Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1103282
`
`Filing date:
`
`12/21/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92075443
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Yancey Home Improvements, Inc.
`
`AUDREY A MILLEMANN
`WEINTRAUB TOBIN
`400 CAPITOL MALL
`11TH FLOOR
`SACRAMENTO, CA 95814
`UNITED STATES
`Primary Email: amillemann@weintraub.com
`Secondary Email(s): nburton@weintraub.com, trademarks@weintraub.com
`916-558-6033
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Withdrawal of Petition to Cancel
`
`Audrey A. Millemann
`
`amillemann@weintraub.com
`
`/Audrey A. Millemann/
`
`12/21/2020
`
`Attachments
`
`Settlement Agreement.pdf(2192455 bytes )
`
`

`

`SETTLEMENT AGREEMENT
`
`This agreement (“Agreement”) is effective as of November 10, 2020 by and between
`Gudgel Roofing, Inc., a California corporation, 5321 84th Street, Sacramento, California 95826
`(“Gudgel”) and Yancey Home Improvements, Inc., a California corporation, 8250 Alpine Avenue,
`Suite D, Sacramento, California 95826 (“Yancey Home Improvements”). In consideration of the
`mutual promises and covenants contained in this Agreement, the parties agree as follows:
`
`Background
`
`Gudgel is in the business of providing roofing goods and services in the Sacramento,
`1.
`California area. Gudgel does business as, and owns common law trademark rights in, GUDGEL
`YANCEY ROOFING and YANCEY ROOFING. Gudgel also owns U.S. Trademark Registration
`No. 5093797 for the mark YANCEY ROOFING, registered on December 6, 2016, in connection
`with roofing services.
`
`Yancey Home Improvements is in the business of providing roofing goods and
`2.
`services in the Sacramento, California area. Yancey Home Improvements does business as, and
`owns common trademark law rights in, YANCEY HOME IMPROVEMENTS in connection with
`roofing goods and services.
`
`Through its counsel on August 7, 2020, Gudgel sent Yancey Home Improvements
`3.
`3 cease and desist letter demanding that Yancey Home Improvements cease use of its mark
`YANCEY HOME IMPROVEMENTS. Through its counsel on October 12, 2020, Yancey Home
`Improvements sent Gudgei a letter in response.
`
`Also on October 12, 2020, Yancey Home Improvements filed in the US. Patent
`4.
`and Trademark Office (“PTO") a petition to cancel Gudgel‘s Trademark Registration No. 5093797.
`The PTO initiated the proceeding (Cancellation Proceeding No. 92075443).
`
`w
`
`Gudgel agrees to, and shall, file in the PTO an express abandonment with prejudice
`5.
`of its Trademark Registration No. 5093797 and Yancy Home Improvements agrees to, and hereby
`does, consent to that express abandonment. Yancey Home Improvements shall dismiss its Petition
`for Cancellation once it receives notice of the abandonment.
`
`Gudgel agrees that Yancey Home lrnprovcrncnts’ use of its YANCEY HOME
`6.
`IMPROVEMENTS mark in connection with roofing services has not at any time infringed, and
`does not now or will in the future infringe, any trademark rights Gudgel has in its GUDGEL
`YANCEY ROOFING or YANCEY ROOFING trademarks, and Gudgel shall not seek to enforce
`any such rights.
`
`Should either party become aware that a customer or potential customer was
`7.
`actually confused as to that party’s identity due its use of YANCEY as, or as part of, any of its
`trademarks, that party shall (i) inform the customer or potential customer of the existence of, and
`
`{3040690.DOCX;}
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`Page 1 of 2
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`

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`contact information for, the other party and (ii) timely inform the other party of that instance of
`actual confusion. Each party shall take reasonable steps to prevent such instances from occurring,
`and to avoid confusion.
`
`Entire Agreement. This document constitutes the entire agreement between the
`8.
`Parties relating to the subject matter of this Agreement.
`
`9.
`in writing.
`
`Amendment. This Agreement may be modified only by agreement of the Parties
`
`Governing Law. This Agreement is governed by the laws of the State of California
`10.
`excluding its conflict of law provisions.
`
`Successors and Assigns. This Agreement is binding upon and inures to the benefit
`11.
`of each party’s successors and assigns.
`
`Execution. This Agreement may be executed in one or more counterparts, each of
`12.
`which shall be treated as an original, and all of which together will constitute one document.
`
`Gudgel Roofing, Inc...
`a California cor
`ration
`
`Yancey Home Improvements, Inc.,
`a California corporation
`
`/
`
`‘z’fiy. Janet Gudgel
`
`President
`
`Date: Decal, 2020
`
`E
`
`By. Thomas Yancey
`
`President
`
`Date: Dec. _, 2020
`
`{3040690.DOCX;}
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`Page 2 of 2
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`contact information for, the other party and (ii) timely inform the other party of that instance of
`actual confusion. Each party shall take reasonable steps to prevent such instances from occurring,
`and to avoid confusion.
`
`Entire Agreement. This document constitutes the entire agreement between the
`8.
`Parties relating to the subject matter of this Agreement.
`
`9.
`in writing.
`
`Amendment. This Agreement may be modified oniy by agreement of the Parties
`
`Governing Lav; This Agreement is governed by the laws of the State of California
`10.
`excluding its conflict of law provisions.
`
`Successors and Assigns. This Agreement is binding upon and inures to the benefit
`1 I.
`of each party‘ 5 successors and assigns.
`
`Execution. This Agreement may he executed in one or more counterparts, each of
`12.
`which shall be treated as an original, and all of which together will constitute one document.
`
`Gudgel Roofing, Inn,
`a California corporation
`
`Yancey Home Improvements, Inc..
`:1 California corporation
`
` 135?; Jason Gudgel
`
`Vice President
`
`Date: Nov.
`
`,2020
`
`-
`President
`Date: Nov. M 2020
`
`{3040690.DOCX;}
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`Page 2 of 2
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