Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1154359
`
`Filing date:
`
`08/19/2021
`
`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
`
`Pure Proactive Health
`
`Corporation
`
`Citizenship
`
`Delaware
`
`1 GLENWOOD AVENUE
`RALEIGH, NC 27604
`UNITED STATES
`
`MAULIN V. SHAH
`ENVISION IP LLC
`1345 AVENUE OF THE AMERICAS
`2ND FLOOR
`NEW YORK, NY 10105
`UNITED STATES
`Primary Email: maulin.shah@envisionip.com
`Secondary Email(s): trademarks@envisionip.com
`888-307-6807
`
`Docket Number
`
`Registration Subject to Cancellation
`
`Registration No.
`
`6456090
`
`Registration date
`
`08/17/2021
`
`Registrant
`
`COUNTRY MILE, LLC
`348 STERLING ROAD
`KENILWORTH, IL 60043
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2021/03/11 First Use In Commerce: 2021/03/11
`All goods and services in the class are subject to cancellation, namely: Analgesics; Anti-inflammatory
`and antipyretic preparations; Ibuprofen for use as an oral analgesic; Pharmaceutical preparations,
`namely, an analgesic for humanconsumption taken orally; Oral analgesics; Acetaminophen for relief
`of pain; Preparation for the relief of pain; Anti-inflammatories; preparations for treatingcolds; pain re-
`lievers, namely, non-aspirin; and pain relief medication
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`
`5108062
`
`Application Date
`
`02/05/2016
`
`
`
`ESTTA Tracking number:
`
`ESTTA1154359
`
`Filing date:
`
`08/19/2021
`
`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
`
`Pure Proactive Health
`
`Corporation
`
`Citizenship
`
`Delaware
`
`1 GLENWOOD AVENUE
`RALEIGH, NC 27604
`UNITED STATES
`
`MAULIN V. SHAH
`ENVISION IP LLC
`1345 AVENUE OF THE AMERICAS
`2ND FLOOR
`NEW YORK, NY 10105
`UNITED STATES
`Primary Email: maulin.shah@envisionip.com
`Secondary Email(s): trademarks@envisionip.com
`888-307-6807
`
`Docket Number
`
`Registration Subject to Cancellation
`
`Registration No.
`
`6456090
`
`Registration date
`
`08/17/2021
`
`Registrant
`
`COUNTRY MILE, LLC
`348 STERLING ROAD
`KENILWORTH, IL 60043
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2021/03/11 First Use In Commerce: 2021/03/11
`All goods and services in the class are subject to cancellation, namely: Analgesics; Anti-inflammatory
`and antipyretic preparations; Ibuprofen for use as an oral analgesic; Pharmaceutical preparations,
`namely, an analgesic for humanconsumption taken orally; Oral analgesics; Acetaminophen for relief
`of pain; Preparation for the relief of pain; Anti-inflammatories; preparations for treatingcolds; pain re-
`lievers, namely, non-aspirin; and pain relief medication
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`
`5108062
`
`Application Date
`
`02/05/2016
`
`
`
`No.
`
`Registration Date
`
`12/27/2016
`
`Word Mark
`
`Design Mark
`
`BETR
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 044. First use: First Use: 2016/02/05 First Use In Commerce: 2016/02/05
`Medical and wellness services, namely, providing weight loss program services
`
`U.S. Registration
`No.
`
`5233391
`
`Registration Date
`
`06/27/2017
`
`Word Mark
`
`Design Mark
`
`BETR
`
`Application Date
`
`12/30/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2016/02/05 First Use In Commerce: 2016/02/05
`Computer software for providing health and wellness coaching
`
`U.S. Registration
`No.
`
`5971673
`
`Registration Date
`
`01/28/2020
`
`Word Mark
`
`BETR THERAPEUTICS
`
`Application Date
`
`06/21/2019
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 009. First use: First Use: 2019/06/21 First Use In Commerce: 2019/06/21
`Downloadable computer software for providing health and wellness coaching
`
`86899352#TMSN.png( bytes )
`86861740#TMSN.png( bytes )
`88483952#TMSN.png( bytes )
`Petition.pdf(112374 bytes )
`Exhibits.pdf(1211224 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Maulin V. Shah/
`
`Maulin V. Shah
`
`08/19/2021
`
`
`
`Pure Proactive Health Inc. (d/b/a Betr
`Health), a Delaware Corporation,
`
`
`
`Petitioner,
`
`
`
`
`
`v.
