Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA752022
`06/13/2016
`
`ESTTA Tracking number:
`
`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
`
`Attorney informa-
`tion
`
`Babo Botanicals, LLC
`
`Corporation
`
`Citizenship
`
`New York
`
`14 Harwood Court, Suite 326
`Scarsdale, NY 10583
`UNITED STATES
`
`John P. Margiotta
`Fross Zelnick Lehrman & Zissu, P.C.
`866 United Nations Plaza
`New York, NY 10017
`UNITED STATES
`jmargiotta@fzlz.com, eweiss@fzlz.com Phone:212-813-5900
`
`Registration Subject to Cancellation
`
`Registration No
`
`3978222
`
`Registration date
`
`06/14/2011
`
`Registrant
`
`Nutraceutical Research Group, Inc.
`1-40 Strachan Court S.E.
`Medicine Hat, T1B4R7
`CANADA
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2010/01/01 First Use In Commerce: 2010/01/01
`All goods and services in the class are cancelled, namely: Nutraceuticals for use as a dietary supple-
`ment for the reduction of the effectsof aging
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`3775773
`
`Registration Date
`
`04/13/2010
`
`Word Mark
`
`NUTRI-SOOTHE
`
`Application Date
`
`12/02/2008
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 2009/12/26 First Use In Commerce: 2009/12/26
`Proprietary botanical blend comprised of natural vitamins, anti-oxidants, and
`anti-inflammatory ingredients sold as an integral component of non-medicated
`preparations all for the care of skin, hair and scalp
`
`U.S. Application
`No.
`
`86756110
`
`Application Date
`
`09/14/2015
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUTRI-SOOTHE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Cosmetics; non-medicated lip care preparations; non-medicated skin care pre-
`parations; hair care preparations; non-medicated sun care preparations; cosmet-
`ic preparations for body care
`
`Attachments
`
`77624356#TMSN.png( bytes )
`86756110#TMSN.png( bytes )
`Petition to Cancel with Exhibits - NUTRASOOTHE -
`F1974999x96B9E.PDF(70840 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
`
`/Emily Weiss/
`
`

`
`Name
`
`Date
`
`Emily Weiss
`
`06/13/2016
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`In the Matter of Registration No. 3,978,222
`Mark: NUTRASOOTHE
`Registered: June 14, 2011
`
`
`
`BABO BOTANICALS, LLC,
`
`Petitioner,
`
`-against-
`
`
`
`
`
`
`NUTRACEUTICAL RESEARCH GROUP,
`INC.,
`
`Registrant.
`
`
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`Petitioner, Babo Botanicals, LLC, a New York corporation with an address of 14
`
`Harwood Court, Suite 326, Scarsdale, New York 10583, believes that it would be damaged by
`
`the continued registration of U.S. Registration No. 3,978,222, and hereby petitions to cancel the
`
`same. As grounds for its petition for cancellation, Petitioner, by its attorneys Fross Zelnick
`
`Lehrman & Zissu, P.C., alleges as follows:
`
`1.
`
`Petitioner develops, distributes, and offers for sale organic hair and skin care
`
`products, including shampoo, conditioner, lotion, body wash, sunscreen, and lip treatment. Since
`
`at least as early as 2009, Petitioner’s products have contained its proprietary NUTRI-SOOTHE
`
`complex.
`
`2.
`
`Because the NUTRI-SOOTHE complex is what differentiates Petitioner’s
`
`products from other hair and skin care products on the market, Petitioner specifically promotes
`
`{F1972886.2 }
`
`
`
`

