Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1089223
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`Filing date:
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`10/16/2020
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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
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`Entity
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`Address
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`Attorney informa-
`tion
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`VIP Products L.L.C.
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`limited liability company
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`Citizenship
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`Arizona
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`16515 S. 40TH STREET, SUITE 121
`PHOENIX, AZ 85048
`UNITED STATES
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`MARVIN A. GLAZER
`HAYNES AND BOONE, LLP
`525 UNIVERSITY AVE, SUITE 400
`PALO ALTO, CA 94301-1918
`UNITED STATES
`Primary Email: IPDocketing@haynesboone.com
`Secondary Email(s): marvin.glazer@haynesboone.com, di-
`ana.obradovich@haynesboone.com, lori.lapidario@haynesboone.com
`6506878826
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`Docket Number
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`59688.00045
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`Registration Subject to Cancellation
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`Registration No.
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`5812825
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`Registration date
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`07/23/2019
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`Registrant
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`WANG, CHUNFEN
`NO. 332 CHUYOU NORTH ROAD, CHUMEN TOWN,
`YUHUAN COUNTY
`TAIZHOU CITY, ZHEJIANG PROVINCE, 317600
`CHINA
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`Goods/Services Subject to Cancellation
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`Class 028. First Use: 2018/06/08 First Use In Commerce: 2018/06/08
`All goods and services in the class are subject to cancellation, namely: Badminton rackets; Chest
`protectors forsports; Dumb-bells; Electronic learningtoys; Fishing tackle; Infant toys; Padel rackets;
`Playing cards; Skis; Slingshots; Smart plush toys; Smart robot toys; Smart electronic toy vehicles;
`Throat protectors for athletic use; Toy cars; Toyfor pets; Toy watches; Amusement game machines;
`Arcade game machines; Christmastree ornaments and decorations; Climbers' harness; LCD game
`machines; Party favor hats; Party blowouts; Party favors inthe nature of crackers and noise-
`makers;Party games; Talking toys; Tennis rackets; Toy whistles; Video game machines
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`Grounds for Cancellation
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`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was filed
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`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
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`Fraud on the USPTO
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`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
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`Attachments
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`Petition_To_Cancel_Reg._No._5812825_Pantablok.pdf(921728 bytes )
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`Signature
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`/Marvin A. Glazer/
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`Name
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`Date
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`Marvin A. Glazer
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`10/16/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Registration of Chunfen Wang (Assignee)
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`Mark: Pantablok
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`Reg. No.: 5,812,825
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`VIP PRODUCTS L.L.C.
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`CHUNFEN WANG
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`Petitioner,
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`Registrant.
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`: CANCELLATION NO. ______
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`PETITION FOR CANCELLATION
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`1.
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`Chunfen Wang, a citizen of China, having an address of No. 332 Chuyou North
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`Road, Chumen Town, Yuhuan County, Taizhou City, Zhejiang Province, CHINA 317600
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`(“Registrant”), is listed in the records of the U.S. Patent and Trademark Office (“USPTO”) as the
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`current registrant, by assignment, of U.S. Registration No. 5,812,825 (the “Registration”) of
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`Pantablok (the “Mark”), issued on July 23, 2019, for:
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`“Badminton rackets; Chest protectors for sports; Dumb-bells; Electronic learning toys;
`Fishing tackle; Infant toys; Padel rackets; Playing cards; Skis; Slingshots; Smart plush
`toys; Smart robot toys; Smart electronic toy vehicles; Throat protectors for athletic use;
`Toy cars; Toy for pets; Toy watches; Amusement game machines; Arcade game
`machines; Christmas tree ornaments and decorations; Climbers' harness; LCD game
`machines; Party favor hats; Party blowouts; Party favors in the nature of crackers and
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`noisemakers; Party games; Talking toys; Tennis rackets; Toy whistles; Video game
`machines”
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`in International Class 28. There is no attorney listed as an attorney of record for the Registration.