`Country Mile, LLC, an Illinois Limited
`Liability Company,
`
`Registrant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`BETR (Reg. No. 6,456,090)
`International Class 5
`Registration Date: August 17, 2021
`
`
`PETITION TO CANCEL
`
`Pursuant to 15 U.S.C. § 1064 and 37 C.F.R. §§ 2.111(b), Petitioner Pure Proactive
`Health Inc. (d/b/a Betr Health) (“Petitioner”), a Delaware corporation with its principal place of
`
`business at 1 Glenwood Avenue, Raleigh NC 27604, believes it has been and will continue to be
`
`damaged by the registration of the mark BETR, U.S. Trademark Registration No. 6,456,090
`(“Registered Mark”) by Country Mile, LLC (“Registrant”), and hereby petitions the Board to
`
`cancel the same upon the following grounds:
`
`
`
`
`
`FACTUAL ALLEGATIONS
`
`1.
`
`Upon information and belief, Registrant is an Illinois limited liability company
`
`having an address of 348 Sterling Road, Kenilworth, IL 60043.
`
`
`
`2.
`Upon information and belief, Registrant obtained the Registered Mark on the
`Principal Register in connection with “Analgesics; Anti-inflammatory and antipyretic
`
`preparations; Ibuprofen for use as an oral analgesic; Pharmaceutical preparations, namely, an
`
`analgesic for human consumption taken orally; Oral analgesics; Acetaminophen for relief of
`
`pain; Preparation for the relief of pain; Anti-inflammatories; preparations for treating colds; pain
`relievers, namely, non-aspirin; and pain relief medication.” The Registered Mark issued on
`
`August 17, 2021
`
`
`
`1
`
`
`
`
`
`3.
`
`According to the U.S. Patent and Trademark Office records, Registrant currently
`
`owns the Registered Mark.
`
`
`
`
`
`4.
`
`Upon information and belief, Registrant’s earliest date of constructive or actual
`
`use of the mark BETR upon which it can rely is no earlier than March 11, 2021, the claimed date
`
`of first use specified for the Registered Mark.
`
`
`
`5.
`
`Upon information and belief, Registrant owns or operates the website located at
`
`<www.betrremedies.com> where Registrant offers for sale various pain relief, allergy, and
`
`sleeping pills. See Exhibit A.
`
`
`
`6.
`
`Upon information and belief, Registrant advertises and promotes its goods in the
`
`United States and world-wide through its website.
`
`
`
`7.
`
` Since at least as early as 2016, Petitioner adopted and began to use the BETR
`
`trademark in connection with its proprietary medical grade nutritional supplements which are
`
`and have been marketed continuously in commerce throughout the United States.
`
`
`
`8.
`
` Petitioner’s nutritional supplements are marketed and advertised to alleviate pain
`
`and chronic illness, and to improve sleep.
`
`
`
`9.
`Petitioner has maintained a website located at <www.betrhealth.com> since at
`least 2016 where consumers can purchase Petitioner’s various services and goods, including
`Petitioner’s nutritional supplements. See Exhibit B.
`
`
`
`10.
`
`Petitioner owns the following U.S. trademark registrations which incorporates its
`
`BETR trademark:
`
`a. BETR, U.S. Trademark Registration No. 5,108,062, registered on
`December 27, 2016 for use in connection with “Medical and wellness
`services, namely, providing weight loss program services.”
`
`
`
`2
`
`
`
`b. BETR, U.S. Trademark Registration No. 5,233,391, registered on June 27,
`2017 for use in connection with “Computer software for providing health
`and wellness coaching.”
`c. BETR THERAPEUTICS, U.S. Trademark Registration No. 5,971,673,
`registered on January 28, 2020 for use in connection with “Downloadable
`computer software for providing health and wellness coaching.”
`
`
`
`
`
`11.
`
` Petitioner has expended substantial financial resources in marketing, advertising,
`
`and promoting its BETR trademark in connection with its nutritional supplements in interstate
`
`commerce in the United States.
`
`
`
`12.
`
`Petition has enjoyed substantial revenue derived from the sale of its nutritional
`
`supplements in the United States under the BETR trademark.
`
`
`
`13.
