Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA997188
`08/23/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`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
`
`Family Inada Co., Ltd.
`
`Corporation
`
`Citizenship
`
`Japan
`
`2-1-3 NISHIMIYAHARA, YODOGAWA-KU
`Osaka, 532-0004
`JAPAN
`
`Attorney informa-
`tion
`
`KEITH TOMS
`MCCARTER & ENGLISH LLP
`265 FRANKLIN STREET
`BOSTON, MA 02110
`UNITED STATES
`ktoms@mccarter.com, bostontrademarks@mccarter.com, acieslak-
`tochigi@mccarter.com
`6174496591
`
`Registration Subject to Cancellation
`
`Registration No.
`
`4592881
`
`Registration date
`
`08/26/2014
`
`Registrant
`
`FIUS Distributors LLC
`2125 32nd Street
`Boulder, CO 80301
`UNITED STATES
`Email: cliff@fiusdistributors.com
`
`Goods/Services Subject to Cancellation
`
`Class 010. First Use: 2008/02/08 First Use In Commerce: 2008/02/08
`All goods and services in the class are subject to cancellation, namely: Massage apparatus; electric
`massage apparatus; electric massage chairs for medical use; electric massage chairs for household
`use
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registrant not rightful owner of mark for identi-
`fied goods or services
`
`Fraud on the USPTO
`
`Trademark Act Sections 14(1) and 1
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`

`

`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`DREAMWAVE
`
`Massage apparatus; electric massage apparatus; electric massage
`chairs for medical use; electric massage chairs for household use
`
`Attachments
`
`Petition to Cancel_DREAMWAVE.PDF(639856 bytes )
`Ex. A_Family Inada Registrations.PDF(3296099 bytes )
`Ex. B_InadaUSA.com.PDF(5695714 bytes )
`Ex. C Dreamwave.com.PDF(1071697 bytes )
`DREAMWAVE Exhibits D through J.pdf(4639499 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Keith Toms/
`
`Keith Toms
`
`08/23/2019
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of:
`Registration No.:
`
`
`
`
`
`FAMILY INADA Co., Ltd.
`
`
`4,592,881
`
`
`Petitioner,
`
`
`v.
`
`FIUS DISTRIBUTORS LLC, D.B.A. INADA
`USA, D.B.A. FURNITURE FOR LIFE,
`
`
`Respondent.
`
`
`
`Cancellation No.:__________________
`
`
`
`
`
`
`
`
`
`PETITION FOR CANCELLATION
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`Petitioner Family Inada Co., Ltd. (“Family Inada”) believes that it is and will continue to
`
`be damaged by the continued registration of U.S. Registration No. 4,592,881 for the mark
`
`DREAMWAVE (“Respondent’s Mark”) and thus Petitions to Cancel this registration. As
`
`grounds for this Petition, Family Inada alleges that:
`
`1.
`
`Family Inada is a corporation duly organized under the laws of Japan with its principal
`
`place of business at 2-1-3 Nishimiyahara, Yodogawa-ku, Osaka, Japan.
`
`2.
`
`Respondent FIUS (“Respondent”) is a limited liability company duly organized under
`
`the laws of the State of Delaware with its principal place of business at 2125 32nd Street,
`
`Boulder, CO, United States.
`
`3.
`
`Respondent operates its business under the trade name Inada USA in the State of
`
`Colorado and under the trade name Furniture for Life in the State of Colorado.
`
`
`ME1 31248327v.1
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`1
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`