`
`the NUTRI-SOOTHE complex to consumers. For example, the NUTRI-SOOTHE mark appears
`
`on Petitioner’s packaging and it is prominently displayed on Petitioner’s website.
`
`3.
`
`Petitioner has invested a significant amount of time, effort, and money in
`
`developing and promoting the products offered in connection with the NUTRI-SOOTHE mark.
`
`As a result of these efforts and the success of NUTRI-SOOTHE products in the marketplace,
`
`Petitioner’s NUTRI-SOOTHE mark has come to identify Petitioner’s products exclusively and
`
`uniquely and represents enormous goodwill of Petitioner.
`
`4.
`
`Petitioner is the owner of U.S. Registration No. 3,775,773 for the NUTRI-
`
`SOOTHE mark for use in connection with “proprietary botanical blend comprised of natural
`
`vitamins, anti-oxidants, and anti-inflammatory ingredients sold as an integral component of non-
`
`medicated preparations all for the care of skin, hair and scalp” in International Class 3. The
`
`application that matured into this registration was filed on December 2, 2008, and Babo
`
`Botanicals began to use the mark in connection with the applied-for goods on December 26,
`
`2009.
`
`5.
`
`The registration listed above is valid, subsisting, and in full effect and serves as
`
`prima facie evidence of the validity of the NUTRI-SOOTHE mark and of Petitioner’s exclusive
`
`right to use the NUTRI-SOOTHE mark in connection with the goods identified therein, pursuant
`
`to Section 33(a) of the Lanham Act, 15 U.S.C. § 1115(a). A printout from the United States
`
`Patent and Trademark Office’s online database reflecting the current status and title of the above
`
`registration is attached as Exhibit A.
`
`6.
`
`In addition to the above registration, Petitioner owns pending Application Serial
`
`No. 86/756,110 (the “Application”) for the NUTRI-SOOTHE mark for use in connection with
`
`“cosmetics; non-medicated lip care preparations; non-medicated skin care preparations; hair care
`
`{F1972886.2 }
`
`
`
`2
`
`

`
`preparations; non-medicated sun care preparations; cosmetic preparations for body care” in
`
`International Class 3. A printout from the United States Patent and Trademark Office’s online
`
`database reflecting the current status and title of the Application is attached as Exhibit B.
`
`7.
`
`Upon information and belief, the owner of the registration at issue is
`
`Nutraceutical Research Group, Inc. (“Registrant”), a Canadian corporation with an address of 1-
`
`40 Strachan Court S.E., Medicine Hat T1B4R7, Canada.
`
`8.
`
`On November 23, 2010, Registrant filed Application Serial No. 85/184,043 to
`
`register the mark NUTRASOOTHE (“Registrant’s Mark”) for “nutraceuticals for use as a dietary
`
`supplement for the reduction of the effects of aging” in International Class 5, based on a first use
`
`of January 1, 2010. Registrant’s application matured to U.S. Registration No. 3,978,222 (the
`
`“Registration”) on June 14, 2011.
`
`9.
`
`The Registration has been cited as a bar to registration of Petitioner’s pending
`
`Application on the ground that the there is a likelihood of confusion between the applied-for
`
`NUTRI-SOOTHE mark and Registrant’s Mark.
`
`10.
`
`The earliest date upon which Registrant can rely is after the date Petitioner filed
`
`the application that matured into U.S. Registration No. 3,775,773 and after Petitioner’s first use
`
`of the NUTRI-SOOTHE mark. As such, Petitioner’s rights in its NUTRI-SOOTHE mark are
`
`prior and superior to any rights Registrant may claim in Registrant’s Mark.
`
`11.
`
`To the extent the examining attorney is correct that there is a likelihood caused by
`
`Petitioner’s use of the mark NUTRI-SOOTHE and Registrant’s use of Registrant’s Mark, the
`
`Registration should be cancelled pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d), since any use of Registrant’s Mark commenced after Petitioner began using and
`
`obtained rights in the mark NUTRI-SOOTHE.
`
`{F1972886.2 }
`
`
`
`3
`
`

`
`WHEREFORE, it is respectfully requested that this cancellation proceeding be sustained
`
`and that the Registration be cancelled.
`
`Dated: June 13, 2016
`
`New York, New York
`
`
`
`
`
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`
`
`
`
`
`
`/Emily Weiss/
`
`By:
`John P. Margiotta
`
`Emily Weiss
`
`866 United Nations Plaza
`New York, New York 10017
`(212) 813-5900
`
`Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`{F1972886.2 }
`
`
`
`4
`
`