` By reason of the extensive marketing, advertising, and promotion of its
`nutritional supplements under the BETR trademark, and the high quality of Petitioner’s
`
`nutritional supplements, the BETR trademark represents extremely valuable goodwill associated
`
`with Petitioner long prior to March 11, 2021, the date of first use specified for the Registered
`
`Mark.
`
`
`
`14.
`
`As a result of Petitioner’s use of its BETR trademark, the trademark has become
`
`uniquely associated with Petitioner, and such goods branded with the BETR trademark are
`
`immediately identified by consumers as originating from Petitioner.
`
`
`
`15.
`
`Immediately upon learning of Registrant’s pain relief, allergy, and sleeping pills
`
`sold under the mark BETR, Petitioner sent a cease-and-desist notice on April 12, 2021 to Charles
`
`Brown of the CorpLaw Intellectual Property Law Firm, the attorney of record for the Registered
`
`Mark.
`
`
`
`
`
`3
`
`
`
`16.
`
`Petitioner communicated with Mr. Brown until May 18, 2021, where Petitioner
`
`reiterated that Registrant cease use of the BETR trademark. Registrant however refused to
`comply with Petitioner’s requests.
`
`
`
`17.
`
`Petitioner.
`
`
`
`
`
` Registrant’s use of the mark BETR is without the consent or permission of
`
`On information and belief, Registrant’s use of the mark BETR has been with
`18.
`knowledge of Petitioner’s prior use of its BETR trademark.
`
`
`
`19.
`
`
`
`
`
`As such, Petitioner has been forced to file this Petition to Cancel.
`
`COUNT I: LIKELIHOOD OF CONFUSION
`
`20.
`
` Petitioner hereby incorporates the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`
`
`21.
`
`On information and belief, the pain relief goods specified for the Registered Mark
`
`are substantially similar to the nutritional supplements in connection with which Petitioner uses
`its BETR trademark. Both parties’ respective goods are marketed to provide pain relief and
`
`improve sleep.
`
`
`
`22.
`
`The Registered Mark is confusingly similar to Registrant’s common law BETR
`
`trademark in connection with nutritional supplements.
`
`
`
`The literal element of Registrant’s BETR mark is identical to the literal element
`23.
`of Petitioner’s BETR trademark.
`
`
`
`
`
`
`
`4
`
`
`
`24.
`On information and belief, the pain relief goods specified for the Registered Mark
`are within the natural zone of expansion of Petitioner’s U.S. T.M. Registration No. 5,108,062 for
`BETR for use in connection with “medical and wellness services”.
`
`
`
`25.
`On information and belief, the pain relief goods specified for the Registered Mark
`are within the natural zone of expansion of Petitioner’s U.S. T.M. Registration No. 5,233,391 for
`BETR for use in connection with “computer software for providing health and wellness
`coaching.”
`
`
`
`26.
`On information and belief, the pain relief goods specified for the Registered Mark
`are within the natural zone of expansion of Petitioner’s U.S. T.M. Registration No. 5,971,673 for
`BETR THERAPEUTICS for use in connection with “computer software for providing health and
`wellness coaching.”
`
`
`
`27.
`
`On information and belief, the consumers to whom Registrant offers and markets
`
`its pain relief goods are the same type and class of consumers that Petitioner offers and markets
`
`its nutritional supplements to in connection with the BETR trademark. Such consumers are those
`
`seeking means to alleviate pain and chronic illness, as well as means to improve sleep.
`
`
`
`28.
`
`On information and belief, the channel of trade, namely, the Internet, used by
`
`Registrant to offer and market its pain relief goods in connection with the mark BETR is
`
`identical to the channel of trade used by the Petitioner to offer and market its nutritional
`
`supplements in connection with the BETR trademark.
`
`
`
`
`
`29.
`
`COUNT II: PRIORITY
`
` Petitioner hereby incorporates the allegations contained in the preceding
`
`paragraphs as though fully set forth herein.
`
`
`
`
`
`5
`
`
`
`30.
`
`Registrant’s claimed date of first use for the Registered Mark is March 11, 2021,
`
`more than six years after Petitioner first used its BETR trademark in commerce at least as early
`
`as February 5, 2016.
`
`
`
`31.
`
`Petitioner has continuously used its BETR trademark in connection with its
`
`nutritional supplements to provide pain relief and improve sleep in interstate commerce in the
`
`United States since as early as February 5, 2016.
