Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1213652
`
`Filing date:
`
`06/06/2022
`
`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
`
`Bonnie & Claus Inc.
`
`Corporation
`
`Citizenship
`
`Nevada
`
`3960 HOWARD HUGHES PARKWAY
`500
`LAS VEGAS, NV 89169
`UNITED STATES
`
`DAVID MAKOUS
`FISHERBROYLES LLP
`9350 WILSHIRE BLVD.
`203
`BEVERLY HILLS, CA 90212
`UNITED STATES
`Primary email: david.makous@fisherbroyles.com
`Secondary email(s): docketing@fisherbroyles.com
`3109743224
`
`Docket no.
`
`Registration subject to cancellation
`
`Registration no.
`
`6479602
`
`Registration date
`
`09/07/2021
`
`Register
`
`Registrant
`
`Principal
`
`Vertical Wellness, Inc.
`29800 AGOURA RD., SUITE 108
`AGOURA HILLS, CA 92075
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 003. First Use: Jun 19, 2021 First Use In Commerce: Jun 19, 2021
`All goods and services in the class are subject to cancellation, namely: Non-medicated body care
`balms and non-medicated body lotion, all the foregoing containing hemp with only naturally occurring
`CBD and less than 0.3% THC; non-medicated body care balms and non-medicated body lotion, none
`of the foregoing containing cannabis products
`
`Grounds for cancellation
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Abandonment
`
`Trademark Act Section 14(3)
`
`Registrant not rightful owner of mark for identi-
`
`Trademark Act Sections 14(1) and 1
`
`

`

`fied goods or services
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`Attachments
`
`Neutrate - Petition to Cancel .pdf(144097 bytes )
`
`Signature
`
`/David N. Makous/
`
`Name
`
`Date
`
`David Makous
`
`06/06/2022
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BONNIE & CLAUS INC, a Nevada
`corporation,
`
`
`Petitioner.
`
`
` v.
`
`Vertical Wellness Inc., a Delaware
`corporation
`
`
`Registrant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation Proceeding
`
`
`PETITION TO CANCEL REG.
`
`NO. 6479602
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner Bonnie & Claus Inc. (“BC”) files this petition to cancel U.S.
`Registration No. 6479602 (‘602’) for the mark Neutrate.
`
`
`
`CLAIMS FOR CANCELLATION
`
`
`
`1.
`
`Petitioner Bonnie & Claus, Inc. (“Petitioner”) is a corporation duly
`
`organized and existing under the laws of Nevada and having a principal place of
`
`business in Las Vegas.
`
`2.
`
`Upon information and belief, Registrant is a corporation organized
`
`and existing under the laws of Delaware and having a principal place of business at
`
`Agoura Hills, California.
`
`3.
`
`On June 2, 2020, Petitioner filed an intent-to-use application with the
`
`USPTO for the registration of the mark Nutrate (Serial No. 88943806), for use in
`
`
`
`1
`
`

`

`connection with the following goods: “IC 003. US 001 004 006 050 051 052. G &
`
`S: Cosmetics; Personal skin care products, namely, soaps, moisturizing creams,
`
`lotions, non-medicated serums; anti-wrinkle creams, brightening creams, skin
`
`toners, cleansing and moisturizing facial beauty packs and masks, exfoliating skin
`
`scrubs for face and body, skin spot remover, eye cream, eye make-up remover,
`
`anti-aging creams and masks; pore minimizing creams and masks; sunscreen
`
`lotions, after-sun creams and lotions; Perfume, Cologne, Bath Oil, Eye Shadow,
`
`Eye Color Pencil, Brow Color Pencil, Skin Conditioning Cream, Mascara, Blusher,
`
`Face and Body Powder, Foundation Makeup, Skin Moisturizers, Lipstick, Lip
`
`Gloss, Lip Contour Pencil, Nail Enamel, Nail Polish, Non-medicated Soap for
`
`Personal Use, Night Cream, Hand Cream, Cosmetic Masques, and Makeup
`
`Remover, cologne spray, body cream, body lotion, bath and shower gel, bath soap,
`
`Eau de toilette, skin moisturizer, body massage oil, body wash, skin soap,
`deodorant for personal use, hair conditioners, hair shampoo, hair gel”
`The registration of BC’s Nutrate mark is blocked under 2(d) by
`4.
`Registrant’s mark, U.S. Registration No. 6479602 for the mark Neutrate for “IC
`
`003. US 001 004 006 050 051 052. G & S: Non-medicated body care balms and
`
`non-medicated body lotion, all the foregoing containing hemp with only naturally
`
`occurring CBD and less than 0.3% THC; non-medicated body care balms and non-
`
`medicated body lotion, none of the foregoing containing cannabis products. FIRST
`USE: 20210619. FIRST USE IN COMMERCE: 20210619”
`
`5.
`Petitioner believes that it has been and will continue to be damaged by
`Registrant’s registration. Therefore, in accordance with 37 C.F.R. § 2.111(b),
`
`Petitioner hereby petitions the Board to cancel the Neutrate registration
`
`6.
`
`The grounds for cancellation are legion. Essentially the PTO is limited
`
`in its review of statements made by the Applicant during the initial prosecution and
`
`issuance of a trademark registration, as well as after issuance, and has no means to
`
`
`
`2
`
`

`

`ascertain their accuracy. This hinges primarily on the inherent and express
`requirements that the Applicant/Registrant act in “good faith” and make truthful
`
`statements in all matters before the PTO. As a consequence of this Registrants are
`
`granted exclusive, exclusionary, and preemptive rights in a trademark upon its
`
`registration and subsequent maintenance. These requirements are manifest in the
`
`four primary actions of an Applicant/Registrant in its representations made to the
`
`PTO in trademark prosecution and maintenance:
`
`
`
`
`
`
`
`
`
`7.
`
`a.
`
`b.
`
`c.
`
`Truth of the Facts Recited in any Declaration or Filing;
`
`Ownership or Entitlement to use of the mark;
`
`Use in commerce of the mark; and
`
`d.
`Averments Based on Personal Knowledge.
`Under 15 USC 1127 the term “use in commerce” has a strict meaning
`
`that there has been the bona fide use of a mark in the ordinary course of trade, and
`
`not made merely to reserve a right in a mark. For purposes of this chapter, a mark
`shall be deemed to be in use in commerce—
`(1) on goods when—
`
`(A) it is placed in any manner on the goods or their containers or the
`
`displays associated therewith or on the tags or labels affixed thereto, or if the
`
`nature of the goods makes such placement impracticable, then on documents
`
`associated with the goods or their sale, and
`
`(B) the goods are sold or transported in commerce.
`“False” and “fraud” are distinguished throughout the law. “False”
`10.
`simply means untrue, while “fraud” requires the additional element of reckless
`
`disregard when made in the context of trademark prosecution. Under 15 USC
`
`1120, usage of any false or fraudulent means to obtain a registration subjects the
`
`Registrant to damages by any person injured thereby, including Petitioner, and
`
`therefore usage of a false means subjects the Registrant to a finding of damage
`
`
`
`3
`
`

`

`caused to another, which might be deemed also to be finding of unclean hands,
`
`both rendering any pertinent registration to be void.
`
`12. A registered mark, may be cancelled as provided by 15 USC 1115
`
`based on any legal or equitable grounds for which they could be refused including
`
`but not limited to that the registration is not owned by the Registrant, was obtained
`
`fraudulently, contains falsities, has become abandoned, fraud on the PTO, or that
`
`the registration is barred for failure to act in good faith.
`
`
`
`13. On August 23, 2019, Registrant filed an intent to use application to
`obtain registration of the mark Neutrate (“Registration ‘602”), for use in
`connection with the following goods (the “Claimed ‘602 Goods”):
`
`
`
`Pre/Post Workout supplements, herbal supplements, powders and
`
`vitamins, pain relief and recovery supplements, balms, lotions all the
`
`foregoing containing hemp with only naturally occurring CBD;
`
`Pre/Post Workout supplements, herbal supplements, powders and
`
`vitamins, pain relief and recovery supplements, balms, lotions
`
`
`
`14. The Application contained a declaration signed claiming that:
`
`
`
`o The Applicant believes that the applicant is entitled to use the mark in
`
`commerce;
`
`o 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
`
`o To the best of the signatory's knowledge and belief, the facts recited in
`
`the application are accurate.
`• 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
`
`
`
`4
`
`

`

`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.”
`
`
`
`15. On October 16, 2020, the Registrant changed the goods ID to read:
`“Class 3 Non-medicated body care balms and non-medicated body lotion, all
`
`the foregoing containing hemp with only naturally occurring CBD and less
`
`than 0.3% THC; non-medicated body care balms and non-medicated body
`lotion, none of the foregoing containing cannabis products.”
`
`
`
`16.
` On June 22, 2021 Registrant filed a Statement of Use claiming that
`the mark Neutrate was “in use in commerce on or in connection with all of the
`goods/services…” and that it was first used by Registrant on June 19, 2021.
`
`
`
`17. The Registrant stated under penalty that:
`
`o the applicant is the owner of the mark sought to be registered.
`
`
`
`5
`
`

`

`o 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.
`
`o The specimen(s) shows the mark as used on or in connection with the
`
`goods/services/collective membership organization in commerce.
`
`o 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.
`
`o 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.
`
`o 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.”
`
`18. These were material representations made to the PTO to obtain
`
`registration. They were false because the Registrant was not the owner of the
`
`Neutrate mark, the specimens were of old goods not originating from VW but were
`
`created, manufactured and distributed from Europe by SwissX, the foreign
`
`
`
`6
`
`

`

`originator, manufacturer and distributor of Neutrate. Further the mark was not
`
`used with all of the goods identified in the registration. Hence the above
`
`declarations were false when filed by the non-owner VW, and they did not act in
`
`good faith, and were made with the obvious intent to induce the PTO to issue a
`
`registration, and were made with reckless disregard with the intent to induce the
`
`PTO to issue a registration, committing fraud on the patent office.
`
`19.
` SwissX has abandoned and discontinued use of its mark Neutrate in
`connection with some or all of the Claimed ‘602 Goods, with intent not to resume
`
`such use.
`
`20. The submission of false statements to the PTO renders this
`
`registration invalid, and is subject to cancellation pursuant to 15 U.S.C. §1064.
`Petitioner is damaged and continues to be damaged by Registrant’s registration, as
`
`listed above. Therefore, based on the above, Petitioner requests the cancellation of
`Registrant’s mark.
`
`
`
`Dated: June 6, 2022
`
`
`
`
`
`Respectfully Submitted,
`
`Fisher Broyles LLP
`
`By: /David N. Makous/
`
`
`
`
`
`
`
`David N. Makous, Cal Bar No. 82409
`
`9350 Wilshire Blvd., No. 203
`
`
`
`Beverly Hills, California 90212_
`
`Attorneys for Bonnie & Claus Inc.
`
`
`
`
`
`
`
`7
`
`
`
`
`
`