Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1091988
`
`Filing date:
`
`10/29/2020
`
`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
`
`Kyle L Dziedzina
`
`Individual
`
`207-1650 DUNDAS ST E
`MISSISSAUGA, ON L4X2Z3
`CANADA
`
`Citizenship
`
`CANADA
`
`Attorney informa-
`tion
`
`DOMINIC A. FRISINA
`BUCKLEY KING LPA
`600 SUPERIOR AVE. STE 1400
`CLEVELAND, OH 44114
`UNITED STATES
`Primary Email: frisina@buckleyking.com
`Secondary Email(s): dominic@frisinaip.com, docketing@frisinaip.com, fer-
`gus@buckleyking.com
`2166854736
`
`Docket Number
`
`20092101.001
`
`Registration Subject to Cancellation
`
`Registration No.
`
`6171519
`
`Registration date
`
`10/06/2020
`
`Registrant
`
`Lisa Williams
`27600 CHAGRIN BLVD., SUITE 490
`CLEVELAND, OH 44122
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 012. First Use: 2019/06/20 First Use In Commerce: 2019/06/20
`All goods and services in the class are subject to cancellation, namely: Waste disposal container ad-
`apted for automobiles
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`

`

`U.S. Application
`No.
`
`90151693
`
`Application Date
`
`09/01/2020
`
`Registration Date
`
`NONE
`
`Foreign Priority
`Date
`
`08/20/2020
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`CARCAN
`
`NONE
`
`Class 012. First use: First Use: 2016/03/25 First Use In Commerce: 2016/03/25
`Coolers for use in vehicles; garbage receptacles for use in vehicles; item organ-
`izers for use in vehicles
`
`Exhibit 1_Facebook.pdf(1714271 bytes )
`Exhibit 2_website.pdf(813667 bytes )
`Exhibit 3_Redacted.pdf(964872 bytes )
`Exhibit 4 Respondent website.pdf(1478107 bytes )
`Exhibit 5_Specimen-1_88113581.pdf(635565 bytes )
`Exhibit 6_Specimen-2_88113581.pdf(3151034 bytes )
`Exhibit 7_Specimen-3_88113581.pdf(741002 bytes )
`Petition for Cancellation.pdf(188353 bytes )
`
`Signature
`
`/Dominic A. Frsina/
`
`Name
`
`Date
`
`Dominic A. Frisina
`
`10/29/2020
`
`

`

`Exhibit 1
`
`
`
`https://www.facebook.com/CarCan-103478261150350https://www.facebook.com/CarCan-103478261150350
`
`
`
` last accessed Oct. 27, 2020 last accessed Oct. 27, 2020
`
` 
`
`9+
`
`9+
`
`CarCan
`Cars
`
`Shop Now
`carcan.com
`
`Home
`
`Reviews
`
`Photos
`
`About
`
`More
`
`Like
`
`Message
`
`Create Post
`
`Photo/Video
`
`Check in
`
`Tag Friends
`
`CarCan
`Poster based in Canada · 5d ·
`CarCans for Christmas !!
`
`See All
`
`About
`The Original CarCan will clean up your car
`in less then 2 seconds. The CarCan is fully
`waterproof and washable. It can also be
`used as a storage bag or a cooler. Simple
`strap it to the back of the seat and
`BOOOM the car is nice and neat.
`485 people like this
`579 people follow this
`http://www.carcan.com/
`Typically replies within a few hours
`Send Message
`sales@carcan.com
`Cars
`
`Suggest Edits
`Does this Page have an email address?
`Yes
`Unsure
`No
`
`CarCan
`Cars
`
`77
`
`Send Message
`
`2 Shares
`
`Page Transparency
`See All
`Facebook is showing information to help you
`better understand the purpose of a Page. See
`actions taken by the people who manage and
`post content.
`Page created - December 10, 2019
`
`Page manager locations: Canada,
`Philippines, Mexico
`
`Add Your Business to Facebook
`Showcase your work, create ads and connect with
`customers or supporters.
`Create Page
`
`Like
`
` 
`
`Comment
`
`Share
`
`Write a comment...
`
`CarCan
`Poster based in Canada · September 26 ·
`
`CarCan
`yp
`y p
`
`Cars
`Choose an option or type your own message.
`
`When you reply, CarCan will see your public
`info.
`Can you recommend
`something for me?
`
`What are your hours?
`
`Where are you located?
`
`Can you tell me more about
`your business?
`
`Privacy · Terms · Advertising · Ad Choices
`
`· Cookies ·
`
`More
`
`·
`
`CarCan updated their business hours
`
`Shop Now
`
`Aa
`
`30
`
`Page 1 of 4
`
`