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`The Trademark Office records indicate that the correspondence address for this Registration is
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`CHEN, MENG FU, Shennan Boulevard South, Futian Dist., Rm.,809,Chuangjian Bldg,No.6023,
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`Shenzhen CHINA 518000. During prosecution, the original owner Meng Fu Chen used the
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`email address yuyutgsbg10@163.com to communicate with the Trademark Office. The
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`Trademark Assignment Cover Sheet submitted on June 2, 2020 with the Assignment to the
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`current Registrant requested that correspondence be forwarded to:
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`Email: dmintlsz@163.com
`Correspondent Name: Siliang Li
`Address Line 1: Room 1707, Huiyi Wealth Center, No.9, Iii: Address Line 2: Zhongxin
`Rd., Queshan Crossing, Longhua i
`Address Line 4: Shenzhen, CHINA 518000
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`2. VIP Products L.L.C., an Arizona limited liability company, with an address at 16515
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`S. 40th Street, Suite 121, Phoenix, Arizona 85048 (“Petitioner)”, sells and distributes pet toys
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`bearing the trademark PANTA, and believes that it will be damaged by the continued registration
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`of the Mark and hereby petitions to cancel the Registration.
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`3. Petitioner filed US Trademark Application No. 88/776,510 seeking federal registration
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`of the trademark PANTA on January 28, 2020, on an intent-to-use basis.
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`4. Petitioner has filed an Amendment to Allege Use in US Trademark Application No.
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`88/776,510, stating that Petitioner has used the mark PANTA on pet toys sold in interstate
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`commerce since at least as early as June 15, 2020.
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`5. The image inserted to the right shows Petitioner’s mark
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`PANTA as used on pet toys distributed and sold by Petitioner in
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`interstate commerce:
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`6. On April 23, 2020, the Trademark Office issued an initial
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`Office Action in Petitioner’s US Trademark Application No.
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`88/776,510; within such April 23, 2020 Office Action, the
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`Trademark Examining Attorney refused registration of Petitioner’s
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`mark PANTA “because of a likelihood of confusion with the mark in U.S. Registration No.
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`5812825”.
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`7. More specifically, the Trademark Examining Attorney concluded that “since the
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`Applicant’s mark and the Registrant’s mark are similar and their goods related, registration must
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`be refused under Trademark Act Section 2(d).”
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`8. Petitioner has a direct and personal stake in the outcome of this cancelation
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`proceeding. The continued presence of the Registration on the federal trademark register
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`constitutes an obstacle to Petitioner’s registration of Petitioner’s mark PANTA for pet toys. The
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`Registration is therefore causing injury and damage to Petitioner, and Petitioner has standing to
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`challenge it.
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`The grounds for cancellation are as follows:
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`9. Petitioner incorporates paragraphs 1-8 above by reference as if fully set forth herein.
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`10. The Registration issued upon trademark application Serial Number 88/252,945.
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`11.Trademark application Serial Number 88/252,945 was filed on January 8, 2019 by
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`Meng Fu Chen (“Chen”), a citizen of China, having an address of 805, Bldg. 3, Baoli Yuedu
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`Garden No. 207 Longguan Ave., Longhua New Dist. Shenzhen, Guangdong, CHINA 518000.
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`12. Chen’s trademark application Serial Number 88/252,945 asserted a filing basis under
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`Section 1(a) of the Trademark Act, listing the following goods in International Class 28:
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`a) Badminton rackets;
`b) Chest protectors for sports;
`c) Dumb-bells;
`d) Electronic learning toys;
`e) Fishing tackle;
`f) Infant toys;
`g) Padel rackets;
`h) Playing cards;
`i) Skis;
`j) Slingshots;
`k) Smart plush toys;
`l) Smart robot toys;
`m) Smart electronic toy vehicles;
`n) Throat protectors for athletic use;
`o) Toy cars;
`p) Toy for pets;
`q) Toy watches;
`r) Amusement game machines;
`s) Arcade game machines;
`t) Christmas tree ornaments and decorations;
`u) Climbers' harness;
`v) LCD game machines;
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`w) Party favor hats;
`x) Party blowouts;
`y) Party favors in the nature of crackers and noisemakers;
`z) Party games;
`aa) Talking toys;
`ab) Tennis rackets;
`ac) Toy whistles; and
`ad) Video game machines.
