Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1005847
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`Filing date:
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`10/01/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Petition for Cancellation
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`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
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`Petitioner Information
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`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
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`AdvanSix Resins & Chemicals, LLC
`
`limited liability company
`
`Citizenship
`
`Delaware
`
`300 Kimball Drive, Suite 101
`Parsippany, NJ 07054
`UNITED STATES
`
`Stephanie A. Gumm
`Faegre Baker Daniels LLP
`300 N. Meridian Street, Suite 2500
`Indianapolis, IN 46204
`UNITED STATES
`Trademark@FaegreBD.com, Stephanie.Gumm@FaegreBD.com,
`Abe.Shanehsaz@FaegreBD.com
`3172371423
`
`Registration Subject to Cancellation
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`Registration No.
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`5793276
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`Registration date
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`07/02/2019
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`International Re-
`gistration No.
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`Registrant
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`NONE
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`SOLVAY SA
`Rue de Ransbeek 310
`Brussels, 1120
`BELGIUM
`
`International Re-
`gistration Date
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`NONE
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`Goods/Services Subject to Cancellation
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`Class 001. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are subject to cancellation, namely: Chemicals used in industry,
`science andphotography; chemicals used in agriculture, horticulture and forestry except fungicides,
`herbicides, insecticides and parasiticides; unprocessed artificial resins; unprocessed plastics; fertil-
`izers; fire extinguishing compositions; soldering chemicals; tempering preparations; adhesives for in-
`dustrial purposes; industrial goods for extracting hydrocarbons insoils, namely, fluorinated chemicals
`
`Class 017. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are subject to cancellation, namely: Semi-manufactured plastics
`and synthetic resins for use in manufacture in particular in the form of pellets, rods, sheets, foams,
`fibers, films and plates
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`Grounds for Cancellation
`
`Priority and likelihood of confusion
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`Trademark Act Sections 14(1) and 2(d)
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`Abandonment
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`Trademark Act Section 14(3)
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`

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`Mark Cited by Petitioner as Basis for Cancellation
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`U.S. Registration
`No.
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`730229
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`Registration Date
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`04/24/1962
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`Application Date
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`06/19/1961
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`Foreign Priority
`Date
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`NONE
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`Word Mark
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`Design Mark
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`Description of
`Mark
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`Goods/Services
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`CAPRAN
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`NONE
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`Class 017. First use: First Use: 1961/05/10 First Use In Commerce: 1961/05/10
`Plastic Sheets and Films of Nylon
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`Attachments
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`Advansix Petition to Cancel CAPIEN.pdf(66593 bytes )
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`Signature
`
`/Abe J. Shanehsaz/
`
`Name
`
`Date
`
`Abe Jentry Shanehsaz
`
`10/01/2019
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. _________
`Registration No. 5,793,276
`Mark: CAPIEN
`
`
`
`) ) ) ) ) ) ) ) ) )
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`ADVANSIX RESINS & CHEMICALS, LLC
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`vs.
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`SOLVAY SA
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`Petitioner,
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`Registrant.
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`PETITION TO CANCEL
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`Petitioner, AdvanSix Resins & Chemicals, LLC (“AdvanSix”), is a Delaware limited
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`liability company having its principal place of business at 300 Kimball Drive, Suite 101,
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`Parsippany, NJ 07054.
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`AdvanSix believes that it will be harmed and damaged by the continued registration of
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`Registration No. 5,793,276 (the "Subject Registration"), owned by Solvay SA ("Registrant"), in
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`connection with the particular goods outlined therein. AdvanSix petitions to cancel the Subject
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`Registration in connection with such goods pursuant to Section 14 of the Lanham Act, 15 U.S.C. §
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`1064, and Section 2(d) of the Lanham Act, 15 U.S.C. 1502(d).
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`AdvanSix alleges the following grounds for this Petition:
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`1.
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`On information and belief, Registrant is a corporation organized in Belgium with a
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`principal place of business at Rue de Ransbeek 310, Brussels, 1120 Belgium.
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`2.
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`On information and belief, Registrant owns the Subject Registration for the mark
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`CAPIEN (the “Subject Mark”) for use in association with “chemicals used in industry, science and
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`photography; chemicals used in agriculture, horticulture and forestry except fungicides, herbicides,
`
`shana01.124884908.1.DOCX
`
`1
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`

