Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1040423
`03/06/2020
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92072251
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`Party
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`Correspondence
`Address
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`Plaintiff
`Nir Ron
`
`ADRIANO PACIFICI
`INTELLECTUAL PROPERTY CONSULTING LLC
`334 CARONDELET STREET, SUITE B
`NEW ORLEANS, LA 70130
`UNITED STATES
`apacifici@iplawconsulting.com, trademarks@iplawconsulting.com
`504-323-6600
`
`Submission
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`Motion for Summary Judgment
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`Yes, the Filer previously made its initial disclosures pursuant to Trademark Rule
`2.120(a); OR the motion for summary judgment is based on claim or issue pre-
`clusion, or lack of jurisdiction.
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`The deadline for pretrial disclosures for the first testimony period as originally set
`or reset: 07/03/2020
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Adriano Pacifici
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`apacifici@iplawconsulting.com
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`/APacifici/
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`03/06/2020
`
`Motion for Summary Judgment H3 Hair Health Happiness with Exhib-
`its.pdf(1708756 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re: Registration No.
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`5785534
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`For the Composite Mark:
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`NIR RON,
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`Petitioner,
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`v.
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`H3 HAIR HEALTH HAPPINESS LLC,
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`Registrant.
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`_______________________________________
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`Cancellation No. 92072251
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`PETITIONER’S MOTION FOR SUMMARY JUDGMENT
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`Petitioner moves for summary judgment under Federal Rule of Civil Procedure
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`56, and requests that proceedings be suspended pursuant to 37 CFR § 2.127(d). Petitioner
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`respectfully requests that the Trademark Trial and Appeal Board sustain this cancellation
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`against Registrant H(cid:345) Hair Health Happiness LLC (cid:507)(cid:515)Registrant(cid:516)(cid:508) and cancel Registrant’s
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`registration for the
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` composite mark.
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`I.
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`Statement of Facts
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`Petitioner’s ”usiness and Petitioner’s Mark
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`Petitioner NIR RON dba H3 Hair Cubed (cid:507)(cid:515)Petitioner(cid:516) or (cid:515)Hair Cubed(cid:516)) is
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`engaged, and has been engaged for many years, in the manufacture and sale of hair care
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`and related cosmetic products. See Exhibit A. Declaration of Nir Ron (cid:507)(cid:515)Nir Dec.(cid:516)(cid:508) at ¶ (cid:346).
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`Petitioner sells the hair care and related cosmetic products under the trademark H3 HAIR
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`

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`CUBED and under the corresponding logo
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`. Id. at ¶ 5. Petitioner previously
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`registered the
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` trademark (U.S. Registration no. 4026264) with the United
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`States Patent and Trademark Office (cid:507)(cid:515)USPTO(cid:516)(cid:508), which was cancelled on “pril (cid:344)0, (cid:344)0(cid:343)8
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`because Opposer mistakenly failed to timely file the applicable renewal documents. Id. at
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`¶ 8.
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`Upon realizing that its previous registration was cancelled, on May 24, 2019,
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`Petitioner applied for the composite mark
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` (Serial no. 88446156) at the
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`USPTO in international class 003 with a first use in commerce as of May 2008 for the
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`following goods:
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`(cid:515)Cosmetic hair filling Hair thickener spray, hair fiber, Cosmetic hair
`dressing preparations, Cosmetic hair
`regrowth
`inhibiting
`preparations; Cosmetic preparations for the hair and scalp,
`Exfoliants for hair, Hair care creams, Hair care kits comprising non-
`medicated hair care preparations, Hair care lotions; Hair care
`preparations, Hair
`cleaning preparations, Hair
`coloring
`preparations, Hair colouring preparations, Hair conditioner, Hair
`conditioners, Hair creams, Hair pomades, Hair products, namely,
`thickening control creams, Hair rinses, Hair shampoo, Hair
`shampoos and conditioners, Hair spray, Hair sprays, Hair sprays
`and hair gels, Hair styling preparations; Hair tonic, Hair tonics,
`Lotions for hair, Mousse for hair, Non-medicated hair restoration
`lotions, Non-medicated hair treatment preparations for cosmetic
`purposes, Non-medicated preparations all for the care of skin, hair
`and scalp for covering bald and thinning spots on the scalp(cid:516).
