Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1030620
`
`Filing date:
`
`01/22/2020
`
`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
`
`Attorney informa-
`tion
`
`Admar International, Inc.
`
`Corporation
`
`Citizenship
`
`Delaware
`
`3030 Aurora Avenue
`Monroe, LA 71201
`UNITED STATES
`
`Robert M. Chiaviello, Jr.
`NubyLaw
`3030 Aurora Avenue
`Monroe, LA 71201
`UNITED STATES
`bobc@nuby.com
`3184104012
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5675998
`
`Registration date
`
`02/12/2019
`
`Registrant
`
`Xiamen Chuangchi Trade Co., Ltd.
`No.25-8, Qianpu Community
`Qianpu Village, Siming District
`Xiamen,Fujian, 361000
`CHINA
`Email: licuizhen@163.com
`
`Goods/Services Subject to Cancellation
`
`Class 028. First Use: 2018/08/25 First Use In Commerce: 2018/08/25
`All goods and services in the class are subject to cancellation, namely: Baby multiple activity toys;
`Baby rattles; Balls for sports; Bath toys; Beach balls; Bowling balls; Carnival masks; Children's edu-
`cational toys for developing fine motor, cognitive, counting skills; Children's play cosmetics; Christ-
`mas tree decorations; Dolls; Dolls and doll accessories, namely, clothing for dolls, doll rooms, doll
`beds, doll houses, toy fabrics and linens for dolls and strollersfor dolls; Dreidels; Electric action toys;
`Puzzles; PVC toy figures; Sand toys;Squeeze toys; Stuffed and plush toys; Toy building blocks; Toy
`cars; Toy clocksand watches; Toy furniture; Toy jewelry; Toy LED light sticks; Toy tiaras; Toy tools;
`Toy xylophones; Yo-yos
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`

`

`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`2335700
`
`Registration Date
`
`03/28/2000
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Application Date
`
`04/20/1999
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 010. First use: First Use: 1998/01/01 First Use In Commerce: 1998/01/01
`Infant Pacifier(s)
`
`88634179
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 003. First use: First Use: 0 First Use In Commerce: 0
`Baby bubble bath; Baby hair conditioner; Baby hand soap; Baby lotion; Baby
`oil;Baby oils; Baby powder; Baby powders; Baby shampoo; Baby suncreams;
`Baby wipes impregnated with cleaning preparations; Body cream; Body cream
`soap; Body creams; Body lotion; Body lotions; Body oil; Body oils; Body powder;
`Body scrub; Body scrubs; Body sprays; Body wash; Dish detergents; Face
`creams; Laundry detergent;Laundry detergents; Laundry fabric conditioner;
`Laundry soap; Lip balm; Lip balm; Lip cream; Moisturising creams; Moisturizing
`creams; Moisturizing preparations for the skin; Shampoo-conditioners; Sham-
`poos; Cases for baby wipes impregnatedwith cleaning preparations; Deodorants
`for body care; Disposable wipes impregnated with cleaning chemicals or com-
`poundsfor industrial and commercial use; Faceand body beauty creams; Face
`and body creams; Face and body lotions; Facial moisturizers; Hair shampoo;
`Hair shampoos and conditioners; Hand cleaning gels; Hand cleaners; Liquid
`laundry detergents; Liquid soaps for laundry; Lotions for face and body care;
`Moisturizing body lotions; Nasal cleaning preparations for personal sanitary pur-
`poses; Non-medicated lip balm that does not contain beeswax; Non-medicated
`
`

