Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1001626
`09/12/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92069129
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Leola Anifowoshe and Tessylim Anifowoshe
`
`LESLIE WM ADAMS
`LESLIE WM ADAMS & ASSOCIATES
`3700 BUFFALO SPEEDWAY, STE 420
`HOUSTON, TX 77098
`UNITED STATES
`LWA@LeslieWmAdams.com
`713-728-6360
`
`Defendant's Notice of Reliance
`
`Leslie Wm. Adams
`
`info@lesliewmadams.com, ale@lesliewmadams.com, lwa@lesliewmadams.com
`
`/Leslie Wm. Adams/
`
`09/12/2019
`
`NOTICE OF RELIANCE 091219.pdf(29315 bytes )
`CANCELLATION EX 1_compressed.pdf(5425811 bytes )
`CANCELLATION EX 2.pdf(362821 bytes )
`CANCELLATION EX 3_compressed.pdf(5301541 bytes )
`CANCELLATION EX 4.pdf(26822 bytes )
`CANCELLATION EX 5.pdf(107098 bytes )
`CANCELLATION EX 6.pdf(1613247 bytes )
`CANCELLATION EX 7.pdf(121292 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 4378376
`For the mark: NZURI
`Registration Date: August 16, 2013
`
`
`ELEGANT BEHAVIOR, LLC
`
`
`
`PETITIONER,
`
`
`
`
`
`
`
`
`V.
`
`
`
`
`
`
`
`
`
`
`
`
`
`LEOLA ANIFOWOSHE, AND
`
`TESSYLIM ANIFOWOSHE
`
`
`
`
`
`RESPONDENTS.
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`CANCELLATION NO. 92069129
`
`RESPONDENT’S NOTICE OF RELIANCE
`
`
`
`Respondents, Leola Anifowoshe and Tessylim Anifowoshe, pursuant to 37 C.F.R. §2.122
`
`and TMBP §704, Trademark Rules 2.121 through 2.125, as amended August 2019, hereby give
`
`their reliance upon the following materials herein referenced as Exhibits to this Notice of Reliance.
`
`Insofar as this Notice of Reliance is being filed on Thursday, September 12, 2019, the Respondents
`
`assert it is timely pursuant to 37 C.F.R. §2.196, because the testimony period for the applicant ends
`
`September 12, 2019.
`
`1.
`
`Exhibit 1 – Affidavit and Declaration of Tessylim Anifowoshe summarizing the
`
`use of the Nzuri’s Trademark since 2011, which includes Attachments: A, B, C and D, comprising
`
`of formation documents for the company, public information reports, business records admissible
`
`under the Federal Rules of Evidence 803(6) and pages from the internet on June 27, 2018, from the
`
`websites
`
`accessible
`
`at
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`https://www.amazon.com/s?k=nzuri&ref=nb_sb_noss_2
`
`https://www.heb.com/search/?q=nzuri https://www.essence.com/torrei-hart-launches-new-natural-
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`hair-care-line-products/
`
`and
`
`https://www.hairvitaminstore.com/category-s/1883.htm. This
`
`affidavit and its attachments are relevant as they will support Respondents’ affirmative defenses
`
`

`

`asserted in its Answer to Petitioner’s Petition to Cancel and will support that Respondents did not
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`knowingly made false or material representation with intent to deceive the USPTO.
`
`2.
`
`Exhibit 2 – Nzuri’s Trademark Application filed on September 08, 2011, S/N:
`
`85417780 was obtained from the electronic database records of the United States Patent and
`
`Trademark Office. This document is relevant to this matter as it will support Respondents’
`
`affirmative defenses and that Respondents did not commit fraud on the USPTO.
`
`3.
`
`Exhibit 3 – The Office Action issued on January 3, 2012 was obtained from the
`
`electronic database records of the United States Patent and Trademark Office. This document is
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`relevant to this matter as it will support Respondents’ affirmative defenses. This document will
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`further support Respondents’ contentions that Respondents’ action of deleting the class was taken
`
`per the suggestions or instructions provided by the Examining Attorney and not with intent to
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`deceive the USPTO.
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`4.
`
`Exhibit 4 – Examiner’s Amendments issued on June 5, 2012 and June 7, 2012. was
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`obtained from the electronic database records of the United States Patent and Trademark Office.
`
`This document is relevant to this matter as it will support Respondents’ affirmative defenses. This
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`document will further support that Respondents’ actions were reviewed by the Examining
`
`Attorney and were subsequently approved, thus proving that Respondents did not commit fraud
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`on the USPTO.
`
`5.
`
`Exhibit 5 – Nzuri’s Registration Certificate No. 4378376, issued on August 6, 2013
`
`was obtained from the electronic database records of the United States Patent and Trademark
`
`Office. This document is relevant to this matter as it will support Respondents’ affirmative
`
`defenses. This document will further support Respondents’ superior and established rights.
`
`Notice of Reliance
`
`2
`
`Cancellation No. 92069129
`
`

