Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA848616
`
`Filing date:
`
`09/27/2017
`
`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 has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`KHAADI (SMC-PVT.) LIMITED
`
`private limited liability
`
`Citizenship
`
`Pakistan
`
`F-2A/1 Hub River Road, S.I.T.E.
`Karachi, 0
`PAKISTAN
`
`Harold L. Novick
`Attorney for Petitioner
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`UNITED STATES
`Email: hnovick@nkllaw.com, docket@nkllaw.com, hnovick@novick.com, gdo-
`nahue@nkllaw.com, djung@nkllaw.com
`Phone: (703) 745-5495
`
`Registration Subject to Cancellation
`
`Registration No.
`
`4784973
`
`Registration date
`
`08/04/2015
`
`Registrant
`
`Sheikh, Farooq
`116-17 Sutphin Boulevard
`Jamaica, NY 11434
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 025. First Use: 1998/03/03 First Use In Commerce: 1998/03/03
`All goods and services in the class are subject to cancellation, namely: Men, women and children's
`clothing, namely, shirts, pants, jackets, shalwar kameez in the nature of suits with long or short shirts
`and loose trousers, kurta in the nature of long and short loose shirts, sherwani in the nature of long
`coats, and trousers; footwear, namely, leather shoes, sandals and khussa in the nature of flat shoes;
`headgear, namely, turbans, caps and abayas in the nature of head scarves
`
`Grounds for Cancellation
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was filed
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`
`
`ESTTA Tracking number:
`
`ESTTA848616
`
`Filing date:
`
`09/27/2017
`
`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 has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
`
`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`KHAADI (SMC-PVT.) LIMITED
`
`private limited liability
`
`Citizenship
`
`Pakistan
`
`F-2A/1 Hub River Road, S.I.T.E.
`Karachi, 0
`PAKISTAN
`
`Harold L. Novick
`Attorney for Petitioner
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`UNITED STATES
`Email: hnovick@nkllaw.com, docket@nkllaw.com, hnovick@novick.com, gdo-
`nahue@nkllaw.com, djung@nkllaw.com
`Phone: (703) 745-5495
`
`Registration Subject to Cancellation
`
`Registration No.
`
`4784973
`
`Registration date
`
`08/04/2015
`
`Registrant
`
`Sheikh, Farooq
`116-17 Sutphin Boulevard
`Jamaica, NY 11434
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 025. First Use: 1998/03/03 First Use In Commerce: 1998/03/03
`All goods and services in the class are subject to cancellation, namely: Men, women and children's
`clothing, namely, shirts, pants, jackets, shalwar kameez in the nature of suits with long or short shirts
`and loose trousers, kurta in the nature of long and short loose shirts, sherwani in the nature of long
`coats, and trousers; footwear, namely, leather shoes, sandals and khussa in the nature of flat shoes;
`headgear, namely, turbans, caps and abayas in the nature of head scarves
`
`Grounds for Cancellation
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was filed
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`
`
`Attachments
`
`Petition to Cancel with Exhibits - FINAL.pdf(2625748 bytes )
`
`Signature
`
`/Harold L. Novick/
`
`Name
`
`Date
`
`Harold L. Novick
`
`09/27/2017
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration N0.: 4,?84,973
`
`Cancelation No.
`
`Registration No.: 4,784,973
`
`Issued: August 4, 2015
`
`) ) ) ) ) )
`
`) ) ) ) ) )
`
`KHAADI (SMC-PVT.) LIMITED
`
`Petitioner,
`
`v.
`
`FAROOQ SHEIKH
`
`Registrant
`
`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`PO. Box 1451
`
`Alexandria, VA 2313-1451
`
`For antine submission via ESTTA
`
`PETITION FOR CANCELLATION
`
`Petitioner, KHAADI (SMC-PVT.) LIMITED (“KHAADI”), a private limited liability
`
`company, believes it has been or will be damaged by the existence of Registration N0.:
`
`4384973, and hereby petitions for the cancellation of the same, by and through undersigned
`
`counsel, pursuant 15 U.S.C. §1064(3), on grounds of fraud and abandonment.
`
`The grounds for cancellation are as follows:
`
`1. Petitioner, KHAADI (SMC-PVT.) LIMITED (“KHAADI”),
`
`is a private limited
`
`liability company duly organized and existing under the laws of the country of
`
`
`
`Pakistan, with a principal place of business at F-2Az’1 Hub River Road, S.I.T.E.