`

`lip balms; Non-medicated lipcare preparations; Non-medicated balms for use on
`lips; Non-medicated herbal body care products, namely, body oils, salves, and
`lip balms; Non-medicated lotions for body; Non-medicated skin care preparation,
`namely, body mist; Non-medicated soaps for babies; Non-medicated soaps for
`babies; Powder laundry detergents; Pre-moistened towelettes impregnated
`witha detergent for cleaning; Scented body lotions and creams; Shampoos for
`babies;Skin moisturizer; Skin moisturizing gel; Skin care preparations, namely,
`body balm; Skin cleanser in liquid spray form for use as a baby wipe alternative;
`Tooth cleaning preparations
`
`U.S. Application
`No.
`
`88634597
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 0 First Use In Commerce: 0
`Aloe vera gel for therapeutic purposes;Aloe vera preparations for therapeutic
`purposes; Anti-bacterial soap; Anti-cough drops; Anti-inflammatories; Anti-
`inflammatory and antipyretic preparations; Anti-inflammatory gels; Anti-
`inflammatory ointments; Anti-inflammatory salves; Anti-inflammatory sprays;
`Anti-itch cream; Anti-itch ointment; Antibacterial hand lotions; Antibacterial hand
`soaps; Antibacterial handwash; Antibacterial handwashes; Antibacterial liquid
`soap; Antibacterial liquid soaps; Antibacterial skin soaps; Antibacterial soap; An-
`tibacterial spray; Antibacterial wipes; Babies' diaper-pants; Babies' diapers; Ba-
`bies' diapers of paper; Babies' napkin-pants; Babies' napkins; Babies' swim di-
`apers; Baby diapers; Baby food; Baby foods; Breast pads; Calamine lotion; Dis-
`posable sanitizing wipes; Disposable training pants; Haemorrhoid preparations;
`Hemorrhoid preparations; Hemorrhoid treatment preparations; Hemorrhoidal
`ointments; Herbal supplements; Homeopathic supplements; Hydrocortisone
`cream; Infant cloth diapers; Infant diaper covers; Infant formula; Insect repel-
`lents; Insect repellents in pre-moistened towelette form; Insect-repellents; Kits
`comprised primarily of sanitizer gel and disinfecting wipes and also including
`sanitary masks, plastic gloves andhand cream used for germ prevention;
`Mentholated ointment for medical use; Mercurial ointments for medical use; Nail
`fungus treatment preparations; Non-medicated topical gel for the prevention and
`treatment of allergies; Non-medicated topical gel for the prevention and treat-
`mentof cold and flu; Nursing pads; Nutritional supplements; Nutritional supple-
`ments, namely, probiotic compositions; Pharmaceutical skin lotions; Prepara-
`tions for repelling animals, birds and insects; Teething gels; Topical dermatolo-
`gical preparations that treat insect bites and stings; Topical first aid gel; Topical
`gel for medical and therapeutic treatment ofdiaper rash; Wearable insect re-
`pelling devices for attachment to clothing sold pre-filled with insect repelling pre-
`parations; Anti-insect spray; Bracelets impregnated with insect repellent; Breast-
`nursing pads; Dietary and nutritional supplements; Disposable baby diapers;
`
`

