Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA800371
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`Filing date:
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`02/09/2017
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Petition for Cancellation
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`Notice is hereby given that the following party requests to cancel indicated registration.
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`Petitioner Information
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`Name
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`Entity
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`Address
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`Plaza Izalco, Inc.
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`Corporation
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`417 Clifford Avenue
`Alexandria, VA 22305
`UNITED STATES
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`Citizenship
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`Virginia
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`Attorney informa-
`tion
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`Oliver A. Ruiz
`Malloy & Malloy, P.L.
`2800 SW 3rd Ave
`Miami, FL 33129
`UNITED STATES
`jcmalloy@malloylaw.com, oruiz@malloylaw.com, jnmcdonald@malloylaw.com,
`litigation@malloylaw.com Phone:3058588000
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`Registration Subject to Cancellation
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`Registration No
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`4581604
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`Registration date
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`08/05/2014
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`Registrant
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`Pharmadel Llc
`178 Venture Dr.
`Seaford, DE 19973
`UNITED STATES
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`Goods/Services Subject to Cancellation
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`Class 005. First Use: 2013/06/21 First Use In Commerce: 2013/06/21
`All goods and services in the class are cancelled, namely: Adhesive bandages; Adhesive bands for
`medical purposes; Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm; Anti-
`inflammatory gels; Anti-inflammatory salves; Anti-inflammatory sprays; Balms for medical purposes;
`Balms for pharmaceutical purposes; Curare for use as a muscle relaxant; Herbal topical creams,
`gels, salves, sprays, powder,balms, liniment and ointments for the relief of aches and pain; Medica-
`ments forpromoting recovery from tendon and muscle injuries and disorders and sports related injur-
`ies; Multipurpose medicated antibiotic cream, analgesic balm and mentholated salve; Muscle relax-
`ants; Sports cream for relief of pain; Therapeutic spray to sooth and relax the muscles
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`Class 010. First Use: 2013/06/21 First Use In Commerce: 2013/06/21
`All goods and services in the class are cancelled, namely: Drug delivery patches sold without medic-
`ation; Elastic bandages
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`Grounds for Cancellation
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`Priority and likelihood of confusion
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`Trademark Act Sections 14(1) and 2(d)
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`The mark is primarily merely a surname
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`Trademark Act Sections 14(1) and 2(e)(4)
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`

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`Mark Cited by Petitioner as Basis for Cancellation
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`U.S. Application
`No.
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`86029611
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`Application Date
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`08/06/2013
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`Registration Date
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`NONE
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`Word Mark
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`Design Mark
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`COFAL
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`Foreign Priority
`Date
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`NONE
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`Description of
`Mark
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`Goods/Services
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`NONE
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`Class 005. First use: First Use: 2006/02/00 First Use In Commerce: 2006/02/00
`Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm;
`Analgesic preparations; Curare for use as a muscle relaxant; Medicaments for
`promoting recovery from tendon and muscle injuries and disorders and sports
`related injuries; Multipurpose medicated antibioticcream, analgesic balm and
`mentholated salve; Muscle relaxants
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`Attachments
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`86029611#TMSN.png( bytes )
`2017 02 09 Petition to Cancel FINAL.pdf(121518 bytes )
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`Signature
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`Name
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`Date
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`/Oliver A. Ruiz/
`
`Oliver A. Ruiz
`
`02/09/2017
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the matter of Registration No. 4,581,604
`For the mark “KOFAL”
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`___________________________________
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`PLAZA IZALCO, INC.,
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`Petitioner,
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`vs.
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`PHARMADEL, LLC
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`Registrant.
`___________________________________
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`)
`)
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`) Cancellation No.
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`)
`)
`)
`)
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`PETITION TO CANCEL
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`
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`COMES NOW the Petitioner, Plaza Izalco, Inc. (“Petitioner”), a Virginia corporation
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`having its principal place of business at 417 Clifford Avenue, Alexandria, Virginia 22315, and
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`hereby petitions to cancel U.S. Registration No. 4,581,604 for “KOFAL” owned by Pharmadel
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`LLC (“Registrant”), a Delaware company having an address of 178 Venture Drive, Seaford,
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`Delaware 19973. As set forth below, Petitioner is damaged by Registration No. 4,581,604 and
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`alleges the following for cancellation of same:
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`CLAIM UNDER SECTION 2(d)
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`1.
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`The trademark registration sought to be cancelled is Registration No. 4,581,604
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`for the alleged mark “KOFAL” for use on “Adhesive bandages; Adhesive bands for medical
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`purposes; Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm; Anti-
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`inflammatory gels; Anti-inflammatory salves; Anti-inflammatory sprays; Balms for medical
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`purposes; Balms for pharmaceutical purposes; Curare for use as a muscle relaxant; Herbal
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`