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`Page 2 of 12
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`

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`(hereinafter referred to as (cid:515)Petitioner’s Mark(cid:516)(cid:508). See Exhibit A. Nir Dec. at ¶ 10.1 The
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`priority date claimed in Petitioner’s Mark is March 2008. Id. at ¶ 9.
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`Petitioner also asserts common law trademark rights to both the marks (cid:515)Haircube(cid:516)
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`and (cid:515)Haircubed(cid:516). See Exhibit A. Nir Dec. at ¶¶ 5 – 7. Petitioner has owned both domain
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`names www.haircube.com and www.hairbued.com since at least as early as 2006. See id.
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`at ¶ 6.
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`Registrant and Registrant’s Mark.
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`Registrant H3 Hair Health Happiness LLC is a Missouri limited liability company
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`focusing on hair salon and related services. On January 22, 2019, Registrant applied to
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`register the composite mark
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` (Registration number
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`5785534) in international class 044 with an alleged first use in commerce as of August 01,
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`2014 for the following goods:
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`(cid:515)Consulting in the field of health and wellness to bring about
`personal happiness; Consulting services in the field of mental fitness;
`Consulting services in the field of mental health and wellness;
`Consulting services in the field of women's health; Consulting
`services in the fields of health and nutrition; Holistic health services;
`Online cosmetic skincare consultation services; Beauty consultation
`services; Beauty consultation services in the selection and use of
`cosmetics, fragrances, beauty aids, personal care products, and bath,
`body and beauty products; Beauty salon services; Food nutrition
`consultation; Hair salon services; Hair salon services, namely, hair
`cutting, styling, coloring, and hair extension services; Hair salon
`services, namely, treatments to protect hair from effects of exposure
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`A true and correct copy of the current print out from the electronic database records of the USPTO
`1
`for Petitioner’s Mark is attached hereto as Exhibit B.
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`Page 3 of 12
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`to sunlight, heat, humidity and chlorinated water; Hair color salon
`services; Medical consultations provided via phone, online chat or
`videoconferencing; On-line make-up
`consultation
`services;
`Providing an
`interactive holistic web site featuring health
`information and patient initiated, patient authorized, fee-for-service,
`holistic approach distance healing sessions based on the patient's
`specific set of symptoms, medical profile and medical record
`analysis and patient benefit information concerning organic and
`holistic products and services; Providing in-person holistic health
`care services(cid:516).
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`(cid:507)hereinafter, (cid:515)Registrant’s Mark(cid:516)(cid:508). 2 Registrant’s Mark was registered on June (cid:344)(cid:347), (cid:344)0(cid:343)(cid:351).
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`TTAB Action.
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`On September 12, 2019, Petitioner commenced Cancellation Proceeding No.
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`92072251 at the Trademark Trial and “ppeal ”oard seeking to cancel Registrant’s Mark.
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`“s grounds for Petitioner’s cancellation, Petitioner alleges that Registrant’s registration
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`of Registrant’s Mark is likely to cause confusion with Petitioner’s Mark.
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`”ased on facts alleged in Petitioner’s Petition for Cancellation and in Registrant’s
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`Answer, Petitioner concludes that is has prior and superior rights in the mark
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` over Registrant’s rights in Registrant’s Mark. (cid:507)Petitioner’s Petition for
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`Cancellation at ¶¶ 11 – 15 and Registrant’s “nswer at ¶ 12).
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`A true and correct copy of the current print out from the electronic database records of the USPTO
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`for Registrant’s Mark is attached hereto as Exhibit C.
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`Page 4 of 12
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`II.
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`Argument.
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`The Federal Rules of Civil Procedure generally apply to Trademark Trial and
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`“ppeal ”oard proceedings. (cid:345)(cid:349) C.F.R. § (cid:344).(cid:343)(cid:343)(cid:348)(cid:507)a(cid:508). The ”oard therefore (cid:515)shall grant
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`summary judgment if the movant shows that there is no genuine dispute as to any
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`material fact and the movant is entitled to judgment as a matter of law.(cid:516) Fed. R. Civ. P.
