Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA971059
`
`Filing date:
`
`05/02/2019
`
`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
`
`Jagmohan Bhalla
`
`Individual
`
`2022 Columbia Road, NW
`#605
`Washington, DC 20009
`UNITED STATES
`
`Citizenship
`
`UNITED KINGDOM
`
`Attorney informa-
`tion
`
`Todd S. Bontemps
`Potomac Law Group PLLC
`1300 Pennsylvania Avenue, NW
`Suite 700
`Washington, DC 20004
`UNITED STATES
`tbontemps@potomaclaw.com, tm@potomaclaw.com
`(650) 218-5065
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5398448
`
`Registration date
`
`02/13/2018
`
`International Re-
`gistration No.
`
`Registrant
`
`NONE
`
`International Re-
`gistration Date
`
`NONE
`
`Individual entrepreneur Parshin Alexey Viktorovich
`Tyulenina str. 1, apt. 71
`RU-630061 Novosibirsk city
`RUSSIAN FED.
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are subject to cancellation, namely: Antibacterial hand wash; anti-
`bacterial gels; antimicrobials for dermatological use; anti-microbial hand wash; germicides; multi-
`purpose medicated analgesic balms; medicated lip balms; medicated lip salves; balms for medical
`purposes; multi-purpose medicated mentholated salves; analgesic balms; anti-inflammatory salves;
`disinfectants for medical purposes; gels, creams and solutions for dermatological use; household de-
`odorizers; medicinal roots; medicated skin creams; medicinal creams for skin care; herbal creams for
`medical purposes for skin care; Medicated lotions for hair; medicated skin lotions; pharmaceutical lo-
`tions for the skin; personal sexual lubricants; water-based personal lubricants; silicone-based person-
`al lubricants; rubbing compounds for medical or therapeutic purposes; medicinal oils; pharmaceutical
`preparations for activating cellular function; plant and herb extracts for medicinal pur-
`poses;pre-moistened medicated tissues; sanitizing wipes; Tissues and wipes impregnated with phar-
`maceutical skin lotions and creams; Tissues impregnated with antibacterial preparations for medical
`and antibacterial purposes; Tissues impregnated with pharmaceutical skin lotions; tissuesimpreg-
`
`

`

`nated with insect repellents; antibacterial cleaners; sanitary preparations for medical purposes;
`homeopathic supplements; sanitizing preparations for household use; disinfectants for hygiene pur-
`poses; hand-sanitizing preparations; antibiotic hand wash; preparations for cleansing the skin for
`medical purposes; medicated skin care preparations; sanitary tampons; fabric deodorizers; medicin-
`alherbs; herbal teas for medicinal purposes; medicinal herbal extracts; herbal extracts for medicinal
`purposes; antimicrobial preparations for inhibiting microbiological decomposition; medicated lotions
`and creams for the body, skin, face, and hands
`
`Grounds for Cancellation
`
`Fraud on the USPTO
`
`Related Proceed-
`ings
`
`None
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Attachments
`
`TTAB Petition to Cancel SALAD.pdf(1757572 bytes )
`
`Signature
`
`/TSB5/
`
`Name
`
`Date
`
`Todd S. Bontemps
`
`05/02/2019
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Registration of:
`Registrant:
`Individual entrepreneur
`Parshin Alexey Viktorovich
`5398448
`SALAD
`
`Reg. No.:
`Mark:
`
`Registration Date: February 13, 2018
`
`Jagmohan Bhalla, individual
`Petitioner,
`
`v.
`
`Individual entrepreneur
`Parshin Alexey Viktorovich
`Registrant.
`
`Commissioner for Trademarks
`
`Box TTAB, FEE
`
`vvwvvvvv
`
`Cancellation No.
`
`PETITION FOR PARTIAL CANCELLATION
`
`Pursuant to 15 U.S.C. §1064 and 37 C.F.R. §2.111(b), Petitioner Jagmohan Bhalla
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`(“Petitioner”), an individual United Kingdom citizen currently residing in Washington, D.C.,
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`believes that he is damaged, and will continue to be damaged, by the registration of the
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`trademark SALAD, Registration No. 5,398,448 (“SALAD Registration") owned by Registrant
`
`Individual entrepreneur Parshin Alexey Viktorovich (“Regisnant” or “Mr. Viktorovich”), and
`
`hereby petitions to cancel said registration with respect to the goods for which it is registered in
`
`class 05. As grounds for his petition, Petitioner asserts the following:
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`1.
`
`Petitioner is developing and marketing a variety of nutritional supplements for
`
`human consumption under the trademark NANOSALAD (“Petitioner’s NANOSALAD Mark").
`
`2.
`
`Petitioner has a bona fide intent to use Petitioner’s NANOSALAD Mark in
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`commerce and applied to register the NANOSALAD mark with the United States Patent and
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`Trademark Office (the “USPTO”) on March 25, 2019, Application Serial No. 88355206, on the
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`basis of said intent-to-use (“Petitioner’s Application”).
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`

