ESTTA Tracking number:
`
`ESTTA1367389
`
`Filing date:
`
`06/26/2024
`
`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
`
`Correspondence
`information
`
`ORALABS, INC.
`
`Corporation
`
`18685 E. PLAZA DRIVE
`PARKER, CO 80134
`UNITED STATES
`
`Incorporated or
`registered in
`
`CO
`
`JOHN L. WELSH
`WELSH FLAXMAN & GITLER LLC
`1451 DOLLEY MADISON BLVD
`SUITE 210
`MCLEAN, VA 22101
`UNITED STATES
`Primary email: trademarks@iplawsolutions.com
`Secondary email(s): welsh@iplawsolutions.com
`7039201122
`
`Registration subject to cancellation
`
`Registration no.
`
`6479039
`
`Registration date
`
`09/07/2021
`
`Register
`
`Registrant
`
`Principal
`
`NICHE-SALES, LLC.
`6215 DONEGAL DRIVE
`ORLANDO, FL 32819
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 003. First Use: Nov 1, 2020 First Use In Commerce: Nov 1, 2020
`All goods and services in the class are subject to cancellation, namely: Lipstick; Lip balm; Lip balm
`
`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
`
`Abandonment
`
`Registrant not rightful owner of mark for identi-
`fied goods or services
`
`Fraud on the USPTO
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Trademark Act Section 14(3)
`
`Trademark Act Sections 14(1) and 1
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`
`
`ESTTA1367389
`
`Filing date:
`
`06/26/2024
`
`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
`
`Correspondence
`information
`
`ORALABS, INC.
`
`Corporation
`
`18685 E. PLAZA DRIVE
`PARKER, CO 80134
`UNITED STATES
`
`Incorporated or
`registered in
`
`CO
`
`JOHN L. WELSH
`WELSH FLAXMAN & GITLER LLC
`1451 DOLLEY MADISON BLVD
`SUITE 210
`MCLEAN, VA 22101
`UNITED STATES
`Primary email: trademarks@iplawsolutions.com
`Secondary email(s): welsh@iplawsolutions.com
`7039201122
`
`Registration subject to cancellation
`
`Registration no.
`
`6479039
`
`Registration date
`
`09/07/2021
`
`Register
`
`Registrant
`
`Principal
`
`NICHE-SALES, LLC.
`6215 DONEGAL DRIVE
`ORLANDO, FL 32819
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 003. First Use: Nov 1, 2020 First Use In Commerce: Nov 1, 2020
`All goods and services in the class are subject to cancellation, namely: Lipstick; Lip balm; Lip balm
`
`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
`
`Abandonment
`
`Registrant not rightful owner of mark for identi-
`fied goods or services
`
`Fraud on the USPTO
`
`Trademark Act Sections 14(1) and 1(a), (c), and
`(d)
`
`Trademark Act Section 14(3)
`
`Trademark Act Sections 14(1) and 1
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
`
`
`
`Mark cited by petitioner as basis for cancellation
`
`U.S. application
`no.
`
`98180123
`
`Application date
`
`09/14/2023
`
`Register
`
`Principal
`
`Registration date
`
`NONE
`
`Word mark
`
`Design mark
`
`LIP RAGEOUS
`
`Foreign priority
`date
`
`NONE
`
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Class 003. First use: First Use: Oct 30, 1998 First Use In Commerce: Oct 30,
`1998
`Lip balm
`
`Attachments
`
`98180123#TMSN.png( bytes )
`Cancellation.pdf(564892 bytes )
`
`Signature
`
`/jlw/
`
`Name
`
`Date
`
`John L. Welsh
`
`06/26/2024
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Inre:
`Mark: LIPRAGEOUS
`Reg. No.: 6,479,039
`Registered: 9/7/2021
`
`
`
`Cancellation No.
`
`Oralabs, Inc.,
`
`V.
`
`Niche-Sales, LLC,
`
`Petitioner,
`
`Registrant.
`
`
`| ||{iiiiii|i
`
`PETITION FOR CANCELLATION
`
`Petitioner, Oralabs, Inc., believes that it will be damaged by the continued existence of
`
`Registration No. 6,479,039 and hereby petitionsto cancel this registration pursuant to Section 14
`
`of the Trademark Act of 1946, 15 U.S.C. 1064. As groundsfor cancellation, Petitioner alleges that:
`
`APPLICANT’S MARK
`
`1. Petitioner is a corporation organized under the laws of Colorado, with an address of
`
`18685 E. Plaza Drive Parker, CO 80134.