`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Generated on: This page was generated by TSDR on 2016-06-13 15:42:43 EDT
`
`Mark: NUTRI-SOOTHE
`
`US Serial Number: 77624356
`
`US Registration
`Number:
`
`3775773
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing
`Date:
`
`Dec. 02, 2008
`
`Registration Date: Apr. 13, 2010
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Apr. 13, 2010
`
`Publication Date: Apr. 14, 2009
`
`(cid:160)
`
`Mark Literal
`Elements:
`
`NUTRI-SOOTHE
`
`Notice of
`Allowance Date:
`
`Jul. 07, 2009
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note: The following symbols indicate that the(cid:160)registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Proprietary botanical blend comprised of natural vitamins, anti-oxidants, and anti-inflammatory ingredients sold as an integral
`component of non-medicated preparations all for the care of skin, hair and scalp
`
`International
`Class(es):
`
`003 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 001, 004, 006, 050, 051, 052
`
`First Use: Dec. 26, 2009
`
`Use in Commerce: Dec. 26, 2009
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: BABO BOTANICALS, LLC
`
`Owner Address: 14 Harwood Court, Suite 425
`Scarsdale, NEW YORK 10583
`UNITED STATES
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country NEW YORK
`
`

`
`Attorney/Correspondence Information
`
`Where Organized:
`
`Attorney Name: NANCY DICONZA
`
`Docket Number: BABT 1408654
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`diconza-pr@fzlz.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`NANCY DICONZA
`FROSS ZELNICK LEHRMAN & ZISSU, P.C.
`866 UNITED NATIONS PLAZA
`NEW YORK, NEW YORK 10017
`UNITED STATES
`
`Phone: 212 813 5900
`
`Fax:
`
`(585) 263-1600
`
`Correspondent e-
`mail:
`
`diconza-pr@fzlz.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Apr. 08, 2016
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Jun. 12, 2013
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Jun. 12, 2013
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Aug. 22, 2012
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Apr. 13, 2010
`
`REGISTERED-PRINCIPAL REGISTER
`
`Mar. 08, 2010
`
`LAW OFFICE REGISTRATION REVIEW COMPLETED
`
`Mar. 05, 2010
`
`ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
`
`Mar. 05, 2010
`
`EXAMINER'S AMENDMENT ENTERED
`
`Mar. 05, 2010
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Mar. 05, 2010
`
`EXAMINERS AMENDMENT E-MAILED
`
`Mar. 05, 2010
`
`SU-EXAMINER'S AMENDMENT WRITTEN
`
`Mar. 01, 2010
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Proceeding
`Number
`
`88888
`
`76539
`
`88888
`
`68792
`
`Mar. 01, 2010
`
`NON-FINAL ACTION E-MAILED
`
`Mar. 01, 2010
`
`SU - NON-FINAL ACTION - WRITTEN
`
`Feb. 08, 2010
`
`STATEMENT OF USE PROCESSING COMPLETE
`
`Jan. 06, 2010
`
`USE AMENDMENT FILED
`
`Feb. 08, 2010
`
`CASE ASSIGNED TO INTENT TO USE PARALEGAL
`
`Jan. 06, 2010
`
`TEAS STATEMENT OF USE RECEIVED
`
`Jul. 07, 2009
`
`NOA MAILED - SOU REQUIRED FROM APPLICANT
`
`Apr. 14, 2009
`
`PUBLISHED FOR OPPOSITION
`
`Mar. 25, 2009
`
`NOTICE OF PUBLICATION
`
`Mar. 09, 2009
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Mar. 09, 2009
`
`ASSIGNED TO LIE
`
`Mar. 06, 2009
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Mar. 06, 2009
`
`EXAMINER'S AMENDMENT ENTERED
`
`Mar. 06, 2009
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Mar. 06, 2009
`
`EXAMINERS AMENDMENT E-MAILED
`
`Mar. 06, 2009
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Mar. 02, 2009
`
`ASSIGNED TO EXAMINER
`
`Mar. 02, 2009
`
`ASSIGNED TO EXAMINER
`
`Dec. 05, 2008
`
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`68792
`
`61813
`
`61813
`
`61813
`
`76539
`
`76539
`
`88888
`
`6328
`
`6328
`
`68792
`
`68792
`
`69721
`
`