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`
`
`I.
`
`THE HISTORIC BUSINESS RELATIONSHIP BETWEEN FAMILY INADA AND
`FIUS
`
`4.
`
`Petitioner Family Inada was founded in 1962 by Mr. Nichimu Inada and has remained
`
`a world leader in the field of massage chairs for over 50 years. Its reputation is synonymous
`
`with high quality and industry leadership.
`
`5.
`
`6.
`
`Family Inada does business around the world under the housemark INADA.
`
`In the United States, Family Inada owns incontestable U.S. Trademark Registration
`
`Nos. 4,252,717 for
`
` and 3,882,670 for
`
`, and U.S. Registration No. 4,638,977
`
`for
`
`, all of which are used in connection with “massage apparatus” among other
`
`goods (collectively the INADA Housemark). See Ex. A.
`
`7. While Family Inada had been selling INADA branded massage chairs in the United
`
`States for some time, in 2007 it partnered with Mr. Clifford Levin to grow the INADA brand in
`
`the United States.
`
`8.
`
`Together, along with other investors, Family Inada and Mr. Levin formed a company
`
`named FIUS Distributors LLC. Family Inada is a minority shareholder.
`
`9.
`
`The name FIUS, which is an acronym for Family Inada United States, was chosen to
`
`reflect that the purpose of this company was to act as the U.S. distributor of massage chairs
`
`manufactured by Family Inada.
`
`10. Mr. Levin requested that FIUS be permitted to do business under the INADA
`
`Housemark to leverage Inada’s tremendous reputation in the massage chair industry. Family
`
`Inada agreed, and gave FIUS license to make broad use of the INADA Housemark and do
`
`business as “Inada USA,” which Family Inada saw as growing the INADA brand in the United
`
`
`ME1 31248327v.1
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`States. FIUS has been doing business under the INADA Housemark since at least as early as
`
`2009.
`
`11.
`
`In the relationship, Family Inada entirely controlled the nature of the products, the
`
`design of new products, product quality, and product manufacture. Family Inada also had the
`
`final say on branding, although it reasonably considered the advice of FIUS, which it partnered
`
`with precisely because of its understanding of the U.S. furniture marketplace.
`
`12. FIUS understood that Family Inada was the owner of the INADA Housemark and that
`
`it was operating with Family Inada’s permission to use the Inada USA mark. Family Inada
`
`exercised control over FIUS’ use of the INADA Housemark by controlling the nature of the
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`products FIUS sold. FIUS acceded to Family Inada’s requirements and standards with respect to
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`the use of the INADA Housemark.
`
`13. Family Inada would wholesale its INADA massage chairs to FIUS, who would then
`
`either sell them to dealers (such as furniture stores) or end consumers under the INADA house
`
`mark.
`
`14. As part of this deal, it was FIUS’ responsibility to market and advertise INADA
`
`massage chairs, provide customer service, and administer the warranty for products in the United
`
`States. All of these activities, however, have been carried out under the INADA house mark and
`
`the “Inada USA” trade name, so consumers associate both the goods and services with Family
`
`Inada.
`
`15. The warranty page of the InadaUSA.com website states “[a]t Inada, we are committed
`
`to delivering the best massage chair experience money can buy. As part of this commitment, we
`
`provide buyers with the industry’s finest and most comprehensive massage chair warrantee
`
`available.” See Ex. B, pg. 78.
`
`
`ME1 31248327v.1
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`3
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`
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`A.
`
`The INADA DREAMWAVE Chair
`
`16.
`
`In 2007, Family Inada unveiled its newest ultra-luxury massage chair and, in 2008,
`
`branded the model the INADA SOGNO DREAMWAVE. In addition, Inada created the
`
` logo that Family Inada affixed to the INADA SOGNO DREAMWAVE chairs.
`
`17. Each INADA SOGNO DREAMWAVE chair was marked by Family Inada with the
`
`INADA Housemarks and the INADA SOGNO DREAMWAVE Mark. A representative image
`
`of a label affixed to the chair is below:
`
`18.
`
`In the United States, FIUS promoted INADA SOGNO DREAMWAVE chair as a
`
`Family Inada chair, touting its “Proprietary Inada DreamWave Technology.” For example:
`
`
`
`See Ex. B, pg. 3, InadaUSA.com (April 15, 2010 Archive.org capture) (emphasis added).
`
`19. The INADA SOGNO DREAMWAVE chair quickly became Inada’s top selling model
`
`in the United States, and one of the most revered and esteemed massage chairs on the market.
`
`
`
`
`ME1 31248327v.1
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`20.
`
`In or around 2013, when Family Inada was contemplating an updated version of its
`
`SOGNO DREAMWAVE chair, FIUS proposed that challenges in pronouncing the SOGNO
`
`name may be holding this product back and suggested shortening the name to INADA
`
`DREAMWAVE. Family Inada took this recommendation under advisement and ultimately
`
`agreed, shortening the name to INADA DREAMWAVE.
`
`21. Family Inada first affixed the INADA DREAMWAVE mark to Family Inada
`
`manufactured chairs in 2014. Each INADA DREAMWAVE chair included, among others, a
`
`label that featured the INADA HOUSEMARK and INADA DREAMWAVE marks, for
`
`example:
`
`
`
`
`
`22. FIUS acquired the domain name DreamWave.com without the knowledge of Family
`
`Inada, to which it eventually redirected traffic from InadaUSA.com. From approximately 2017
`
`through the end of 2018, FIUS branded the DreamWave.com website with the INADA
`
`Housemark and used this website to exclusively sell Inada chairs.
`
`23. Tellingly, throughout the history of the chair, both Family Inada and FIUS understood
`
`the DREAMWAVE mark to be first a technology mark and then a model designation of an
`
`INADA chair, and it was clearly marketed as such. Indeed, the INADA branded
`
`DreamWave.com website, which FIUS used exclusively to sell and market Inada chairs, makes
`
`
`ME1 31248327v.1
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`this fact abundantly clear:
`
`
`
`Ex. C., pg. 4, DreamWave.com (Archive.org capture, Feb. 24, 2018).
`
`24. The product page for the INADA DREAMWAVE model also refers to it as the “Inada
`