`

`Disposable swim diapers for children and infants; First aid kits; First aid kits for
`domestic or other non-professional use; Food for babies; Food for infants; Food
`for infants, namely, human breast milk; Gels, creams and solutions for dermato-
`logical use; Homeopathic anti-inflammatory ointment; In vitro gender prediction
`test kit; In-vitro ovulation prediction test kit for home use; Liquid herbal supple-
`ments; Liquid nutritional supplement; Medicated baby oils; Medicated baby
`powders; Medicated cream soap; Medicated creams for treating dermatological
`conditions; Medicated shampoos for babies; Medicated skin care preparations,
`namely, creams, lotions, gels, toners, cleaners and peels; Medicated soaps for
`babies; Medicated supplements for foodstuffs for babies; Medicinal creams for
`skin care; Mineral nutritional supplements; Mosquito-repellent patches for ba-
`bies; Multipurpose medicated antibiotic cream, analgesic balm and mentholated
`salve; Nappies as baby diapers; Natural herbal supplements; Ovulation test kits;
`Powdered milk for babies; Pregnancy test kits for home use; Preparations to
`prevent nail-biting and thumb-sucking; Tissues impregnated with antibacterial
`preparations; Topical analgesic creams
`
`U.S. Application
`No.
`
`88634601
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 007. First use: First Use: 0 First Use In Commerce: 0
`Electric food blenders; Electric food blenders; Electric food choppers; Electric
`food grinders; Electric food processors; Electric food slicers; Electric fruitpeelers;
`Electric fruit presses; Electric fruit presses for household use; Electric fruit
`squeezers for household purposes; Electric juice extractors; Electricjuicers;
`Electric mixers; Electric mixers for household purposes; Electrical juice extract-
`ors for fruit; Electrical squeezers for fruit and vegetable; Food processors, elec-
`tric; Fruit presses, electric, for household purposes; Hand-held electric-powered
`food processors; Juice extractors, electric
`
`U.S. Application
`No.
`
`88634604
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 008. First use: First Use: 0 First Use In Commerce: 0
`Emery boards; Fingernail clippers; Flatware, namely, forks, knives, and
`spoons;Manicure sets; Nail clippers; Nail scissors; Tableware, namely, knives,
`forks and spoons; Disposable tableware, namely,knives, forks and spoons; Dis-
`posable tableware, namely, spoons; Forks and spoons being tableware; Forks
`being tableware; Knives being tableware; Knives, forks,and spoons being table-
`ware; Spoons being tableware; Spoons made of precious metal being tableware
`
`U.S. Application
`No.
`
`88634605
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 0 First Use In Commerce: 0
`Babies' bottles; Baby bottle nipples; Baby bottle that plays sounds using wire-
`less technology; Baby bottles; Baby feeding dummies; Baby feeding pacifiers;
`Babynursers; Breast milk storage bottles; Breast pumps; Breast shields; Breast
`warmer pads for medical purposes; Dropper bottles for administering medica-
`tion, soldempty; Droppers for administering medication, sold empty; Feeding
`bottle teats;Feeding bottles; Gum massaging instruments; Nasal aspirators;
`Nursing bottles; Pacifier clips; Pacifier cloth for attachment to infant pacifiers;
`Spoons for administering medicine; Teething rings; Thermometers for medical
`purposes; Thermometers for medical use; Bottle holders for holding babies'
`bottles, namely, holders for holding babies' bottles during feeding in the nature
`of flexible braces for wearing around the neck of the personholding a feeding
`baby; Bottle holders for holding babies' bottles, namely, holders for holding ba-
`bies' bottles in the nature of rigid braces for clamping to babies' seats during
`feeding; Clinical thermometers; Clips for pacifiers; Cups adapted for feeding ba-
`bies and children; Dishes adapted for feeding babies and children; Disposable
`
`