`
`Karachi, PAKISTAN.
`
`Registrant, Farooq Sheikh (“Sheikh”) is, upon information and belief, an individual
`
`resident and a citizen of the State of New York, with an address of record of 1 16-] 'i'
`
`Sutphin Boulevard, Jamaica, New York 1 1434.
`
`. On March 20, 201?, KHAADI has filed a trademark application, Application Serial
`
`No.: 87/378,22? (“ KHAADI’S Mark”) for its use of the KHAADI + Design mark as,
`
`reproduced below:
`
`raw-w- Khaadi
`
`KHAADI has been using KHAADI'S Mark in interstate commerce as early as March
`
`22, 2014 and in Pakistan since 1998. KHAADI has expanded KHAADI branded
`
`goods in many other countries including United Arab Emirates, Malaysia and the
`
`United Kingdom.
`
`. The Examining Attorney has cited Sheikh‘s Registration as the basis for a Section
`
`2(d) refusal of KHAADI’S Mark.
`
`In particular, the Examining Attorney has stated
`
`that “applicant’s mark is “KHAADI” with a design element and registrant’s mark is
`
`“KHAADI” with the same design element. These marks are identical in appearance,
`
`sound, and meaning....[b]ecause they are virtually identical, these marks are likely to
`
`engender the same connotation and overall commercial impression when considered
`
`in connection with applicant’s and registrant’s respective goods and/or services.”
`
`
`
`6.
`
`On November 24, 2014, Sheikh caused to be signed and then filed an “actual use”
`
`application under 15 U.S.C. §1051(a) of the Lanham Act to register the following
`
`design mark (“The Mark”):
`
`'«WKhaadi
`
`Sheikh's application (“Application") was designated application serial number
`
`862'464,552.
`
`Sheikh indicated and claimed in his Application that he was using The Mark in
`
`interstate commerce as early as March 3, 1998.
`
`A true and accurate copy of the Application, with a specimen, available through the
`
`on-line TSDR (Trademark Status and Document Retrieval) System of the United
`
`States Patent and Trademark Office (“U.S. PTO”), is attached as Exhibit A.
`
`A specimen submitted by Sheikh is a screenshot from a websites www.khadi.com
`
`and/or www.khaadi0nline.com, both of these domain names are registered and owned
`
`by KHAADI. See attached Exhibit B.
`
`The Mark submitted by Sheikh was first created, adopted and used by KHAADI.
`
`Upon information and belief, by the time of the filing of the Application, Sheikh had
`
`not himself devised andfor created The Mark.
`
`10.
`
`11.
`
`12.
`
`
`
`l3.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`19.
`
`20.
`
`Upon information and belief, at the time of the filing of the Application, Sheikh had
`
`not adopted The Mark.
`
`Upon information and belief, Sheikh has never used The Mark in connection with the
`
`goods identified in his Application.
`
`Upon information and belief, Sheikh abandoned all his alleged trademark rights in
`
`The Mark.
`
`Sheikh’s intentional abandonment of The Mark is witnessed by, among other facts,
`
`non-use of The Mark, Sheikh‘s address of record of 116-17 Sutphin Boulevard,
`
`Jamaica, New York 11434 belongs to a construction company by the name of Futura
`
`Building Restoration L-LC or Futura Builders Group,
`
`Inc. Printouts
`
`from
`
`futurabuilderscom is attached as Exhibit C.
`
`The Registration is subject to cancellation because Sheikh abandoned any use, as well
`
`as his intent to use, The Mark.
`
`Sheikh committed fraud in procuring the US. Trademark Registration 4,784,9'x'3
`
`(“Registration”) by knowingly making one or more false material representations of
`
`facts with the intent to deceive the US. PTO in connection with the Application.
`
`Upon information and belief, Shaikh knew at the time of signing and filing the
`
`Application that he did not own The Mark.
`
`Upon information and belief, Sheikh knew at the time of signing and filing the
`
`Application that he was not using The Mark.
`
`
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`2?.
`
`28.
`
`Upon information and belief, Sheikh knew at the time of signing and filing the
`
`Application that he did not reside at the address of record.