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`3.
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`Petitioner has become aware of several goods listed in the SALAD Registration,
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`specifically, “homeopathic supplements;” “medicinal herbs; herbal teas for medicinal purposes;
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`medicinal herbal extracts; herbal extracts for medicinal purposes,” (collectively hereafter the
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`“Subject Class 05 Goods”) which are likely to create consumer confusion when Petitioner’s
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`NANOSALAD Mark is used in commerce due to the similarity of the SALAD and
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`NANOSALAD marks and the relatedness of Petitioner’s nutritional supplement goods and the
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`Subject Class 05 Goods.
`
`4.
`
`On information and belief, Registrant had no intention to use, and was not using,
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`his SALAD mark on or in connection with the Subject Class 05 Goods in Russia or the United
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`States as of the September 22, 2015 application date of the SALAD Registration.
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`5.
`
`On information and belief, Registrant had no intention to use, and had not used,
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`his SALAD mark on the Subject Class 05 Goods in Russia or the United States as of the
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`February 13, 2018 registration date of the SALAD Registration.
`
`6.
`
`Petitioner is being damaged and will continue to be damaged if the Class 05
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`designation of the SALAD Registration is permitted to remain on the Principal Register because
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`the SALAD Registration stands as a bar to Petitioner’s ability to federally register and protect
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`Petitioner’s NANOSALAD Mark for the applicable goods, “Nutritional supplements, namely,
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`dried fruit, dried vegetables, and plant-derived foodstuffs in flake and powdered form; flakes and
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`powders containing dietary fiber used in the preparation of nutritionally fortified food and
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`beverages” in Class 05.
`
`FRAUD ON THE U.S. PATENT AND TRADEMARK OFFICE
`
`COUNT I
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`7.
`
`Petitioner hereby incorporates by reference and realleges every allegation set forth
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`in Paragraphs 1 through 6 above.
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`

`

`8.
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`Petitioner seeks to partially cancel the SALAD Registration on the ground that it
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`was obtained as a result of knowingly false statements about the use of the mark and Registrant’s
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`bona fide intention to use the mark in commerce, which were made with the intent to deceive the
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`USPTO and constitute fraud on the USPTO.
`
`9.
`
`Registrant filed his US application on the basis of Section 66(a), requesting for
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`the extension of protection of an international registration to the United States pursuant to
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`Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
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`10.
`
`15 U.S.C. §1 i41f (Section 66(a)) requires that a request for the extension of
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`protection of an international registration must have “attached to it a declaration of bona fide
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`intention to use the mark in commerce that is verified by the applicant for, or holder of, the
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`international registration” in order for said application to be “properly filed in the United States.”
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`[15 U.S.C. §1141f(a)].
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`11.
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`On information and belief, Registrant’s declaration of his bona fide intention to
`
`use the SALAD mark on or in connection with the goods listed in the Class 05 portion of
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`International Registration (“IR”) No. 1286093 (originating in the Russia Federation) was signed
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`knowing that said declaration was false as to many of the listed Class 05 goods, and, in
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`particular, all of the Subject Class 05 Goods, and was signed purposefillly to deceive the USPTO
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`into designating the extension of IR No. 1286093 as “properly filed in the United States”
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`pursuant to 15 U.S.C. §1141f(a).
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`12.
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`011 information and belief, Registrant’s verified declaration stating that he has a
`
`bona fide intention to use the SALAD mark in commerce is false. This false declaration was
`
`made knowingly and with the intent to deceive the USPTO for the purpose of obtaining the
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`SALAD Registration.
`
`13.
`
`On information and belief, the USPTO accepted Mr. Viktorovich’s false
`
`declaration under the assumption that it was true and accurate, and approved the Section 66(a)
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`

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`application for SALAD as properly filed in the United States and commenced examination
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`proceedings, and subsequently, publication for opposition, both of which are prerequisites to
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`registration. Accordingly, the false declaration was material.
`
`14.
`
`Mr. Viktorovieh’s verified declaration was knowingly false, made with the intent
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`to deceive the USPTO, and was material to the USPTO’s decision to issue the SALAD
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`Registration. As a result, the SALAD Registration is invalid because it was procured through
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`fraud on the USPTO.
`
`WI-IEREFORE, Registration No. 4,471,999, is damaging to Petitioner, and Petitioner,
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`therefore, respectfully requests that this Petition For Partial Cancellation be granted and that the
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`registration for Registrant’s above-mentioned SALAD Mark be cancelled with respect to all of
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`the goods in class 05 for which it is registered.
`
`Dated: May 2, 2019
`
`For and on Behalf of Petitioner Jagmohan Bhalla
`
`
`with f
`
`Todd S. Bontemps
`Potomac Lamr Group, PLLC
`Attorneys for Petitioner
`1300 Pennsylvania Ave NW, Suite 700
`Washington DC 20004
`Telephone: (650) 218-5065
`
`trademark@potomaclaw.com
`tbontemps@potomaclaw.com
`
`

`

`CERTIFICATE OF E-FILING
`
`I hereby certify that the original of this Petition For Partial Cancel is being electronically
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`filed with the Trademark Trial and Appeal Board of the United States Patent and Trademark
`
`Office through the website located at http://estta.uspto.gov on May 2, 2019.
`
`
`
`Todd S. Bontemps
`
`