`

`baby bottle liners; Disposable feeding bottle teats; Disposable teats being paci-
`fiers for babies; Dummies for babies; Ear thermometers; Fever thermometers;
`Gum massagers for babies; Infrared thermometers for medical purposes;
`Nipples for baby bottles; Pacifiers for babies; Pouches specially adapted for
`holding pacifiers; Teats being pacifiers for babies; Teething rings incorporating
`baby rattles
`
`U.S. Application
`No.
`
`88634609
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 011. First use: First Use: 0 First Use In Commerce: 0
`Baby bottle sterilizers; Child safe protective covers for bathtub spouts; Electric
`beverage heaters; Electric beverage warmers; Electric cup heaters; Electric food
`dehydrators; Electric food dehydrators for household purposes; Electric food
`warmers; Electric heater for infant food; Electric kettles; Electric kettles for
`household purposes; Electric plate warmers; Electric vaporizers for household-
`purposes; Electric warmers for feeding bottles; Electrically-heated mugs; Toilet
`trainer seats, namely, smaller training seats for attachment to full-size toilets and
`toilet seats for training purposes; Electric heaters for babies' bottles; Heaters,
`electric, for feeding bottles; Toilet bowls for children; Toilet seatadaptors for chil-
`dren in the nature of a plastic device that is specially adapted to rest on a toilet
`seat; Toilet seats for children
`
`U.S. Application
`No.
`
`88634611
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class 020. First use: First Use: 0 First Use In Commerce: 0
`Baby bolsters; Baby bouncers; Baby changing mats; Baby changing platforms;
`Babyhead support cushions; Baby walkers; Booster seats; Bottle racks; Clothes
`hangers; Anti-roll cushions for babies; Bath seats for babies; Cots for babies;
`Cribsfor babies; Dual-purpose cushions for supporting a feeding bottle and the
`head and neck of an infant; Furniture primarily of metal, namely, mirrors, bed
`frames, dining tables, coffee tables, end tables, desks, display cases, shelving,
`dog gates, and baby gates; Hangers for clothes; Head positioning pillows for ba-
`bies;Head support cushions for babies; High chairs for babies; Non-metal safety
`gates for babies, children, and pets; Pillows used for cradling, supporting, prop-
`ping and feeding babies not for medical or therapeutic purposes; Plastic bottle
`caps for storing powdered nutritional supplements and for dispensing those sup-
`plements into the bottle; Playpens for babies; Portable baby bath seats for use
`in bath tubs
`
`U.S. Application
`No.
`
`88634612
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 021. First use: First Use: 0 First Use In Commerce: 0
`Baby bathtubs; Bowls; Cleaning brushes for household use; Combs; Containers
`forhousehold or kitchen use; Containers for household use; Containers for
`household use for enveloping and packaging domestic waste, including diapers
`and nappies, for storage and disposal, namely, sanitary waste disposal units
`comprising tubs or bins with or without reels or cassettes containing wrapping
`materials for enveloping waste; Cup lids; Cups; Cups and mugs; Cups, not of
`precious metal; Dish drying racks; Dishwashing brushes; Electric tooth brushes;
`Electric toothbrushreplacement handles and recharging docks sold as a unit;
`Hair brushes; Hair, nail and tooth brushes; Hairbrushes; Infant bathtubs; Plastic
`bag holders for household use; Plastic bath racks; Plastic bathtubs for children;
`Plastic bottle with blown cavity insert sold empty; Plastic containers in the shape
`of fruits and vegetables for storing individual fruitsand vegetables, and for ex-
`tending the life of those fruits and vegetables; Plastic drink bottle identification
`tag; Plastic freezer pop forms; Plastic juice box holders; Plastic place mats;
`Plastic plates; Plastic water bottle holders and attached carabiner clip sold as a
`unit; Plastic water bottles sold empty; Potties for children; Sports bottles sold
`empty; Tooth brushes; Toothbrush cases; Toothbrush head covers; Toothbrush
`holders; Vegetable mashers; Bottle cleaning brushes; Dental care kit comprising
`toothbrushes and floss; Disposable gloves for home use; Double wall cups;
`Double wall cups with lids; Double wall cups with lids and straws; Drinking cups;
`Drinking cupsfor children and parts and fittings therefor, namely, drinking cups
`
`