`DreamWave Massage Chair” and states that “[a]ll of Inada’s industry leadership and innovation
`
`has been leading to this. Introducing the DreamWave® by Inada, culminating years of research,
`
`testing, and uncompromising attention to detail and design.” Id. at 5-6.
`
`25. Likewise, the operating manual for these products makes abundantly clear that the
`
`DREAMWAVE is a model of a Family Inada chair:
`
`
`ME1 31248327v.1
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`6
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`
`
`
`
`
`See Ex. D, Operating Manual (red annotations added).
`
`26. For over ten years, FIUS sold INADA DREAMWAVE branded chairs under the Inada
`
`USA trade name in the United States as the sole distributor of these goods, marketing this
`
`product under the INADA housemark.
`
`27. Consumers encountering
`
`the marketing materials
`
`inevitably understood
`
`that
`
`DREAMWAVE was a model of INADA chair, which was the intended result.
`
`B.
`
`ACTIVITIES OF RESPONDENT
`
`28. On information and belief, FIUS began plans to misappropriate the DREAMWAVE
`
`trademark in 2017, when it began the process of designing a competing, Chinese manufactured
`
`massage chair in secret. Each chair features the DREAMWAVE mark.
`
`29. FIUS did not tell Family Inada of its plans to launch a competing business under the
`
`DREAMWAVE mark, despite the fact that Family Inada is the second largest shareholder of
`
`FIUS.
`
`30. FIUS’ conduct at CES 2019 caused rampant confusion. Furniture dealers and
`
`customers approached Family Inada representatives to inquire after the “new” DREAMWAVE
`
`chair, believing that it was an Inada product or wondering why no other Inada chairs were
`
`featured at the DREAMWAVE booth.
`
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`ME1 31248327v.1
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`
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`31.
`
`In an interview conducted at CES with Mr. Levin, a dealer stated “can you talk about
`
`the DreamWave name, I know there is some confusion whether it’s an Inada chair, or whether
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`it’s made by Inada, or how the DreamWave name came to be....” See Ex. E, Transc., pg. 2, ll.
`
`19-21.
`
`32.
`
`In interviews, FIUS’ VP of sales explicitly trades on Inada’s reputation to target
`
`Family Inada’s “loyal followers”:
`
`“Of course, the DreamWave Classic [i.e., the INADA DREAMWAVE] that you alluded to
`
`earlier has been in the market for 10 years and really we believe is an iconic massage chair
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`in the premium massage chair category, something certainly that is recognized. So for those
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`loyal followers or those people that have owned DreamWave in the past, this is something
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`that’s been long awaited, the release of a new DreamWave.” Ex. F, Transc. at p. 2: 3- 7
`
`(emphasis added).
`
`II.
`
`RESPONDENT’S TRADEMARK REGISTRATION AT ISSUE
`
`33. Respondent is the record owner of U.S. Trademark Registration No. 4,592,881 (the “‘881
`
`Mark”).
`
`34. The ‘881 Mark is registered on the Principal Register and claims use in connection with
`
`Class 10 goods such as massage apparatus and electric massage apparatus.
`
`A.
`
`FIUS’ IMPROPER REGISTRATION OF THE DREAMWAVE MARK
`
`35. Respondent’s application for the ‘881 Mark was filed on January 30, 2014, and registered
`
`on August 26, 2014. Respondent’s application for the ‘881 Mark was originally filed under a use
`
`in commerce basis, claiming a date of first use of February 8, 2008. A status and title copy of
`
`Respondent’s Mark is attached as Exhibit G.
`
`36.
`
`In 2014 FIUS and Family Inada discussed applying to register the trademark
`
`DREAMWAVE. Family Inada believed that this brand was reasonably protected by its common
`
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`ME1 31248327v.1
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`
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`law rights arising out of the mark’s use and strong industry association with the INADA
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`Housemark, and thus did not believe that registration to be necessary. Family Inada, however,
`
`would have considered filing an application if FIUS reimbursed it for the expenses. Family
`
`Inada believed that FIUS agreed with its decision to rely on common law rights, and there were
`
`no further discussions about registering this mark.
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`37. On or about January 30, 2014, FIUS, without knowledge or authorization of Family
`
`Inada, by and through its attorney declared or caused its attorney to file a trademark application
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`for the DREAMWAVE mark covering “[m]assage apparatus; electric massage apparatus;
`
`electric massage chairs for medical use; electric massage chairs for household use” in Class 10,
`
`listing FIUS Distributors, LLC as the owner. FIUS further caused its attorney to declare:
`
`The undersigned, being hereby warned that willful false statements and the like so made 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 of the application or any
`resulting registration, declares that he/she is properly authorized to execute this application
`on behalf of the applicant; he/she believes the applicant to be the owner of the
`trademark/service mark sought to be registered, or, if the application is being filed under 15
`U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in
`commerce; to the best of his/her knowledge and belief no other person, firm, corporation,
`or association has the right to use the mark in commerce, either in the identical form
`thereof or in such near resemblance thereto as to be likely, when used on or in connection
`with the goods/services of such other person, to cause confusion, or to cause mistake, or to
`deceive; and that all statements made of his/her own knowledge are true; and that all
`statements made on information and belief are believed to be true.
`
`
`See Ex. H, pg. 6.
`
`
`38. Concurrently, FIUS, without knowledge or authorization of Family Inada, submitted
`
`or caused its attorney to submit the specimen below:
`
`
`ME1 31248327v.1
