Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA874199
`
`Filing date:
`
`01/30/2018
`
`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
`
`Laziza, Inc.
`
`Corporation
`
`8110 County Road 44, Leg A
`Leesburg, FL 34788
`UNITED STATES
`
`Citizenship
`
`Florida
`
`Attorney informa-
`tion
`
`Allison R. Imber, Esq.
`Allen, Dyer, Doppelt & Gilchrist, P.A.
`255 S. Orange Ave., Suite 1401
`Orlando, FL 32801
`UNITED STATES
`Email: aimber@allendyer.com
`Phone: 407-841-2330
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5055901
`
`Registration date
`
`10/04/2016
`
`Registrant
`
`Mark Blatt
`120 Kates Bridge
`Newnan, GA 30263
`UNITED STATES
`Email: edwards.kit@gmail.com
`
`Goods/Services Subject to Cancellation
`
`Class 030. First Use: 2016/02/01 First Use In Commerce: 2016/02/01
`All goods and services in the class are subject to cancellation, namely: Barbeque sauce; seasonings
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`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
`
`Other
`
`Trademark Act Section 14(3)
`
`Void Ab Initio
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`86916943
`
`Application Date
`
`02/23/2016
`
`
`
`ESTTA Tracking number:
`
`ESTTA874199
`
`Filing date:
`
`01/30/2018
`
`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
`
`Laziza, Inc.
`
`Corporation
`
`8110 County Road 44, Leg A
`Leesburg, FL 34788
`UNITED STATES
`
`Citizenship
`
`Florida
`
`Attorney informa-
`tion
`
`Allison R. Imber, Esq.
`Allen, Dyer, Doppelt & Gilchrist, P.A.
`255 S. Orange Ave., Suite 1401
`Orlando, FL 32801
`UNITED STATES
`Email: aimber@allendyer.com
`Phone: 407-841-2330
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5055901
`
`Registration date
`
`10/04/2016
`
`Registrant
`
`Mark Blatt
`120 Kates Bridge
`Newnan, GA 30263
`UNITED STATES
`Email: edwards.kit@gmail.com
`
`Goods/Services Subject to Cancellation
`
`Class 030. First Use: 2016/02/01 First Use In Commerce: 2016/02/01
`All goods and services in the class are subject to cancellation, namely: Barbeque sauce; seasonings
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`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
`
`Other
`
`Trademark Act Section 14(3)
`
`Void Ab Initio
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`86916943
`
`Application Date
`
`02/23/2016
`
`
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`RIB SHACK BBQ
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the words "RIB SHACK BBQ" in a circle wherein the words
`"RIB SHACK" are positioned above the word "BBQ." Inside the circle with the
`words "RIB SHACK BBQ" is another circle containing the designs of a cow,
`chicken, pig,and flame, all separated by the crisscrossed design of a knife and
`barbecue fork. Outside the circle with the words "RIB SHACK BBQ" are two oth-
`er circles.
`
`Class 029. First use: First Use: 0 First Use In Commerce: 0
`Beef; Beef patties; Cheese; Chicken; Chicken nuggets; Frozen chicken, namely,
`chicken tenders; Mozzarella sticks; Onionrings; Pork; Potato chips
`Class 030. First use: First Use: 0 First Use In Commerce: 0
`Barbecue sauce; Salad dressings; Salad dressings containing cream
`
`Attachments
`
`86916943#TMSN.png( bytes )
`Petition to Cancel.pdf(171617 bytes )
`
`Signature
`
`/Allison R. Imber/
`
`Name
`
`Date
`
`Allison R. Imber
`
`01/30/2018
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of U.S. Trademark Registration No. 5,055,901
`
`
`LAZIZA, INC.,
`
`
`
`Petitioner,
`
`
`
`
`
`Cancellation No:__________________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
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`
`
`MARK BLATT,
`
`
`Respondent.
`
`
`
` /
`
`
`Mark:
`
`
`
`
`
`
`
`
`
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`PETITION TO CANCEL
`
`
`
`
`Petitioner Laziza, Inc., (“Petitioner”), a Florida corporation with an address at 8110
`
`County Road 44, Leg A, Leesburg, Florida, believes it will be damaged by the continued
`
`registration of the mark
`
` (“Respondent’s Mark”) as shown in U.S. Trademark
`
`Registration No. 5,055,901 (the “Registration”) for “tee shirts” in Class 25 and “barbeque sauce;
`
`seasonings” in Class 30 (collectively, “Respondent’s Goods”) by Mark Blatt (“Respondent”), an
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`individual with an address at 120 Kates Bridge, Newnan, Georgia 30263, and in support of
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`cancellation states as follows:
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`
`
`
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`
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`Petitioner’s Mark
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`1.
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`Petitioner is the owner of U.S. Trademark Application Serial No. 86/916943
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`(“Petitioner’s Application”) for the mark
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` (“Petitioner’s Mark”) as used on “beef;
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`beef patties; cheese; chicken; chicken nuggets; frozen chicken, namely, chicken tenders;
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`mozzarella sticks; onion rings; pork; potato chips” in Class 29 and “barbecue sauce; salad
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`dressings; salad dressings containing cream” in Class 30. Petitioner has used Petitioner’s Mark
`
`on potato chips in commerce since at least as early as March 1, 2015.
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`2.
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`Since that time, Petitioner has extensively promoted and continuously used
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`Petitioner’s Mark on potato chips throughout the United States, and has made a significant
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`amount of sales under its Mark. As a result, Petitioner’s Mark has developed valuable goodwill
`
`within the relevant trade and industry.
`
`3.