`

`for children sold as a unit with non-insulated lids; Drinking cups for infants and
`parts and fittings therefor, namely, valves and lids sold as a unit; Drinking cups
`sold with lids therefor; Drinking bottles forsports; Drinking cups for babies and
`children; Drinking cups for babies and children and parts and fittings therefor,
`namely, cups for babies and children soldas a unit with valves and lids; Drinking
`straws for babies and children; Electric toothbrush replacement heads; Electric
`toothbrushes; Electrical toothbrushes;Finger toothbrushes; Finger toothbrushes
`for babies; Hair combs; Heat-insulatedcontainers for beverages; Heat-insulated
`containers for household use; Home dental care product for babies and chil-
`dren's gums and teeth, namely, finger brushes; Inflatable bath tubs for babies;
`Insulated containers for food or beverage for domestic use; Insulated containers
`forfood or beverages; Interdental brushes for cleaning the teeth; Manual tooth-
`brushes; Multipurpose wiping cloth for use with infants and toddlers; Non-woven
`textile wipes for cleaning baby bottles and baby feeding equipment; Oral care kit
`comprising toothbrushes and floss; Paper and plastic cups; Place mats of
`plastic; Plastic cups; Plastic storage containersfor domestic use; Plastic storage
`containers for household or domestic use; Plastic storage containers for house-
`hold use; Portable potties for children; Portable beverage container holder; Port-
`able plastic containers for storing household and kitchen goods; Powder applic-
`ator sold empty for holding and dispensing baby powder; Pre-moistened towe-
`lettes for cleaning; Re-usable or disposable plastic or silicone valves sold for use
`with training cups for babies and children; Recyclable flexible plastic pouches
`sold empty for holding water or nutritional liquids; Reusable plastic water bottles
`sold empty; Reusable self-sealing lids for household use for bowls, cups, con-
`tainers and the storage of food; Reusable silicone food covers for household
`containers;Sippy cups; Stands for portable baby baths; Suction bowls; Tablem-
`ats of plastic; Thermal insulated containers for food or beverages; Thermally in-
`sulated containers for food; Tooth brushes, non-electric; Toothbrushes; Tooth-
`brushes; Toothbrushes; Toothbrushes, electric; Training cups for babies and
`children; Training cups for infants
`
`U.S. Application
`No.
`
`88634614
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 022. First use: First Use: 0 First Use In Commerce: 0
`Bath toy organizers in the nature of net bags secured by suction cups; Multi-
`strand lanyard used to attach a child's toys, bottles, books, sippy cup and other
`similar items to a stroller, car seat, high chair, store cart or other similar apparat-
`us; Tethers in the nature of polypropylene straps that are secured with suction
`cups to an object for holding children's utensils and toys
`
`

`

`U.S. Application
`No.
`
`88634616
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 0 First Use In Commerce: 0
`Baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted
`crib sheets, crib skirts, crib blankets, and diaper changing pad covers not of pa-
`per; Baby blankets; Burp cloths; Diaper changing pads not of paper; Diaper
`changing cloths for babies; Sleeping bags for babies
`
`U.S. Application
`No.
`
`88634618
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 024. First use: First Use: 0 First Use In Commerce: 0
`Children's towels
`Class 025. First use: First Use: 0 First Use In Commerce: 0
`Babies' pants; Babies' trousers; Baby bibs not of paper; Baby bodysuits; Baby
`bottoms; Baby tops; Children's and infant's apparel, namely, jumpers, overall
`sleepwear, pajamas, rompers and one-piece garments; Children's and infants'
`appareltreated with fire and heat retardants, namely, jumpers, overall sleepwear,
`pajamas, rompers and one-piece garments; Children's and infants' cloth bibs;
`Children's cloth eating bibs; Children's headwear; Children's underwear; Bibs for
`babies, sleeved, not of paper; Body suits forbabies or children; Bottoms as cloth-
`ingfor babies or children; Clothing for babies, toddlers and children, treated with
`fire and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Coats
`
`

