Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`
`ESTTA775219
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`10/06/2016
`
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Echelon Corporation
`Corporation
`12901 Patrick Henry Drive
`Santa Clara, CA 95054
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney informa-
`tion
`
`Dax Alvarez
`SNELL & WILMER L.L.P.
`400 East Van Buren Street Suite 1900
`Phoenix, AZ 85004-2202
`UNITED STATES
`ipladocket@swlaw.com, dalvarez@swlaw.com, jlpeterson@swlaw.com
`Phone:213.929.2500
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`4306102
`PETRA SYSTEMS, INC.
`ONE CRAGWOOD ROAD
`SOUTH PLAINFIELD, NJ 07080
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/19/2013
`
`Class 009. First Use: 2011/10/11 First Use In Commerce: 2012/12/21
`All goods and services in the class are cancelled, namely: A wireless streetlight management system
`consisting of a lighting control device and internal software, to be mounted on streetlights, that monit-
`ors streetlights and controls the on/off and dimming of the lights, while monitoring energy consump-
`tion and promoting energy efficiency
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`Abandonment
`
`Trademark Act Sections 14(1) and 2(d)
`Trademark Act Section 14(3)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`86691427
`
`NONE
`
`Word Mark
`
`LUMEWAVE
`
`Application Date
`
`07/13/2015
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA Tracking number:
`
`ESTTA775219
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`10/06/2016
`
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Echelon Corporation
`Corporation
`12901 Patrick Henry Drive
`Santa Clara, CA 95054
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney informa-
`tion
`
`Dax Alvarez
`SNELL & WILMER L.L.P.
`400 East Van Buren Street Suite 1900
`Phoenix, AZ 85004-2202
`UNITED STATES
`ipladocket@swlaw.com, dalvarez@swlaw.com, jlpeterson@swlaw.com
`Phone:213.929.2500
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`4306102
`PETRA SYSTEMS, INC.
`ONE CRAGWOOD ROAD
`SOUTH PLAINFIELD, NJ 07080
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/19/2013
`
`Class 009. First Use: 2011/10/11 First Use In Commerce: 2012/12/21
`All goods and services in the class are cancelled, namely: A wireless streetlight management system
`consisting of a lighting control device and internal software, to be mounted on streetlights, that monit-
`ors streetlights and controls the on/off and dimming of the lights, while monitoring energy consump-
`tion and promoting energy efficiency
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`Abandonment
`
`Trademark Act Sections 14(1) and 2(d)
`Trademark Act Section 14(3)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`86691427
`
`NONE
`
`Word Mark
`
`LUMEWAVE
`
`Application Date
`
`07/13/2015
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 0 First Use In Commerce: 0
`Computer hardware and software systems for installing, monitoring, sensing,
`diagnosing, maintaining and controlling lighting systems and fixtures; automation
`systems comprising wireless and wired controllers, namely, electronic sensors,
`and software for lighting systems and lighting fixtures; computer networking
`hardware; communications transceivers and network routers; premise and
`cloud-based network management software; computer operating software; com-
`puter software for the monitoring and controlling of lightingsystems, lighting net-
`works, automation systems for commercial production facilities, residential and
`commercial buildings, embedded systems networks, home automation net-
`works, commercial automation networks, industrial automation net-
`works,transportation control networks and utility networks; computer hardware
`interfaces, namely, electronic controls for lighting systems, lighting networks,
`commercial production facilities, residential and commercial buildings, embed-
`ded systems networks, home automation networks, commercial automation net-
`works, industrial automation networks, transportation control networks and utility
`networks; computer hardware, software and firmware for use in enterprise man-
`agement, premise-based or cloud-based data aggregation and analysis
`
`Attachments
`
`86691427#TMSN.png( bytes )
`68827.00010 - Petition for Cancellation.pdf(301253 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
`
`/Dax Alvarez/
`Dax Alvarez
`10/06/2016
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OF'FICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARI)
`
`Our Ref. No. 68827.00010
`
`Cancellation No
`
`U.S. Registration No. 4,306,102
`
`) ) )) ) ) ) ) ) ))
`
`Date of Registration: March 19,2013
`
`Echelon Corporation,
`
`Petitioner,
`
`V
`
`Petra Systems, Inc.,
`
`Registrant.