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`56(a). (cid:515)In other words, the court properly grants summary judgment if no reasonable
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`jury could return a verdict for the non-moving party.(cid:516) Amgen Inc. v. F. Hoffmann-La Roche,
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`Ltd., 580 F.3d 1340, 1352 (Fed. Cir. 2009) (citing Anderson v. Liberty Lobby, Inc., 477 U.S.
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`242, 248 (1986)). (cid:515)The basic purpose of summary judgment procedure is one of judicial
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`economy – to save the time and expense of a full trial when it is unnecessary because the
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`essential facts necessary to decision of the issue can be adequately developed by less
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`costly procedures.(cid:516) Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 626 (Fed. Cir.
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`1984). Here, there are no genuine disputes as to any material fact that would preclude
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`summary judgment.
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`A.
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`Priority.
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`There is no genuine issue with respect to priority when a party in a Board
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`proceeding holds a valid pending U.S. trademark application with a priority date that is
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`prior to the date of first use upon which the other party can rely. See Aktieselskabet AF 21.
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`November 2001 v. Fame Jeans, Inc., 77 U.S.P.Q.2D 1861, 1862, 1864 (T.T.A.B. 2006) (no
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`Page 5 of 12
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`genuine issue that applicant’s earlier-filed trademark application has priority over
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`opposer’s later-filed application for mark not in use prior to applicant’s filing date(cid:508).
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`
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`In its “nswer to the Petition for Cancellation, Registrant stated (cid:515)Registrant agrees
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`Petitioner’s mark was in use prior to Registrant’s Mark(cid:516). See Registrant’s Answer at ¶
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`12. Petitioner has used in commerce Petitioner’s Mark for six (6) more years than
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`Registrant has used Registrant’s Mark in commerce.
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`Based on the foregoing, it is undisputed that Petitioner has seniority and priority
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`to Petitioner’s Mark. “ccordingly, Petitioner is entitled to summary judgment with
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`respect to its priority claim.
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`B.
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`Registrant’s Mark is Confusingly Similar to Petitioner’s Mark.
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`In assessing the likelihood of confusion, the Board considers the now classic
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`factors discussed in In re E. I. DuPont de Nemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A.
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`(cid:343)(cid:351)(cid:349)(cid:345)(cid:508) (cid:507)the (cid:515)DuPont factors(cid:516)(cid:508)(cid:498) see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
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`Maison Fondee En 1772, 73 U.S.P.Q 2d 1689, 1691 (Fed. Cir. 2005); Carl Karcher Enters, Inc.
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`v. Stars Rests. Corp., 35 U.S.P.Q.2d. 1125, 1128 (T.T.A.B. 1995). The DuPont factors that are
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`pertinent to this proceeding include the (i) similarity of the marks; (ii) similarity of the
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`goods or services; (iii) conditions of sale; (iv) number and nature of similar marks in use
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`on similar goods or services; and (v) similarity of channels of trade.
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`An Examining “ttorney at the USPTO has already determined that Registrant’s
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`Mark is confusingly similar to Petitioner’s Marks. See Exhibit D. The Office Action
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`Page 6 of 12
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`Received by Petitioner. Petitioner asserts that the Examining “ttorney’s determination of
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`confusion is valid and reiterates these findings below.
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`i.
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`Similarity of the Marks
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`The Examining Attorney stated, and Petitioner agrees, that:
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`(cid:515)The mark for Reg. No. (cid:347)(cid:349)8(cid:347)(cid:347)(cid:345)(cid:346) also shares the wording 'H“IR(cid:516),
`(cid:515)H(cid:516), and (cid:515)(cid:345)(cid:516) with applicant’s mark and contains additional wording
`that is disclaimed(cid:497) (cid:515)HE“LTH H“PPINESS(cid:516). “lthough marks are
`compared in their entireties, one feature of a mark may be more
`significant or dominant in creating a commercial impression. See In
`re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir.
`2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751
`(Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter
`that is descriptive of or generic for a party’s goods and/or services is
`typically less significant or less dominant when comparing marks.