`

`for babies or children; Dresses for babies or children; Hats for infants, babies,
`toddlers and children; Headwear for babies or children; Jackets for babiesor chil-
`dren; Knitted baby shoes; One-piece garments for children; Pajamas for babies
`or children; Pants for babies or children; Plastic baby bibs; Shirts for infants, ba-
`bies, toddlers and children; Shirts for babies or children; Shoes for babies or
`children; Shorts for babies orchildren
`
`U.S. Application
`No.
`
`88634623
`
`Application Date
`
`09/27/2019
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 028. First use: First Use: 0 First Use In Commerce: 0
`Baby gyms; Baby multiple activity toys;Baby rattles; Baby rattles incorporating
`teething rings; Baby swings; Mobiles for children; Play balls; Toy animals; Toy
`animals and accessories therefor; Toy jewelry; Toy stuffed animals; Toy
`vehicles; Bath toys; Bathtub toys; Carry bags sold filled with children's toys; Chil-
`dren's multiple activity toys; Crib mobiles; Crib toys; Decorative toy mobiles an-
`dplush toys for children made of felt; Infant toys; Infant action crib toys; Infant
`development toys; Musical toys; Plastic character toys; Play mats containingin-
`fant toys; Plush toys; Plush toys with attached comfort blanket; Soft sculpture
`plush toys; Squeezable squeaking toys; Squeeze toys; Stuffed toy animals;
`Stuffed toy bears; Stuffed toys; Stuffed and plush toys; Toy mobiles; Toy music-
`al boxes; Two and three dimensional positionable toy figures sold as a unit with
`other toys; Water toys; Water squirting toys; Water-squirting toys
`
`75687481#TMSN.png( bytes )
`88634179#TMSN.png( bytes )
`88634597#TMSN.png( bytes )
`88634601#TMSN.png( bytes )
`88634604#TMSN.png( bytes )
`88634605#TMSN.png( bytes )
`88634609#TMSN.png( bytes )
`88634611#TMSN.png( bytes )
`88634612#TMSN.png( bytes )
`88634614#TMSN.png( bytes )
`88634616#TMSN.png( bytes )
`88634618#TMSN.png( bytes )
`88634623#TMSN.png( bytes )
`KizNuby - US Cancellation - Reg No 5675998 - Petition - Final.pdf(270706 bytes
`)
`
`Signature
`
`/Robert M. Chiaviello, Jr./
`
`

