throbber
ESTTA Tracking number:
`
`ESTTA1323482
`
`Filing date:
`
`11/20/2023
`
`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
`
`Ember Law, PLLC
`
`Limited Liability Company
`
`Incorporated or
`registered in
`
`Washington
`
`1200 5TH AVENUE, SUITE 1217
`SEATTLE, WA 98101
`UNITED STATES
`
`DELFINA HOMEN
`MILLER NASH LLP
`111 SW 5TH AVENUE, SUITE 3400
`PORTLAND, OR 97204
`UNITED STATES
`Primary email: trademark@millernash.com
`Secondary email(s): delfina.homen@millernash.com,
`robert.cumbow@millernash.com, lisa.motherwell@millernash.com
`5032245858
`
`Docket no.
`
`587810-2100
`
`Registration subject to cancellation
`
`Registration no.
`
`6969393
`
`Registration date
`
`01/31/2023
`
`Register
`
`Registrant
`
`Principal
`
`San Joaquin Valley College, Inc.
`3828 W. CALDWELL AVE
`VISALIA, CA 93277
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 045. First Use: Aug 26, 2022 First Use In Commerce: Aug 26, 2022
`Goods and services in the class that are subject to cancellation: legal services
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`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)
`
`Other
`
`lack of bona fide intent
`
`Mark cited by petitioner as basis for cancellation
`
`

`

`U.S. application
`no.
`
`90304134
`
`Application date
`
`11/06/2020
`
`Register
`
`Principal
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`EMBER
`
`NONE
`
`Class 045. First use: First Use: Mar 4, 2016 First Use In Commerce: Mar 4,
`2016
`Legal services; Providing legal services in the field of Personal Injury; Providing
`legal services in the field of Criminal Law
`
`Attachments
`
`Petition for Partial Cancellation - EMBER EDUCATION 4858-8273-2689 v.
`1.pdf(136908 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Delfina Homen/
`
`Delfina Homen
`
`11/20/2023
`
`

`

`
`
`
`
`
`
`
`69393IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EMBER LAW, PLLC,
`
`
`
`
`
`Petitioner,
`
`v.
`
`SAN JOAQUIN VALLEY COLLEGE,
`INC.,
`
`
`
`Respondent.
`
`Reg. No.: 6,969,393
`
`Mark: EMBER EDUCATION
`
`Class: 45
`
`Cancellation No. ___________
`
`PETITION FOR PARTIAL CANCELLATION
`
`1.
`
`Petitioner Ember Law, PLLC, a Washington professional limited liability
`
`company (“Petitioner”), believes that it is or will be damaged by registration of the trademark
`
`EMBER EDUCATION (“Registrant’s Mark”) that is the subject of U.S. Trademark Reg. No.
`
`6,969,393 (“the ‘393 Registration”), for, among other things, “legal services” in Class 45,
`
`registered January 31, 2023 by San Joaquin Valley College, Inc. (“Registrant”). The application
`
`that matured into the ‘393 Registration was filed November 7, 2018. Petitioner requests partial
`
`cancellation or restriction of the ‘393 Registration pursuant to Section 18 of the Trademark Act,
`
`15 U.S.C. § 1068.
`
`2.
`
`Petitioner is the owner of U.S. Trademark Appl. Ser. No. 90/304,134 (“the ‘134
`
`Application”) for the mark EMBER (“Petitioner’s Mark”) for “Legal services; Providing legal
`
`services in the field of Personal Injury; Providing legal services in the field of Criminal Law” in
`
`Class 45.
`
`3.
`
`The ‘393 Registration has been cited against registration of Petitioner’s Mark
`
`owing to its inclusion of “legal services” in its Class 45 services description, and is therefore
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 1
`
`CANC. NO. ____________
`
`

