Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1139122
`
`Filing date:
`
`06/09/2021
`
`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
`
`Lion Corporation
`
`Corporation
`
`Citizenship
`
`Japan
`
`3-7, HONJO 1-CHOME
`SUMIDA-KU, TOKYO, 130-8644
`JAPAN
`
`LEIGH ANN LINDQUIST
`SUGHRUE MION, PLLC
`2000 PENNSYLVANIA AVENUE NW, SUITE 900
`WASHINGTON, DC 20006
`UNITED STATES
`Primary Email: llindquist@sughrue.com
`Secondary Email(s): tm@sughrue.com, vmullineaux@sughrue.com
`202 663 7409
`
`Docket Number
`
`H00440
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5613111
`
`Registration date
`
`11/20/2018
`
`Registrant
`
`Carolina Carvajal
`13262 VENTURA BLVD.
`STUDIO CITY, CA 91604
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 003. First Use: 2018/09/01 First Use In Commerce: 2018/09/01
`All goods and services in the class are subject to cancellation, namely: Incense; Incense sticks; Skin
`and body topical lotions, creams and oils for cosmetic use
`
`Class 005. First Use: 2018/09/01 First Use In Commerce: 2018/09/01
`All goods and services in the class are subject to cancellation, namely: Topical analgesic creams;
`Herbal tinctures for medical purposes
`
`Grounds for Cancellation
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was filed
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`
`

`

`Other
`
`2009)
`
`void ab initio for the reason that Respondent, as
`of the application filing date, did not have a bona
`fide intent to use the mark in commerce in con-
`nection with any of the Class 3 and 5 goods re-
`cited in the Application
`
`Attachments
`
`H00440PetitiontoCancel.pdf(146437 bytes )
`
`Signature
`
`/Leigh Ann Lindquist/
`
`Name
`
`Date
`
`Leigh Ann Lindquist
`
`06/09/2021
`
`

`

`Attorney Dkt. No. H00440
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re: Registration No. 5613111
`Mark: GREEN LION
`
`
`
`
`
`
`Lion Corporation,
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`:
`:
`:
`:
`:
`: Cancellation No.:
`:
`:
`:
`:
`
`
`PETITION TO CANCEL
`
`
`
`v.
`
`
`
`
`
`
`Carolina Carvajal,
`
`
`
`
`
`
`Respondent.
`
`
`
`
`
`
`
`
`
`
`Lion Corporation, a corporation organized under the laws of Japan, with an address of
`
`3-7, Honjo 1-chome, Sumida-ku, Tokyo, Japan 130-8644, believes that it will be damaged by
`
`continued registration of the mark GREEN LION in International Classes 3 and 5 in Registration
`
`No. 5613111 and hereby petitions to cancel same.
`
`As grounds for the petition, it is alleged that:
`
`1.
`
`Petitioner is now, and has for many years, been engaged in the sale of household
`
`products, including dental and oral care, detergents, soaps and other related goods.
`
`2.
`
`Petitioner, on April 6, 2020, filed an application for registration of the mark
`
`LION for goods described as “External pharmaceutical preparations for relieving heat and pain
`
`on the human bodies; medicated gels for therapeutic cooling purposes; anti-inflammatory gels”
`
`in International Class 5, and “Chemically activated cold gel packs for medical purposes; gel
`
`sheets for therapeutic cooling purposes; adhesive pads for therapeutic cooling purposes; gel
`
`sheets and pads for absorbing and dissipating heat and pain from the body for medical purposes”
`
`

`

`in International Class 10. This application was assigned Serial No. 88860743 and is based on
`
`Petitioner’s intent to use the mark in U.S. commerce.
`
`3.
`
`On March 25, 2021, a Final Office Action issued in connection with Petitioner’s
`
`application for registration of LION, Serial No. 88860743. The Office Action refused
`
`registration to Petitioner in view of the existence of Registration No. 5613111 for the mark
`
`GREEN LION for “skin and body topical lotions, creams, and oils for cosmetic purposes” in
`
`International Class 3 and “topical analgesic creams and herbal tinctures for medical purposes”
`
`in International Class 5. The Examining Attorney, in connection with Petitioner’s application
`
`for registration of LION, held that the use of the respective marks on the respective goods
`
`would create a likelihood of confusion and, therefore, the Examining Attorney refused
`
`registration to Petitioner herein.
`
`4.
`
`On August 29, 2017, Respondent entered the following statement regarding its
`
`intent to use the GREEN LION mark in its application for each class of goods or services:
`
`The applicant has a bona fide intention, and is entitled, to use the mark in
`commerce on or in connection with the identified goods/services. (15 U.S.C.
`Section 1051(b)).
`
`
`Respondent’s attorney signed the following declaration on behalf of Respondent
`
`5.
`
`in the Application:
`
`If the applicant is filing the application based on an intent to use the mark in
`commerce under 15 U.S.C. § 1051(b), § 1126(d), and/or § 1126(e):
`
`
`• The signatory believes that the applicant is entitled to use the mark in
`commerce;
`• The applicant has a bona fide intention to use the mark in commerce on or
`in connection with the goods/services in the application; and
`• To the best of the signatory's knowledge and belief, the facts recited in the
`application are accurate.
`
`
`2
`
`
`
`
`
`

