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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1076016
`
`Filing date:
`
`08/19/2020
`
`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
`
`Chopra & Nocerino, LLP
`
`Limited Liability Partnership
`
`Citizenship
`
`New York
`
`100 QUENTIN ROOSEVELT BLVD #107
`GARDEN CITY, NY 11530
`UNITED STATES
`
`PANAGIOTA BETTY TUFARIELLO, ESQ.
`INTELLECTULAW, LAW OFFICES OF P.B. TUFARIELLO, P.C.
`25 LITTLE HARBOR RD.
`MT. SINAI, NY 11766
`UNITED STATES
`Primary Email: Pbtufariello@intellectulaw.com
`Secondary Email(s): aorban@intellectulaw.com
`6314768734
`
`Docket Number
`
`7570-3
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5914394
`
`Registration date
`
`11/19/2019
`
`Registrant
`
`ELEFTERAKIS, ELEFTERAKIS AND PANEK, P.C.
`80 PINE ST
`NEW YORK, NY 10005
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 045. First Use: 2017/07/17 First Use In Commerce: 2017/07/17
`All goods and services in the class are subject to cancellation, namely: Legal services
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Dilution by blurring
`
`Registrant not rightful owner of mark for identi-
`fied goods or services
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used
`
`Fraud on the USPTO
`
`Trademark Act Sections 14(1) and 43(c)
`
`Trademark Act Sections 14(1) and 1
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`
`

`

`2009)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`90114965
`
`Application Date
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`NONE
`
`90115010
`
`Application Date
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`Attachments
`
`PETITION FOR CANCELLATION as filed.pdf(993593 bytes )
`
`Signature
`
`/panagiotabettytufariello/
`
`Name
`
`Date
`
`Panagiota Betty Tufariello
`
`08/19/2020
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petitioner,
`
`
`
`
`
`
`
`Respondent
`
`
`
`
`
`CANCELLATION No.:
`
`
`
`
`In re:
`U.S. Registration No. 5,914,394
`Mark: NYC-HURT
`
`
`
`
`Date of Registration: Nov. 19, 2019
`
`___________________________________________
`CHOPRA & NOCERINO, LLP.
`
`
`
`vs.
`
`ELEFTERAKIS, ELEFTERAKIS AND
`PANEK, P.C.
`
`
`
` 
`
`
`
`
`
`
`
`
`
`
`
`___________________________________________
`
`
`PETITION FOR CANCELATION
`
`Petitioner CHOPRA & NOCERINO, LLP, a New York limited liability partnership with
`
`a principal place of business at 100 Quentin Roosevelt Blvd, Unit 107, Garden City, New York
`
`11530 ("Petitioner" and/or “CHOPRA & NOCERINO”), believes that it is and will continue to
`
`be damaged by U.S. Registration No. 5,914,394 (the “Registration”). Thus, under 37 C.F.R. §
`
`2.111 Petitioner hereby files the present Petition for cancellation of such Registration under 15
`
`U.S.C. § 1064.
`
`
`
`As grounds for its Petition for Cancellation, Petitioner alleges as follows:
`
`I.
`
`Petitioner’s NYC-HURT trademarks.
`
`a. Since its inception in 2010, Petitioner, a law firm, provides legal services focused
`
`primarily on the area of personal injury law.
`
` 
`
`1 | P a g e  
`
`

`

` 
`
` 
`
`b. Petitioner represents clients who have incurred injuries through motor vehicle
`
`accidents, motorcycle accidents, car accidents, truck accidents, bicycle accidents,
`
`construction accidents, premises accidents, slip-and-falls, false arrests, wrongful
`
`deaths, burning accidents, medical malpractice, and police brutality.
`
`c. Petitioner has developed a reputation for professionalism among personal injury
`
`law firms.
`
`d. Petitioner’s and their Principals’ reputation and professionalism have won and/or
`
`have contributed towards many verdicts and settlements for their clients,
`
`including but not limited to:
`
`i. $10 Million – Verdict – A 77-year-old woman was driving through an
`
`intersection in Brooklyn when her vehicle struck a public bus. The elderly
`
`woman sustained leg and neck injuries. The verdict was reached in Kings
`
`County Supreme Court.
`
`ii. $3 Million – Settlement (New York Labor Law Section 240) – A male
`
`construction worker, age 42, fell off a ladder and injured his spine in
`
`Manhattan, New York. The injury required spinal surgery. Settlement was
`
`reached in Brooklyn just before trial.
`
`iii. $2.25 Million – Settlement – Awarded to a 57-year-old male who was
`
`knocked off his bicycle by an NYPD officer in Brooklyn. Because of the
`
`accident, the plaintiff required three surgeries. The settlement was reached
`
`after liability had been determined in Kings County Supreme Court.
`
`2 | P a g e  
`
`