`
`2. Since at
`
`least as early as October 30, 1998, Petitioner has used the mark “LIP
`
`RAGEOUS”in commerce in connection with lip balm in Int. Class 003.
`
`3. On September 14, 2023, Petitioner filed Application Serial Number 98/180,123 to
`
`register the mark LIP RAGEOUSfor lip balm in Int. Class 003 as it unintentionally let a prior
`
`registration lapse.
`
`
`
`4. On April 15, 2024, the USPTO Examining Attorney reviewing Petitioner's pending
`
`application issued an office action, indicating that there exists a likelihood of confusion under
`
`Section 2(d) of the Lanham Act between the mark in Petitioner's application, LIP RAGEOUS, and
`
`Registrant's mark, LIPRAGEOUS, foridentical goods.
`
`5. Based on the refusal to register Petitioner's mark, and in light of Petitioner's prior and
`
`continuoususe of the mark in commerce, Petitioner has standing to bring this action.
`
`6. Since at least as early as October 30, 1998, and well before any date that Registrant
`
`can claim priority in Registrant’s mark, Petitioner has used the mark LIP RAGEOUSin commerce
`
`throughout all of North America in connection with lip balm in Int. Class 003.
`
`7. Upon information and belief, Petitioner alleges that Petitioner's continued andlegal
`
`use of Petitioner's LIP RAGEOUSmark will be impaired by the continued registration of the
`
`LIPRAGEOUSmarkin Registration No. 6,479,039.
`
`REGISTRANT AND REGISTRANT'S MARK
`
`8. Upon information and belief, the Registrant is now Niche-Sales, LLC, a Florida Limited
`
`Liability Company, with an address of 6215 Donegal Drive, Orlando, FL 32819 by way of an
`
`assignment recorded on February 16, 2023, at Trademark Reel/Frame 7986/0379.
`
`9. Registrant’s mark in the subject registration is LIPRAGEOUSand the goods are
`
`identified as Lipstick; Lip balm; Lip balm in Int. Class 003.
`
`10. The Applicant, Unique Sales and Marketing,filed the application that matured into the
`
`subject registration on a Section 1(a) basis on September7, 2021.
`
`11. The subject registration claimed a date of first use in commerce of October 1, 2020,
`
`whenfiled, but the specimen wasrefused asa digitally created or altered image or mockup.
`
`
`
`12. A substitute specimen was submitted in the application, and the first use date of the
`
`mark was deleted by Registrant.
`
`13. Upon the filing of the substitute specimen the Registrant made the following 3
`
`statements: “The substitute (or new, or originally submitted, if appropriate) specimen(s)
`
`was/were in use in commerceatleast as early as the filing date of the application"/for an
`
`application based on Section l(a), Use in Commerce] OR "The substitute (or new,or originally
`
`submitted,if appropriate) specimen(s) was/werein use in commerceprioreitherto the filing
`
`of the Amendmentto Allege Use or expiration ofthe filing deadline for filing a Statement of
`
`Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimenis a
`
`true copy of the specimen that wasoriginally submitted with the application, amendmentto
`
`allege use, or statement of use" [for an illegible specimen].”
`
`14. Since three statements were made, an improper statement was made when submitting
`
`the substitute specimen.
`
`15. A second office action was issued by the USPTOand in response thereto, a new first
`
`use date of November 1, 2020, was submitted by Registrant, but the second occurrence of “Lip
`
`balm”wasnot deleted from the listing of the goods.
`
`REGISTRANT NOT RIGHTFUL OWNER OF MARK FOR IDENTIFIED GOODS OR
`SERVICES
`
`16. Upon information andbelief, the listed owner of the mark uponfiling the application,
`
`Unique Sales and Marketing, a Limited Liability Company of Florida, did not exist at the time the
`
`application wasfiled.
`
`17. Upon information and belief, the entity listed as the original owner of the application
`
`did not comeinto existence until February 15, 2024.
`
`
`
`18. Uponinformationandbelief, the assignment executed on January 23, 2023, transferring
`
`ownership ofthe registration is void, as the conveying party did not exist at the time of execution
`
`of the assignment.
`
`19. Upon information and belief, the current Registrant is not the rightful owner of the
`
`mark.