`

`• To the best of the signatory's knowledge and belief, no other persons,
`except, if applicable, concurrent users, have the right to use the mark in
`commerce, either in the identical form or in such near resemblance as to
`be likely, when used on or in connection with the goods/services of such
`other persons, to cause confusion or mistake, or to deceive.
`• To the best of the signatory's knowledge, information, and belief, formed
`after an inquiry reasonable under the circumstances, the allegations and
`other factual contentions made above have evidentiary support.
`• The signatory being warned that willful false statements and the like are
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and
`that such willful false statements and the like may jeopardize the validity
`of the application or submission or any registration resulting therefrom,
`declares that all statements made of his/her own knowledge are true and
`all statements made on information and belief are believed to be true.
`
`On information and belief, at the time Respondent filed the application, it had no
`
`6.
`
`intent to use the GREEN LION mark in connection with the Class 3 and 5 goods listed in the
`
`application in the United States.
`
`7.
`
`Respondent entered the following statement in its statement of use for each class
`
`of goods or services:
`
`The mark was first used by the applicant, or the applicant's related company,
`licensee, or predecessor in interest at least as early as 09/01/2018, and first used
`in commerce at least as early as 09/01/2018, and is now in use in such commerce.
`
`
`Respondent’s attorney signed the following declaration on behalf of Respondent
`
`8.
`
`in its application.
`
`• The signatory believes that the applicant is the owner of the mark sought to be
`registered. For a trademark or service mark application, the mark is in use in
`commerce on or in connection with all the goods/services in the application or
`notice of allowance, or as subsequently modified.
`• The specimen(s) shows the mark as used on or in connection with the
`goods/services/collective membership organization in commerce.
`
`
`3
`
`
`
`
`
`

`

`• To the best of the signatory's knowledge and belief, no other persons, except,
`if applicable, authorized users, members, and/or concurrent users, have the
`right to use the mark in commerce, either in the identical form or in such near
`resemblance as to be likely, when used on or in connection with the
`goods/services/collective membership organization of such other persons, to
`cause confusion or mistake, or to deceive.
`• To the best of the signatory's knowledge, information, and belief, formed after
`an inquiry reasonable under the circumstances, the allegations and other
`factual contentions made above have evidentiary support.
`• The signatory being warned that willful false statements and the like are
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that
`such willful false statements and the like may jeopardize the validity of the
`application or submission or any registration resulting therefrom, declares that
`all statements made of his/her own knowledge are true and all statements
`made on information and belief are believed to be true.
`
`On information and belief, at the time Respondent filed the statement of use, it
`
`9.
`
`was not using the GREEN LION mark in connection with the Class 3 and 5 goods listed in the
`
`application in the United States.
`
`COUNT I
`LACK OF BONA FIDE INTENT/VOID AB INITIO
`
`Petitioner repeats and realleges the allegations set forth in Paragraphs 1
`
`10.
`
`through 9.
`
`11.
`
`On August 29, 2017, Respondent filed the Application for the mark GREEN
`
`LION for goods in several classes, including Classes 3 and 5, and declared that it had a bona fide
`
`intent to use its mark on all of the goods set forth in the Application, when in fact it did not have
`
`a bona fide intent to use the mark in the United States on the Class 3 and 5 goods identified in
`
`
`
`the Application.
`
`
`
`
`
`4
`
`

`

`12.
`
`U.S. Registration No. 5613111 is void ab initio for the reason that Respondent, as
`
`of the application filing date, did not have a bona fide intent to use the mark in commerce in
`
`connection with any of the Class 3 and 5 goods recited in the Application.
`
`COUNT II
`FRAUD
`
`Petitioner hereby incorporates and realleges the allegations set forth in
`
`13.
`
`Paragraphs 1 through 12.
`
`14.
`
`By filing the false declaration with the application and statement of use in
`
`connection with Registration No. 5613111, and knowing the statements were false with the
`
`intent that the USPTO rely on the false statements to issue the registration, Respondent
`
`committed fraud on the USPTO which fraud has resulted in damage to Petitioner.
`
`COUNT III
`NON-USE/ABANDONMENT
`
`Petitioner hereby incorporates and realleges the allegations set forth in Paragraphs
`
`15.
`
`1 through 14.
`
`16.
`
`Upon information and belief, Respondent has not used the registered mark
`
`GREEN LION in connection with any of the Class 3 and 5 goods covered in the registration. On
`
`information and belief, Respondent has no intent to resume such use.
`
`17.
`
`Based on the non-use of the registered mark with intent not to resume such use,
`
`the registered mark has become abandoned within the meaning of 15 U.S.C. § 1127.
`
`
`
`
`
`
`
`5
`
`

`

`WHEREFORE, Petitioner respectfully requests that this petition for cancellation be
`
`granted and that Registration No. 5613111 be cancelled for the goods in International Classes 3
`
`and 5.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: June 9, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Lion Corporation
`
`
`
`
`
`
`By: Leigh Ann Lindquist
`
`SUGHRUE MION, PLLC
`
`2000 Pennsylvania Avenue NW, Suite 900
`
`Washington, D.C. 20006
`
`Telephone: (202) 663-7409
`
`Attorney for Petitioner, DC bar member
`
`
`
`6
`
`