`

`6.
`
`Exhibit 6 – Pages from the Internet on September 12, 2019, from the website
`
`accessible at https://www.nzuribodyessentials.com/shop evidencing Petitioner’s products that will
`
`cause likelihood of confusion among Respondents’ customers which will challenge the assertions
`
`made by Petitioner on Petitioner’s Petition to Cancel.
`
`7.
`
`Exhibit 7 – Nzuri Body Essential’s Illinois Secretary of State Trademark
`
`Registration No. 110515 was obtained from the Illinois Secretary of State’s website. This
`
`document is relevant to this matter as it will support Respondents’ affirmative defenses. This
`
`document will further support that Petitioner’s do not hold legal rights superior to Respondents.
`
`Respectfully submitted,
`
`LESLIE WM. ADAMS & ASSOCIATES
`
`
`
`Leslie Wm. Adams
`Texas Bar No. 00869810
`Alexis L. Espejel
`Texas Bar No. 24109846
`Charles I. Murnane
`Texas Bar No. 24074775
`3700 Buffalo Speedway, Suite 420
`Houston, Texas 77098
`Tel. (713) 728-6360
`Fax 713-728-6366
`Info@LeslieWmAdams.com
`COUNSEL FOR RESPONDENTS
`
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`Notice of Reliance
`
`3
`
`Cancellation No. 92069129
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and accurate copy of Respondent’s Notice of Reliance has been
`
`served on the following by delivering said copy on September 12, 2019 via email to counsel for
`Petitioner at the following address:
`
`
`Saper Law Office, LLC
`Matthew R. Grothouse
`505 North LaSalle, Suite 350
`Chicago, Illinois 60654
`(312) 527-4100 (Telephone)
`matt@saperlaw.com
`COUNSEL FOR PETITIONER
`
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`By:
`
`
`Leslie Wm. Adams
`
`
`
`Notice of Reliance
`
`4
`
`Cancellation No. 92069129
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 4378376
`For the mark: NZURI
`Registration Date: August 16, 2013
`
`
`ELEGANT BEHAVIOR, LLC
`
`
`
`PETITIONER,
`
`
`
`
`
`
`
`
`V.
`
`
`
`
`
`
`
`
`
`
`
`
`
`LEOLA ANIFOWOSHE, AND
`
`TESSYLIM ANIFOWOSHE
`
`
`
`
`
`RESPONDENTS.
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`EXHIBIT 1
`
`
`
`CANCELLATION NO. 92069129
`
`