`
`Despite knowing that he did not own or was using The Mark, Sheikh falsely asserted
`
`in his Application that he was using The Mark with the goods listed in the
`
`Application and provided a specimen, namely, a screenshot from a website that is
`
`owned by KHAADI and provided an address where he did not reside. Such actions
`
`and false statements constitute fraud.
`
`In addition, Sheikh knew or should have known, andi’or recklessly disregarded the
`
`truth when signing and filing his Application, that it contained many falsities.
`
`Sheikh's representations of facts in the Application were material.
`
`Upon information and belief, Sheikh intended to deceive the US. PTO through his
`
`false statements in the Application.
`
`Sheikh’s false statements were, unfortunately successful, inasmuch as the US. PTO
`
`relying on the truth of Sheikh’s statements, accepted the Application and granted the
`
`Registration, which is the Registration No.: 4,784,973.
`
`Upon information and belief, one purpose of Sheikh‘s fraud was to obtain the
`
`Registration in order to ride on the fame of KHAADI’s mark i.e. KHAADI + Design
`
`in the territory of the United States of America by falsely alleging trademark rights.
`
`Upon information and belief, Sheikh submitted a reproduced copy of KHAADI‘S
`
`mark with a screenshot from KHAADl’s websites as a specimen and provided an
`
`address with the US. PTO where he does not reside or conduct any business.
`
`
`
`29. The Registration is subject to cancellation because the Registration was obtained
`
`fraudulently.
`
`30. KHAADI will be damaged if Sheikh's Registration is not cancelled.
`
`WHEREFORE, KHAADI, by and through its undersigned attorneys, respectfully request that its
`
`Petition be granted and that the Registration be cancelled.
`
`Date: September 27, 2017
`
`RESPECTFULLY SUBMITTED,
`
`/Harold L Novick/
`Harold L. Novick
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`Telephone: (703) 745-5495
`Facsimile: (703) 563-9748
`Email: hnovick@nkllaw.com
`
`Attorneys for Petitioner
`KHAADI (SMC-PVT.) LIMITED
`[Attorney ref: LN0220063]
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the date indicated below a copy of the foregoing
`document (with Exhibits) was served via electronic mail at
`mswyers@thetrademarkcompany.com, read receipt requested and upon the following by
`depositing a copy thereof in the United States Mail, postage prepaid, and addressed as follows:
`
`Farooq Sheikh
`c/o Matthew H. Swyers
`The Trademark Company
`344 Maple Ave W # 151
`Vienna, VA 22180-5612
`Registrant's correspondence address o f record in the Office
`
`Date: September 27, 2017
`
`Signed: /Harold L Novick/
`Harold L. Novick
`NOVICK, KIM & LEE, PLLC
`3251 Old Lee Highway, Suite 404
`Fairfax, VA 22030
`Telephone: (703) 745-5495
`Facsimile: (703) 563-9748
`Email: hnovick@nkllaw.com
`
`Attorneys for Petitioner
`KHAADI (SMC-PVT.) LIMITED
`[Attorney ref: LN0220063]
`
`7
`
`
`
`EXHIBIT A
`
`
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 86464552
`
`Filing Date: 1112512014
`
`
`
`The table below presents the data as entered.
`
`SERIAL NUMBER
`
`MARK INFORMATION
`
`86464552
`
`*MARK
`\\TICRS_\EXP'ORTI 6\IMAGEOU_T
`16\864\645\86464552\xn1ll\ APPOUUZJ PG
`
`
`SPECIAL FORM
`YES
`
`
`_ USPTO-GENERATED IMAGE
`N0
`
` LITERAL ELEMENT KHAADI
`
`
`
`COLOR MARK
`NO
`I *DESCRIP’I‘ION OF THE MARK
`The mark consists ofthe phrase "Kl-IAADI" in stylized,
`classical serif text. To the left of the text is a stylized logo of
`(and Color Location. if applicable}
`ten oblong shapes meant to indicate the fingers on a hand.
`
`PIXEL COUNT ACCEPTABLE
`N0
`
`‘
`
`PIXEL COUNT
`270 x 48
`
`
`
`Principal
`:REGISTER
`:APPLICAN-T INFORMATION
`
`
`_ *OWNER OF MARK
`Sheikh, FaroOq
`
`*‘S‘IREET
`l 16~17 Sutphin Boulevard
`
`
`‘0'”
`Jamaica
`
`£3211: for us. applicants)
`
`
`New York
`
`_*coumnr
`
`United States
`
`*ZIPI‘POSTAL CODE
`1 1434
`
`(Required for US. applicants only)
`[-LEGAL ENTITY INFORMATION
`
`
`individual
`)TYPE.