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`13. When Chen filed trademark application Serial Number 88/252,945 on January 8,
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`2019, Chen alleged that Registrant was using the mark “Pantablok” on all of the aforementioned
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`goods originally listed in such trademark application.
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`14. The only specimen submitted with
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`Chen’s trademark application Serial Number
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`88/252,945 as purportedly showing use of the mark
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`on the goods was the photograph inserted to the right,
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`described as showing the mark Pantablok on “a toy
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`car bearing the applied-for trademark”. A closeup
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`view of the area purportedly bearing the mark is
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`inserted below:
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`15. Upon information and belief, the toy monster truck shown above is a common
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`friction-powered monster truck toy available from Amazon.com and other retailers, e.g., at the
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`webpage having the Internet domain address set forth below:
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`https://www.amazon.com/Pack-Monster-Truck-Toys-Pre-
`Kindergarten/dp/B07VFNJQRG/ref=sr_1_10?dchild=1&keywords=monsters+truck+toys+frictio
`n&qid=1602790163&sr=8-10
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`16. Inserted below is a screen capture image of the relevant portion of the webpage
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`identified above:
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`17. A closeup of the purple, green and black toy shown in the screen capture inserted
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`above is inserted below:
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`18. Chen took the pre-existing monster truck toy above, applied the legend “Pantablok”
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`onto the rear end of such toy, and used the same to create Chen’s specimen shown in Paragraph
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`14 above.
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`19. Chen filed trademark application Serial Number 88/252,945, seeking registration of
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`“Pantablok” without appointing a licensed US attorney; the requirement for foreign nationals to
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`appoint licensed US counsel to file and prosecute US trademark applications was not made
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`effective until August 3, 2019.
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`20.
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`Petitioner has searched the Internet for monster truck toys sold under the
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`trademark “Pantablok” but has found none.
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`21.
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`Petitioner has searched the Internet for toys for pets sold under the trademark
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`“Pantablok” but has found none.
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`22.
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`Petitioner has been in the pet toy business for 16 years, regularly participates in
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`pet product trade shows, and regularly monitors competing pet toy products; yet, Petitioner has
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`not been able to find a pet toy sold under the trademark “Pantablok” even after searching for
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`such a pet toy.
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`23. At the time that Chen filed trademark application Serial Number 88/252,945 for the
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`mark “Pantablok”, Chen identified use in commerce as the filing basis for such application,
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`provided dates of first use, a description of the specimen, and a specimen.
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`24. In his January 8, 2019 submission to the USPTO, Chen declared that the mark
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`“Pantablok” was in use in commerce on or in connection with the goods listed in the application
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`as of the application filing date.
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`25. In his January 8, 2019 submission to the USPTO, Chen declared that the specimen
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`submitted by Chen on January 8, 2019 shows the mark as used on or in connection with the
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`goods set forth in the application.
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`26. In his January 8, 2019 submission to the USPTO, Chen declared that “to the best of
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`the signatory's knowledge and belief, the facts recited in the application are accurate”.
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`27. When Chen filed trademark application Serial Number 88/252,945, seeking
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`registration of “Pantablok”, Chen had not actually made any bona fide use of the mark
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`“Pantablok” in the ordinary course of trade, and had not actually sold or transported any of such
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`goods in commerce bearing the mark “Pantablok”.
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` 28. Trademark application Serial Number 88/252,945 for the mark “Pantablok” included
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`a declaration under 18 U.S.C. § 1001 stating, inter alia, that the undersigned, “being hereby
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`warned that willful false statements and the like so made are punishable by fine or imprisonment,
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`or both,” “and that such willful false statements, and the like, may jeopardize the validity of the
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`application or any resulting registration,” and declaring “that all statements made of his/her own
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`knowledge are true; and that all statements made on information and belief are believed to be
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`true.”