`
`PETITION FOR CANCELLATION
`
`Echelon Corporation, a Delaware corporation, having a principal place of business at 12901
`
`Patrick Henry Drive, Santa CIara, California 95054 (hereinafter referred to as ooPetitioner"), believes
`that it will be damaged by Registration No. 4,306,102, (hereinafter referred to as the oo ol02
`
`Registration") and hereby petitions to cancel same.
`
`As grounds therefor, it is alleged that:
`
`1 .
`
`The Registrant obtained the ' 1 02 Registration on March 19, 2013 for the
`
`ILLUMIWAVE mark for use with:
`
`"A wireless streetlight management system consisting of a lighting
`control device and internal software, to be mounted on streetlights,
`that monitors streetlights and controls the on/off and dimming of
`the lights, while monitoring energl consumption and promoting
`energy fficiency, " in International Class 9.
`
`First use of the mark anywhere as claimed by Registrant in the subject registration is October 11,
`
`20II; the first use of the mark in commerce as claimed by Registrant in the subject registration is
`
`24983866
`
`1
`
`
`
`December 21,2012.
`
`2.
`
`Petitioner, including via a predecessor in interest, namely Lumewave, Inc., adopted
`
`and continually used the LUMEWAVE mark with a variety of computer hardware, computer
`
`software and technology related products well before the Registrant.
`
`3.
`
`Petitioner has applied to register the LUMEV/AVE mark at the United States Patent
`
`and Trademark Office, said application bearing Serial No. 86/691 ,427. Said application has been
`
`refused registration under Section 2(d) of the Trademark Act based on the '102 Registration which
`
`is attached hereto and incorporated by reference as Exhibit A.
`4.
`5.
`
`Petitioner has developed extensive goodwill with respect to its LUMEV/AVE mark.
`
`Petitioner has spent substantial sums in the advertising and promotion of goods and
`
`related services which bear the LUMEV/AVE mark.
`
`6.
`
`By virtue of the excellent quality of Petitioner's goods and services, expenditures of
`
`considerable sums in promoting such goods and services, and by advertising, the Petitioner has
`
`garnered a most valuable reputation for the LUMEWAVE mark.
`
`7.
`
`The goods and services on which Petitioner uses the LUMEV/AVE mark are elosely
`
`related to the goods of the Registrant found in the '102 Registration.
`
`8.
`
`Purchasers may be likely to consider the goods of the Registrant bearing the
`
`ILLUMIV/AVE mark as emanating from Petitioner and may believe such goods to be those of
`
`Petitioner.
`
`9.
`
`If the Registrant is permitted to retain the'I02 Registration sought to be cancelled, a
`
`cloud will be placed on Petitioner's title in and to its LUMEWAVE mark and on its right to enjoy
`
`the free and exclusive use thereof in connection with the sale of its goods and services all to the
`
`great injury of Petitioner. Persons familiar with Petitioner's mark may buy Registrant's goods as
`
`24983866
`
`2
`
`
`
`and for goods sold by or associated with the Petitioner. Any such confusion in trade might result in
`
`a loss of sales to the Petitioner.
`
`10. Further, any defect, objection, or fault found with Registrant's goods marketed under
`
`the ILLUMIV/AVE mark may reflect upon and seriously injure the reputation which the Petitioner
`
`has established for its goods and services marketed under the LUMEV/AVE mark.
`
`1 1.
`
`If Registrant is permitted to maintain its registration, the same may be deemed
`
`incontestable after five (5) years from the date of the registration and Registrant would thereby
`
`obtain an incontestable right to use its mark in commerce. The continued existence of such
`
`registration casts a cloud upon Petitioner's right to continue to use, register, and expand the use of
`
`the LUMEV/AVE mark. Such registration would thus be a source of damage and injury to
`
`Petitioner.