`

` 
`
` 
`
`iv. $2 Million – Settlement – A 40-year-old female suffered a spinal injury
`
`sustained when her vehicle was struck in a Brooklyn intersection.
`
`Settlement was reached in King’s County Supreme Court.
`
`v. $1.8 Million – Settlement – Awarded to a male who slipped on a wet floor
`
`on private property. The floor was just mopped and adequate signage was
`
`not visible to alert individuals of the slippery surface.
`
`vi. $1.45 Million – Settlement – Awarded to a 25-year-old woman who
`
`suffered neck injuries when a bathroom ceiling collapsed on her in
`
`Queens, NY. Settlement was reached in Kings County Supreme Court.
`
`vii. $1.44 Million – Settlement – Male, age 27, was injured when his vehicle
`
`was rear-ended by a commercial vehicle in Suffolk County, NY.
`
`Settlement was reached in Brooklyn, NY.
`
`viii. $1.225 Million – Settlement – Awarded to a motorcyclist who was
`
`involved in an accident with a car. After the motorcyclist was ejected from
`
`his vehicle, he suffered a severe injury to his leg as it was run over by a
`
`bus.
`
`ix. $1.2 Million – Settlement – A 33-year-old male was driving through an
`
`intersection in Brooklyn when his vehicle was struck by a City of New
`
`York Department of Sanitation (DSNY) salt spreader. The plaintiff
`
`suffered severe injuries. Allegations of intoxication of the injured male
`
`were unfounded and the case settled after deposition of a non-party
`
`witness (police detective).
`
`3 | P a g e  
`
`

`

` 
`
` 
`
`x. $1.2 Million – Settlement – Female, age 43, tripped while exiting a Staten
`
`Island bar and sustained neck and back injuries. Settlement reached after
`
`liability verdict in favor of the plaintiff in Richmond County Court.
`
`xi. $1.12 Million – Verdict – A 33-year-old male was making a left turn in
`
`Queens when his vehicle was struck, and he sustained neck and back
`
`injuries. Verdict was reached in Queens Supreme Court.
`
`xii. $1.05 Million – Settlement – Female, age 29, fell down a flight of stairs
`
`that were not properly maintained in Brooklyn and suffered neck injuries
`
`that required surgery. Settlement was reached on the eve of trial in Kings
`
`County, NY.
`
`xiii. $1.05 Million – Settlement – Awarded to a 47-year-old woman who was
`
`injured when the vehicle she was a passenger in crashed into a stationary
`
`container in Brooklyn.
`
`xiv. $825,000 – Settlement – Male, age 33, was injured when his vehicle
`
`struck a tree in Queens, NY. Improper repair work to his vehicle caused
`
`the tire to come off the car which caused the accident. Settlement was
`
`reached during trial in Queens County, NY
`
`xv. $800,000 – Settlement – Awarded to a 26-year-old woman who was
`
`injured when bathroom ceiling collapsed in her Brooklyn rental apartment.
`
`xvi. $750,000 – Settlement – Awarded to a male, age 57, who suffered back
`
`injuries that required surgery when his vehicle was rear-ended in
`
`Brooklyn, NY.
`
`4 | P a g e  
`
`

`

` 
`
` 
`
`xvii. $750,000 – Settlement – Awarded to a 52-year-old female who fell down
`
`a flight of stairs leading to the basement of a two-story rental home in
`
`Brooklyn, NY. Settlement was reached at the end of trial on the day of
`
`closing arguments in Kings County Supreme Court.
`
`xviii. $725,000 – Settlement – Awarded to a 71-year-old female who injured her
`
`hip when she tripped and fell on a New York City sidewalk in Queens.
`
`The case was tried, appealed, and settled during the second trial in
`
`Queens, NY.
`
`xix. $700,000 – Settlement – A 52-year-old male was struck by a commercial
`
`vehicle as he was walking in Brooklyn, NY. The plaintiff suffered injuries
`
`to his left leg, left arm, and right elbow.
`
`xx. $600,000 – Settlement – Awarded to a 31-year-old male who was rear-
`
`ended while working in Nassau County. The case settled for $100,000
`
`from the vehicle that rear-ended him and $500,000 was recovered from the
`
`plaintiff’s employer’s SUM (Supplementary Uninsured/Underinsured
`
`Motorist) policy.
`
`xxi. $590,000 – Settlement – Female, age 35, injured her spine during a car
`
`accident in Nassau County. The victim had pre-existing spinal injuries but
`
`it was determined the car accident aggravated her condition. The
`
`settlement was reached after a liability verdict in favor of the plaintiff in
`
`Nassau County Supreme Court.
`
`5 | P a g e  
`
`

