Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA753376
`06/20/2016
`
`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
`
`Correspondence
`information
`
`Guangzhou Bofuxiu Clothing Co., Ltd.
`
`Limited Company
`
`Citizenship
`
`China
`
`Room 401, No. 902 Xingnan Road Nancun Town, Panyu
`Guangzhou,
`CHINA
`
`Yinfei Wu
`Attorney of record, MN bar member
`Hamre, Schumann, Mueller& Larson, P.C.
`45 South Seventh Street Suite 2700
`Minneapolis, MN 55402
`UNITED STATES
`trademark@hsml.com, ywu@hsml.com Phone:6124553840
`
`Registration Subject to Cancellation
`
`Registration No
`
`4895777
`
`Registration date
`
`02/02/2016
`
`Registrant
`
`Chengxiao, He
`No. 45-3-402, Shencai Community W.
`Panjin, Liaoning,
`CHINA
`
`Goods/Services Subject to Cancellation
`
`Class 025. First Use: 2013/10/10 First Use In Commerce: 2013/10/10
`All goods and services in the class are cancelled, namely: Baselayer bottoms; Boxer shorts; Cam-
`isoles; Children's underwear; Coats; Coats for men and women; Dresses; Pajamas; Panties; Shirts;
`Short-sleeved shirts; Singlets; Skirts; Suits; Sweaters; Tee shirts; Trousers; Underpants; Underwear;
`Yogapants
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`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(3)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`79178918
`
`Application Date
`
`11/13/2015
`
`Registration Date
`
`NONE
`
`Foreign Priority
`
`NONE
`
`

`
`Word Mark
`
`Design Mark
`
`MS.SHE
`
`Date
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Hosiery; caps headwear; motorists' clothing; neckties; shoes; waterproof cloth-
`ing; clothing; girdles; gloves clothing; layettes clothing
`
`Attachments
`
`79178918#TMSN.png( bytes )
`POC.pdf(1958054 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
`
`/Yinfei Wu/
`
`Yinfei Wu
`
`06/20/2016
`
`

`
`HSML 20725.0005USTA
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No. ____________
`Mark:
`
`Registration No. 4895777
`Registration Date: February 2, 2016
`
`
`
`
`
`Guangzhou Bofuxiu Clothing Co., Ltd.
`
`
`
`
`
`
`
`
`
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`Petitioner,
`
`v.
`
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`
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`Chengxiao, HE an individual
`
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`Registrant.
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`PETITION FOR CANCELLATION
`
`
`
`
`
`Guangzhou Bofuxiu Clothing Co., Ltd., a limited company having its principal business
`
`address at Room 401, No. 902 Xingnan Road, Nancun Town, Panyu, Guangzhou City,
`
`Guangdong Province, CHINA (hereafter “Petitioner”) , believes that it will be damaged by the
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`registration of the mark (hereinafter “Mark”) shown in U.S. Trademark Reg. No. 4895777
`
`(hereafter “Registration”), and petitions to cancel the registration of the same based on likelihood
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`of confusion, and misrepresentation of source. In support of its Petition for Cancellation,
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`Petitioner assets as follows:
`
`1.
`
`Petitioner and its related companies have been leading marketers of plus size
`
`women apparels since the year of 2006. Petitioner markets and distributes its goods and services
`
`under its mark
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` in China and internationally.
`
`2.
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`Petitioner has had continuous large sales over the internet of its goods in China
`
`and other jurisdictions.
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`
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`1
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`

