Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA Tracking number:
`
`ESTTA1020526
`
`Filing date:
`
`12/05/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92072279
`Defendant
`Luoyang Hangyuan E-commerce Co., Ltd.
`
`ÂL
`
`UOYANG HANGYUAN E-COMMERCE CO LTD
`301Â WESTÂ ST 13F E-BUSINESSÂ PARK BAOLONG,
`LUOLONGÂ DISTRICT
`LUOYANG, 471000
`CHINA
`2851218765@qq.com
`+8615825757150
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's email
`Signature
`Date
`Attachments
`
`Answer
`Francis koh
`fkohmail@gmail.com, ecptm@scienbizip.com, TMProce@scienbizip.com
`/Francis Koh/
`12/05/2019
`191205-HAIRCUBE-Answer-v1r00 - V2.pdf(454489 bytes )
`
`
`ESTTA Tracking number:
`
`ESTTA1020526
`
`Filing date:
`
`12/05/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92072279
`Defendant
`Luoyang Hangyuan E-commerce Co., Ltd.
`
`ÂL
`
`UOYANG HANGYUAN E-COMMERCE CO LTD
`301Â WESTÂ ST 13F E-BUSINESSÂ PARK BAOLONG,
`LUOLONGÂ DISTRICT
`LUOYANG, 471000
`CHINA
`2851218765@qq.com
`+8615825757150
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's email
`Signature
`Date
`Attachments
`
`Answer
`Francis koh
`fkohmail@gmail.com, ecptm@scienbizip.com, TMProce@scienbizip.com
`/Francis Koh/
`12/05/2019
`191205-HAIRCUBE-Answer-v1r00 - V2.pdf(454489 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Reg. No.: 5780133 and 5774901
`Mark: HAIRCUBE
`
`Nir Ron
`
`
`)
`)
`)
`)
`) Cancellation Proceeding
`) No. 92072279
`)
`)
`)
`)
`)
`)
`
`Petitioner,
`
`
`
`v.
`
`
`Luoyang Hangyuan E-commerce Co., Ltd.
`
`
`Registrant.
`
`
`
`
`ANSWER TO PETITION TO CANCEL
`
`
`
`Registrant Luoyang Hangyuan E-commerce Co., Ltd. (“Registrant”), by and
`
`through undersigned counsel, hereby submits the following answers to Nir Ron’s
`
`(“Petitioner”) Petition to Cancel and states the following:
`
`
`
`1. Registrant admits that Petitioner Nir Ron dba H3 Hair Cubed appears to be a
`
`United States individual domiciled at 950 Laurel Grove Ave Studio City, CA 91604
`
`based upon his application.
`
`
`
` 2. Registrant lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 2 and therefore denies same.
`
`
`
`
`
` (cid:1005) / (cid:1005)(cid:1008)
`
`
`
`3. Registrant lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 3 and therefore denies same.
`
`
`
` 4. Registrant admits that Petitioner’s trademark cancellation of U.S. Registration
`
`No. 4026264. Registrant is without knowledge sufficient to form a belief as to the
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`allegations of the Petitioner’s Paragraph No. 4 and leaves Petitioner to its proofs with
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`respect thereto.
`
`
`
`5. Registrant admits that Petitioner’s applied-for mark
`
` with serial no.
`
`88446156. Registrant denies the allegations to Petitioner’s arguments in favor of
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`cancellation on grounds of Priority and likelihood of confusion.
`
`
`
`6. Registrant admits that Registrant Luoyang Hangyuan E-commerce Co.,Ltd. is a
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`Chinese limited liability company with a principal business address of 301 West
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`St.1,3F,E-business Park, Baolong Luolong Dist., LUOYANG CHINA 471000.
`
`
`
`7. Registrant admits that on November 5, 2018, Registrant applied to register the
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`mark HAIRCUBE in standard character form with serial No. 88180982 in international
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`class 003 with an alleged first use in commerce as of September 01, 2018 for Colognes,
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`perfumes and cosmetics; Cosmetic hand creams; Cosmetic oils; Cosmetic preparations
`
`for body care; Cosmetic suntan lotions; Cosmetics; Face creams for cosmetic use;
`
`
`
` (cid:1006) / (cid:1005)(cid:1008)
`
`
`
`Facial masks; Lip stains; Lipstick; Make-up removing lotions; Nail paint; Nail polish
`
`remover pens; Pre-moistened cosmetic wipes; Cleansing creams; Cosmetic creams for
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`skin care; Cosmetic preparations for protecting the skin from the sun's rays; Cosmetic
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`preparations for removing gel nails, acrylic nails, and nail polish; Cosmetic products in
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`the form of aerosols for skincare; Cosmetics for children.