`

`
`
`
`blocking registration of Petitioner’s Mark.
`
`4.
`
`Petitioner is a boutique civil litigation firm headquartered in Seattle, Washington,
`
`that focuses on the legal needs of individuals, helping them navigate injury claims, insurance
`
`disputes, and criminal matters.
`
`5.
`
`Petitioner has continuously used Petitioner’s Mark in U.S. commerce for “legal
`
`services,” including the specific legal services listed in the ‘134 Application, since at least as
`
`early as March 4, 2016.
`
`6.
`
`The phrase “legal services” is broad, encompassing the legal work performed by a
`
`lawyer (or in some cases, a paralegal) for a client.
`
`7.
`
`Petitioner provides “legal services” because Petitioner is a law firm, employing
`
`attorneys licensed by the State of Washington to provide legal services and a paralegal
`
`competent and capable of providing legal services.
`
`8.
`
`On information and belief, Ember Education uses Registrant’s Mark, its use
`
`inuring to Registrant’s benefit.
`
`9.
`
`According to information on https://embered.com, Ember Education is a shared
`
`services division of Registrant, providing administrative support and business services to the
`
`institutions owned and operated by Registrant, namely, San Joaquin Valley College and
`
`Carrington College.
`
`10.
`
`According to information on https://embered.com, San Joaquin Valley College is
`
`a private college that offers certificates, associate degrees, and bachelor’s degrees in the medical,
`
`business, and technical fields.
`
`11.
`
`According to information on https://embered.com, Carrington College offers
`
`certificates, associate degrees, and bachelor’s degrees in the medical, dental, veterinary, and
`
`industrial trade fields.
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 2
`
`CANC. NO. ____________
`
`

`

`
`
`
`12.
`
`On information and belief, Registrant is not a law firm.
`
`13.
`
`On information and belief, Registrant does not employ any lawyers or paralegals
`
`for purposes of providing “legal services.”
`
`14.
`
`On information and belief, Ember Education is not a law firm.
`
`15.
`
`On information and belief, Ember Education does not employ any lawyers or
`
`paralegals for purposes of providing “legal services.”
`
`16.
`
`On information and belief, San Joaquin Valley College is not a law firm.
`
`17.
`
`On information and belief, San Joaquin Valley College does not employ any
`
`lawyers or paralegals for purposes of providing “legal services.”
`
`18.
`
`On information and belief, Carrington College is not a law firm.
`
`19.
`
`On information and belief, Carrington College does employ any lawyers or
`
`paralegals for purposes of providing “legal services.”
`
`20.
`
`On information and belief, neither Registrant nor any person, division, or entity
`
`whose use of Registrant’s Mark inures to Registrant’s benefit have provided “legal services”
`
`rendered by lawyers or paralegals under or in connection with Registrant’s Mark.
`
`21.
`
`On information and belief, neither Registrant nor any person, division, or entity
`
`whose use of Registrant’s Mark inures to Registrant’s benefit can provide “legal services” of the
`
`nature rendered by lawyers or paralegals under or in connection with Registrant’s Mark because
`
`neither Registrant nor any person, division, or entity whose use inures to Registrant’s benefit
`
`employs lawyers or paralegals for purpose of providing “legal services.”
`
`22.
`
`On information and belief, neither Registrant nor any person, division, or entity
`
`whose use of Registrant’s Mark inures to Registrant’s benefit had provided or were providing
`
`any “legal services” of the nature rendered by lawyers or paralegals as of November 29, 2022,
`
`when Registrant filed a statement of use for the Class 45 services listed in the application that
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 3
`
`CANC. NO. ____________
`
`