`

` 
`
` 
`
`xxii. $550,000 – Settlement – Awarded to a 49-year-old female electrician who
`
`fell off scaffolding in Manhattan, NY, and sustained injuries to her right
`
`shoulder and neck. The case was previously dropped by another law firm.
`
`xxiii. $400,000 – Settlement – Awarded to a 22-year-old female whose vehicle
`
`struck an uncovered storm drain on a Bronx highway, which caused her to
`
`crash into the highway barrier wall. She suffered an ankle injury that
`
`required surgery. Settlement was received from the City of New York.
`
`xxiv. $344,000 – Verdict – An 11-year-old boy was injured (non-displaced
`
`fractured wrist that did not require surgery) during a school trip to a Bronx
`
`park when he tripped and fell on a tree root. The verdict was won against
`
`the New York City Department of Education, for negligent supervision of
`
`the adolescent, and the New York City Department of Parks & Recreation,
`
`for negligent maintenance of the park.
`
`e. Petitioner provides its legal services under various service marks and service
`
`names including but not limited to CHOPRA & NOCERINO,
`
`, 855-NYC-HURT and NYC-HURT.
`
`f. 855-NYC-HURT and NYC-HURT are phonewords that Petitioner has adopted as
`
`service marks to symbolize its CHOPRA & NOCERINO legal services brand.
`
`6 | P a g e  
`
`

`

` 
`
` 
`
`g. Since at least as early as 2010 in commerce, and as early as 2011 in interstate
`
`commerce, Petitioner has used 855-NYC-HURT and NYC-HURT extensively to
`
`identify its legal services, its offices, and its website. Among other uses,
`
`Petitioner has used 855-NYC-HURT and NYC-HURT as a service mark on its
`
`website www.chopranocerino.com , radio advertisements, newspaper
`
`advertisements, internet advertisements, journal advertisements and giveaways.
`
`Examples of such uses are shown below:
`
`
`
`
`
`
`
`7 | P a g e  
`
`

`

` 
`
` 
`
`2:50 6
`
`Fiat“ BSD/oi
`
`chupmnncarina com
`X .Garden CityPers...
`
`El < E
`
`CHOPRA& NOCERINO. LLP
`ATTORNEYS AT LAW
`
`
`
`VIEW OUR PRACTICE AREAS
`
`:v Consultamons
`
`855-NYC-HURT
`[---:vt.:.- ,"---
`
`EN ESPAROL
`
`
`
`
`
`
`
`
`
`
`
`8 | P a g e  
`8|Page
`
`

`

` 
`
` 
`
`h. Petitioner has invested a lot in its promotion of the services offered in connection
`
`with 855-NYC-HURT and NYC-HURT. As a result of the Petitioner’s use and
`
`promotion, the servicemarks 855-NYC-HURT and NYC-HURT have come to
`
`embody substantial goodwill associated with Petitioner, and consumers
`
`immediately identify the 855-NYC-HURT and NYC-HURT marks with
`
`Petitioner.
`
`i.
`
`In addition to the common law rights Petitioner has developed through extensive
`
`use of the 855-NYC-HURT and NYC-HURT marks, Petitioner is the owner of
`
`all rights, title, and interest in U.S. Trademark Application Serial No. 90/114,964
`
`for the mark 855-NYC-HURT (the “Trademark”) for LEGAL SERVICES, use in
`
`International Class 045; and U.S. Trademark Application Serial No. 90/115,010
`
`for the Trademark NYC-HURT (the “Trademark”) for LEGAL SERVICES, use
`
`in International Class 045.
`
`II. Respondent’s Acts
`
`a. Notwithstanding Petitioner’s prior rights in the 855-NYC-HURT and NYC-
`
`HURT, on November 19, 2019, ELEFTERAKIS, ELEFTERAKIS AND PANEK,
`
`P.C., with an address at 80 Pine St New York, NY 10005 (“Registrant”) secured
`
`U.S. Registration No. 5,914,394 for the mark NYC-HURT in connection with
`
`legal services in International Class 045.
`
`b. Petitioner began using its 855-NYC-HURT and NYC-HURT marks in interstate
`
`commerce at least as early as 2011, well before Registrant’s claimed first use date
`
`of July 17, 2017, and the May 7, 2019, filing date of the Registrant’s Application.
`
`9 | P a g e  
`
`