`
`
`
` 8. Registrant admits that Registrant’s application serial No. 88180982 was
`
`registered on June 18, 2019 with Registration No. 5780133.
`
`
`
` 9. Registrant admits that on November 5, 2018, Registrant applied to register the
`
`mark HAIRCUBE in standard character form with serial No. 88181048 in international
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`class 005 with an alleged first use in commerce as of September 01, 2018 for Aerosol
`
`dispensers for medical use sold filled with hair growth stimulants; Analgesics; Anti-
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`inflammatories; Cytostatics for medical purposes; Hair growth stimulants; Human
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`growth hormone; Medical plasters; Medicated hair care preparations; Medicated hair
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`serums; Medicated skin soap; Medicinal herbs; Medicinal oils; Medicinal preparations
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`for stimulating hair growth; Sterilizing preparations; Sticking plasters for medical use;
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`Dietetic foods adapted for medical purposes; Medicated balms for treatment of hair;
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`Medicated lotions for hair; Medicated serums for treatment of hair Medicinal hair
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`growth preparations.
`
`
`
`
`
` 10. Registrant admits that Registrant’s application serial No. 88181048 was
` (cid:1007) / (cid:1005)(cid:1008)
`
`
`
`registered on June 11, 2019 with Registration No. 5774901.
`
`
`
`11. Registrant admits that Registrant’s Registrations 5774901 and 5780133 are
`
`hereinafter referred to as Registrant’s Marks.
`
`
`
`12. Registrant admits that On August 20, 2019, Petitioner’s Mark received a non-
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`final office action initially refusing to register Petitioner’s Mark in view of U.S.
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`Registration Nos. 5774901 and 5780133 for the HAIRCUBE mark. Registrant is
`
`without knowledge sufficient to form a belief as to the allegations of Petitioner’s paragraph
`
`No. 12 and leaves Petitioner to its proofs with respect thereto.
`
`
`
` 13. Registrant lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of paragraph 13 and therefore denies same.
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`
`
` 14. Paragraph No. 14 represents conclusions of law to which no answer is required.
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`To the extent an answer is required, Registrant lacks knowledge or information
`
`sufficient to form a belief as to the truth of the allegations of paragraph 14 and therefore
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`denies same.
`
`
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`15. Registrant lacks knowledge or information sufficient to form a belief as to the
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`truth of the allegations of paragraph 15 and therefore denies same. Registrant denies
`
`
`
` (cid:1008) / (cid:1005)(cid:1008)
`
`
`
`the allegations to Petitioner’s arguments in favor of cancellation on grounds of Priority
`
`of Use.
`
`
`
`16. Registrant admits that Petitioner conducted an investigation, reasonable in scope,
`
`regarding Registrant’s first use in commerce of Registrant’s Marks. Registrant denies
`
`the allegations to Petitioner’s arguments in favor of cancellation on grounds of Priority
`
`of Use.
`
`
`
`17. Paragraph No. 17 represents conclusions of law to which no answer is required.
`
`To the extent an answer is required, Registrant lacks knowledge or information
`
`sufficient to form a belief as to the truth of the allegations of paragraph 17 and therefore
`
`denies same.
`
`
`
`18. Paragraph No. 18 represents conclusions of law to which no answer is required.
`
`To the extent an answer is required, Registrant lacks knowledge or information
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`sufficient to form a belief as to the truth of the allegations of paragraph 18 and therefore
`
`denies same.
`
`
`
`19. Paragraph No. 19 represents conclusions of law to which no answer is required.
`
`To the extent an answer is required, Registrant lacks knowledge or information
`
`sufficient to form a belief as to the truth of the allegations of paragraph 19 and therefore
`
`
`
` (cid:1009) / (cid:1005)(cid:1008)
`
`
`
`denies same.