`In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050
`(Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41
`USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii),
`(cid:507)c(cid:508)(cid:507)ii(cid:508). Thus, Reg. No.’s [(cid:347)(cid:349)8(cid:347)(cid:347)(cid:345)(cid:346)] additional wording does not
`obviate likelihood of confusion with applicant’s mark …
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`Accordingly, in this case, the mark (cid:515)H3 HAIR CUBED(cid:516) offers the
`same commercial impression as the registered (cid:515)H3 HAIR HEALTH
`HAPPINESS(cid:516) … marks. For this reason, the marks are confusingly
`similar.
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`See Exhibit D.
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`Based on the foregoing, Petitioner agrees with the Examining “ttorney’s
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`determination that the marks (cid:515)H3 HAIR CUBED(cid:516) and (cid:515)H3 HAIR HEALTH
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`HAPPINESS(cid:516) are confusingly similar and this factor in the DuPont test should weigh
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`strongly in favor of finding a likelihood of confusion between Petitioner’s Mark and
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`Registrant’s Mark.
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`Page 7 of 12
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`ii.
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`Similarity of the Goods & Services
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`This factor examiners the similarity of the goods and services offered under the
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`parties’ respective marks, as described in their trademark applications/registrations. Nat’l
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`Football League v. Jasper Alliance Corp., 16 U.S.P.Q.2d. 1212, 1215 (T.T.A.B. 1990). Goods &
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`services do not have to be identical or even competitive in order to find that there is a
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`likelihood of confusion – although here, there is a direct overlap between the parties’
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`goods and services. Id. It is only necessary that the goods and services be related in such
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`a way that consumers are likely to believe the products come from the same source. Id.
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`
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`Here, Petitioner’s (cid:515)H3 H“IR CU”ED(cid:516) application covers a variety of hair care and
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`related cosmetic products in international class 3. Registrant’s Mark covers, in relevant
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`part, the following related services(cid:497) (cid:515)”eauty consultation services(cid:498) ”eauty consultation
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`services in the selection and use of cosmetics, fragrances, beauty aids, personal care
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`products, and bath, body and beauty products; Beauty salon services; Hair salon services;
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`Hair salon services, namely, hair cutting, styling, coloring, and hair extension services;
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`Hair salon services, namely, treatments to protect hair from effects of exposure to
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`sunlight, heat, humidity and chlorinated water(cid:498) Hair color salon services(cid:516). See Exhibits B
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`and C.
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`“gain, Petitioner refers to the office action and agrees with the Examiner’s
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`determination of relatedness between the goods covered in Petitioner’s Mark and the
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`services identified in Registrant’s Mark(cid:497) (cid:515)the … evidence shows that the same entity
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`Page 8 of 12
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`commonly manufactures hair products and provides hair salon(cid:516). See Exhibit D.
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`Furthermore, Petitioner also agrees with the Examiner’s assessment that(cid:497)
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`To the extent the evidence may not address all of the items in applicant’s
`identification, relatedness does not have to be established for every good or
`service. It is sufficient for a finding of likelihood of confusion if relatedness
`is established for any or some item(s) encompassed by the identification
`within a particular class in an application. Tuxedo Monopoly, Inc. v. General
`Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case,
`relatedness has been established for many of the identified items, which is
`enough to show a likelihood of confusion.
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`See id.
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`Based on the foregoing analysis and the evidence that the same entity often
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`manufactures hair care products and offers hair salon services under the same mark,
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`Petitioner’s goods are closely related and substantially similar to Registrant’s services.
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`Furthermore, Registrant admitted, and agreed, that it is standard to find a direct
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`relationship between hair care products in class 003 and hair salon services in class 044
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`and it is common for hair salons. See Registrant’s Answer at ¶ 22.
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`This DuPont factor weighs strongly in favor of finding a likelihood of confusion
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`between Petitioner’s Mark and Registrant’s Mark.
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`iii.
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`Channels of Trade
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`
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`It is well settled that, where a trademark application or registration describes
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`goods or services broadly, without limitations, it is presumed that the goods or services
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`in that application or registration move in all normal channels of trade. See, e.g., In re
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`Linkvest S.A., (cid:344)(cid:346) U.S.P.Q.(cid:344)d at (cid:343)(cid:349)(cid:343)(cid:348), (cid:343)(cid:349)(cid:343)(cid:348) (cid:507)T.T.“.”. (cid:343)(cid:351)(cid:351)(cid:344)(cid:508) (cid:507)where a registrant’s goods are
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`Page 9 of 12
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`broadly identified as (cid:515)computer programs recorded on magnetic disks,(cid:516) without any
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`limitation, it is necessary to assume that the registrant’s goods travel in the same channels
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`of trade and are available to all classes of prospective purchasers of those goods as the
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`cited mark).