`

`
`
`
`matured in to the ‘393 Registration.
`
`23.
`
`The specimen Registrant submitted in support of its November 29, 2022 statement
`
`of use does not evidence use of the Registrant’s Mark for “legal services,” either broadly or of
`
`the nature rendered by lawyers or paralegals.
`
`FIRST GROUNDS FOR PARTIAL CANCELLATION
`
`Priority & Likelihood of Confusion, Trademark Act §§ 14(1) and 2(d)
`
`Registrant’s Mark claims August 26, 2022, as its first use in commerce date for
`
`24.
`
`the Class 45 services, including “legal services.”
`
`25.
`
`Based on Petitioner’s prior and continuous use of Petitioner’s Mark for “legal
`
`services” since at least as early as March 4, 2016, over six years before Registrant’s claimed first
`
`use in commerce date of Registrant’s Mark for “legal services,” Petitioner has priority in
`
`Petitioner’s Mark with respect to “legal services” broadly and “legal services” of the nature
`
`rendered by lawyers or paralegals, and enjoys common law rights in Petitioner’s Mark in the
`
`U.S. with respect to such “legal services” since prior to any date on which Registrant can rely for
`
`priority purposes.
`
`26.
`
`Through advertising and offering of legal services associated with Petitioner’s
`
`Mark, the public has come to recognize Petitioner’s Mark as signifying Petitioner and its legal
`
`services. Petitioner has built up extensive and valuable goodwill in connection with offering its
`
`legal services under Petitioner’s Mark.
`
`27.
`
`Petitioner’s Mark and Registrant’s Mark are substantially similar, for example,
`
`because Registrant’s Mark, EMBER EDUCATION, includes the whole of Petitioner’s Mark,
`
`EMBER.
`
`28.
`
`Petitioner’s applied-for “legal services” and specific legal services recited in the
`
`‘134 Application and Registrant’s Class 45 “legal services” are legally identical.
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 4
`
`CANC. NO. ____________
`
`

`

`
`
`
`29.
`
`Accordingly, Registrant’s Mark so resembles Petitioner’s Mark as to be likely,
`
`when applied to the services listed in the ‘039 Application and to Registrant’s “legal services” in
`
`Class 45, to cause confusion, or to cause mistake, or to deceive within the meaning of Section
`
`2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
`
`30.
`
`For the foregoing reasons, Petitioner is and would be damaged by the ongoing
`
`registration of Registrant’s Mark for “legal services” in Class 45.
`
`31.
`
`Accordingly, pursuant to Section 18 of the Trademark Act, 15 U.S.C. § 1068, the
`
`‘393 Registration should be partially cancelled or restricted by striking “legal services” from the
`
`recitation of Class 45 services.
`
`32.
`
`Alternatively, pursuant to Section 18 of the Trademark Act, 15 U.S.C. § 1068, the
`
`‘393 Registration should be partially cancelled or restricted by narrowing its broad recitation of
`
`“legal services” to exclude those of the nature rendered by lawyers or paralegals.
`
`33.
`
`The requested restriction or modification to the ‘393 Registration would avoid a
`
`finding of likelihood of confusion between Petitioner’s Mark and Registrant’s Mark.
`
`34.
`
`Fairness demands that the ‘393 Registration be restricted or modified in the
`
`manner requested because Petitioner, not Registrant, has priority in EMBER for “legal services”
`
`in Class 45.
`
`SECOND GROUNDS FOR PARTIAL CANCELLATION
`
`Non-Use of Mark for “Legal Services,” Trademark Act §§ 14(1) and 1(a), (c), and (d)
`
`Petitioner’s Mark has been refused registration in Class 45 for “legal services”
`
`35.
`
`broadly and for the specific legal services identified therein owing to the ‘393 Registration’s
`
`inclusion in its Class 45 services of the broad wording “legal services.”
`
`36.
`
`On information and belief, neither Registrant nor any person, division, or entity
`
`whose use of Registrant’s Mark inures to Registrant’s benefit use Registrant’s Mark for “legal
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 5
`
`CANC. NO. ____________
`
`