`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Mar. 08, 2010
`
`File Location
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: CHANGE OF NAME
`
`Reel/Frame: 4843/0932
`
`Date Recorded: Aug. 16, 2012
`
`Supporting
`Documents:
`
`assignment-tm-4843-0932.pdf
`
`Assignment 1 of 1
`
`(cid:160)
`
`Registrant: Babo Baby Company, LLC
`
`Pages: 4
`
`Assignor
`
`Name: BABO BABY COMPANY, LLC
`
`Execution Date: Aug. 04, 2009
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Name: BABO BOTANICALS, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 270 BROADWAY
`APT. 16A
`NEW YORK, NEW YORK 10007
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`Assignee
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`Correspondent
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`JASON M. VOGEL
`
`1114 AVENUE OF THE AMERICAS
`KILPATRICK TOWNSEND & STOCKTON LLP
`NEW YORK, NY 10036
`
`Domestic Representative - Not Found
`
`

`
`
`
`EXHIBIT B
`EXHIBIT B
`
`

`
`Generated on: This page was generated by TSDR on 2016-06-13 15:48:42 EDT
`
`Mark: NUTRI-SOOTHE
`
`US Serial Number: 86756110
`
`Application Filing
`Date:
`
`Sep. 14, 2015
`
`Filed as TEAS RF: Yes
`
`Currently TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional
`information and/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on
`the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Dec. 12, 2015
`
`(cid:160)
`
`Mark Literal
`Elements:
`
`NUTRI-SOOTHE
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note: The following symbols indicate that the(cid:160)registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Cosmetics; non-medicated lip care preparations; non-medicated skin care preparations; hair care preparations; non-medicated sun
`care preparations; cosmetic preparations for body care
`
`International
`Class(es):
`
`003 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`U.S Class(es): 001, 004, 006, 050, 051, 052
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Babo Botanicals, LLC
`
`Owner Address: 14 Harwood Court, Suite 425
`
`

`
`Scarsdale, NEW YORK UNITED STATES 10583
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`NEW YORK
`
`Attorney/Correspondence Information
`
`Attorney Name: Nancy DiConza
`
`Docket Number: BABT 1506646
`
`Attorney of Record
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`NANCY DICONZA
`Fross Zelnick Lehrman & Zissu P C
`866 United Nations Plz
`New York, NEW YORK UNITED STATES 10017-1822
`
`Phone: 212-813-5900
`
`Fax: 212-813-5901
`
`Correspondent e-
`mail:
`
`diconza-docket@fzlz.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Dec. 12, 2015
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Dec. 12, 2015
`
`NON-FINAL ACTION E-MAILED
`
`Dec. 12, 2015
`
`NON-FINAL ACTION WRITTEN
`
`Dec. 12, 2015
`
`ASSIGNED TO EXAMINER
`
`Sep. 17, 2015
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Sep. 17, 2015
`
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Attorney: ANDERSON, CASSONDRA CR
`
`Current Location: TMEG LAW OFFICE 103 - EXAMINING
`ATTORNEY ASSIGNED
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 103
`
`File Location
`
`Date in Location: Dec. 12, 2015
`
`Proceeding
`Number
`
`6325
`
`6325
`
`91232
`
`91232
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on June 13, 2016, a copy of the foregoing PETITION FOR
`CANCELLATION was sent by first-class mail, postage pre-paid, to Registrant at its address of
`record:
`
`
`Nutraceutical Research Group, Inc.
`1-40 Strachan Court S.E.
`Medicine Hat T1B4R
`Canada
`
`
`
`with a copy by email to:
`
` H. Douglas Duncan, Esq.
` Law Office of H. Douglas Duncan
` 214 W. Lockeford St.
`Lodi, CA 95240
`
`
`
`
`
`
`
`
`
`
`
`
`
`_____/Emily Weiss/______________
` Emily Weiss
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`{F1972886.2 }