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`See Ex. I (annotation added).
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`39. Nowhere in the application did FIUS disclose that Family Inada is the licensor and
`
`owner of the DREAMWAVE mark, or that FIUS did not have the appropriate authorization to
`
`apply for the DREAMWAVE mark.
`
`40. Based on these misrepresentations regarding ownership to the USPTO in connection
`
`with the DREAMWAVE application on January 30, 2014, the USPTO issued a registration
`
`certificate on August 26, 2014 with Registration No. 4,592,881 on the Principal Register. See
`
`Ex. J.
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`41. Family Inada continues to use the DREAMWAVE mark and has never assigned the
`
`mark to any third party, including FIUS.
`
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`ME1 31248327v.1
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`
`
`COUNT I
`PRIORITY AND LIKELIHOOD OF CONFUSION
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`42. Family Inada restates Paragraphs 1-41 as though fully incorporated herein.
`
`43. Family Inada has priority of rights in its DREAMWAVE mark based on its
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`longstanding and continuous use of the mark in connection with goods relating to massage
`
`chairs.
`
`44. Respondent’s mark is likely to cause confusion with Family Inada’s DREAMWAVE
`
`mark because the parties’ marks are identical, the goods identified by the parties are identical,
`
`the parties’ goods and services are promoted through similar media and directed to similar
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`classes of purchasers, and these same classes of purchasers have long associated the mark with
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`Family Inada’s products.
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`45. Respondent’s Mark is likely to cause confusion or mistake or to deceive consumers by
`
`creating the false impression that Respondent’s goods originate with, or are licensed or
`
`authorized by, Family Inada, in violation of Section 2(d) of the Lanham Act, 15 U.S.C.
`
`§ 1052(d).
`
`COUNT II
`FIUS’ REGISTRATIONS ARE VOID AB INITIO FOR LACK OF OWNERSHIP
`
`46. The allegations contained in paragraphs 1 through 45 are incorporated herein by
`
`reference.
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`47. FIUS was not the legal and rightful owner of the DREAMWAVE mark at the time that
`
`it filed the respective application for the mark, and thus the application is void ab initio.
`
`48. FIUS was a mere distributor of the Family Inada manufactured goods that were sold
`
`under the DREAMWAVE mark in connection with the INADA Housemark.
`
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`ME1 31248327v.1
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`49. Family Inada has been damaged by Respondent’s registration of the DREAMWAVE
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`designation as Family Inada is the rightful owner of the mark.
`
`COUNT III
`FIUS’ TRADEMARK REGISTRATIONS WERE FRAUDULENTLY OBTAINED
`
`50. The allegations contained in paragraphs 1 through 49 are incorporated herein by
`
`reference.
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`51. Upon information and belief, in Respondent’s application for federal trademark
`
`registration submitted to the USPTO, Respondent swore pursuant to 15 U.S.C. § 1051(a) that it
`
`was the owner of the DREAMWAVE designation.
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`52. Upon information and belief, in its application for federal trademark registration
`
`submitted to the USPTO, Respondent swore pursuant to 15 U.S.C. § 1051(a) that it first used the
`
`DREAMWAVE designation on February 8, 2008.
`
`53. Having been a mere distributor of the DREAMWAVE Mark at the time Respondent
`
`submitted the application for federal registration, Respondent knew or should have known that
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`Family Inada was the rightful owner of the applied-for designation, was the first to affix the
`
`mark to the registered goods for use in interstate commerce, and that Respondent had no claim of
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`ownership of the applied-for designation.
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`54. Upon information and belief, Respondent failed to disclose and concealed from the
`
`USPTO the fact that it was a mere distributor of the goods bearing the DREAMWAVE Mark.
`
`Respondent’s status as a mere distributor would have been material to the decision to register the
`
`mark.
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`55. Upon information and belief, Respondent made these false statements and material
`
`omissions with the intent to induce approval for the publication and ultimately the registration of
`
`the applied-for designation.
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`ME1 31248327v.1
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`56. Upon information and belief, Respondent knew or should have known at the time it
`
`filed the application that the statements contained in the declaration and application were false
`
`and that its omissions were material.
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`57. Upon information and belief, Family Inada believes that absent such false statements
`
`and material omissions, Respondent’s application would have been denied by the USPTO.
`
`58. Family Inada has been damaged by Respondent’s registration of the DREAMWAVE
`
`designation, as Family Inada is the rightful owner of the mark.
`
`WHEREFORE, Family Inada believes that it has been and will continue to be damaged by
`
`the registration of Respondent’s Mark and respectfully requests that Registration No. 4,592,881
`
`be cancelled from the Trademark Registry in its entirety.
`
`
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`August 23, 2019
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`Respectfully submitted,
`
`Family Inada Co., Ltd.
`
`by its attorneys
`
`McCarter & English, LLP
`
`
`
`
`
`By: /Keith Toms/
`Keith Toms (MA Bar Member, BBO# 663369)
`Quincy Kayton (MA Bar Member, BBO# 696797)
`265 Franklin Street
`Boston, MA 02110
`Tel: (617) 449-6591
`Fax: (617) 607-9226
`ktoms@mccarter.com
`
`
`ME1 31248327v.1
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`