`

`
`
`
`services” at least of the nature rendered by lawyers or paralegals.
`
`37.
`
`On information and belief, as of the date Registrant submitted its specimen of use
`
`claiming first use of Registrant’s Mark for Class 45 services including “legal services,” neither
`
`Registrant nor any person, division, or entity whose use of Registrant’s Mark inures to
`
`Registrant’s benefit were using Registrant’s Mark for “legal services” at least of the nature
`
`rendered by lawyers or paralegals.
`
`38.
`
`On information and belief, neither Registrant nor any person, division, or entity
`
`whose use of Registrant’s Mark inures to Registrant’s benefit can use Registrant’s Mark for
`
`“legal services” at least of the nature rendered by lawyers or paralegals.
`
`39.
`
`Accordingly, pursuant to Section 18 of the Trademark Act, 15 U.S.C. § 1068, the
`
`‘393 Registration should be partially cancelled or restricted by striking “legal services” from the
`
`recitation of Class 45 services.
`
`40.
`
`Alternatively, pursuant to Section 18 of the Trademark Act, 15 U.S.C. § 1068, the
`
`‘393 Registration should be partially cancelled or restricted by narrowing its broad recitation of
`
`“legal services” to exclude those of the nature rendered by lawyers or paralegals.
`
`41.
`
`The requested restriction or modification to the ‘393 Registration would avoid a
`
`finding of likelihood of confusion between Petitioner’s Mark and Registrant’s Mark.
`
`42.
`
`Fairness demands that the ‘393 Registration be restricted or modified in the
`
`manner requested because by including the broad wording “legal services” in its Class 45
`
`recitation, Registrant has overstated the range of services for which Registrant actually uses (and
`
`can actually use) Registrant’s Mark.
`
`THIRD GROUNDS FOR PARTIAL CANCELLATION
`
`Lack of Bona Fide Intent to Use Mark for “Legal Services,” Trademark Act § 1(b)
`
`
`
`43.
`
`Registrant filed the application that matured into the ‘393 Registration on
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 6
`
`CANC. NO. ____________
`
`

`

`
`
`
`November 7, 2018, under § 1(b), claiming a bona fide intent to use Registrant’s Mark in
`
`commerce for all listed goods and services, including “legal services” in Class 45.
`
`44.
`
`On information and belief, as of the application filing date neither Registrant nor
`
`any person, division, or entity whose use of Registrant’s Mark inures to Registrant’s benefit had
`
`the ability and/or the intent to use Registrant’s Mark in commerce for “legal services” at least of
`
`the nature rendered by lawyers or paralegals.
`
`45.
`
`Registrant therefore did not have a bona fide intent to use Registrant’s Mark in
`
`connection with the broadly phrased “legal services” in Class 45 as of the filing date of the
`
`application, as required by Trademark Act Section 1(b), 15 U.S.C. § 1052(b).
`
`46.
`
`Accordingly, pursuant to Section 18 of the Trademark Act, 15 U.S.C. § 1068, the
`
`‘393 Registration should be partially cancelled or restricted by striking “legal services” from the
`
`recitation of Class 45 services.
`
`47.
`
`Alternatively, pursuant to Section 18 of the Trademark Act, 15 U.S.C. § 1068, the
`
`‘393 Registration should be partially cancelled or restricted by narrowing its broad recitation of
`
`“legal services” to exclude those of the nature rendered by lawyers or paralegals.
`
`48.
`
`The requested restriction or modification to the ‘393 Registration would avoid a
`
`finding of likelihood of confusion between Petitioner’s Mark and Registrant’s Mark.
`
`49.
`
`Fairness demands that the ‘393 Registration be restricted or modified in the
`
`manner requested because of Registrant’s lack of bona fide intent on the application filing date to
`
`use Registrant’s Mark in commerce for “legal services” at least of the nature rendered by lawyers
`
`or paralegals.
`
`Petitioner prays that this cancellation be sustained, and that the ‘393 Registration be
`
`partially cancelled or restricted as requested herein.
`
`
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 7
`
`CANC. NO. ____________
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: November 20, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Delfina S. Homen/
`Delfina S. Homen
`Miller Nash LLP
`111 SW 5th Avenue, Suite 3400
`Portland, OR 97204
`503-205-2360
`
`Rober C. Cumbow
`Miller Nash LLP
`605 5th Ave S, Ste 900
`Seattle, WA 98104
`206-624-8300
`
`Attorneys for Petitioner
`Ember Law, PLLC
`
`
`
`PETITION FOR PARTIAL CANCELLATION
`
`PAGE 8
`
`CANC. NO. ____________
`
`

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