`
`
`
`20. Paragraph No. 20 represents determinations of fact and conclusions of law to
`
`which no answer is required. To the extent an answer is required, Registrant lacks
`
`knowledge or information sufficient to form a belief as to the truth of the allegations of
`
`paragraph 20 and therefore denies same.
`
`
`
`21. Paragraph No. 21 represents determinations of fact and conclusions of law to
`
`which no answer is required. To the extent an answer is required, Registrant lacks
`
`knowledge or information sufficient to form a belief as to the truth of the allegations of
`
`paragraph 21, and therefore denies same. Additionally, the pronunciation of
`
`Petitioner’s Mark H3 HAIR CUBED is different from that of Registrant’s Mark
`
`HAIRCUBE because they differ in prefix. Registrant’s Mark HAIRCUBE is the literal
`
`translation of Chinese characters “发” and “立方”, which refer to “HAIR” and “CUBE”
`
`in English. Please see FIG. 1 below. The Petitioner’s Mark H3 HAIR CUBED is
`
`enclosed and limited within a design while Registrant’s Mark HAIRCUBE is in
`
`standard format.
`
`
`
`
`
`
`
`
`
`
`
` (cid:1010) / (cid:1005)(cid:1008)
`
`
`
`FIG. 1.
`
`
`
`22. Registrant lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph 22 and therefore denies same, and to the extent an
`
`answer is required, Registrant denies the allegations of similarity and likelihood of
`
`
`
` (cid:1011) / (cid:1005)(cid:1008)
`
`
`
`confusion.
`
`
`
`23. Paragraph No. 23 represents determination of facts and conclusions of law to
`
`which no answer is required, Registrant lacks knowledge or information sufficient to
`
`form a belief as to the truth of the allegations of paragraph No. 23 and leaves Petitioner
`
`to its proofs with resect thereto.
`
`
`
`24. Paragraph 24 represents determination of facts and conclusions of law to which
`
`no answer is required, Registrant lacks knowledge or information sufficient to form a
`
`belief as to the truth of the allegations of paragraph 24 and therefore denies same.
`
`Additionally, Petitioner’s goods in Class 005 are non-medicated while Registrant’s
`
`goods in Class 005 are medicinal. Petitioner’s goods in Class 005 are mainly for hair
`
`while Registrant’s goods in Class 003 are for skin care. Customers can distinguish
`
`Petitioner’s goods from Registrant’s goods by their packaging and product descriptions.
`
`Please see and compare FIG. 2 and 3 below.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` (cid:1012) / (cid:1005)(cid:1008)
`
`
`
`FIG. 2
`
`Packaging of Petitioner’s goods:
`
`
`
`
`
`
`
` (cid:1013) / (cid:1005)(cid:1008)
`
`
`
`
`
`FIG. 3
`
`Packaging of Registrant’s goods:
`
`
`25. Registrant lacks knowledge or information sufficient to form a belief as to the
`
`truth of the allegations of paragraph No. 25 and therefore denies same.
`
`
`
`26. Paragraph No. 26 represents conclusions of law to which no answer is required.
`
`To the extent that an answer is required, Registrant is without knowledge sufficient to form
`
`a belief as to the allegations of Petitioner’s Paragraph No. 26 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`27. Paragraph No. 27 represents conclusions of law to which no answer is required.
`
`To the extent that an answer is required, Registrant is without knowledge sufficient to form
` (cid:1005)(cid:1004) / (cid:1005)(cid:1008)
`
`
`
`
`
`a belief as to the allegations of Petitioner’s Paragraph No. 27 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`28. Registrant denies the allegations of Paragraph No. 28, Registrant asserts that
`
`Petitioner lacks the legal basis to require a license or permission from Registrant, and
`
`further, Registrant’s use was in good faith.
`
`
`
`29. Paragraph No. 29 represents conclusions of law to which no answer is required.
`
`To the extent that an answer is required, Registrant is without knowledge sufficient to form
`
`a belief as to the allegations of Petitioner’s Paragraph No. 29 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`30. Paragraph No. 30 represents conclusions of law to which no answer is required.