`
`
`
`32.
`
`Petitioner has continuously used its BETR trademark in connection with the
`
`services listed in its U.S. T.M. Registration No. 5,108,062 and U.S. T.M. Registration No.
`
`5,233,391 in interstate commerce in the United States since as early as February 5, 2016.
`
`
`
`Considering Petitioner’s priority of use, the identical nature of the Registered
`33.
`Mark and Petitioner’s trademark, and the identical or substantially similar nature of the parties’
`
`respective goods, Petitioner believes that is has been and will likely continue to be damaged by
`
`the continued existence of the Registered Mark. In particular, the Registered Mark so resembles
`Petitioner’s trademark that the consuming public is likely to be confused, mistaken, or deceived
`into believing that Registrant’s goods originate from Petitioner or are in some way related to,
`
`associated with, or sponsored by Petitioner.
`
`
`
`34.
`
`Accordingly, Petitioner’s continued and legal use of its BETR trademark will be
`
`impaired by the continued existence of the Registered Mark. The Registered Mark should
`
`therefore be canceled pursuant to 15 U.S.C. §§ 1052 and 1064 et seq., as amended by the
`
`Trademark Act of 1999.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`Relief Requested
`
`WHEREFORE, Petitioner prays that this Petition to Cancel be sustained and granted in
`
`favor of Petitioner and that U.S. Trademark Registration No. 6,456,090 be canceled and removed
`
`from the Principal Register.
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`Maulin V. Shah, Attorney for Petitioner
`Envision IP, LLC
`1345 Avenue of the Americas
`2nd Floor
`New York, NY 10105
`Telephone: (310) 499-8624
`Fax: (646) 200-5227
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: August 19, 2021
`
`7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 19, 2021, a true and complete copy of the foregoing
`
`
`
`
`
`PETITION TO CANCEL was served via email and U.S. First Call mail, postage prepaid and
`
`properly addressed to the attorney of record for the Registered Mark:
`
`
`
`Charles B. Brown
`CORPLAW ASSOCIATES
`400 Central Avenue, Suite 150
`Northfield, Illinois United States 60092
`charlie@corplaw.com, admin@corplaw.com, trademarks@corplaw.com
`
`
`
`
`
`
`Maulin V. Shah, Attorney for Petitioner
`Envision IP, LLC
`1345 Avenue of the Americas
`2nd Floor
`New York, NY 10105
`Telephone: (310) 499-8624
`Fax: (646) 200-5227
`
`
`
`
`
`
`
`
`
`8
`
`
`
`Products
`
` EXHIBIT A
`
`8/19/21, 1:17 PM
`
`
`ShopShop AboutAbout
`
`BlogBlog
`
`
`
` CartCart 00
`
`B E T R / A L L
`
`Feel Betr
`
`We Want You to Always Feel Your Best
`
`
`
` AllergyAllergy PainPain SleepSleep
`
`
`
`AllAll
`
`B E T R B U N D L E S
`
`Allergy ReliefAllergy Relief
`
`
`EssentialsEssentials
`
`
`
`Pain Relief EssentialsPain Relief Essentials
`
`
`
`3 Products: Compare to Tylenol®3 Products: Compare to Tylenol®
`
`https://betrremedies.com/collections/all
`
`Page 1 of 5
`
`
`
`Products
`
`8/19/21, 1:17 PM
`
`3 Products: Compare to Zyrtec®,3 Products: Compare to Zyrtec®,
`
`
`Flonase®, & Benadryl®Flonase®, & Benadryl®
`
`
`
`$45.37$45.37
`
`
`
`Extra Strength, Advil®, & ZzzQuil®Extra Strength, Advil®, & ZzzQuil®
`
`
`
`$24.52$24.52
`
`A L L B E T R P R O D U C T S
`
`All Day AllergyAll Day Allergy
`
`
`ReliefRelief