`

`Name
`
`Date
`
`Robert M. Chiaviello, Jr.
`
`01/22/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Registration No. 5,675,998
`
`For the Mark: KIZNUBY
`
`Registered: 12 February 2019
`
`
`ADMAR INTERNATIONAL, INC.,
`
`
`
`Petitioner
`
`
`
`
`
`
`
`)
`)
` )
`
`Cancellation No. _________
`
`
`
`
`)
`
`)
`
`)
`
`)
`
`
`XIAMEN CHUANGCHI TRADE CO, LTD. )
`
`v.
`
`
`
`Respondent
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
` )
`
`)
`)
`
`Admar International, Inc., Petitioner, a corporation organized and existing under the laws
`
`of Delaware with a principal place of business at 3030 Aurora Avenue, Monroe, LA 71201,
`
`believes that it has been and will continue to be damaged by U.S. Trademark Registration No.
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`5,675,998 for the mark KIZNUBY, and hereby petitions for cancellation of the KIZNUBY
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`registration pursuant to Section 14(1) of the Lanham Trademark Act of 1946 ("Lanham Act"), 15
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`U.S.C. § 1064(1).
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`As grounds for cancellation, Petitioner alleges as follows:
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`1. Petitioner is in the business of owning and licensing intellectual property.
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`2. Petitioner is the owner of U.S. Trademark Registration No. 2,335,700 for the word mark
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`NUBY for infant pacifiers in International Class 10.
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`3. Petitioner is the owner of twelve U.S. Trademark applications for the word mark NUBY
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`in the various international classes and for the various goods and services as set out in the
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`chart attached as Exhibit A.
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`4. Petitioner has licensed the NUBY word mark in interstate commerce in the United States
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`to Luv n’ care, Ltd., continuously since January 1, 1998 for use in connection with the sale
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`and distribution of products for infants, children and toddlers including infant pacifiers and
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`other baby and toddler products. All good will associated with the use of the NUBY mark
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`accrues to the benefit of Petitioner.
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`5. As a result of the widespread, continuous, and exclusive use of the NUBY mark on infant
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`pacifiers and other various baby and toddler products to identify Petitioner as their ultimate
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`source, Petitioner owns valid and subsisting federal statutory and common law rights to the
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`NUBY mark.
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`6. Petitioner’s NUBY mark is distinctive to both the consuming public and Petitioner’s trade.
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`7. Petitioner and Petitioner’s licensee have expended substantial time, money and resources
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`marketing and promoting infant, baby and toddler products sold under the NUBY mark
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`throughout the United States including the use of point of purchase materials, displays and
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`social media.
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`8. The infant, baby and toddler products Petitioner has licensed under the NUBY mark are of
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`high quality encompassing attractive and unique product designs and are constructed of
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`high quality materials using state of the art manufacturing. Petitioner has at all times
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`exercised control over the quality of the products licensed for use under the NUBY mark
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`to insure that they are of the highest quality.
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`9. Upon information and belief, Respondent, Xiamen Chuangchi Trade Co., Ltd., a China
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`limited company with an address of No. 25-8, Qianpu Community Qianpu Village, Siming
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`District Xiamen, Fujian China 361000, is the current listed owner of Registration No.
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`5,675,998 for the mark KIZNUBY in connection with Baby multiple activity toys; Baby
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`rattles; Balls for sports; Bath toys; Beach balls; Bowling balls; Carnival masks; Children's
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`educational toys for developing fine motor, cognitive, counting skills; Children's play
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`cosmetics; Christmas tree decorations; Dolls; Dolls and doll accessories, namely, clothing
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`for dolls, doll rooms, doll beds, doll houses, toy fabrics and linens for dolls and strollers
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`for dolls; Dreidels; Electric action toys; Puzzles; PVC toy figures; Sand toys; Squeeze toys;
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`Stuffed and plush toys; Toy building blocks; Toy cars; Toy clocks and watches; Toy
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`furniture; Toy jewelry; Toy LED light sticks; Toy tiaras; Toy tools; Toy xylophones; and
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`Yo-yos all in International Class 28. That trademark registration, based on an application
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`filed on June 6, 2017, was issued on February 12, 2019.
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`10. Petitioner’s NUBY mark has priority over Respondent’s mark because Petitioner’s first-
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`use date of the NUBY mark predates the filing date of Respondent’s application for
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`Registration No. 5,675,998 or any other date on which the Respondent may rely for
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`purposes of priority.
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`11. Respondent’s mark entirely encompasses Petitioner’s NUBY mark as to be likely to cause
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`confusion, mistake, or deceive consumers into believing that Respondent’s goods and
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`services originate from, are sponsored or endorsed by or are somehow associated with