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`3.
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`Petitioner’s consumers and potential consumers may travel into the United States,
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`and purchase products under Mark in the United States before returning to China. American-
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`Chinese may forego purchasing Petitioner’s goods when they travel to visit China because
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`Registrant’s alleged deception will lead them to purchase Registrant’s product in the United
`
`States.
`
`4.
`
`Petitioner is the owner of U.S. Serial No. 79178918 filed on November 13, 2015
`
`through the Madrid Protocol for Mark, in connection with UA” for “Hosiery; caps headwear;
`
`motorists' clothing; neckties; shoes; waterproof clothing; clothing; girdles; gloves clothing;
`
`layettes clothing” in International Class 25.
`
`5.
`
`Petitioner is also the owner of China trademark registration of Mark, in
`
`Registration No. 5820944, in connection with Hosiery; hats; Motorists' clothing; Neckties;shoes;
`
`Waterproof clothing; clothing; Leather belt (clothing); Gloves [clothing]; Layettes [clothing].
`
`The trademark registration is granted for the period of January 14, 2010 to January 13, 2020.
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`6.
`
`Petitioner is the owner of copyright registration of Mark (and the design thereof)
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`as work of art. The copyright registration is granted by the China Copyright Office on June 13,
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`2006. The work was created and completed on December 28, 2006.
`
`7.
`
`On July 6, 2015, Chengxiao, He, a Chinese national residing at No. 45-3-402,
`
`Shencai Community W. Gaosheng St., Xinglongtai Dist. Panjin, Liaoning CHINA (hereafter
`
`“Registrant”) filed the following application for Mark shown as below:
`
`
`on the basis of alleged use in commerce. Application was filed for “Baselayer bottoms; Boxer
`
`
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`shorts; Camisoles; Children's underwear; Coats; Coats for men and women; Dresses; Pajamas;
`
`
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`2
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`

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`Panties; Shirts; Short-sleeved shirts; Singlets; Skirts; Suits; Sweaters; Tee shirts; Trousers;
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`Underpants; Underwear; Yoga pants” in International Class 28. The alleged first use of Mark in
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`commerce is October 10, 2013. The alleged first use of mark anywhere in the world is October
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`10, 2013 as well.
`
`8.
`
`On February 2, 2016, Application proceeded with registration on the Principal
`
`Registrar with the United States Patent and Trademark Office.
`
`9.
`
`Petitioner’s Mark has been used throughout China, has been advertised and
`
`promoted by Petitioner and its related companies, and the mark has developed and represents
`
`valuable goodwill inuring to the benefit of Petitioner.
`
`10.
`
`Petitioner’s Mark is arbitrary and fanciful with trademark significance to
`
`purchasers and potential purchasers.
`
`11. Mark shown in Registration is identical and deceptively similar to Peitioner’s
`
`Mark.
`
`12. Mark shown in Registration identical in sight, sound and meaning to Petitioner’s
`
`Mark.
`
`13.
`
`Petitioner’s and Registrant’s products are either identical or closely related, and
`
`may be used together or one after the other by consumers.
`
`14.
`
`Petitioner’s and Registrant’s products may be sold/provided in the same channels
`
`of trade to the same consumers or class of consumers.
`
`15.
`
`Due to the identity between Petitioner’s Mark and Registrant’s Registration, and
`
`the closely related nature of the goods of the respective parties, customers and potential
`
`customers, including especially consumers familiar with Petitioner’s Mark are likely to believe
`
`
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`3
`
`

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`that Registrant’s products originate from Petitioner, resulting in a likelihood of confusion in the
`
`marketplace, and damage to Petitioner.
`
`16.
`
`Registrant copied Petitioner’s Mark, including its particular display, virtually all
`
`elements of its design. Because of the related nature of the goods, and the identity of the marks,
`
`use and registration of Mark is likely to cause confusion, mistake, or deception that Registrant is
`
`the source , or are otherwise endorsed, sponsored, or approved by Petitioner causing further
`
`damage to Petitioner.
`
`WHEREFORE, Petitioner asks that Registrant’s Registration be cancelled under Section
`
`2(d) of the Lanham Act, 15 U.S.C. §1052(d), as amended.
`
`WHEREFORE, Petitioner prays that Registration be cancelled under Section 14 (3) of
`
`the Lanham Act, 15 U.S.C. §1064 (3). Petitioner submits herewith the requisite filing fee in the
`
`amount of $300. The Board is authorized to charge PTO Deposit Account No. 503478 for any
`
`additional charges or fees related to this filing.
`
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`Respectfully submitted,
`
`By: /Yinfei Wu/ ______________
` Yinfei Wu
`Hamre, Schumann, Mueller & Larson, P.C.
`P.O.BOX 2902
`Minneapolis, MN55402
`U.S.A.
`Attorney for Petitioner
`
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`4
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`Dated: June 20, 2016
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`Generated on: This page was generated by TSDR on 2016-06-20 14:51:30 EDT
`
`Mark: MS·SHE
`
`US Serial Number: 86684672
`
`US Registration
`Number:
`
`4895777
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jul. 06, 2015
`
`Registration Date: Feb. 02, 2016
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Feb. 02, 2016
`
`Publication Date: Nov. 17, 2015
`
`(cid:160)
`
`Mark Literal
`Elements:
`
`MS·SHE
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
`
`The mark consists of the wording "MS·SHE" in stylized font.
`
`Color(s) Claimed: Color is not claimed as a feature of the 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: Baselayer bottoms; Boxer shorts; Camisoles; Children's underwear; Coats; Coats for men and women; Dresses; Pajamas; Panties;
`Shirts; Short-sleeved shirts; Singlets; Skirts; Suits; Sweaters; Tee shirts; Trousers; Underpants; Underwear; Yoga pants
`
`International
`Class(es):
`
`025 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 022, 039
`
`First Use: Oct. 10, 2013
`
`Use in Commerce: Oct. 10, 2013
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`