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`topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches
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`and pain; Medicaments for promoting recovery from tendon and muscle injuries and disorders
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`and sports related injuries; Multipurpose medicated antibiotic cream, analgesic balm and
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`mentholated salve; Muscle relaxants; Sports cream for relief of pain; Therapeutic spray to sooth
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`and relax the muscles”, in International Class 5 and “Drug delivery patches sold without
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`medication; Elastic bandages”, in International Class 10. Registrant’s application was filed on
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`July 10, 2013, registered on August 5, 2014, and claims June 21, 2013 as the date of first use in
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`commerce.
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`2.
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`Long prior to Registrant’s filing date and claimed date of first use in commerce,
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`Petitioner and/or Petitioner’s predecessor(s), adopted the trademark “COFAL” for use in
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`connection with “Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm;
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`Analgesic preparations; Curare for use as a muscle relaxant; Medicaments for promoting
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`recovery from tendon and muscle injuries and disorders and sports related injuries;
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`Multipurpose medicated antibiotic cream, analgesic balm and mentholated salve; Muscle
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`relaxants”. Petitioner has since continuously used the “COFAL” Mark in interstate commerce
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`for and in connection with its products and has not abandoned this mark.
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`3.
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`On August 6, 2013, Petitioner filed an application with the United States Patent
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`and Trademark Office (“PTO”), namely, application Serial No. 86/029,611 for “COFAL” for use
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`on “Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm; Analgesic
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`preparations; Curare for use as a muscle relaxant; Medicaments for promoting recovery from
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`tendon and muscle injuries and disorders and sports related injuries; Multipurpose medicated
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`antibiotic cream, analgesic balm and mentholated salve; Muscle relaxants”, in International
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`Class 005 (hereinafter “Petitioner’s Application”).
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`2
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`

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`4.
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`On June 29, 2015, the Examining Attorney assigned to Petitioner’s Application
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`issued an Office Action setting forth a Section 2(d) refusal prefaced in part on Registration No.
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`4,581,604.
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`5.
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`Petitioner has expended considerable time, money, and effort in promoting its
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`goods under the “COFAL” Mark. The strength of Petitioner’s Mark has grown such that
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`Petitioner has established exceedingly valuable goodwill in the “COFAL” Mark.
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`6.
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`The Petitioner has priority of use over Registrant with respect to the “COFAL”
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`Mark.
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`7.
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`Based on the position taken by the Examining Attorney, if Registrant is permitted
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`to keep Registration No. 4,581,604, there will be a continued likelihood of confusion, mistake,
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`and deception among the consuming public and the trade, all in violation of § 2(d) of the Lanham
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`Act, 15 U.S.C. § 1052(d).
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`CLAIM UNDER SECTION 2(e)(4)
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`8.
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`Petitioner re-alleges the allegations contained in Paragraphs 1 through 7 as if fully
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`set forth herein.
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`9.
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`Upon information and belief, Registrant’s alleged mark “KOFAL” is primarily
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`merely a surname, and is not registrable under 15 U.S.C. §1052(e)(4) because its primary
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`significance to the purchasing public is that of a surname.
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`10.
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`Upon information and belief, the alleged mark “KOFAL” does not have any
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`recognized meaning other than as a surname, and has not acquired distinctiveness.
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`WHEREFORE, Petitioner prays that this Petition to Cancel be granted and that the
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`aforesaid Registration No. 4,581,604 for the mark “KOFAL” be cancelled.
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`The fee required in 37 C.F.R. § 2.6(a)(16) is enclosed herewith.
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`3
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`Dated: February 9, 2017
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`Respectfully submitted,
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`
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`By: /Oliver A. Ruiz/
`
`John Cyril Malloy, III
`Florida Bar No. 964,220
`jcmalloy@malloylaw.com
`Oliver A. Ruiz
`Florida Bar No. 524,786
`oruiz@malloylaw.com
`Jessica Neer McDonald
`Florida Bar No. 125,559
`jnmcdonald@malloylaw.com
`MALLOY & MALLOY, P.L.
`Attorneys for Petitioner
`2800 S.W. Third Avenue
`Miami, Florida 33129
`Telephone: (305) 858-8000
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`CERTIFICATE OF FILING
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`
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`I HEREBY CERTIFY that the foregoing Petition to Cancel was filed electronically via
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`the ESTTA, at the United States Patent and Trademark Office, Trademark Trial and Appeal
`Board’s ESTTA electronic filing system, on February 9, 2017.
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`By:
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`/Oliver A. Ruiz/
`Oliver A. Ruiz
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`CERTIFICATE OF SERVICE
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`In connection with its Institution Order, the U.S. Trademark Trial and Appeal Board will
`serve a true and complete copy of the foregoing Petition to Cancel on the current owner of the
`registration sought to be canceled. Based on a review of TSDR, the current owner’s information
`is provided below:
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` Pharmadel Llc
`178 Venture Dr.
`Seaford, DE 19973
`
`
`
`
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`By:
`
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`/Oliver A. Ruiz/
`Oliver A. Ruiz
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`4
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