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`insecticides and parasiticides; unprocessed artificial resins; unprocessed plastics; fertilizers; fire
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`extinguishing compositions; soldering chemicals; tempering preparations; adhesives for industrial
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`purposes; industrial goods for extracting hydrocarbons in soils, namely, fluorinated chemicals” in
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`International Class 01 and “semi-manufactured plastics and synthetic resins for use in manufacture
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`in particular in the form of pellets, rods, sheets, foams, fibers, films and plates” in International
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`Class 17 (the “Subject Goods”). The Subject Registration issued on the Principal Register on July
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`2, 2019, based on a foreign registration under Sec. 44(e) and without an asserted date of first use in
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`the United States.
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`3.
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`Beginning at least as early as May 10, 1961, AdvanSix (through its predecessors in
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`interest) adopted and began to use the mark CAPRAN in United States commerce in connection
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`with its nylon plastics goods.
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`4.
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`By virtue of its advertising, promotion, and sale of CAPRAN brand nylon plastics,
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`AdvanSix has accrued valuable common law trademark rights and goodwill in connection with the
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`CAPRAN trademark.
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`5.
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`In addition to its common law rights, AdvanSix owns U.S. Registration No. 730,229
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`for the mark CAPRAN for use in association with “plastic sheets and films of nylon” in
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`International Class 17 (“AdvanSix’s Registration”). AdvanSix’s Registration issued on the Principal
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`Register on April 24, 1962, has been properly maintained and renewed since such time, and
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`incorporates its claimed priority in use back to May of 1961. A copy of AdvanSix’s Registration is
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`attached as Exhibit A.
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`6.
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`The Subject Mark so resembles AdvanSix’s CAPRAN trademark that use thereof in
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`connection with the Subject Goods is likely to cause consumer confusion, mistake and/or deception.
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``
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`2
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`

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`7.
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`On information and belief, AdvanSix has actual use priority in the CAPRAN
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`trademark relative to Registrant and its rights in the Subject Mark as symbolized by the Subject
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`Registration.
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`8.
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`Accordingly, this Petition is proper and the Subject Registration should be cancelled
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`with respect to the Subject Goods pursuant to 15 U.S.C. § 1052(d).
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`9.
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`Furthermore, on information and belief, Registrant does not use the Subject Mark in
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`interstate commerce in the United States in association with the Subject Goods.
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`10.
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`On information and belief, to the extent Registrant ever made any bona fide use in
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`interstate commerce of the Subject Mark in association with the Subject Goods, Registrant has
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`abandoned any bona fide use of the Subject Mark in interstate commerce in association with the
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`Subject Goods underlying the Subject Registration.
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`11.
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`On information and belief, to the extent Registrant ever made any bona fide use in
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`interstate commerce of the Subject Mark in association with the Subject Goods, Registrant has
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`discontinued any use of the Subject Mark in interstate commerce in association with the Subject
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`Goods underlying the Subject Registration without a bona fide intent to resume such use.
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`12.
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`Accordingly, this Petition is proper and the Subject Registration should be cancelled
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`with respect to the Subject Goods pursuant to 15 U.S.C. § 1064.
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`13.
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`AdvanSix believes that it is, will be, and will continue to be damaged by Registrant's
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`persisting registration of the Subject Mark in the Subject Registration in connection with the
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`Subject Goods. Such damage includes, at least, the resulting consumer confusion and damage to
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`the goodwill associated with its own CAPRAN brand.
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`14.
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`AdvanSix therefore requests the Board grant AdvanSix 's petition to cancel the
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`Subject Registration with respect to the Subject Goods, as well as such further relief as the Board
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`may deem necessary and just.
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`3
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``
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`

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`15.
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`The $800.00 cancellation petition filing fee is being submitted concurrently with this
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`Petition to Cancel. The Commissioner is authorized to debit the deposit account of Faegre Baker
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`Daniels LLP for any deficiency in the required fee.
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`
`
`Please address all correspondence to:
`
`Stephanie A. Gumm
`Abe Jentry Shanehsaz
`Faegre Baker Daniels LLP
`300 N. Meridian Street
`Suite 2500
`Indianapolis, Indiana 46204
`Trademark@FaegreBD.com; Stephanie.Gumm@FaegreBD.com;
`Abe.Shanehsaz@FaegreBD.com
`
`
`
`Dated: October 1, 2019
`
`
`
`
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`Respectfully submitted,
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`
`
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``
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`FAEGRE BAKER DANIELS LLP
`
`By:
`
`
`
`Stephanie A. Gumm
`Abe Jentry Shanehsaz
`Faegre Baker Daniels LLP
`300 N. Meridian Street
`Suite 2500
`Indianapolis, Indiana 46204
`Tel: 317-237-1423
`Fax: 317-237-1000
`
`Attorneys for Petitioner, AdvanSix
`Resins & Chemicals, LLC
`
`
`
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`4
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`I hereby certify that a true copy of the foregoing Petition to Cancel is being filed
`electronically with the Trademark Trial and Appeal Board via ESTTA on this day, October 1, 2019.
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`CERTIFICATE OF TRANSMITTAL
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`By:
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`Stephanie A. Gumm
`Attorney for Petitioner,
`AdvanSix Resins & Chemicals,
`LLC
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``
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`5
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`

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`EXHIBIT A
`EXHIBIT A
`
`.
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`Ufllted States Patent Ofice Registered Apr. 24, 1962
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`730,229
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`PRINCIPAL REGISTER
`
`Trademark
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`Ser. No. 122,244, filed June 19, 1961
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`Allied Chemical Corporation (New York corporation)
`61 Broadway
`New York 6, NY.
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`For: PLASTIC SHEETS AND FILMS OF NYLON,
`in CLASS 1.
`First use May 10, 1961; in commerce May 10, 1961.
`Owner of Reg. Nos. 623,610 and 629,770.
`
`

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