`

`Exhibit 1
`
`
`
`https://www.facebook.com/CarCan-103478261150350https://www.facebook.com/CarCan-103478261150350
`
`
`
` last accessed Oct. 27, 2020 last accessed Oct. 27, 2020
`
`Privacy Terms Advertising Ad Choices
`Facebook © 2020
`
` Cookies
`
` More
`
`9+
`
`CarCan updated their business hours.
`9+
`
`Shop Now
`
`Like
`
`Comment
`
`8 Comments
`
`Share
`Most Relevant
`
`Write a comment...
`
`Crystal Brown
`I can't wait to get mine!
`1
`
` · 1w
` · Like Reply
`1 Reply
`View 1 more comment
`
`CarCan
`Poster based in Canada · September 26 ·
`
`CarCan updated their website address.
`
`Learn More
`
`Like
`
`Comment
`
`Share
`
`CarCan updated their cover photo.
`Poster based in Canada · September 26 ·
`
`11
`
`Like
`
`Comment
`
`Share
`
`Write a comment...
`
`CarCan
`Poster based in Canada · September 26 ·
`#CarCan
`
`CarCan
`yp
`y p
`
`Cars
`Choose an option or type your own message.
`
`When you reply, CarCan will see your public
`info.
`Can you recommend
`something for me?
`
`What are your hours?
`
`Where are you located?
`
`Can you tell me more about
`your business?
`
`Aa
`
`30
`
`Page 2 of 4
`
`

`

`Exhibit 1
`
`
`
`https://www.facebook.com/CarCan-103478261150350https://www.facebook.com/CarCan-103478261150350
`
`
`
` last accessed Oct. 27, 2020 last accessed Oct. 27, 2020
`
` 
`
`9+
`
`9+
`
`33
`
`22
`
`Like
`
` 
`
`Comment
`
`Share
`
`1 Share
`
`Write a comment...
`
`CarCan updated their cover photo.
`Poster based in Canada · August 25 ·
`
`2 Comments 3 Shares
`
`Like
`
` 
`
`Comment
`
`Share
`
`Most Relevant
`
`Write a comment...
`
`Rhonni Sto
`Quick question, is the price in US dollars?
`
` · 1w
` · Like Reply
`1 Reply
`
`CarCan updated their cover photo.
`Poster based in Canada · August 25 ·
`
`CarCan
`yp
`y p
`
`Cars
`Choose an option or type your own message.
`
`Like
`
` 
`
`Comment
`
`Share
`
`2 Comments
`When you reply, CarCan will see your public
`info.
`Can you recommend
`something for me?
`
`Most Relevant
`
`Write a comment...
`
`Jennifer Williams
`Is it sturdy enough to stay open on its own as pictured or
`does it collapse? I want something sturdy that stays open
`like that.
` · 1w
`
` · Like Reply
`1 Reply
`
`What are your hours?
`
`Where are you located?
`
`Can you tell me more about
`your business?
`
`Aa
`
`30
`
`Page 3 of 4
`
`