`

` 
`
` 
`
`c. Petitioner has prior rights to the service marks 855-NYC-HURT and NYC-
`
`HURT; rights that precede Registrant’s rights to its NYC-HURT mark, as
`
`embodied by U.S. Registration 5,914,394.
`
`d. Registrant’s NYC-HURT mark is confusingly similar in sight, sound, and
`
`commercial impression to Petitioner’s service marks 855-NYC-HURT and NYC-
`
`HURT.
`
`e. The goods identified in the Registration are legal services. They are identical to,
`
`overlap with, or are highly related to the services on which Petitioner has used
`
`and continues to use its service marks 855-NYC-HURT and NYC-HURT.
`
`f. Registrant’s mark NYC-HURT, when used in connection with Registrant’s
`
`services as identified in its Registration, so resembles Petitioner’s previously used
`
`855-NYC-HURT and NYC-HURT service marks as to be likely to cause
`
`confusion, to cause mistake, and/or to deceive members of the public concerning
`
`a sponsorship, or endorsement of, or an affiliation, connection, or association
`
`with, the source of goods and services sold under the 855-NYC-HURT and NYC-
`
`HURT marks, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d), with consequent injury to Petitioner, the public, and the trade.
`
`g. Pursuant to Section 14 of the Lanham Act, 15 U.S.C. § 1064, Petitioner believes it
`
`is being damaged by the Registration, in that members of the purchasing public
`
`and/or the trade are likely to be confused or mistaken that Registrant’s services
`
`offered under Registrant’s Mark originate from Petitioner, or from the same
`
`source as the services sold under Petitioner’s previously used 855-NYC-HURT
`
`10 | P a g e  
`
`

`

` 
`
`and NYC-HURT servicemarks, or that such services of Registrant are sponsored
`
`by, endorsed by, or affiliated with the source of services provided under
`
`Petitioner’s previously used 855-NYC-HURT and NYC-HURT servicemarks.
`
`Such likelihood of confusion results in damage to the goodwill among purchasers
`
`and the trade that Petitioner’s 855-NYC-HURT and NYC-HURT servicemarks
`
`symbolize.
`
`h. The Registration is a source of damage and injury to Petitioner.
`
`i. The continued Registration of Registrant’s Mark will support and assist the
`
`Registrant in the confusing and misleading use of Registrant’s Mark, and, also,
`
`will give color and exclusive statutory rights to Registrant in violation and
`
`derogation of Petitioner’s prior and superior rights.
`
`j.
`
` If Respondent’s U.S. Registration No. 5,914,394 is not canceled, Respondent
`
`shall obtain prima facie exclusive right to use Respondent’s mark. Such
`
`continued registration will be a source of damage and injury to Petitioner. 
`
`
`
`WHEREFORE, Petitioner prays that Registration No. 5,914,394 be canceled according
`
`to 15 U.S.C. §§ 1052(d) and 1064, and that this Petition for Cancellation is sustained in favor of
`
`Petitioner.
`
`
`
`The requisite filing fee of $400.00 for this Petition to Cancel in one class is submitted
`
`herewith. This paper is being filed electronically.
`
`
`
`Please recognize Panagiota Betty Tufariello, Esq. and the law firm Intellectulaw, The
`
`Law Offices of P.B. Tufariello, P.C. as attorneys for Petitioner CHOPRA & NOCERINO, LLP.
`
`Please address all correspondence regarding this proceeding to Panagiota Betty Tufariello at
`
` 
`
`11 | P a g e  
`
`

`

`Intellectulaw, The Law Offices of RB. Tufariello P.C., 25 Little Harbor Road, Mount Sinai, NY
`
`11766.
`
`Respectfully Submitted,
`
`_
`INTELLECTULAW
`THE LAW OFFICES OF P.B. TUFARIELLO, RC.
`
` Dated: 03¢ f 9! 2020
`
`25 Little Harbor Road
`
`Mt. Sinai, New York 11766
`Tel.:
`(631) 476-8734
`Fax:
`(631) 476-8737
`Email: pbtufariellofili11tellectu1aw.com
`
`,,
`
`iii- Page
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing PETITION FOR CANCELLATION has been filed
`with the Trademark Trial and Appeal Board via ESTTA on August 19, 2020. I also certify that
`on ”this date, the foregoing PETITION FOR CANCELLATION is being deposited with the
`United States Postal Service as Express Mail addressed to Respondent:
`
`PHILIP HAMMARBERG
`
`ABRAMS FENSTERMAN, ET AL., LLP.
`3 DAKOTA DRIVE, SUITE 300
`LAKE SUCCESS, NY 11042
`
`On: August 19, 2020
`
`
`
`Pana ota BettyT ar'
`
`llo, Esq
`
`...
`
`. 13. ...l ...P "3mg .6...
`
`

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