`Exhibit A
`Exhibit A
`
`

`

`INADA
`
`Reg. No. 4,252,717
`
`Registered Dec. 4, 2012
`
`FAMILY KABUSI HKI KAISIIA (JAPAN CORPORATION). DBA FAMILY CO., LT
`2-1-3 NTSHT-MIYAHARA, YODOGAWA-KU
`OSAKA, JAPAN 532—0004
`
`
`
`Lil
`
`FOR. MASSAGE APPARATUS ELECTRIC MASSAGEAPPARATUS; ELECTRIC VIASSAG
`CHAIRS FOR HOUSEHOLD USE; ELECIRIC MASSAGE CHAIRS FOR MEDICAL USE',
`
`
`
`1SIH 1 TIC
`P {YSICAL BODY R1HABILITATIONAPPARATUS FOR MEDICAL PURPOSES;
`MASSAGE APPARATUS, IN CLASS 10 (US. CLS. 26, 39 AND 44).
`
`F RST USP, 4—0—2001; IN COMMERCE 6—0—2001.
`
`THE MARK CONSISTS OF TH 1 STYLI 1D WORD "INADA".
`
`
`3.
`
`
`
`
`
`SEC. 2(F).
`
`
`
`S,1'R. NO. 85—449,982, FILED 1 —18—2011.
`
`
`
`ALICE BENMAMAN. EXAMTNING ATTORNEY
`
`Int. Cl.: 10
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`Director uflhe Uniled Slales Palem and Trademark Office
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADEMARK REGISTRATION
`
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date. See 15 U.S.C. §§ 1058, 1141k.
`If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline.- You must file a Declaration of Use (or Excusable Nonuse) and an
`Application for Renewal between the 9th and 10th yea rs after the registration date.*
`See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods"
`What and When to File:
`
`You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between
`every 9th and IOIh-year period, calculated from the registration date. *
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`
`
`*ATTENTION MADRID PROTOCOL REGIS TRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the USPTO. The time periods for filing are
`based on the US. registration date (not the international registration date). The deadlines and grace periods
`for the Declarations of Use (or Excusablc Nonuse) are identical to those for nationally issued registrations.
`See 15 U. S.C. §§1058, 1141k. However, owners of international registrations do not file renewal applications
`at the USPTO. instead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,
`see http://www.wipo.int/madrid/en/.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online
`at http://www. uspto.gov.
`
`Page: 2 /RN # 4,252,717
`
`

