature colors, blue and gold. Said application
`
`has matured in the Registration Number 3,904,370. A copy of the TESS record is attached as Exhibit B.
`
`17.
`
` Upon information and belief, Registrant has actual knowledge of Petitioner’s use of the
`
`mark MEDSTAR.
`
`
`
`18.
`
`Upon information and belief, Registrant deliberately began using and is currently using the
`
`term MEDSTAR without the term FUNDING.
`
`19.
`
`Upon information and belief, Registrant has expanded its services bearing the Mark from
`
`Medical accounts receivable financing, namely, the purchase of receivables secured by assignment from
`
`medical providers and subsequent resale of the receivables to third parties to services more closely related
`
`to Petitioner’s Services such as funding medical and surgical procedures for hospital and medical patients.
`
`20.
`
`By changing the use of its Mark to incorporate Petitioner’s signature colors; adopting use
`
`of the mark MEDSTAR without the term FUNDING; and using the revised Mark in connection with
`
`services that are more closely related to Petitioner’s Services, Registrant is a deliberately using the Mark
`
`to misrepresent the source of the Services in connection with which the Mark is used in violation of
`
`Section 14(3) of the Lanham Act, 15 U.S.C. §1064(3).
`
`*
`
`*
`
`*
`
`
`
`THEREFORE, Petitioner prays that the Trademark Trial and Appeal Board sustain this Petition
`
`and cancel Registration No. 3,785,703 for MEDSTAR FUNDING (Green Star Design).
`
`The required fee accompanies this Petition. Please charge any additional fees to Deposit Account
`
`No. 50-6424.
`
`Please recognize William H. Oldach III, Tanya Curcio and Laura T. Geyer, all members of the bar
`
`of the District of Columbia, and the firm of Vorys, Sater, Seymour and Pease, LLP, as Petitioner’s
`
`attorneys to prosecute this Petition to Cancel.
`
`Respectfully submitted,
`
`
`
`
`
`Date: February 24, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`William H. Oldach III
`Tanya M. Curcio
`Laura T. Geyer
`VORYS, SATER, SEYMOUR & PEASE LLP
`
`
`
`1909 K Street, NW
`Ninth Floor
`Washington, DC 20006
`Telephone: 202.467.8800
`E-Mail: iplaw@vorys.com
`
`Attorney for Petitioner
`MEDSTAR HEALTH, INC.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that a true and correct copy of the foregoing Petition to Cancel was served on February
`24, 2016, by first-class United States Mail, postage prepaid, on:
`
`
`President
`Fearsome Fivesome, LC
`13812 Flat Top Ranch Road
`Austin, TX 78732
`
` I certify that a true and correct courtesy copy of the foregoing Petition to Cancel was served on
`February 24, 2016 by first-class United States Mail, postage prepaid, on:
`
`Andre Brunel
`Phillips & Reiter, PLLC
`6805 Capital of Texas Hwy. N Ste. 318
`Austin, TX 78731
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`______________________
`Tanya Marie Curcio
`
`
`
`
`
`
`
`
`
`
`
`
`22677969
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