`
`To the extent that an answer is required, Registrant is without knowledge sufficient to form
`
`a belief as to the allegations of Petitioner’s Paragraph No. 30 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`31. Paragraph No. 31 represents conclusions of law to which no answer is required.
`
`To the extent that an answer is required, Registrant is without knowledge sufficient to form
`
`a belief as to the allegations of Petitioner’s Paragraph No. 31 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
` (cid:1005)(cid:1005) / (cid:1005)(cid:1008)
`
`
`
`32. Registrant denies the allegations of paragraph No. 32.
`
`
`
`33. Registrant denies the allegations of paragraph No. 33.
`
`
`
`34. Registrant admits the allegations of Paragraph No. 34 as Registrant did create
`
`on its own and use its Mark, HAIRCUBE, in Class 003 and Class 005 in good faith
`
`without any plagiarisms. Registrant has been selling, marketing, advertising its
`
`products bearing its Mark HAIRCUBE through its cumulative advertising efforts of
`
`over the years via print medium and on-line medium without any connection or
`
`affiliation with Petitioner.
`
`
`
`
`
`35. Registrant denies the allegation of paragraph No. 35.
`
`36. Paragraph No. 36 represents conclusions of law to which no answer is required. To
`
`the extent that an answer is required, Registrant is without knowledge sufficient to form a
`
`belief as to the allegations of Petitioner’s Paragraph No. 36 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`37. Paragraph No. 37 represents conclusions of law to which no answer is required. To
`
`the extent that an answer is required, Registrant is without knowledge sufficient to form a
`
`belief as to the allegations of Petitioner’s Paragraph No. 37 and therefore denies the same
`
`
`
` (cid:1005)(cid:1006) / (cid:1005)(cid:1008)
`
`
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`38. Registrant denies the allegations of paragraph No. 38. Petitioner’s U.S.
`
`Registration No. 4026264 was filed on March 23, 2011 and canceled on Apr. 20, 2018.
`
`Over the past eight years, Petitioner’s applied for mark
`
` with Serial No.
`
`88446156 on May 24, 2019 with only a photograph of its product as a specimen and
`
`failed to provide any verification/declaration or supporting documents. Petitioner’s
`
`petition to cancel is filed in bad faith.
`
`
`
`39. Paragraph No. 39 represents conclusions of law to which no answer is required. To
`
`the extent that an answer is required, Registrant is without knowledge sufficient to form a
`
`belief as to the allegations of Petitioner’s Paragraph No. 39 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`40. Paragraph No. 40 represents conclusions of law to which no answer is required.
`
`To the extent that an answer is required, Registrant is without knowledge sufficient to form
`
`a belief as to the allegations of Petitioner’s Paragraph No. 40 and therefore denies the same
`
`and leaves Petitioner to its proofs with respect thereto.
`
`
`
`WHEREFORE, Registrant respectfully requests that the Petition for Cancellation
`
`be denied and the registration(s) be maintained.
`
`
`
` (cid:1005)(cid:1007) / (cid:1005)(cid:1008)
`
`
`
`
`
`
`
`
`
`
`Dated: December 05, 2019
`
`Respectfully submitted,
`
`By: /Francis H. Koh/
`Francis H. Koh
`Koh Law Firm, LLC.
`4800 Hampden Lane, St. 200
`Bethesda, Maryland, 20814
`United States
`301-881-3600
`fkohmail@gmail.com
`TMProce@scienbizip.com
`ecptm@scienbizip.com
`Attorneys for Registrant
`Luoyang Hangyuan E-commerce Co., Ltd.
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Registrant’s verified
`answer to petition for cancellation has been served on Petitioner’s Attorneys by
`forwarding said copy on December 05, 2019, via email to:
`
`ADRIANO PACIFICI
`INTELLECTUAL PROPERTY CONSULTING LLC
`334 CARONDELET ST STE B
`NEW ORLEANS, LA 70130
`UNITED STATES
`Phone: 504-323-6600
`apacifici@iplawconsulting.com
`trademarks@iplawconsulting.com
`Attorneys for Nir Ron
`
`
`
`Dated: December 05, 2019
`
`By: /Francis H. Koh/
`Francis H. Koh
`
`
`
`
`
`
`
`
` (cid:1005)(cid:1008) / (cid:1005)(cid:1008)
`
`
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