`

`® WKDA
`
`FAMILY INADA CO.. LTD. (JAPAN KABUSIHKI KAISIIA (K.K.))
`2-1-3, NTSHT-MTYAHARA
`YODOGAWA—KU OSAKA—SHI
`OSAKA, JAPAN 5320004
`
`
`
`IE'OR: MASSAGEAPPARA'I'US; ELECTRIC MASSAGEAPPARATUS; ELECTRIC VIASSAGE
`
`CHAIRS FOR MEDICAL USE; ELECTRIC MASSAGE CPAIRS FOR HOUSEHOLD USE;
`
`
`
`
`PIIYSICAL BODY REIIABILITATIONAPPARATUS FOR MEDICAL PURPOSES:
`‘S III ‘TIC
`
`MASSAGE APPARATUS; AIR MATTRESSES FOR NEDICAL PURPOSES, IN CLASS 0
`(US. CLS. 26, 39 AND 44).
`
`
`
`
`
`
`
`
`
`FOR: BODY-TRAINING APPARATUS; BODY-BUILDING APPARATL S; STATIOI\ARY
`
`
`
`EXERCISE BICYCI ES, IN CI ASS 28 (US. CLS. 22, 23, 38 AND 50).
`
`OWNER OF US. REG. NO. 4,252,717.
`
`PRIORITY DATE OF 6—10—2013 IS CLAIIVJED.
`
`
`OWNER OF INTERNATIONAL REGISTRATION 1185268 DATED 9-24-2013, EXPIRES 9-2: -
`2023.
`
`
`
`
`
`NO CEAIM IS MADE TO TH E EXCLUSIVE RIGHT TO USE ”FAMILY”.APAR" PROM TH
`MARK AS SHOWN.
`
`
`
`Lil
`
`
`
`TIIE VIARK CONSISTS OF TIIE WORDING ”FAMILY INADA" AND THE DESIGN OF A
`SQUARE WITH CURVED EDGES AND THREE ZIGZAG LINES.
`
`THE WORDING "INADA" HAS 0 MEANII\G INA FOREIG LANGUAGE.
`
`
`
`
`
`
`
`
`SER. NO. 79-139,902, FILED 9-24-2013.
`
`ll
`LOURDES AYALA, EXAMINTNG ATTORNEY
`
`
`
`Reg. No. 4,638,977
`
`Registered Nov. 18, 2014
`
`Int. Cls.: 10 and 28
`
`TRADEMARK
`
`PRINCIPAL REGISTER
`
`
`
`Deputy Director of the United States
`Patent and Trademark Office
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADEMARK REGISTRATION
`
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date. See 15 U.S.C. §§ 1058, 1141k.
`If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court.
`
`Second Filing Deadline.- You must file a Declaration of Use (or Excusable Nonuse) and an
`Application for Renewal between the 9th and 10th yea rs after the registration date.*
`See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods"
`What and When to File:
`
`You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between
`every 9th and IOIh-year period, calculated from the registration date. *
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`
`
`*ATTENTION MADRID PROTOCOL REGIS TRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonuse) referenced above directly with the USPTO. The time periods for filing are
`based on the US. registration date (not the international registration date). The deadlines and grace periods
`for the Declarations of Use (or Excusablc Nonuse) are identical to those for nationally issued registrations.
`See 15 U. S.C. §§1058, 1141k. However, owners of international registrations do not file renewal applications
`at the USPTO. instead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,
`see http://www.wipo.int/madrid/en/.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online
`at http://www. uspto.gov.
`
`Page: 2 /RN # 4,638,977
`
`