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`Here, both parties provide their respective goods and services through identical
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`or substantially similar channels of trade. Petitioner sells its hair care and related cosmetic
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`products through online and retail store services See Exhibit A. Nir Dec. at ¶ 11. And
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`Registrant provides its hair care services through standard channels of trade,3 in which
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`the same consumer of Petitioner would overlap with the same consumer of Registrant.
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`As such, the relevant consumers of Petitioner’s goods and the relevant consumers of
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`Registrant’s services are likely to encounter the parties’ respective goods and services
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`through the same channels of trade.
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`As such, this DuPont factor weighs strongly in favor of finding a likelihood of
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`confusion between Petitioner’s Mark and Registrant’s Mark.
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`****
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`
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`In summary, Petitioner has priority to Petitioner’s Mark and application of the
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`DuPont factors to the respective marks and goods/services at issue here, compels the
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`conclusion that there is a likelihood of confusion as to the registration Petitioner is seeking
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`to cancel herein. Petitioner maintains its agreement with the Examining “ttorney’s
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`3
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`See Exhibit E. Screenshot of Registrant’s website.
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`Page 10 of 12
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`assessment that there is a strong likelihood of confusion between Registrant’s Mark and
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`Petitioner’s Mark.
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`Conclusion
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`This Cancellation proceeding was necessitated simply because Petitioner,
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`mistakenly, forgot to renew its prior registration. Had that registration been renewed,
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`Petitioner contends that a likelihood of confusion refusal would have been issued against
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`registration of Registrant’s Mark. The continued registration of Registrant’s Mark is
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`causing harm to Petitioner’s business.
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`For the foregoing reasons, the Board should grant Petitioner’s motion for
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`summary judgment and sustain this Cancellation.
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`Dated: March 6, 2020.
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`RESPECTFULLY SUBMITTED,
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`
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`Adriano Pacifici
`INTELLECTUAL PROPERTY CONSULTING, LLC
`334 Carondelet Street, Suite B
`New Orleans, Louisiana 70130
`Phone: (504) 322.7166
`Fax: (504) 322.7184
`apacifici@iplawconsulting.com
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`ATTORNEY FOR PETITIONER NIR RON
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`Page 11 of 12
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`Certificate of Service
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`I certify that on this 6th day of March, (cid:344)0(cid:344)0, a copy of the foregoing Petitioner’s
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`Motion For Summary Judgment has been served upon Petitioner via the email address
`of record.
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` Adriano Pacifici
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`Page 12 of 12
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`EXHIBIT A
`EXHIBIT A
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`DECLARATION OF NIR RON
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`I, Nir Ron, declare as follows:
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`1.
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`I am owner of the
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` trademark application (Serial no.
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`88446156) and Hair Cubed company (cid:507)(cid:515)Hair Cubed(cid:516)(cid:508).
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`2.
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`I am over the age of majority, am competent to testify, and have personal
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`knowledge of the facts stated herein.
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`3.
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`I filed the Petition for Cancellation (Proceeding no. 92072251(cid:508) (cid:507)(cid:515)Petitioner(cid:516)(cid:508)
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`seeking to cancel the
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` trademark registration.
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`4.
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`Petitioner is engaged, and has been engaged for many years, in the
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`manufacture and sale of hair care and related cosmetic products.
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`5.
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`The Hair Cubed company has existed since March 2008 and sells various
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`hair care and related cosmetic products under the standard character and design marks
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`(cid:515)H(cid:345) Hair Cubed(cid:516), (cid:515)Hair Cubed(cid:516), and (cid:515)Hair Cube(cid:516).
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`6.
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`Petitioner has owned the domain names www.haircube.com and
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`www.haircubed.com since at least as early as 2006. See Exhibit A.
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`7.