`

`TN THE Ul\'TTED STATES PATE\'T AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL A\D APPEAL BOARD
`
`Tn the matter of Registration \0.4378376
`For the mark: ｾｚｕｒｊ＠
`Registration Date: August 16, 2013
`
`ELEGAl\'T BEHAVIOR, L.LC
`PETITTOl\'LR,
`
`v.
`
`LEOL.A ａｾｉｆｏｗｏｓｈｅＬ＠AND
`TESSYLIM ANIFOWOSHE
`ｒｅｓｐｏｾｄｅｾｔｓＮ＠
`
`i'\
`
`'" §
`§
`§
`§
`§
`§
`§
`
`CA1'ICELLATIO;\l \0.92069129
`
`AFFIDA VIT OF TESSYUM ANlFOWOSHE
`
`Beforc me, the under::;igncd notary, on this day personally appeared T\:!ss):Iim ;\nifowoshe,
`the affiant, a person whose identity is known to mc. After I administered an oath tu amant, affiant
`testified:
`
`I.
`
`..,
`J.
`
`4.
`
`5.
`
`"My name is T cssylim Anifowoshe. I am over 18 years of age, of sound mind. and capable
`of making this affidavit. The fncts stated in this affidavit are within my persona l kno\vledge
`and arc true and correct.
`
`13m the President and CEO ofNzuri, LLC, ("Nzuri") a limited liability compa ny organized
`under the la\vs ufthe state of Texas. Nzuri was formed on August 30, 20 II as rdlected by
`the formation documents attached.
`
`I have been a manager 0 f N 7,Uri since its creation in 2011. I \\'as in charge () C t he market i ng .
`finances and developll1cm of the products created by Leola Anifowoshe. Leola
`Anifowoshe amI 1 deyelopcd the concept. the products and the company. into what it is
`today. Attached is the products we developed, and first used in commerce s ince January
`1,2011, also attached is a list of the products \ve sold with the dates in which they \vcre
`first sold.
`
`By attending various beauty fairs and events, Nzuri was abk to gain fame and recogni tion
`of its products . Nzuri has been selling its products nationwide through stores such as
`Amazon.com
`and H-E-B Super Markets ,
`through our w(..:bsite
`and
`also
`https ;i/w\vw.hairvitaminstore.com. The attached ads and photographs demonstrate the
`location of the products sold and the marketing efforrs.
`
`I have been using the mark since irs creation in 2011 without knowledge of a ny other user
`in the beauty market and vitamin market.
`
`

`

`6.
`
`7.
`
`g.
`
`9.
`
`When the application for Nzuri \vas filed on September 08, 10 1 I, 1 had no idea nor had any
`knowledge that other businesses were using "Nzuri" as part of their name . This was
`brought to our attention when th e Examining Attorney isslIed her office action on January
`3, 2012, which is also attached.
`
`In the office action, the Examining Attomcy instructed us that the app lication had a refusal
`In tlle 01liCG action. the
`based on the "Likelihood of Confusion" of another mark.
`Examining Attorney instructed us that we could respond to the rerusHI by submitti ng
`evidence and arguments against the refus al. by deleting the classes to which th e refusal
`pel1ained, filing u request to divide out the goods and/or services that had not been refused,
`or amending the basis for the classes .
`
`After considering the instructions provided by the Examining. AltlJrney, we decided to
`follow the option provided of dclcting the classes to which the refusal pertained. At no
`point during the process did we make any false or material representation of the {'acts in
`connection \vith the application. \Ve did not knowingly or intentionally ｡ｴｴ｜ＮｾｬＱＱｰｴ＠to elecei ve,
`the United States Patent and Trademark Office ("USPTO"). the Examining Attorney, the
`staff or any agent or the USPTO.
`
`Leola Anifowoshe and I made the decision to delete the classes pertainin g to the refus al as
`instructed and informed by the Examining Attorncy in the Office Action date January 3,
`2012.
`
`lO.
`
`I declare under penalty of pelJury that the foregoing is true an d correct.
`
`FURTHER AFFIANT SAYETH NAUGHT. "
`
`1 ,,\
`-4-.....+-.b:-t'..t.-'J 0 ｾ｣＠-----___ -------'
`
`k"- _
`
`TESSYLTM
`
`. NlFOWOSI IE
`
`STATE OF TEXAS
`
`IlARRrs COUNTY
`
`§
`§
`§
`
`SUBSCRrBED AND SWORN TO BEFORE :VIE BY TESSYLI'Vl
`before me the undersigned authority on the j2Aday of September 20 19:
`
`ANIFOWOSHI::
`
`ＢＬｾｾｾｾｦＮＺＺｾＬ［ｾ＠
`TRAVIS GOLLIHER
`ｾｦＨｾＧｻｾＱ＠Notary Public, State of Texas
`ｾｾＢＬｾＬＮＧＮＮｊＧＧＺ＠ Comm . Expires 03-19-2023
`". ... "',· •. ﾷｾｔＮＺＭ
`ＢＢＬｾｾＬ｜｜ＢＬ＠
`Notary 10 131937136
`
`ＭｊｾＦＭｾ＠
`
`Notary Public. State of Texas
`
`ArrlDAVIT Of Tessylim Aniluw(lshe
`
`2
`
`CAi'-CELU I IUJ' No. 92(J6912cJ
`
`