`

`Exhibit 1
`
`
`
`https://www.facebook.com/CarCan-103478261150350https://www.facebook.com/CarCan-103478261150350
`
`
`
` last accessed Oct. 27, 2020 last accessed Oct. 27, 2020
`
` 
`
`9+
`
`9+
`
`CarCan
`yp
`y p
`
`Cars
`Choose an option or type your own message.
`
`When you reply, CarCan will see your public
`info.
`Can you recommend
`something for me?
`
`What are your hours?
`
`Where are you located?
`
`Can you tell me more about
`your business?
`
`Aa
`
`30
`
`Page 4 of 4
`
`

`

`https://carcan.com/
`
`Exhibit 2
`
`last accessed 10/28/2020
`
`Page 1 of 1
`
`

`

`#1008 April 16, 2017 at 3:42 pm from Online Store
`
`ft m.
`
`Exhibit 3
`Exhibit 3
`
`Fulfilled (1) #1008-F1
`
`1650 Dundas St E
`
`Customer
`
`The Original CarCan, 100% Waterproof and
`Leak-proof with a Metal Spring Frame Closure.
`
`$9.99 x
`
`1
`‘
`
`$9.99 —
`1 order
`
`Subtotal
`
`1 item
`
`Shipping Small Packet USA Air (0.746 kg)
`Tax
`Total
`
`Paid by customer
`
`TODAY
`
`$9.99
`
`CONTACT INFORMATION
`
`$8.37
`$000
`$18.36
`
`_dona@gmail.com
`No phone number
`
`SHIPPING ADDRESS
`
`$18.36 _
`_booster blvd
`
`Statesboro GA 30458
`United States
`
`This order was archived.
`
`3 minutes ago
`
`BILLING ADDRESS
`
`—‘
`
`Elam road
`Garfield GA 30425
`United States
`
`(478)_
`
`You sent a shipping confirmation email to— 3 minutes ago
`(i-jona@gmail.com).
`
`You fulfilled 1 item from 1650 Dundas St E.
`
`t
`
`3 minutes ago
`
`APRIL 16, 2017
`
`Order confirmation email was sent to— 3:42 pm
`(_iona@gmail.com).
`
`A $18.36 USD payment was processed on the Visa ending in 2543.
`
`'
`
`3:42 pm
`
`_p|aced this order on Online Store (checkout
`#15327763658).
`
`3:42 pm
`
`hllpx'“ rIIr-I'nn Imshupii} I‘Ullliiminllll urdcrxtiiLIOlllllX'HInIt-I‘l [\iHl'Hl—ll'lll'
`
`Page 1 of 1
`Page 1 of 1
`
`

`

`Exhibit 4
`
`
`
`https://www.mycarcan.com/https://www.mycarcan.com/
`
`
`
`Last accessed Oct. 27, 2020Last accessed Oct. 27, 2020
`
`HOME
`
`CARCAN
`
`VANCAN
`
`CONTACT
`
` 0
`
`Stop Car Clutter
`Forever! 
`
`CarCan o(cid:119)ers a simple solution to a Big Problem - Car Clutter.  
`
`LEARN MORE
`
`The CarCan and
`VanCan
`
`If you have kids, you most likely
`have a problem keeping your car
`clean and organized.  We know how
`frustrating this can be!
`CarCar and VanCar Solve This
`Problem.
`
`DISCOVER CARCAN
`
`DISCOVER VANCAN
`
`CONTACT
`
`440-655-8610
`info@mycarcan.com
`
`ADDRESS
`CarCan
`27600 Chagrin Blvd, Suite 490
`Woodmere, OH 44122
`
`   
`
`Page 1 of 1
`
`

`

`Exhibit 5
`Exhibit 5
`submitted June 24, 2019
`submitted June 24, 2019
`
`
`
`
`The I{Kantian and
`
`Van Can
`
`If you have kids: you must likely have a
`p H: biem keep in g your {a r clean a n5
`nrganized. We know haw Fmstratl'ng this can
`be!
`
`Earth: and 'h'lnEa r Solve This Problem.
`
`DWER UFHZAH
`
`‘
`
`DECIZI'LI'EF VAHUN
`
`
`
`Page 1 of 1
`Page 1 of 1
`
`