`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Chengxiao, He
`
`Owner Address: No. 45-3-402, Shencai Community W.
`Gaosheng St., Xinglongtai Dist.
`Panjin, Liaoning CHINA
`
`Legal Entity Type: INDIVIDUAL
`
`Citizenship: CHINA
`
`Attorney/Correspondence Information
`
`Correspondent
`Name/Address:
`
`JASON DON
`CHAMPION INTELLECTUAL PROPERTY MANAGEMENT LIMITED
`1 YONGE STREET, SUITE 1801
`TORONTO, ONTARIO CANADA M5E1W7
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent e-
`mail:
`
`info@cipm.hk
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Feb. 02, 2016
`
`REGISTERED-PRINCIPAL REGISTER
`
`Nov. 17, 2015
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Nov. 17, 2015
`
`PUBLISHED FOR OPPOSITION
`
`Oct. 28, 2015
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Oct. 14, 2015
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Oct. 14, 2015
`
`ASSIGNED TO EXAMINER
`
`Jul. 09, 2015
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Jul. 09, 2015
`
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Staff Information - None
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Feb. 02, 2016
`
`Proceeding
`Number
`
`80801
`
`

`
`MS-SHE
`
`CIIENGXIAO, II3 (CHINA INDIVIDUAL)
`Reg, No_ 4,895,777
`NO. 45-3-402, SHENCAI COMMUNQTY W.
`_
`Registered Feb. 2, 2016 GAOSHFNG ST; XINGIONGTAI DIST.
`PANJIN, LIAONING. c IINA
`
`Int. Cl.: 25
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`FOR: BASELAYE { BOTTOMS;BOX1'R SHORTS; CAMISOLES; CHILDREN'S UNDERWEAR;
`COA"S; COATS FOR MENAND WOMEN; DRESSES; PAJAMAS; PANTIES; SHIRTS; SHORT-
`SLEEVED SHIRTS: SI\IGL3TS; SKIRTS; SUITS; SVVEATERS; TEE SHIRTS; TROUSERS;
`UNDERPANTS; UNDE QWEAR; YOGA PANTS; IN CLASS 25 (US. CLS. 22 AND 39).
`
`F RST USE 10-10-2013; IN COMMERCE 10-10-2013.
`
`THE VIARK CONSISTS OF THE WORDING "MS-SHE“ IN STYLIZED FONT.
`
`SER. NO. 86-684,672, FILED 7-6-2015.
`
`.TOHI\ WILKE, EXAMINING ATTORN
`
`Director of the United States
`Patent and Trademark Office
`
`