`COUNTRY OF CITIZENSHIP United States
`
`
`
`GOODS ANDIOR SERVICES AND BASIS INFORMATION
`
`INTERNATIONAL CLASS
`
`025
`
`
`
`
`*IDENTIFICATION
`
`Men, women and children's clothing. namely. shirts, pants,
`jackets, shalwar kameez in the nature of suits with long or
`short shins and loose trousers, kurta in the nature of long and
`short loose shirts. sherwani in the nature of long coats. and
`trousers; footwear. namely. leather shoes. sandals and khussa
`in the nature of flat shoes; headgear, namely. turbans. caps and
`abayas in the nature of head scarves.
`
`
`
`
`
`FILING BASIS
`SECTION 1(a)
`FIRST USE ANYWHERE DATE
`At least as early as 03/03}! 998
`
`FIRST USE IN COMMERCE DATE.
`At least as early as 03!03a’l998
`
`\\TICRS\EXPORT I 6\l MAG EOUT'
`SPECIMEN
`
`FILE NAME(S) |6\864\645\86464552\me1\APP0003JPG
`
`SPECIMEN DESCRIPTION
`
`Applicant's trademark featured in conjunction with ordering
`clothing specifically with purchasing information and pricing
`evident to reflect the current use of the mark in connection with
`clothing.
`-_ ADDITIONAL STATEMENTS SECTION
`
`No claim is made to the exclusive right to use CLOTH,
`
` DISCLAIMER HAND-SPUN apart from the mark as shown.
`
`The English translation of KHADDAR in the mark is HAN D-
`SPUN CLOTH. The wording KHAADI has no meaning in a
`TRANSLA'I‘ION
`foreign language.
`
`The phrase"KHAADI" is a re-working of "KHAADAR", a
`MISCELLANEOUS STATEMENT
`type of‘ hand-Spun cloth in India!Bangladesh and Pakistan.
`
`
`. ATTORNEY INFORMATION
`I NAME
`Matthew H Swyers Esq.
`
`
`The Trademark Company
`
`FIRM NAME
`
`
`' smear
`344 Maple Avenue West #151
`
`
`: CITY
`Vienna
`= STATE
`Virginia
`
`COUNTRY
`United States
`
`
`' ZIPIPOSTAL CODE
`22] 80
`
`
`
`_ PHONE
`l (800) 906 8626 x IOU
`fix
`I (8775 35i 5480
`
`
`.— EMAIL ADDRESS mswyers@thetrademarkcompany.com ,.
`AUTHORIZED TO COMNIUNICATE VIA EMAIL
`Yes
`
`CORRESPONDENCE INFORMATION
`
`
` NAME
`
`
`
`
`Matthew H Swyers Esq.
`
`l FIRM NAME
`
`
`The Trademark Company
`
`
`STREET
`344 Maple Avenue West #15}
`
`CITY
`Vienna
`
`
`
`Virginia
`_ STATE
`COUNTRY
`United States
`
`
`
`22130
`'_ ZIPI?OSTAL coon
`'— PHONE
`1 (800) 906 8626 x [00
`
`2mm
`1 (877) 351 5480
`
`EMAIL ADDRESS
`
`mswyers@thetrademarkcompany.com
`
`
`
`Yes
`
`
`| AUTHORIZED TO COWCATE VIA EMAIL
`[FEE INFORMATION
`1
`INUMBER 0F CLASSES
`325
`lF‘EE-PER CLASS
`325
`I ”TOTAL FEE mm
`325
`l *TOTAL FEE PAID
`
`SIGNATURE.- INFORMATION
`
`
`
`JMatthew H Swyers/
`[SIGNATURE
`
`l SIGNATORY‘S NAME
`Matthew H Swyers
`[SIGNATURY‘S POSITION
`Attorney ofrecord
`
`l DATE-SIGNED I 1&5/2014
`
`
`
`Trademarkaervice Mark Application, Principal Register
`
`Serial Number: 86464552
`
`Filing Date: lll25f2014
`
`To the Commissioner for Trademarks:
`
`
`MARK: KHAADI { stylized andfor with design. see mark}
`
`The literal element ofthe mark consists of KHAADI.