`
`12. Upon information and belief, Registrant has discontinued the use of the
`
`ILLUMIWAVE mark with no intent to resume use.
`13. Upon information and belief, Registrant is not using the ILLUMIV/AVE mark in
`
`commerce
`
`14. Upon information and belief, Registrant has abandoned the ILLUMIWAVE mark as
`
`defined in 15 USC Section 1127.
`15. Petitioner seeks to cancel the'I02 Registration on the ground that if Registrant is
`
`permitted to retain said registration, Registrant will thereby have the prima facie exclusive right to
`
`use the ILLUMIV/AVE mark in commerce for goods arguably related to the goods and services
`
`provided by Petitioner. Consequently, Petitioner will be precluded from registering its
`
`LUMEWAVE mark and thereby denied the benefits available therefrom.
`
`aJ
`
`24983866
`
`
`
`V/HEREFORE, the Petitioner prays that Registration No. 4,306,102 be cancelled.
`
`Please charge any additional fees or credit any overpayment to our Deposit Account No.
`
`1928t4
`
`Respectfully submitted,
`
`SNell & Wruven L.L.P
`
`Dated: October 6,2016
`
`By
`
`Dax Alvarez
`Counsel þr Petitioner
`
`350 South Grand Avenue
`Suite 2600
`Los Angeles, Califomia 9007 I
`2r3.929.2500
`
`I hereby certify that this correspondence is being
`transmitted electronically to the United States Patent
`and Trademark Office on October 6,2016.
`
`J
`
`L
`
`6,2016
`
`24983866
`
`4
`
`
`
`CERTIF'ICATE OF SERVICE
`
`I hereby certify that atrue and correct copy of the foregoing document entitled:
`
`PETITION FOR CANCELLATION
`
`was served on counsel for Applicant by first class mail, postage prepaid, in a sealed envelope
`
`addressed as follows:
`
`Nikki Siesel, Esq.
`Law Offices of Joseph C. Messina
`4}4Mamaroneck Ave
`Mamaroneck, New York 10543-2613
`
`Executed on October 6,2016, at Los Angeles, California.
`
`/
`L. Peterson
`
`J
`
`24983866
`
`5
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`
`
`10t6t2016
`
`Trademark Electronic Search System (TESS)
`
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`Trademarks > Trademark Electronic Search System (TESS)
`
`IESS was last updated on Thu Oct 6 03:21:A2 EDT 2016
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`Word Mark ILLUMIWAVE
`Goodsand 1C009. US021 023026 036038. G&S: Awirelessstreetlightmanagementsystemconsistingof alighting
`Services control device and intemal software, to be mounted on streetlights, that monitors streetlights and controls the
`on/off and dimming of the lights, while monitoring encrgy consumption and promoting energy efficiency. FIRST
`USE: 20111011. FIRST USE lN COMMERCE":20121221
`
`Bs4339sB
`
`Standard
`Gharacters
`Glaimed
`Mark
`Drawing (4)STANDARDCHARACTERMARK
`Gode
`serial
`Number
`Filing Date September 28,2011
`Current 4 ^
`Basis
`Original I Ft
`Filing Basis '-
`Published
`for
`Opposition
`Registration 4306102
`Number
`Registration March 19, 2013
`Owner
`(REGISTRANT)Petra Solar, lnc. CORPORATION DELAWARE 300-G Corporate Court South Plainfield NEW
`JERSEY O7O8O
`
`May 29,2012
`
`(LAST LTSTED OWNER)PETRA SYSTEMS, lNC. CORPORATION DELAWARE ONE CRAGWOOD ROAD
`SUITE 303 SOUTH PLAINFIELD NEW JERSEY OTOBO
`å::y.iffi "t Rs s r c rurt¡ E Nr REcoRDE D
`*I:ïY or
`ru¡t.t<i sieset, Esq.
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`TYPe of
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`TRADEMARK
`
`http://tmsearch.uspto.gov/bi
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`
`:xpp364.3. 1
`
`212
`
`
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