`
`Petitioner’s Mark is a distinctive and valuable asset of Petitioner, and is inherently
`
`distinctive.
`
`4.
`
`Petitioner’s Application has been finally refused registration based on a likelihood
`
`of confusion with Respondent’s Mark. In the eyes of the examiner, the Marks are too similar to
`
`coexist.
`
`Respondent’s Mark
`
`5.
`
`Respondent filed U.S. Trademark Application Serial No. 86/726136 on August
`
`15, 2015 on the basis of his intent to use the mark in commerce.
`
`
`
`
`
`
`
`6.
`
`On November 4, 2015, Respondent incorporated Southern Tales BBQ LLC, with
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`an address at 120 Kates Bridge, Newnan, Georgia 30263, the same address as the one listed for
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`U.S. Trademark Application Serial No. 86/726136.
`
`7.
`
`On July 29, 2016, Respondent filed a Statement to Allege Use specifying a first
`
`use date of the mark in commerce of Respondent’s Goods as of February 1, 2016, after Southern
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`Tales BBQ LLC was incorporated. The Statement of Use was accepted, and the Registration
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`issued October 4, 2016 in the name of Respondent.
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`Count I: Likelihood of Confusion
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`8.
`
`9.
`
`Petitioner repeats the allegations set forth in Paragraphs 1-7 above.
`
`Petitioner used Petitioner’s Mark in commerce before the filing date of the
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`Registration, and before Respondent’s first use of its Mark in connection with Respondent’s
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`Goods within the United States.
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`10.
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`Respondent’s Mark is confusingly and deceptively similar to Petitioner’s Mark.
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`Respondent’s Mark is very similar in sight, connotation, and commercial impression to
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`Petitioner’s Mark.
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`11.
`
`Respondent’s Goods are identical or closely related to the goods provided by
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`Petitioner. Consumers are likely to believe that Respondent and its Goods are somehow
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`sponsored by, affiliated with, and/or related to Petitioner and its goods.
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`12.
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`Respondent’s channels of trade and class of purchasers are likely to be identical to
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`or very similar to those of Petitioner.
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`13.
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`Due to the similarity between Respondent’s Mark and Petitioner’s Mark, as well
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`as their respective goods, not to mention the likely similarity of the channels of trade and classes
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`
`
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`
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`of purchasers, the continued registration of Respondent’s Mark will cause great damage and
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`injury to Petitioner. Persons familiar with Petitioner’s Mark and goods would likely confuse
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`Respondent’s Goods with the goods provided by Petitioner. Any defect, objection or fault found
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`with Respondent’s Goods offered under its Mark may reflect upon and expose Petitioner to
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`liability, and seriously injure the reputation that Petitioner has established for its goods.
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`Count II: Void Ab Initio and/or Abandonment
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`Petitioner repeats the allegations set forth in Paragraphs 1-7 above.
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`Upon information and belief, the Registration is void because it was filed in the
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`14.
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`15.
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`wrong name and/or because Registrant lacked the bona fide intent to use the Mark in commerce.
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`16.
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`Alternatively, Respondent abandoned his trademark rights in the Mark by not
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`personally using the Mark in commerce on the Goods listed in the Registration with the intent
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`not to personally resume such use.
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`17.
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`Upon information and belief, the Mark is being used either by the company
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`Southern Tales BBQ LLC and/or by Respondent and Christopher Edwards, not Respondent by
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`himself.
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`18.
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`U.S. Trademark Application Serial No. 86/726136 was signed by Christopher
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`Edwards, which is one of the organizers of Southern Tales BBQ LLC, and he listed himself as a
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`“Business Partner” of Respondent. Moreover, the Statement of Use for U.S. Trademark
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`Application Serial No. 86/726136 was signed by both Respondent and Kit Edwards, both of
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`which listed themselves as “Owner.”
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`19.
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`The specimen of use for barbecue sauce submitted in support of the Registration
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`stated that it was “Manufactured for Southern Tales BBQ LLC.”
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`
`
`
`
`
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`20.
`
`In view of the foregoing, U.S. Trademark Application Serial No. 86/726136 is
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`void because it was filed in the wrong name because it should have been filed by Southern Tales
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`BBQ LLC and/or by Respondent and Christopher Edwards jointly. See Pynk Branded, LLC v.
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`BleuLife Media & Entertainment, Inc., Opposition No. 91220320 (July 14, 2017).
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`21.
`
`Alternatively, Respondent could not have had the requisite intent to use the Mark
`
`in commerce by himself at the time of filing U.S. Trademark Application Serial No. 86/726136,
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`and it is void for that reason as well.
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`22.
`
`Respondent has further abandoned his trademark rights in the Mark through
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`nonuse and the lack of the intent to use the Mark personally rather than jointly with Christopher
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`Edwards or through Southern Tales BBQ LLC.
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`23.
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`If Respondent is allowed to maintain the Registration, he would obtain at least a
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`prima facie exclusive right to use his Mark in the United States, thereby causing damage and
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`injury to Petitioner.
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`
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`WHEREFORE, Petitioner prays that this cancellation be sustained and U.S. Trademark
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`Registration No. 5,055,901 be cancelled.
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`Date: January 30, 2018
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`Respectfully submitted,
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`
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`/s/Allison R. Imber
`Allison R. Imber, Esq.
`Allen, Dyer, Doppelt
` & Gilchrist, P.A.
`255 South Orange Ave., Ste. 1401
`Orlando, FL 32801
`Phone: 407-841-2330
`Fax: 407-841-2343
`E-mail: aimber@allendyer.com
`
`Attorneys for Petitioner
`
`
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