`
`The applicant is not claiming color as a feature ofthe mark. The mark consists ofthe phrase "KHAADI" in stylized, classical seriftext. To the
`left ofthe text is a stylized logo often oblong shapes meant to indicate the fingers on a hand.
`The applicant. Farooq Sheikh, a citizen ofUnited States. having an address of
`1 16-17 Sutphin Boulevard
`Jamaica, New York 1 1434
`United States
`
`requests registration of the trademarkfservice mark identified above in the United States Patent and Trademark Office on the Principal Register
`established by the Act ofJuly 5. 1946 (15 U.S.C. Section 105] et seq), as amended, for the following:
`
`International Class 025: Men, women and children's clothing, namely, shirts. pants, jackets, shalwar kameez in the nature of suits with long
`or short shirts and loose trousers, kurta in the nature of long and short loose shirts, sherwani in the nature of long coats. and trousers; footwear,
`namely, leather shoes. sandals and khussa in the nature of flat shoes; headgear. namely, turbans, caps and abayas in the nature of head scarves.
`
`In International Class 025, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at
`least as early as 03;“03i1998, and first used in commerce at least as early as 03f03f1998, and is now in use in such commerce. The applicant is
`submitting one{or more) specimen(s} showing the mark as used in commerce on or in connection with any item in the class oflisted goods andt’or
`services. consisting ofa(n) Applicant's trademark featured in conjunction with ordering clothing specifically with purchasing information and
`pricing evident to reflect the current use ofthe mark in connection with clothing.
`Specimen Filel
`
`No claim is made to the exclusive right to use CLOTH. HAND-SPUN apart from the mark as shown.
`
`The English translation of KHADDAR in the mark is HAND-SPUN CLOTH. The wording KHAADI has no meaning in a foreign language.
`
`The phrase"I(HAADl" is a re-working of"l<HAADAR", a type ofhand-spun cloth in lndiafBangladesh and Pakistan.
`
`The applicant's current Attomey Infonnation:
`Matthew H Swyers Esq. of The Trademark Company
`344 Maple Avenue West #lSl
`Vienna, Virginia 22180
`United States
`
`The applicant's current Correspondence information:
`
`Matthew H Swyers Esq.
`
`The Trademark Company
`
`344 Maple Avenue West #15]
`
`Vienna, Virginia 22180
`
`I {800} 906 8626 x l0{){phone}
`1 (877)35l 5480(fax)
`
`mswyers@thetrademarkcompanycom (authorized)
`
`
`
`A fee payment in the amount of $325 has been submitted with the application, representing payment for l class(es).
`
`Declaration
`
`The signatory beiieves that: ifthe applicant is filing the application under 15 U.S.C. Section 1051(a}. the applicant is the owner ofthe
`trademarkfservice mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce on or
`in connection with the goodsfservices in the application, and such use by the applicant's related company or licensee inures to the benefit of the
`applicant; the speciments) shows the mark as used on or in connection with the goodsfservices in the application; andfor if the applicant filed an
`application under [5 U.S.C. Section 1051{b). Section 1 126(d), andfor Section 1126(e]. the applicant is entitled to use the mark in commerce; the
`applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection
`with the goodsfservices in the application. The signatory believes that to the best of the signatory's knowledge and belief‘ no other person has the
`right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
`goods/services ofsuch other person. to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and
`the like are punishable by fine or imprisonment: or both. under 18 U.S.C. Section 1001 . and that such willful false statements and the like may
`jeopardize the validity ofthe application or any registration resulting therefrom, declares that all statements made of hisfher own knowledge are
`true and all statements made on information and beiiet‘are believed to be true.
`
`Declaration Signature
`
`Signature: [Matthew H Swyersf Date: 1 112519014
`Si gnatory's Name: Matthew H Swyers
`Si gnatory's Position: Attorney of record
`RAM Sate Number: 86464552
`
`RAM Accounting Date: ! U26z’2014
`
`Serial Number: 86464552
`internet Transmission Date: Tue Nov 25 15:26:27 EST 2014
`
`TEAS Stamp: USPTOIBAS-XX.XX.XXX.XX'X-20141 12515262744
`6848-86464552-5009ec96ecbfl e63021a2c4596
`c27d2965 2192512d7cclfd6c1 c94de72dba63f5d
`c-CC-2148-20141 125 | 5 1402354405
`
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