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`Petitioner.
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`12. The goods and services covered by Respondent’s Trademark Registration No. 5,675,998
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`are used in connection with products identical to the infant, baby and toddler products
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`Petitioner offers under its NUBY mark.
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`13. Respondent’s Trademark Registration No. 5,675,998 is unrestricted as to consumers or
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`trade channels. As such, it is presumed that Respondents’ goods and services identified in
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`the challenged registration are sold to ordinary consumers of infant, baby and toddler
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`products using Petitioner’s mark including consumers of infant, baby and toddler products
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`and travel in all ordinary trade channels through which Petitioner’s licensee sells its infant,
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`baby and toddler products under the NUBY mark.
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`GROUND FOR CANCELLATION –
`PRIORITY AND LIKELIHOOD OF CONFUSION
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`14. Respondent’s registration should be cancelled because it consists of a mark which entirely
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`encompasses Petitioner’s previously used NUBY mark as to be likely, when used in
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`connection with Respondent’s goods and services, to cause confusion, mistake, or
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`deception, and to cause damage to Petitioner thereby.
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`WHEREFORE, Petitioner respectfully requests that its cancellation be sustained, and the
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`Respondent’s Trademark Registration No. 5,675,998 be cancelled.
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`Respectfully submitted this 22nd day of January 2020,
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`_/s/Robert M. Chiaviello Jr._____
`Robert M. Chiaviello, Jr.
`NubyLaw
`New York Bar No. 2148687
`Louisiana Bar No. 37370
`3030 Aurora Avenue
`Monroe, LA 71201
`(318) 410-4012
`bobc@nuby.com
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`Attorney for Petitioner Admar International, Inc.
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`EXHIBIT A
`EXHIBIT A
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`5
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`Serial
`Number
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`Class
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`88634179 3
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`88634597 5
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`Nuby Word Mark Applications
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`Goods
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`Baby bubble bath; Baby hair conditioner; Baby hand soap; Baby lotion; Baby oil;
`Baby oils; Baby powder; Baby powders; Baby shampoo; Baby sun creams; Baby
`wipes impregnated with cleaning preparations; Body cream; Body cream soap;
`Body creams; Body lotion; Body lotions; Body oil; Body oils; Body powder; Body
`scrub; Body scrubs; Body sprays; Body wash; Dish detergents; Face creams;
`Laundry detergent; Laundry detergents; Laundry fabric conditioner; Laundry soap;
`Lip balm; Lip balm; Lip cream; Moisturizing creams; Moisturizing creams;
`Moisturizing preparations for the skin; Shampoo-conditioners; Shampoos; Cases
`for baby wipes impregnated with cleaning preparations; Deodorants for body care;
`Disposable wipes impregnated with cleaning chemicals or compounds for industrial
`and commercial use; Face and body beauty creams; Face and body creams; Face
`and body lotions; Facial moisturizers; Hair shampoo; Hair shampoos and
`conditioners; Hand cleaning gels; Hand cleaners; Liquid laundry detergents; Liquid
`soaps for laundry; Lotions for face and body care; Moisturizing body lotions; Nasal
`cleaning preparations for personal sanitary purposes; Non-medicated lip balm that
`does not contain beeswax; Non-medicated lip balms; Non-medicated lip care
`preparations; Non-medicated balms for use on lips; Non-medicated herbal body
`care products, namely, body oils, salves, and lip balms; Non-medicated lotions for
`body; Non-medicated skin care preparation, namely, body mist; Non-medicated
`soaps for babies; Non-medicated soaps for babies; Powder laundry detergents;
`Pre-moistened towelettes impregnated with a detergent for cleaning; Scented
`body lotions and creams; Shampoos for babies; Skin moisturizer; Skin moisturizing
`gel; Skin care preparations, namely, body balm; Skin cleanser in liquid spray form
`for use as a baby wipe alternative; Tooth cleaning preparations
`Aloe Vera gel for therapeutic purposes; Aloe Vera preparations for therapeutic
`purposes; Anti-bacterial soap; Anti-cough drops; Anti-inflammatories; Anti-
`inflammatory and antipyretic preparations; Anti-inflammatory gels; Anti-
`inflammatory ointments; Anti-inflammatory salves; Anti-inflammatory sprays;
`Anti-itch cream; Anti-itch ointment; Antibacterial hand lotions; Antibacterial hand
`soaps; Antibacterial handwash; Antibacterial handwashes; Antibacterial liquid
`soap; Antibacterial liquid soaps; Antibacterial skin soaps; Antibacterial soap;
`Antibacterial spray; Antibacterial wipes; Babies' diaper-pants; Babies' diapers;
`Babies' diapers of paper; Babies' napkin-pants; Babies' napkins; Babies' swim
`diapers; Baby diapers; Baby food; Baby foods; Breast pads; Calamine lotion;
`Disposable sanitizing wipes; Disposable training pants; Hemorrhoid preparations;
`Hemorrhoid preparations; Hemorrhoid treatment preparations; Hemorrhoidal
`ointments; Herbal supplements; Homeopathic supplements; Hydrocortisone
`cream; Infant cloth diapers; Infant diaper covers; Infant formula; Insect repellents;
`Insect repellents
`in pre-moistened towelette form;
`Insect-repellents; Kits
`comprised primarily of sanitizer gel and disinfecting wipes and also including
`sanitary masks, plastic gloves and hand cream used for germ prevention;
`Mentholated ointment for medical use; Mercurial ointments for medical use; Nail
`fungus treatment preparations; Non-medicated topical gel for the prevention and
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`treatment of allergies; Non-medicated topical gel for the prevention and treatment
`of cold and flu; Nursing pads; Nutritional supplements; Nutritional supplements,
`namely, probiotic compositions; Pharmaceutical skin lotions; Preparations for
`repelling animals, birds and insects; Teething gels; Topical dermatological
`preparations that treat insect bites and stings; Topical first aid gel; Topical gel for
`medical and