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`Petitioner has been actively and continuously using the word and design
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`mark (cid:515)H(cid:345) Hair Cubed(cid:516) since at least as early as March (cid:344)008.
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`[1]
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`8.
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`Hair Cubed previously registered the
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` trademark (U.S.
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`Registration no. 4026264(cid:508) (cid:507)the (cid:515)Previous Registration(cid:516)(cid:508), which was mistakenly cancelled
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`when I forgot to timely file the appropriate renewal documents.
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`9.
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`Upon realizing that the Previous Registration was cancelled, I took the
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`appropriate steps to re-register the
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` mark, which has been continuously
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`used since at least as early as May 2008.
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`10.
`
`Petitioner applied for the composite mark
`
` (Serial no.
`
`88446156) in international class 003 for the following goods: (cid:515)Cosmetic hair filling Hair
`
`thickener spray, hair fiber, Cosmetic hair dressing preparations, Cosmetic hair regrowth
`
`inhibiting preparations; Cosmetic preparations for the hair and scalp, Exfoliants for hair,
`
`Hair care creams, Hair care kits comprising non-medicated hair care preparations, Hair
`
`care lotions; Hair care preparations, Hair cleaning preparations, Hair coloring
`
`preparations, Hair colouring preparations, Hair conditioner, Hair conditioners, Hair
`
`creams, Hair pomades, Hair products, namely, thickening control creams, Hair rinses,
`
`Hair shampoo, Hair shampoos and conditioners, Hair spray, Hair sprays, Hair sprays
`
`and hair gels, Hair styling preparations; Hair tonic, Hair tonics, Lotions for hair, Mousse
`
`for hair, Non-medicated hair restoration lotions, Non-medicated hair treatment
`
`[2]
`
`
`

`

`preparations for cosmetic purposes, Non-medicated preparations all for the care of skin,
`
`hair and scalp for covering bald and thinning spots on the scalp(cid:516).
`
`11.
`
`Petitioner provides its hair care and related cosmetic products through a
`
`variety of channels of trade, including:
`
`a. Online Retail Stores – haircube.com; haircubed.com; Amazon.com;
`
`Ebay.com; Facebook; Walmart.com; Sears.com; and Smartdirect.com;
`
`b. Retail Stores – The HairCubed Store at 3950 Laurel Grove Ave,
`
`Studio City, Los Angeles, CA 91604; and
`
`c. Wholesale Distribution.
`
`Executed on this 2nd day of March, 2020.
`
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`___________________
`By:
`Nir Ron
`Hair Cubed
`
`
`
`[3]
`
`
`

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`EXHIBIT B
`EXHIBIT B
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`

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`Generated on: This page was generated by TSDR on 2020-03-05 15:54:14 EST
`
`Mark: H3 HAIR CUBED
`
`US Serial Number: 88446156
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`May 24, 2019
`
`Currently TEAS RF: Yes
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: An Office action suspending further action on the application has been sent (issued) to the applicant. To view all documents in this file,
`click on the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Mar. 02, 2020
`
` 
`
`Mark Literal
`Elements:
`
`H3 HAIR CUBED
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of the wording "H3", with the "H" in white outlined in red, and with the "3" appearing in red with white at the right
`edge of the "3" making it look three-dimensional. The "H3" appears above the wording "HAIR CUBED" in white; one horizontal line in
`white underneath "H3" and one horizontal line in white below the 'HAIR CUBED"; all with a black background."
`
`Color Drawing: Yes
`
`Color(s) Claimed: The color(s) Red, Black and White are claimed as a feature of the mark.