`

`ATTACHMENT A
`
`ATTACHMENT A
`
`
`Secretary of State
`PO. Box 1369?
`Austin. TX 78711-3697
`FAX: 51214635709
`..
`Fling Fee= $300
`
`--
`
`Certificate of Formation
`Limited Liability Company
`
`Filed in the Office of the
`Secretary of State of Texas
`Filing #: 301473439 03:30:2011
`Document #: 386703120004
`Image Generated Electronically
`for Web Filing
`
`The filing entity being formed is a limited liability company. The name of the entity is:
`
`Article 1 - Entity Name and Type
`
`NzuriI LLC
`
`137A. The initial registered agent is an organization (cannot be company named above) by the name of:
`
`Article 2 — Registered Agent and Registered Office
`
`Leslie Wm. Adams and Associates
`
`OR
`
`VB. The initial registered agent is an individual resident of the state whose name is set forth below:
`
`0. The business address of the registered agent and the registered office address is:
`Street Address:
`
`3900 Essex Lane Suite 1111 Houston TX 77027
`
`Consent of Registered Agent
`
`FA. A copy of the consent of registered agent is attached.
`OR
`
`173. The consent of the registered agent is maintained by the entity.
`
`Article 3 - Governing Authority
`
`FFA. The limited liability company is to be managed by managers.
`OR
`
`THE. The limited liability company will not have managers. Management of the company is reserved to the members.
`
`The names and addresses of the governing persons are set forth below:
`
`Manager 1: Leola Anifowoshe
`
`Title: Manager
`
`Address: 5923 Mettler Lane Richmond TX, USA 77469
`
`Article 4 - Purpose
`
`The purpose for which the company is organized is for the transaction of any and all lawful business for which limited
`liability companies may be organized under the Texas Business Organizations Code.
`
`Supplemental Provisions I Information
`
`

`

`To the fullest extent permitted by applicable law, no member, manager, officer
`or agent of the Company shall be personally liable for the debts, obligations or
`liabilities of the Company or its members, including liability under a
`judgment, decree or order of a court and except for an act or omission not in
`good faith or that involves intentional misconduct or knowing violation of the
`law; nor shall any Member, manager, officer or agent be liable to the Company
`for monetary damages for any act or omission in such person's capacity as a
`member, manager, officer or agent. In addition to the circumstances in which a
`Member or manager shall not be liable pursuant to the provisions of this
`Article, a member or manager shall not be liable to the fullest extent permitted
`by any provision of the statutes of Texas, as hereafter written, amended, or
`enacted, that further limits the liability of a member or manager. Any repeal
`or amendment of this Article, or the adoption of any other provision of this
`Certificate of Formation inconsistent with this Article, by the members or the
`managers of the Company shall be prospective only and shall not adversely affect
`any limitation on the personal liability of such person to the Company existing
`at the time of such repeal, amendment or adoption of an inconsistent provision.
`
`[The attached addendum. if any. is incorporated herein by reference]
`
`Organizer
`
`The name and address of the organizer are set forth below.
`Leslie Wm. Adams
`3900 Essex Lane Suite 1111 Houston, Texas 77027
`
`IVA. This document becomes effective when the document is filed by the secretary of state.
`0R
`
`Efiecflvenessomeng
`
`VB. This document becomes effective at a later date, which is not more than ninety (90) days from the date of its
`signing. The delayed effective date is:
`
`Execution
`
`The undersigned affirms that the person designated as registered agent has consented to the appointment. The
`undersigned signs this document subject to the penalties imposed by law for the submission of a materially false or
`fraudulent instrument and certifies under penalty of perjury that the undersigned is authorized under the provisions of
`law governing the entity to execute the filing instrument.
`
`Leslie Wm. Adams, Attorney in Fact
`Signature of Organizer
`
`FILING OFFICE COPY
`
`