`

`Exhibit 6
`Exhibit 6
`Submitted Jan. 10, 2020
`Submitted Jan. 10, 2020
`
`
`
`Page 1 of 2
`Page 1 of 2
`
`

`

`Exhibit 6
`Exhibit 6
`Submitted Jan. 10, 2020
`Submitted Jan. 10, 2020
`
`
`
`Page 2 of 2
`Page 2 of 2
`
`

`

`Exhibit 7
`Exhibit 7
`Submitted Aug. 6, 2020
`Submitted Aug. 6, 2020
`
`.50°’o OFF TODAY .
`
`
`EAHCAN.EDM
`
`ccccccccccccc
`
`CART (0
`
`THE ORIGINAL CAR CAN
`
`CONTACT US
`
`SHIPPING & DELIVERY
`
`$9.99 M
`
`“mfg”
`
`Today For family and friends
`—
`1
`+
`
`
`
`
` ORDER NOW
`‘
`
`Cmfi m
`
`L’AIVEAML’UM
`
`Page 1 of 1
`Page 1 of 1
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Registration No. 6171519
`For the mark: CARCAN
`Registered: October 6, 2020
`
`
`__________________________________________________
`
`
`
`Kyle Lewis Dziedzina,
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`Lisa Williams,
`
`
`
`
`
`
`
`
`
`Respondent.
`
`__________________________________________________
`
`|
`
`|
`
`|
`
`|
`
`|
`
`|
`
`|
`
`|
`
`|
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. __________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PETITION TO CANCEL
`
`Kyle Lewis Dziedzina (KLD) "Petitioner", an individual residing in the nation of Canada
`believes that he has been and will continue to be damaged by U.S. Supplemental Trademark
`Registration No. 6,171,519 for the mark CARCAN, and hereby petitions for cancellation of same
`pursuant to Section 14(1) of the Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. §
`1064(1).
`
`As grounds for cancellation, Petitioner alleges as follows:
`
`Petitioner is in the business of selling multifunction automobile accessories, under
`1.
`the CARCAN brand, that serve as coolers, garbage receptacles, and/or organizers for vehicle
`interiors.
`
`Petitioner is the owner of valuable common law trademark rights in the word
`2.
`CARCAN (hereinafter "CARCAN Mark") for “coolers for use in vehicles; garbage receptacles
`for use in vehicles; item organizers for use in vehicles”.
`
`Petitioner has used the CARCAN Mark in interstate commerce in the United
`3.
`States continuously since at least April 16, 2017 in connection with the sale, marketing,
`advertising, and promotion of “…garbage receptacles for use in vehicles…” Attached hereto as
`Exhibits 1, 2 and 3 is evidence of Petitioner’s current use in commerce, and a copy of a sales
`
`Page 1 of 3
`
`