`
`Disclaimer: "HAIR"
`
`Design Search
`Code(s):
`
`26.17.01 - Bands, straight; Bars, straight; Lines, straight; Straight line(s), band(s) or bar(s)
`26.17.05 - Bands, horizontal; Bars, horizontal; Horizontal line(s), band(s) or bar(s); Lines, horizontal
`
`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: Cosmetic hair filling sprays and fibers for covering bald and thinning spots on the scalp; Hair thickener spray; Cosmetic hair dressing
`preparations; Cosmetic hair regrowth inhibiting preparations; Cosmetic preparations for the hair and scalp; Non-medicated exfoliating
`preparations for hair; Hair care creams; Hair care kits comprising non-medicated hair care preparations, namely, shampoos, hair loss
`capsules, gels, conditioners, hair spray, and shine spray; Hair care lotions; Hair care preparations; Hair cleaning preparations; Hair
`coloring preparations; Hair conditioners; Hair creams; Hair pomades; Hair products, namely, thickening control creams; Hair rinses;
`Hair shampoo; Hair shampoos and conditioners; Hair spray; Hair spray and hair gels; Hair styling preparations; Hair tonic; Hair tonics;
`Non-medicated lotions for hair; Hair mousse; Non-medicated hair restoration lotions; Non-medicated hair treatment preparations for
`cosmetic purposes; Non-medicated preparations all for the care of skin, hair and scalp
`
`International
`Class(es):
`
`003 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 001, 004, 006, 050, 051, 052
`
`First Use: Sep. 11, 2007
`
`Use in Commerce: Mar. 2008
`
`Used Anywhere in
`Another Form:
`
`The mark was first used anywhere in a different
`form other than that sought to be registered at
`
`Used in Commerce
`in Another Form:
`
`The mark was first used in commerce in a
`different form other than that sought to be
`
`

`

`least as early as 09/11/2007
`
`registered at least as early as 03/00/2008
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Ron Nir
`
`DBA, AKA,
`Formerly:
`
`DBA H3 Hair Cubed
`
`Owner Address: 3950 Laurel Grove Ave
`3950 Laurel Grove Ave
`Studio City, CALIFORNIA UNITED STATES 91604
`
`Legal Entity Type: INDIVIDUAL
`
`Citizenship: UNITED STATES
`
`Attorney/Correspondence Information
`
`Attorney Name: Adriano Pacifici
`
`Attorney Primary
`Email Address:
`
`apacifici@iplawconsulting.com
`
`Attorney of Record
`
`Docket Number: 01015
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Adriano Pacifici
`Intellectual Property Consulting, LLC
`334 CARONDELET STREET
`SUITE B
`NEW ORLEANS, LOUISIANA UNITED STATES 70130
`
`Phone: 504-323-6600
`
`Correspondent e-
`mail:
`
`apacifici@iplawconsulting.com creid@iplawconsul
`ting.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Mar. 02, 2020
`
`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
`
`Mar. 02, 2020
`
`LETTER OF SUSPENSION E-MAILED
`
`Mar. 02, 2020
`
`SUSPENSION LETTER WRITTEN
`
`Mar. 02, 2020
`
`EXAMINER'S AMENDMENT ENTERED
`
`Mar. 02, 2020
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Mar. 02, 2020
`
`EXAMINERS AMENDMENT E-MAILED
`
`Mar. 02, 2020
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Feb. 18, 2020
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Feb. 18, 2020
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Feb. 18, 2020
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Feb. 18, 2020
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Feb. 18, 2020
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Feb. 18, 2020
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Aug. 20, 2019
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Aug. 20, 2019
`
`NON-FINAL ACTION E-MAILED
`
`Aug. 20, 2019
`
`NON-FINAL ACTION WRITTEN
`
`Aug. 13, 2019
`
`ASSIGNED TO EXAMINER
`
`Proceeding
`Number
`
`6332
`
`6332
`
`94643
`
`88888
`
`6328
`
`6328
`
`94643
`
`88889
`
`88889
`
`6325
`
`6325
`
`94643
`
`94643
`
`

`

`Jun. 11, 2019
`
`NOTICE OF DESIGN SEARCH CODE E-MAILED
`