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`29. Chen filed at least two other applications for federal registration of other marks, at
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`approximately the same time that Chen filed trademark application Serial Number 88/252,945
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`for “Pantablok”, seeking registration for goods identical to those listed in the “Pantablok”
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`Registration, including:
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` a) U.S. Trademark Application No. 88/252,958, filed on January 8, 2019, for the mark
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`“Umran”, which registered as Reg. No. 5,812,828 on July 23, 2019 (“the Umran
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`application”); and
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`b) U.S. Trademark Application No. 88/251,451, filed on January 7, 2019, for the mark
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`“EldenTec”, which did not register (“the EldenTec application”).
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`30. Chen’s Umran application and Chen’s EldenTec application both claimed use of
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`such marks in Intl. Cl. 28 for precisely the same goods as those listed in Chen’s application for
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`the “Pantablok” mark, namely:
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` “Badminton rackets; Chest protectors for sports; Dumb-bells; Electronic learning toys;
`Fishing tackle; Infant toys; Padel rackets; Playing cards; Skis; Slingshots; Smart plush
`toys; Smart robot toys; Smart electronic toy vehicles; Throat protectors for athletic use;
`Toy cars; Toy for pets; Toy watches; Amusement game machines; Arcade game
`machines; Christmas tree ornaments and decorations; Climbers' harness; LCD game
`machines; Party favor hats; Party blowouts; Party favors in the nature of crackers and
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`noisemakers; Party games; Talking toys; Tennis rackets; Toy whistles; Video game
`machines”.
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`In addition, Chen’s Umran application and Chen’s EldenTec application both claimed first use of
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`the “Umran” and “EldenTec” marks in commerce on June 8, 2018, the exact same date of first
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`use alleged in Chen’s trademark application Serial Number 88/252,945 for the mark
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`“Pantablok”.
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`31. During prosecution of Chen’s “EldenTec” application, the Trademark Examiner
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`questioned the authenticity of specimens submitted by Chen not once, not twice, but three times.
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`32. In an Office Action dated March 26, 2019 in Chen’s “EldenTec” application, the
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`Trademark Examiner stated that “[r]egistration is refused because the specimen in International
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`Class 28 appears to consist of a mock-up of the mark on the goods and does not show the
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`applied-for mark in actual use in commerce.”
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`33. Again in an Office Action dated June 19, 2019 in Chen’s “EldenTec” application, the
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`Trademark Examiner rejected a second, substitute specimen, stating that a “digitally altered
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`image, mock-up, or photograph of an intended depiction of a mark on a label, tag, or piece of
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`paper placed on top of an applicant’s or a third party’s goods or packaging merely for the
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`purposes of filing a trademark application is generally not acceptable to show applicant’s use of
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`the applied-for mark in commerce.”
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`34. Chen submitted a third specimen along with a Request for Reconsideration filed on
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`July 24, 2019 in Chen’s “EldenTec” application. This third specimen was also refused by the
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`Trademark Examining Attorney in an Office Action dated August 19, 2019; in this instance, the
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`Examiner stated “…the specimen appears to be digitally altered because the area surrounding all
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`of the wording in the specimen is highly pixilated and the black line borders around the “Add to
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`Cart,” “Buy Now,” and “Add to List” buttons are missing on the sides indicating that it was cut
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`out and superimposed into the picture.” In addition, the Examiner advised Chen that Chen
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`would now need be represented by a U.S.-licensed attorney to further prosecute the “EldenTec”
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`application.
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`35. Chen did not respond to the Office Action issued on August 19, 2019 in Chen’s
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`“EldenTec” application, and Chen’s “EldenTec” application was thereafter abandoned.
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`Count 1: The Application for Reg. No. 5,812,825 was Void Ab Initio
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`36. Petitioner incorporates Petitioner Paragraphs 1-35 above by reference as if fully set
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`forth herein.