`
`NON-USE
`
`20. Upon information and belief, Registrant made no actual use of the mark in commerce
`
`as of October 1, 2020, the date offirst use originally alleged in the filing of the application.
`
`21. Upon information and belief, Registrant made no actual use of the mark in commerce
`
`as of November1, 2020,the dateoffirst use alleged in the registration.
`
`22. Upon information and belief, the specimen submitted by Registrant for lip balm was
`
`not in actual use and that no use in commerce has been made with the other goodslisted in the
`
`application and subsequentregistration.
`
`23. Upon information and belief, there has never been any actual use in commerce of
`
`Registrant’s mark forlipstick, one of the goodsset forth in the registration.
`
`24. Upon information and belief, the substitute specimen submitted by Registrant is the
`
`only use of the mark by Registrant for lip balm and wasnot in use in commerceat the time the
`
`application wasfiled.
`
`PRIORITY AND LIKELIHOOD OF CONFUSION
`
`25. Upon information andbelief, Registrant's registration, and use ofthe mark in commerce
`
`set forth in Registration No. 6,479,039 creates a likelihood of confusion with Petitioner's LIP
`
`RAGEOUSmarkwithin the meaning of Section 2(d) of the Lanham Act.
`
`
`
`26. Registrant's mark is identical (one word instead of two words) to Petitioner's mark, so
`
`that the use thereof by Registrant, and the continued existence of Registration No. 6,479,039,is
`
`likely to cause confusion, mistake and/or deception within the meaning of Section 2(d) of the
`
`Trademark Act as to the source or origin of Registrant's goods and will injure and damage
`
`Petitioner and the goodwill and reputation symbolized by Petitioner's mark LIP RAGEOUS.
`
`27. Petitioner has been and will be damaged by the continued existence of Registration No.
`
`6,479,039 because the mark shown in the registration is likely to cause confusion, mistake, or
`
`deception among consumers who maybelieve that the goods of Registrant emanate from or are in
`
`some way sponsored or endorsed by or associated with Petitioner.
`
`28. Registrant is not affiliated with or connected with or endorsed or sponsored by
`
`Petitioner, nor has Petitioner approved any goods offered or sold by Registrant under the mark
`
`LIPRAGEOUS,norhasPetitioner granted Registrant permission to use the mark.
`
`29. Petitioner's goods("lip balm") and the goods of Registrant are identical, and the public
`
`is likely to be confused and to assumeerroneously that Registrant's goods are sponsored, approved,
`
`or endorsed by Petitioner or that Registrant is connected with, sponsored by, or affiliated with
`
`Petitioner.
`
`FRAUD
`
`30. Upon information and belief, when Registrant applied to register the mark at issue, the
`
`Registrant had full knowledgeofPetitioner's prior rights in the mark LIP RAGEOUS.
`
`31. Registrant fraudulently obtained the registration of its mark by deliberately, willfully,
`
`and falsely representing to the USPTOthat Registrant is the owncrof that mark and that Registrant
`
`made substantially exclusive use of the mark when in fact Registrant knew that these statements
`
`werefalse.
`
`
`
`32. Registrant fraudulently submitted a specimen that had not be used in commerceprior
`
`to the filing date of the application.
`
`33. Registrant fraudulently submitted a substitute specimen that had not been used in
`
`commerce prior to the filing date of the application.
`
`34. Atthe time the false representations were made, Registrant knew they werefalse.
`
`35. These materially false statements werefalse at the time they were made, and they are
`
`still false today.
`
`36. The USPTO relied on Registrant's materially false statements in approving the
`
`application for registration and but for these false statements and representation, the application
`
`would not have been approved for publication.
`
`ABANDONMENT
`
`37. Upon information andbelief, Registrant has not used the mark LIPRAGEOUSfor more
`
`than three years as applied to the goodsset forth in the registration.
`
`38. Upon information and belief, Registrant has abandoned the mark LIPRAGEOUS.
`
`WHEREFORE,Petitioner prays that Registration No. 6,479,039 be canceled andthat this
`
`Petition for Cancellation be sustained in favor of Petitioner.
`
`By:=/jlw/
`John L. Welsh, Attorney for Petitioner
`WELSH FLAXMAN & GITLER LLC
`1451 Dolley Madison Blvd., Suite 210
`McLean VA 22101
`
`Telephone: (703) 920-1122
`Ref: WEG-8769.CANC
`
`Dated June 26, 2024
`
`
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