`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date. See 15 U.S.C. §§ 1058, ll41k.
`If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an
`Application for Renewal between the 9th and 10th yea rs after the registration date.*
`See 15 U.S.C. §l059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between
`every 9th and 10th-year period, calculated from the registration date. *
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office
`(USPTO). The time periods for filing are based on the U. S. registration date (not the international registration
`date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to
`those for nationally issued registrations.
`See 15 U.S.C. §§ 1058, ll41k. However, owners of international
`registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the
`underlying international registration at the International Bureau of the World Intellectual Property Organization,
`under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated
`from the date of the international registration. See 15 U.S.C. §114lj. For more information and renewal
`forms for the international registration, see http://www.wip0.inJ/rnadrid/en/.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online
`at http://www.uspto.gov.
`
`NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
`available at http://www.uspto. gov.
`
`Page: 2 /RN # 4,895,777
`
`

`
`Generated on: This page was generated by TSDR on 2016-06-20 14:51:51 EDT
`
`Mark: MS.SHE
`
`US Serial Number: 79178918
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing
`Date:
`
`Nov. 13, 2015
`
`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: Mar. 10, 2016
`
`(cid:160)
`
`Mark Literal
`Elements:
`
`MS.SHE
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Related Properties Information
`
`1279723
`
`International
`Registration
`Number:
`
`International
`Registration Date:
`
`Nov. 13, 2015
`
`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: Hosiery; caps headwear; motorists' clothing; neckties; shoes; waterproof clothing; clothing; girdles; gloves clothing; layettes clothing
`
`International
`Class(es):
`
`025 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 66(a)
`
`U.S Class(es): 022, 039
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: Yes
`
`Currently Use: No
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: Yes
`
`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: Guangzhou Bofuxiu Clothing Co., Ltd.
`
`

`
`Owner Address: Room 401, No. 902 Xingnan Road,
`Nancun Town, Panyu,; Guangzhou City; 510 000 Guangdong
`CHINA
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`CHINA
`
`Attorney/Correspondence Information
`
`Attorney of Record - None
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Beijing Sndre International
`Intellectual Property Attorney Co., Ltd.
`PO Box 100045-28
`100045 Beijing
`CHINA
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Mar. 26, 2016
`
`REFUSAL PROCESSED BY IB
`
`Mar. 10, 2016
`
`NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
`
`Mar. 10, 2016
`
`REFUSAL PROCESSED BY MPU
`
`Mar. 10, 2016
`
`NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
`
`Mar. 09, 2016
`
`NON-FINAL ACTION WRITTEN
`
`Mar. 08, 2016
`
`ASSIGNED TO EXAMINER
`
`Jan. 01, 2016
`
`APPLICATION FILING RECEIPT MAILED
`
`Dec. 28, 2015
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Dec. 17, 2015
`
`SN ASSIGNED FOR SECT 66A APPL FROM IB
`
`International Registration Information (Section 66a)
`
`1279723
`
`International
`Registration
`Number:
`
`Intl. Registration
`Status:
`
`REQUEST FOR EXTENSION OF PROTECTION
`PROCESSED
`
`Notification of
`Designation Date:
`
`Dec. 17, 2015
`
`International
`Registration
`Renewal Date:
`
`Nov. 13, 2025
`
`First Refusal Flag: Yes
`
`International
`Registration Date:
`
`Nov. 13, 2015
`
`Dec. 17, 2015
`
`Date of
`International
`Registration
`Status:
`
`Date of Automatic
`Protection:
`
`Jun. 17, 2017
`
`TM Staff and Location Information
`
`TM Attorney: NOBLE, ANNIE MELISSA
`
`Current Location: TMEG LAW OFFICE 109 - EXAMINING
`ATTORNEY ASSIGNED
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 109
`
`File Location
`
`Date in Location: Mar. 09, 2016
`
`Proceeding
`Number
`
`67445
`
`91171
`
`91171
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I HEREBY CERTIFY that a true and correct copy of the above and foregoing
`PETITIONER’S PETITION FOR CANCELLATION has been deposited with the United States
`Postal Service, first class mail, in an envelope addressed to Applicant:
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`JASON DON
`CHAMPION INTELLECTUAL PROPERTY MANAGEMENT LIMITED
`1 YONGE STREET, SUITE 1801
`TORONTO, ONTARIO CANADA M5E1W7
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`On this _20th__ day of June, 2016.
`Dated: June 20, 2016
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`Hamre, Schumann, Mueller & Larson, P.C.
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`By: /Yinfei Wu/ ______________
` Yinfei Wu