`

`Generated on: This page was generated by TSDR on 2019-08-15 17:20:20 EDT
`
`Mark:
`
`INADA
`
`US Serial Number: 85449982
`
`US Registration
`Number:
`
`4252717
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Oct. 18, 2011
`
`Registration Date: Dec. 04, 2012
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date: Feb. 05, 2019
`
`Publication Date: Sep. 18, 2012
`
` 
`
`Mark Literal
`Elements:
`
`INADA
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
`
`The mark consists of the stylized word "INADA".
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Acquired
`Distinctiveness
`Claim:
`
`In whole
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Massage apparatus; electric massage apparatus; electric massage chairs for household use; electric massage chairs for medical use;
`physical body rehabilitation apparatus for medical purposes; esthetic massage apparatus
`
`International
`Class(es):
`
`010 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Apr. 2001
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`U.S Class(es): 026, 039, 044
`
`Use in Commerce: Jun. 2001
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`

`

`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: FAMILY INADA CO., LTD.
`
`Owner Address: 2-1-3 NISHIMIYAHARA, YODOGAWA-KU
`OSAKA JAPAN
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`JAPAN
`
`Attorney/Correspondence Information
`
`Attorney Name: Victoria Friedman
`
`Docket Number: 115-10163272
`
`Attorney Primary
`Email Address:
`
`vfriedman@dennemeyer-law.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Attorney of Record
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Victoria Friedman
`Dennemeyer & Associates, LLC
`2 North Riverside Plaza, Suite 1500
`Chicago, ILLINOIS UNITED STATES 60606
`
`Phone: 312-628-5529
`
`Fax: 312-419-9440
`
`Correspondent e-
`mail:
`
`vfriedman@dennemeyer-law.com filing.us@denn
`emeyer-law.com docket@dennemeyer-law.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic
`Representative
`Name:
`
`Gary D. Krugman
`
`Fax: 202-293-7860
`
`Domestic
`Representative e-
`mail:
`
`tm@sughrue.com
`
`Domestic Representative
`
`Phone: 202-293-7060
`
`Domestic
`Representative e-
`mail Authorized:
`
`Yes
`
`Prosecution History
`
`Date
`
`Description
`
`Feb. 05, 2019
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`
`Feb. 05, 2019
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Jan. 31, 2019
`
`TEAS RESPONSE TO OFFICE ACTION-POST REG RECEIVED
`
`Jan. 03, 2019
`
`POST REGISTRATION ACTION MAILED - SEC. 8 & 15
`
`Jan. 03, 2019
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Dec. 04, 2018
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Dec. 04, 2017
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Jul. 16, 2014
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Dec. 04, 2012
`
`REGISTERED-PRINCIPAL REGISTER
`
`Sep. 18, 2012
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Sep. 18, 2012
`
`PUBLISHED FOR OPPOSITION
`
`Aug. 29, 2012
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Aug. 14, 2012
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Aug. 14, 2012
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Aug. 13, 2012
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Aug. 13, 2012
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Aug. 03, 2012
`
`ASSIGNED TO LIE
`
`Jul. 31, 2012
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Feb. 06, 2012
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Feb. 06, 2012
`
`NON-FINAL ACTION E-MAILED
`
`Proceeding
`Number
`
`74272
`
`74272
`
`74272
`
`77312
`
`77312
`
`77312
`
`77312
`
`6325
`
`6325
`
`

`

`Feb. 06, 2012
`
`NON-FINAL ACTION WRITTEN
`
`Feb. 06, 2012
`
`ASSIGNED TO EXAMINER
`
`73370
`
`73370
`
`Oct. 21, 2011
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Oct. 21, 2011
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`Current Location: TMO LAW OFFICE 116
`
`Date in Location: Feb. 05, 2019
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: CHANGE OF NAME
`
`Reel/Frame: 5320/0839
`
`Date Recorded: Jul. 11, 2014
`
`Supporting
`Documents:
`
`assignment-tm-5320-0839.pdf
`
`Assignment 1 of 1
`
`Registrant: Family Kabushiki Kaisha
`
` 
`
`Pages: 7
`
`Name: