Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1293363
`
`Filing date:
`
`06/23/2023
`
`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
`
`Wagyulicious
`
`Limited Liability Company
`
`Citizenship
`
`Louisiana
`
`12223 BEACON TREE
`BATON ROUGE, LA 70810
`UNITED STATES
`
`ADAM V. VICKERS
`INTELLECTUAL PROPERTY CONSULTING, LLC
`400 POYDRAS STREET
`SUITE 1400
`NEW ORLEANS, LA 70130
`UNITED STATES
`Primary email: avickers@iplawconsulting.com
`Secondary email(s): creid@iplawconsulting.com
`504-322-7166
`
`Docket no.
`
`2227
`
`Registration subject to cancellation
`
`Registration no.
`
`7026898
`
`Registration date
`
`04/11/2023
`
`Register
`
`Registrant
`
`Principal
`
`Catalpa Lane Farm, LLC
`425 CATALPA LANE
`CHERRY TREE, PA 15824
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 031. First Use: Dec 1, 2020 First Use In Commerce: Dec 1, 2020
`All goods and services in the class are subject to cancellation, namely: livestock, namely, Wagyu
`beef cattle and Wagyu cattle embryos
`
`Grounds for cancellation
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`Priority and likelihood of confusion
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`Trademark Act Sections 14(1) and 2(d)
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`Mark cited by petitioner as basis for cancellation
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`U.S. application
`no.
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`97070135
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`Application date
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`10/12/2021
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`Register
`
`Principal
`
`

`

`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
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`Goods/services
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`WAGYULICIOUS
`
`NONE
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`Class 043. First use: First Use: None First Use In Commerce: None
`Providing of food and drink via a mobile truck; Restaurant services featuring
`hamburgers
`
`Attachments
`
`Petition for Cancellation_Wagyulicious.pdf(190328 bytes )
`EXHIBIT A Catalpa Lane Farms cease and desist letter.pdf(576121 bytes )
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`Signature
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`Name
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`Date
`
`/Caroline Reid/
`
`Caroline Reid
`
`06/23/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Wagyulicious, LLC
` Petitioner,
`
`v.
`
`Catalpa Lane Farm, LLC
` Respondent
`
`
`
`Cancellation No.
`
`
`U.S. Trademark Reg. No. 7026898
`
`
`
`
`PETITION FOR CANCELLATION
`
`
`
`Petitioner, Wagyulicious, LLC (“Wagyulicious” or “Petitioner”), a Louisiana limited
`
`
`
`
`
`
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`liability company with its principal place of business at 12223 Beacon Tree, Baton Rouge,
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`Louisiana 70810, hereby petitions for cancellation of U.S. Registration No. 7026898 for
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`WAGYULICIOUS granted
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`to Respondent, Catalpa Lane Farm, LLC (“Catalpa” or
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`“Respondent”). The grounds for cancellation are as follows:
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`1.
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`Petitioner is the owner of U.S. Trademark Application Serial No. 97070135 seeking
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`registration for WAGYULICIOUS to be used in connection with: “Providing of food and drink
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`via a mobile truck; Restaurant services featuring hamburgers.”
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`2.
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`Petitioner is also the owner of U.S. Trademark Application Serial No. 98056600
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`seeking registration for WAGYULICIOUS to be used in connection with: “Animal semen,
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`namely, Wagyu cattle semen (IC005); Animal embryos, namely, Wagyu cattle embryos (IC031);
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`and Wagyu beef and Wagyu beef products, namely, beef cuts produced from Wagyu cattle
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`(IC029).”
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`3.
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`The mark in Serial No. 97070135 has been refused registration under Section 2(d)
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`of the Trademark Act, on the ground that the mark is likely to cause confusion with the mark of
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`Page 1 of 8
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`

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`U.S. Registration No. 7026898, owned by Respondent for the mark WAGYULICIOUS for:
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`“livestock, namely, Wagyu beef cattle and Wagyu cattle embryos.”
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`4.
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`Wagyu is a Japanese beef cattle breed which has a unique taste and tenderness due
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`to its high marbling or fat content. It is considered a delicacy. The American Wagyu Association,
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`located in Post Falls, ID, registers Wagyu cattle in the U.S.
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`5.
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`Jeremy Free, the owner and manager of Wagyulicious, began farming Wagyu cattle
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`in or about March-April 2018. Mr. Free purchased his first Wagyu embryos in or about March
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`2018. He purchased his first Wagyu animal in or about April 2018.
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`6.
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`Mr. Free completed his first sale of Wagyu bull semen under the brand
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`WAGYULICIOUS on or about June 16, 2018. He sold additional bull semen under the brand
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`WAGYULICIOUS on or about November 5, 2018. Mr. Free and/or Wagyulicious sold bull semen
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`under the brand WAGYULICIOUS at least one or two times per year in 2018, 2019, 2020, 2021,
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`and 2022, which establishes bona fide use of the WAGYULICIOUS mark in the ordinary course
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`of trade. Wagyulicious intends to continue selling bull semen under the brand WAGYULICIOUS
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`for the foreseeable future.
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`7.
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`Mr. Free and/or Wagyulicious promoted the mark WAGYULICIOUS to their
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`customers on all sales of bull semen, and they included the WAGYULICIOUS brand on invoices
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`for the same. Mr. Free and/or Wagyulicious also provided information related to the lineage of the
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`animal donor with all sales. The information Mr. Free and/or Wagyulicious provided their
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`customers allowed them to verify that the animal donor was a genuine Wagyu animal.
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`8.
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`Mr. Free also sold embryos under the brand WAGYULICIOUS. His first sale of
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`embryos was on or about November 5, 2018. Mr. Free sold two embryos under the brand
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`WAGYULICIOUS in 2019. Wagyulicious sold two more in 2021. Mr. Free’s and Wagyulicious’s
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`Page 2 of 8
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`

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`embryo sales establish bona fide use of the WAGYULICIOUS mark in the ordinary course of
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`trade. Wagyulicious
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`intends
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`to continue selling Wagyu embryos under
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`the brand
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`WAGYULICIOUS for the foreseeable future.
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`9.
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`Mr. Free and/or Wagyulicious promoted the mark WAGYULICIOUS to their
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`customers on all sales of embryos, and their included the WAGYULICIOUS brand on his invoices
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`for the same. Mr. Free and/or Wagyulicious also provided information related to the lineage of the
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`animal donor with all sales. The information Mr. Free and/or Wagyulicious provided their
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`customers allowed them to verify that the animal donor was a genuine Wagyu animal.
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`10. Mr. Free began selling butchered, packaged Wagyu beef cuts under the brand
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`WAGYULICIOUS on or about November 11, 2020. Mr. Free and/or Wagyulicious has continued
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`to sell packaged Wagyu beef cuts under the brand WAGYULICIOUS on a regular, continuous
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`basis since November 11, 2020.
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`11. Mr. Free registered Petitioner Wagyulicious, LLC, with the Louisiana Secretary of
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`State on or about January 28, 2021. Mr. Free has assigned his rights in WAGYULICIOUS to
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`Wagyulicious, and he continues to operate his Wagyu business through Wagyulicious.
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`12. Wagyulicious
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`leased a Wagyu bull
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`to a
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`third party under
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`the brand
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`WAGYULICIOUS from in or about December 2022 through February 2023. Wagyulicious also
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`works with other farmers in embryo and heifer exchanges under the brand WAGYULICIOUS.
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`13. Wagyulicious first started its pop-up food truck business on or about September 10,
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`2021, operating under the brand WAGYULICIOUS. Wagyulicious sells a variety of made-to-order
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`foods such as hamburgers and related menu items. Wagyulicious operates its food truck a few
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`times per month throughout the year. It has operated continuously since September 2021.
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`Page 3 of 8
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`

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`14.
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`On June 4, 2021, without Wagyulicious’s knowledge or consent, Catalpa filed the
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`following:
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`a. United States Trademark Application Ser. No. 90754493
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`to
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`register
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`WAGYULICIOUS, asserting intent-to-use under Section 1B, in IC31 for:
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`“livestock, namely, Wagyu beef cattle and Wagyu cattle embryos” (the “First
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`Catalpa Application”).
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`b. United States Trademark Application Ser. No. 90754496
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`to
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`register
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`WAGYULICIOUS, asserting intent-to-use under Section 1B, in IC29 for: “Wagyu
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`beef and Wagyu beef products, namely, beef steaks, ribeye steaks, t-bone steaks,
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`sirloin steaks, filet mignon steaks, tri-tip steaks, beef chuck roast, beef short ribs,
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`ground beef, and beef brisket; organic grass feed beef and products, namely, beef
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`steaks, ribeye steaks, t-bone steaks, sirloin steaks, filet mignon steaks, tri-tip steaks,
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`beef chuck roast, beef short ribs, ground beef, and beef brisket; dried meat;
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`processed meat; prepared meat; steaks in the nature of steaks of meat; beef steaks;
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`beef slices; beef; beef patties; beef burgers in the nature of beef burger patties;
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`ground burger in the nature of ground burger patties; bones in the nature of bones
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`for making soup; organic beef bones; bone marrow for food; organic bone marrow
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`for food; all the foregoing produced from Wagyu cattle” (the “Second Catalpa
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`Application”).
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`15.
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`On October 12, 2021, with no knowledge of Catalpa’s pending trademark
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`applications, Wagyulicious filed United States Trademark Application Ser. No. 97070135 to
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`register WAGYULICIOUS, asserting intent-to-use under Section 1B, in IC43 for: “Providing of
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`Page 4 of 8
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`food and drink via a mobile truck; Restaurant services featuring hamburgers” (the “Petitioner’s
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`First Application”). 1
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`16.
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`On March 30, 2022, Catalpa’s Second Application was published for opposition.
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`Wagyulicious had no knowledge of Catalpa’s Second Application at this time.
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`17.
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`On April 19, 2022, Catalpa’s First Application was published for opposition.
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`Wagyulicious had no knowledge of Catalpa’s First Application at this time.
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`18.
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`On June 14, 2022, the Examiner issued Notices of Allowance for Catalpa’s First
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`Application and Catalpa’s Second Application. Wagyulicious was not aware of Catalpa’s First or
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`Second Application at this time.
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`19.
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`On July 26, 2022, the trademark Examiner for Petitioner’s First Application issued
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`a Suspension Letter, which indicated a potential likelihood of confusion between the parties’ marks
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`and cited Catalpa’s First and Second Applications.
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`20.
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`On February 8, 2023, Catalpa’s counsel sent Mr. Free a cease-and-desist letter in
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`which he demanded that Mr. Free and Wagyulicious:
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`a. Cease and desist all use of WAGYULICIOUS and expressly abandon Petitioner’s
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`First Application;
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`b. Change the Wagyulicious entity name, remove the term WAGYULICIOUS from
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`the name, or reform the company under a different name; and
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`c. Confirm in writing that they will not use or seek to register any names or marks that
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`infringe Catalpa’s marks.
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`(Catalpa Letter, February 8, 2023, attached as Exhibit “A”).
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`21.
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`Catalpa’s summary bases for its demands were:
`
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`1 Wagyulicious filed Petitioner’s First Application pro se and without the advice of counsel.
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`Page 5 of 8
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`a. Senior use of WAGYULICIOUS vis-à-vis Catalpa’s First and Second
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`Applications; and
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`b. “a real potential for confusion or mistake” between the companies.
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`(Exh. A).
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`22.
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`On April 11, 2023, Catalpa’s First Application matured into Registration No.
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`7026898.
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`23.
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`On June 17, 2023, the Examiner issued a Notice of Acceptance of Statement of Use
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`for Catalpa’s Second Application, indicating “[t]he mark will now register and the registration
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`certificate will issue in due course barring any extraordinary circumstances.”2
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`24.
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`On June 23, 2023, Wagyulicious filed United States Trademark Application Ser.
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`No. 98056600 to register WAGYULICIOUS in IC005 for: “Animal semen, namely, Wagyu cattle
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`semen” (date of first use: June 16, 2018); IC031 for: “Animal embryos, namely, Wagyu cattle
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`embryos” (date of first use: November 5, 2018); and IC029 for: “Wagyu beef and Wagyu beef
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`products, namely, beef cuts produced from Wagyu cattle” (date of first use: November 11, 2020)
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`(“Petitioner’s Second Application”).
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`25.
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`The parties’ marks are identical: WAGYULICIOUS.
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`26.
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`The parties’ goods and services are practically identical regarding packaged Wagyu
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`beef cuts and genetic goods and services. Wagyulicious uses its mark for food truck and restaurant
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`services, but Catalpa does not.
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`27.
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`The similarities in the parties’ marks and goods/services are likely to cause
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`confusion among consumers. Catalpa admitted this fact. (Exh. A).
`
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`2 Wagyulicious objects to Catalpa’s Second Application, intends to file a petition to cancel the imminent
`registration born from Catalpa’s Second Application, and move the Board to consolidate the cases.
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`Page 6 of 8
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`28.
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`Consumers are likely to believe that Catalpa’s services are licensed, approved,
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`sponsored by, or somehow otherwise affiliated with Wagyulicious.
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`29.
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`Such confusion is and will be extremely damaging to Wagyulicious.
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`30.
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`The registration of Catalpa’s mark has granted Catalpa rights to which it is not
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`entitled and would be inconsistent with the prior and established rights of Wagyulicious in its
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`WAGYULICIOUS mark.
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`31.
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`Catalpa’s mark
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`is
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`likely
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`to dilute
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`the distinctiveness of Wagyulicious’
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`WAGYULICIOUS mark, by blurring the considerable source-identifying power of Wagyulicious’
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`WAGYULICIOUS mark.
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`32.
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`Such dilution is and will be extremely damaging to Wagyulicious.
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`
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`WHEREFORE, Wagyulicious LLC, prays for cancellation of United States Trademark
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`Registration No. 7026898, and also requests that it be granted such further relief as the Trademark
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`Trial and Appeal Board may deem necessary and just.
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`
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`Dated: June 23, 2023
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`Respectfully submitted,
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`
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`
`
` /Adam V. Vickers/
`Adam V. Vickers, LA Bar No. 34992
`INTELLECTUAL PROPERTY CONSULTING, LLC
`400 Poydras St., Suite 1400
`New Orleans, Louisiana 70130
`Phone: (504) 322.7166
`Fax: (504) 322.7184
`avickers@iplawconsulting.com
`
`
`ATTORNEY FOR WAGYULICIOUS LLC
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`Page 7 of 8
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`
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`I certify that a true and complete copy of the above Petition for Cancellation has been
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`CERTIFICATE OF SERVICE
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`served on Catalpa Lane Farm, LLC by emailing and mailing a copy on June 23, 2023, via U.S.
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`Priority Mail, postage prepaid to:
`
`
`
`Catalpa Lane Farm, LLC
`425 Catalpa Lane
`Cherry Tree, PA UNITED STATES 15724
`
`And
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`April L. Besl (april.besl@dinsmore.com)
`Michael Frey (michael.frey@dinsmore.com)
`Dinsmore & Shohl, LLP
`255 E. 5th Street
`Suite 1900
`Cincinnati, OH UNITED STATES 45202
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`By: /Adam V. Vickers/
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`Page 8 of 8
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`Exhibit A
`Exhibit A
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`

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`
`
`DINSMORE & SHOHL LLP
`255 East Fifth Street  Suite 1900
`Cincinnati, OH 45202
`www.dinsmore.com
`Michael G. Frey
`(513) 832-5483 (direct)  (513) 977-8141 (fax)
`michael.frey@dinsmore.com
`
`
`February 8, 2023
`
`VIA EMAIL: Jeremyfree81@gmail.com; notifications@trademarkengine.com
`
`
`Mr. Jeremy Free
`Chief Executive Officer
`Wagyulicious LLC
`12223 Beacon Tree
`Baton Rouge, LA 70810
`
`Re: Use of and U.S. Application to Register WAGYULICIOUS Mark
`
`
`Dear Mr. Free:
`
`
`This firm is counsel to Catalpa Lane Farm, LLC (“Catalpa Lane”) in connection
`with intellectual property and brand enforcement matters. Catalpa Lane is a small
`family farm that produces individually packaged beef products sourced from Wagyu
`cattle. It has come to our attention that your company, Wagyulicious LLC (WLLC) has
`applied to register the mark WAGYULICIOUS in connection with “providing of food and
`drink via a mobile truck; restaurant services featuring hamburgers” (see Serial No.
`97/070,135). We further understand that, for a few months in 2022, WLLC operated a
`food truck featuring beef food dishes under the WAGYULICIOUS name.
`
`
`Catalpa Lane is the owner of common law rights in the WAGYULICIOUS mark
`in connection with beef products and cattle. As you are likely aware, our client is also
`the owner of two pending applications to register its WAGYULICIOUS mark, one
`covering Wagyu beef products, and the other covering cattle and cattle embryos (see
`U.S. Serial Nos. 90/754,496 and 90/754,493). Both of these applications were filed in
`June 2021, several months prior to the filing of WLLC’s application to register its claim
`to the WAGYULICIOUS mark. Further, these applications were filed almost a year
`prior to your first use of the WAGYULICIOUS name in connection with an operating
`food truck business.
`
`
`Understandably, Catalpa Lane considers its WAGYULICIOUS brand and mark
`to be valuable assets and an important part of its business efforts. Given that WLLC’s
`mark is identical to our client’s mark, and given that WLLC’s business involved the
`preparation and sale of beef food products, there is a real potential for trademark
`
`

`

`
`
`
`February 8, 2023
`Wagyulicious LLC
`Page 2.
`
`
`conflict here. Consumers could readily perceive or presume a connection between the
`WLLC food truck and our client’s WAGYULICIOUS beef products based on the fact
`that both are operated under the same name. This creates a real potential for confusion
`or mistake between the WLLC name and our client’s mark. And, of course, likelihood
`of confusion or mistake is the heart of trademark infringement.
`
`
`As you know, we are not the only ones who see a potential conflict between
`these two marks. The U.S. Trademark Office has identified our client’s pending
`applications as potential barriers to registration, and has suspended action on the
`WLLC application until our client’s applications have resolved.
`
`
`We trust that you understand the value of trademarks to their owners, as well as
`the need to protect them. Catalpa Lane is naturally concerned about maintaining the
`goodwill that it has fostered in its emerging WAGYULICIOUS brand, and is interested
`in avoiding the possibility of confusion that may arise from WLLC’s use of an identical
`name and mark.
`
`
`Under the circumstances, we must demand that you take the following actions with
`respect to the WAGYULICIOUS name and mark, as well as the use of that mark in
`connection with your business:
`
`
`
`
` cease use of the WAGYULICIOUS name and expressly abandon the
`corresponding federal application for registration of the same;
`file a change of name for the company to remove the term WAGYULICIOUS
`from the name (or, alternatively, reform the company under a different
`name); and
` confirm in writing that WLLC (and/or any successor entities) will not use or
`seek to register any other names, marks, domain names, social media
`handles, slogans or other proprietary designations in connection with its
`products or business efforts that infringe on Catalpa Lane’s marks.
`
`
`
`We also note that is appears that your company temporarily closed operations in
`July 2022. We are not certain when and if you plan to restart operations, but this down
`time for your business may be an excellent opportunity to rebrand. This is particularly
`true as your company appear to only have been out before the public for about four
`months. Rebranding now, before customers become too accustomed to the infringing
`WAGYULICIOUS name, will benefit your business in the long run, as you will be able
`to devote time and energy into developing a unique brand name of your own.
`
`
`

`

`February 8, 2023
`Wagyulicious LLC
`Page 3.
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`We ask that you confirm your intention to comply with the demands set forth
`above within ten (10) business days of the date of this letter. If we do not receive a
`response, you can expect that our client shall take the necessary steps to protect its
`rights in its WAGYULICIOUS brand and mark.
`
`This letter is written without prejudice to our client’s rights and remedies,
`including the right to seek an injunction, disgorgement of profits, and attorneys’ fees, all
`of which are expressly reserved.
`
`We appreciate your cooperation and look forward to your prompt response.
`
`Sincerely,
`
`Michael G. Frey
`
`