`
`Compare to Zyrtec® |Compare to Zyrtec® |
`
`
`Cetirizine HCL, 10mgCetirizine HCL, 10mg
`
`
`
`$20.99$20.99
`
`Allergy ReliefAllergy Relief
`
`
`Nasal SprayNasal Spray
`
`NighttimeNighttime
`
`
`Allergy ReliefAllergy Relief
`
`Compare to Flonase® |Compare to Flonase® |
`
`
`Fluticasone PropionateFluticasone Propionate
`
`50mcg50mcg
`
`Compare to Benadryl® |Compare to Benadryl® |
`
`
`Diphenhydramine HCI,Diphenhydramine HCI,
`
`25mg25mg
`
`
`
`$22.46$22.46
`
`
`
`$6.96$6.96
`
`
`
`Pain ReliefPain Relief
`
`
`
`Headache PainHeadache Pain
`
`
`
`Pain ReliefPain Relief
`
`
`
`Compare to Tylenol®Compare to Tylenol®
`
`https://betrremedies.com/collections/all
`
`Page 2 of 5
`
`
`
`Products
`
`8/19/21, 1:17 PM
`
`Extra Strength |Extra Strength |
`
`
`Acetaminophen, 500mgAcetaminophen, 500mg
`
`
`
`ReliefRelief
`
`
`
`$9.39$9.39
`
`Compare to Aleve® |Compare to Aleve® |
`
`
`Naproxen Sodium,Naproxen Sodium,
`
`220mg220mg
`
`
`
`$6.15$6.15
`
`
`
`(NSAID)(NSAID)
`
`Compare to Advil® |Compare to Advil® |
`
`
`Ibuprofen, 200mgIbuprofen, 200mg
`
`
`
`$8.36$8.36
`
`
`
`Sleep AidSleep Aid
`
`Compare to ZzzQuil® |Compare to ZzzQuil® |
`
`
`Diphenhydramine HCI,Diphenhydramine HCI,
`
`25mg25mg
`
`
`
`$9.49$9.49
`
`
`
`How Betr WorksHow Betr Works
`
`S H O P
`
`G E T R E L I E F
`
`G I VE B A C K
`
`https://betrremedies.com/collections/all
`
`Page 3 of 5
`
`
`
`Products
`
`8/19/21, 1:17 PM
`
`S H O P
`O N L I N E
`
`Shop expertly
`curated OTC
`remedies
`online.
`
`G E T R E L I E F
`
`G I VE B A C K
`
`Get relief with
`Betr remedies
`delivered
`conveniently to
`your door.
`
`Every bundle
`you buy
`provides a
`prescription
`medication to
`someone in
`need.
`
`1 in 4 Americans can't
`afford the medicine they
`need.
`
`We imagined a better way. That’s why every
`single purchase makes a positive impact on
`medication inequity and provides access to free
`medicine.
`
`A Betr Way
`
`On a recent trip to the store,
`
`https://betrremedies.com/collections/all
`
`Page 4 of 5
`
`
`
`Products
`
`8/19/21, 1:17 PM
`
`we noticed that self-care and
`healthcare have become super
`complicated. Our headache
`started to give us a headache.
`So we began to daydream
`about better ways to feel
`better.
`
`
`
`Learn More Learn More
`
`S H O P
`
`A B O U T
`
`AllAll
`
`
`
`StoryStory
`
`
`
`AllergyAllergy
`
`
`
`FAQsFAQs
`
`Sign up forSign up for
`
`
`updates andupdates and
`
`promotionspromotions
`
`PainPain
`
`
`
`Contact UsContact Us
`
`Enter Email
`
`
`
`SleepSleep
`
`PrivacyPrivacy
`
`
`PolicyPolicy
`
`Terms ofTerms of
`
`
`ServiceService
`
`Help
`
`https://betrremedies.com/collections/all
`
`Page 5 of 5
`
`
`
`EXHIBIT B
`
`ANNEX A
`
` Subscribe & Save (25%):
`DELIVER EVERY 30 DAYS
` One-time purchase:
`
`$59.25
`$79.00
`
` Add T(cid:80) Ca(cid:83)(cid:85)
`
`SUBSCRIPTION COMES
`WITH FREE SHIPPING
`
`
`
`Achieve and maintain (cid:92)our goals more effectivel(cid:92) with our
`proprietar(cid:92) blend of clean plant-based supplements.
`
`Our formula delivers nutrients in their most
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`Add(cid:83)(cid:70)(cid:84)(cid:84):
`1 G(cid:77)(cid:70)(cid:79)(cid:88)(cid:80)(cid:80)(cid:69) A(cid:87)(cid:70)(cid:79)(cid:86)(cid:70) #5,
`Ra(cid:77)(cid:70)(cid:74)(cid:72)(cid:73), NC 27603
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