`

`[—000134977581
`FELLLL .nAi
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`TexasFranchiseTaxPublicInformationRepo F E EEi0%fl Alk
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`officers. directors. or managers change throughout the year.
`SECTION it Name. title and mailing address of each ofi'lcer. director or manager.
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`for Sections A. B. and C. if necessa ry.‘l'he Information Iwill be available for. public inspection.
`I declare that the infon-natlon in this document and any attachments Is true and correct to the best of my knowledge and belief, as of the date below. and that a copy of this report has
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`Filing Number: 801473489
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`Texas FranchiseTax Public Information RePfiflllnE“.D Mm[\W‘
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`To be filed by Corporations Limited liability Companies (“.0 and Financial i
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`SECTION A Name, title and mailing address of each officer, director or manager.
`
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`SECTION B Enter the information required for each corporation or LLC If any, in which this entity owns an Interest of 10 percent or more.
`Name of owned {subsidiary} corporation or limited liability company
`State offormation
`Texas 505 file number. If any
`Percentage of ownership
`
` Name of owned (subsidiary) corporation or limited liability company
`
`State offormation
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`Texas SOS file number if anyr
`
`Percentage ofownership
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`SECTION C Enter the Information required for each corporation or LLC. if any, that owns an interest of 10 percent or more in this entity or limited
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`Name of owned [parent] corporation or limited liability company
`
`Texas 505 file number. If any
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`The above Information is required by Section I 71.203 of the 'I'aiir Code for each corporation or limited liability company that files a Texas Franchise Tait Report. Use additional sheets
`for Sections A B and C If necessary The information will be available for public inspection.
`I declare that the infon-natlon in this dacument and any attachments is true and correct to the best of my knoMedge and belief as ofthe date below. and that a copy of this report has
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`been mailed toeachperson named inthis reportwhoIs an officer. directoror manager and whoIsnotcurrentlyremployed bythis.or a related.corporation or limited liabilitycompany.
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`{Revs-1583)
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`Filing Number: 301473439
`“'3'ENE!3"“!ND “\5
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`Texas Franchise Tax Public Information Rep
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`Name of owned (parent) corporation. LLC. LP PA or financial institution
`Texas 505 file number. it any
`Percentage of ownership
`
`You must moire a filing with theSecretory ofStote todronge registered
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`
`The information on this orm is required by Section ”1.203 of the Tax Code for each corporation. LLC. LP. PA orfinancialInstit
`sheets for Sections A. B and C. it necessary The information will be available for public inspection.
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`been mailed to each person named in this report whoIs an officer. director. member. general partner or manager and whoIs not currently employed by this or a related corporation.
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`
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`
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`
`OBladten circle iithere are currently no changesfrom previous year; if no information is displayed. complete the applicable inionnation in Sections A. B and C.
`
`
`
`You must report otiicer director; member, generalpartner and manager lflfmfion as of the date you complete this report
`PM“ I!!!I'd/I09" This report must he signed to satisfy franchise tax requirements.
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`Name
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`Name of owned [subsidiary] corporation. Ll-C. LP, PA or financial limitation
`Texas SOS file number. ifany
`Percentage of ownership
`
`
`Name of owned [subsidiary] corporation. LLC. LP, PA or financial institution
`
`Texas SOS file number. ifanyif
`
`Percentage oi ownership
`
`
`
`
`
`
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`SECTION C Enter information for each corporation . LLC. LP. PA or financial institution. if any. that owns an interest of 10 percent or more in this entity.
`Name of owned [parent] corporation. LLC. LP. PA or financial institution
`Texas 505 file number, ifany
`Percentage oi ownership
`
`Registered agent and registered office currently on file (see hstmctions ifypuneedro make changes]
`
`
`
`Younnnt make a may with theMaydflme toW Wilt-W1
`agent. registered orifice orgeneralpartner information.
`
`The information on thisform'Is required by Section ”1203 ofthe Tax Code for each corporation. LLC. LP PA or financial Institution that files a‘l'exas FranchiseTax Report. Useadditional
`sheets forSections A. B and C, if necessa