`

`record showing a sale by the Petitioner of the foregoing goods under the CARCAN mark on
`April 16, 2017.
`
`Petitioner has grossed hundreds of thousands of dollars in sales in the United
`4.
`States in 2020 alone.
`
`As a result of its widespread, continuous, and exclusive use of the CARCAN
`5.
`Mark to identify its “garbage receptacles”, and to identify Petitioner as their source, Petitioner
`owns valid and subsisting federal statutory and common law rights to the unregistered CARCAN
`Mark.
`
`6.
`
`Petitioner's CARCAN Mark is distinctive to the relevant consuming public.
`
`Petitioner has expended substantial time, money, and resources marketing,
`7.
`advertising, and promoting the garbage receptacles sold under its CARCAN Mark including
`through Petitioner’s ecommerce store located at www.carcan.com, and through Facebook sales.
`
`Petitioner has expended more than two hundred and fifty-five thousand dollars
`8.
`($255,000 US) in pay per click advertising alone through October 21, 2020 on the marketing,
`advertising, and promotion of the garbage receptacles sold under its CARCAN Mark.
`
`The garbage receptacles Petitioner offers under its CARCAN Mark are of high
`9.
`quality being fabricated from durable high-strength woven polymer fabric, a metal frame, and
`durable high-quality buckles.
`
`Petitioner’s CARCAN product further includes certain value-added features,
`10.
`namely, it includes four organizer pockets, and it is water-tight enabling it to also serve as a
`cooler or as a container for wet objects.
`
`LIKELIHOOD OF CONFUSION
`
`Upon information and belief Respondent, Lisa Williams, with an address at 27600
`11.
`Chagrin Blvd., Suite 490 Cleveland Ohio 44122, is the current listed owner of Supplemental
`Registration No. 6,71,519 for the mark CARCAN in connection with a "waste disposal container
`adapted for automobiles" in International Class 012. See Exhibit 4.
`
`Supplemental Registration No. 6,71,519 for the mark CARCAN, based on an
`12.
`application filed on September 12, 2018, was issued on October 6, 2020 and bears a first-use
`date of June 20, 2019.
`
`Upon information and belief Petitioner's CARCAN Mark has priority over
`13.
`Respondent's mark because Petitioner's first-use date for the CARCAN Mark predates the filing
`date of Respondent's application for Supplemental Registration No. 6,71,519 or any other date
`on which the Respondent may rely for purposes of priority.
`
`Upon information and belief Respondent's use of CARCAN is substantially
`14.
`identical to Petitioner's CARCAN Mark.
`
`Page 2 of 3
`
`

`

`Upon information and belief the “waste disposal container adapted for
`15.
`automobiles” covered by Respondent's Supplemental Trademark Registration No. 6,71,519 is
`similar to Petitioner’s CARCAN product because both are waste containers for automobiles.
`
`Supplemental Trademark Registration No. 6,71,519 is unrestricted as to
`16.
`consumers and trade channels. As such, it is presumed that Respondent's automobile waste
`containers identified in the challenged registration are sold to all ordinary consumers of such
`products, including consumers of Petitioner's garbage receptacles, and travel in all ordinary trade
`channels.
`
`FRAUD
`
`Upon information and belief Respondent submitted a FIRST specimen on June
`17.
`24, 2019 showing CARCAN in connection with its product as it appeared on the Respondent’s
`website. See Exhibit 5.
`
`18.
`
`Respondent’s June 24, 2020 was refused in an Office action dated July 11, 2019.
`
`Upon information and belief Respondent submitted a SECOND specimen on
`19.
`January 10, 2020 showing CARCAN in connection with its product as it appeared on
`Respondent’s website. See Exhibit 6.
`
`20.
`2020.
`
`Respondent’s second specimen was refused in an Office action dated February 12,
`
`Upon information and belief Respondent submitted a THIRD specimen
`21.
`purporting to show CARCAN in connection with its product as it appeared on the Respondent’s
`website; however, the specimen supplied was actually a screenshot of the Petitioner’s website.
`See Exhibit 7.
`
`As a direct result of Respondent’s deceit Respondent’s application was allowed
`22.
`on September 1, 2020 leading to Supplemental Registration No. 6,171,519 issuing on October 6,
`2020.
`
`WHEREFORE, Petitioner respectfully prays that its cancellation be sustained and that
`Respondent's Supplemental Registration No. 6,171,519 be cancelled.
`
`Dated: October 29th, 2020
`Cleveland, Ohio
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`Buckley King LPA
`
`/Dominic A. Frisina/
`Dominic A. Frisina
`(Ohio Reg. No. 0078599)
`600 Superior Avenue Suite 1400
`Cleveland, Ohio 44114
`(216)685-4736
`Frisina@buckleyking.com
`Attorney for PETITIONER
`
`Page 3 of 3
`
`