`Jun. 10, 2019
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`May 28, 2019
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`TM Attorney: RIOS, SASHA BOSHART
`
`Current Location: TMO LAW OFFICE 125 - EXAMINING
`ATTORNEY ASSIGNED
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 125
`
`File Location
`
`Date in Location: Mar. 02, 2020
`
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`2
`
`Type of Proceeding: Cancellation
`
` 
`
`Proceeding
`Number:
`
`92072251
`
`Status: Pending
`
`Interlocutory
`Attorney:
`
`ANN LINNEHAN VOGLER
`
`Filing Date: Sep 12, 2019
`
`Status Date: Sep 12, 2019
`
`Defendant
`
`Name: H3 Hair Health Happiness LLC
`
`Correspondent
`Address:
`
`H3 HAIR HEALTH HAPPINESS LLC
`601 BOONES LICK RD
`ST. CHARLES MO UNITED STATES , 63301
`
`hairhealthhappiness@gmail.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`H3 HAIR HEALTH HAPPINESS
`
`Name: Nir Ron
`
`Application Status
`
`Cancellation Pending
`
`Plaintiff(s)
`
`Correspondent
`Address:
`
`ADRIANO PACIFICI
`INTELLECTUAL PROPERTY CONSULTING LLC
`334 CARONDELET STREET, SUITE B
`NEW ORLEANS LA UNITED STATES , 70130
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`H3 HAIR CUBED
`
`apacifici@iplawconsulting.com , trademarks@iplawconsulting.com
`
`Application Status
`
`Suspension Letter - Mailed
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`INSTITUTED
`
`ANSWER
`
`TRIAL DATES REMAIN AS SET
`
`1
`
`2
`
`3
`
`4
`
`5
`
`Proceeding
`Number:
`
`92072279
`
`Type of Proceeding: Cancellation
`
`Filing Date: Sep 12, 2019
`
`Serial
`Number
`
`Registration
`Number
`
`88065640
`
`5785534
`
`Serial
`Number
`
`88446156
`
`Registration
`Number
`
`Due Date
`
`Oct 22, 2019
`
`Date
`
`Sep 12, 2019
`
`Sep 12, 2019
`
`Sep 12, 2019
`
`Oct 21, 2019
`
`Oct 22, 2019
`
`

`

`Status: Pending
`
`Status Date: Feb 10, 2020
`
`Interlocutory
`Attorney:
`
`REBECCA J STEMPIEN_COYLE
`
`Name: Luoyang Hangyuan E-commerce Co., Ltd.
`
`Correspondent
`Address:
`
`FRANCIS H KOH
`KOH LAW FIRM LLC
`4800 HAMPDEN LANE SUITE 200
`BETHESDA MD UNITED STATES , 20814
`
`Defendant
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`HAIRCUBE
`
`HAIRCUBE
`
`fkohmail@gmail.com , ecptm@scienbizip.com , TMProce@scienbizip.com
`
`Application Status
`
`Cancellation Pending
`
`Cancellation Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`88180982
`
`88181048
`
`Registration
`Number
`
`5780133
`
`5774901
`
`Name: Nir Ron
`
`Correspondent
`Address:
`
`ADRIANO PACIFICI
`INTELLECTUAL PROPERTY CONSULTING LLC
`334 CARONDELET STREET SUITE B
`NEW ORLEANS LA UNITED STATES , 70130
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`H3 HAIR CUBED
`
`apacifici@iplawconsulting.com , trademarks@iplawconsulting.com
`
`Application Status
`
`Suspension Letter - Mailed
`
`Prosecution History
`
`Serial
`Number
`
`88446156
`
`Registration
`Number
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`INSTITUTED
`
`NOTICE OF DEFAULT
`
`D MOT TO SET ASIDE DEFAULT/ACCEPT LATE ANSWER
`
`ANSWER
`
`TRIAL DATES RESET
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`Due Date
`
`Oct 26, 2019
`
`Date
`
`Sep 12, 2019
`
`Sep 16, 2019
`
`Sep 16, 2019
`
`Nov 05, 2019
`
`Dec 05, 2019
`
`Dec 05, 2019
`
`Feb 10, 2020
`
`

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`EXHIBIT C
`EXHIBIT C
`
`

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`Generated on: This page was generated by TSDR on 2020-03-05 15:55:52 EST
`
`Mark: H3 HAIR HEALTH HAPPINESS
`
`US Serial Number: 88065640
`
`US Registration
`Number:
`
`5785534
`
`Filed as TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Aug. 04, 2018
`
`Registration Date: Jun. 25, 2019
`
`Currently TEAS RF: Yes
`
`LIVE/REGISTRATION/Cancellation/Invalidation Pending
`
`This trademark application has been registered with the Office, but it is
`currently undergoing a challenge which may result in its removal from the
`registry.
`
`Status: A canc