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`37. When Chen filed his trademark application Serial Number 88/252,945 for the mark
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`“Pantablok” on January 8, 2019 under Section 1(a) of the Trademark Act, Chen had not actually
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`used such mark in commerce for any of the goods listed in such application.
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`38. Chen’s allegation of use of the mark “Pantablok” in commerce for the identified
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`goods, at the time of filing of his application, was false.
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`39. Trademark application Serial Number 88/252,945 for the mark “Pantablok” was void
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`ab initio upon filing. Grand Canyon West Ranch LLC v. Hualapai Tribe, 78 USPQ2d 1696,
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`1697 (TTAB 2006); ShutEmDown Sports, Inc. v. Carl Dean Lacy, 102 USPQ2d 1036 (TTAB
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`2012).
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`40. Reg. No. 5,812,825 is therefore invalid.
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`41. The Registration creates a legal presumption that the current Registrant has valid and
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`exclusive rights in the mark “Pantablok” for the goods identified in the Registration.
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`42. For the reasons set forth above, Registrant is not entitled to the Registration or to the
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`legal presumptions that the Registration creates.
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`43. The continued presence of the Registration on the federal trademark register
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`constitutes an obstacle to Petitioner’s use and federal registration of the mark “PANTA”. The
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`Registration, thus, is causing injury and damage to Petitioner.
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`44. Petitioner is therefore entitled to cancelation of the Registration.
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`Count 2: Reg. No. 5,812,825 Was Fraudulently Obtained and is Invalid
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`45. Petitioner incorporates Petitioner Paragraphs 1-44 above by reference as if fully set
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`forth herein.
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`46.
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`In the course of filing trademark application Serial Number 88/252,945 for the
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`mark “Pantablok”, the applicant Chen knowingly made false, material representations with the
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`intent to deceive the US Patent and Trademark Office, including at least the representation that
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`the mark “Pantablok” had been used on each of the goods listed in the application by the filing
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`date of June 8, 2018, and including at least the representation that the specimen submitted with
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`such application showed the mark as used in commerce on an item in the class of listed goods as
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`of the filing date of June 8, 2018.
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`47. Chen made false representations to the U.S. Patent and Trademark Office when Chen
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`filed trademark application Serial Number 88/252,945 for the mark “Pantablok”.
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`48. Chen’s false representations made to the USPTO in conjunction with trademark
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`application Serial Number 88/252,945 for the mark “Pantablok” were material to the
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`registrability of the mark “Pantablok”.
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`49. Chen had knowledge of the falsity of Chen’s representations made to the USPTO at
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`the time that Chen made such representations.
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`50. Chen made such representations to the USPTO with the intent to deceive the USPTO
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`for the purpose of obtaining the Registration.
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`51. Reg. No. 5,812,825 is therefore invalid.
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`52. The Registration creates a legal presumption that the current Registrant has valid and
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`exclusive rights in the mark “Pantablok” for the goods identified in the Registration.
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`53. For the reasons set forth above, Registrant is not entitled to the Registration or to the
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`legal presumptions that the Registration creates.
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`54. The continued presence of the Registration on the federal trademark register
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`constitutes an obstacle to Petitioner’s use and federal registration of the mark “PANTA”. The
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`Registration, thus, is causing injury and damage to Petitioner.
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`55. Petitioner is therefore entitled to cancelation of the Registration.
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`Wherefore, Petitioner VIP Products L.L.C. requests that Registration No. 5,812,825 for the
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`mark “Pantablok” be canceled.
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`Respectfully submitted,
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`By: /Marvin A. Glazer/
`Marvin A. Glazer, AZ Bar No. 005885
`Haynes And Boone, LLP
`525 University Ave., #400
`Palo Alto, CA 94301
`Telephone: (650) 687-8826
`Fax: (650) 687-8726
`Email: marvin.glazer@haynesboone.com
`USPTO Reg. No. 28,801
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`Attorneys for Petitioner,
`VIP Products L.L.C.
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