ESTTA Tracking number:
`
`ESTTA1399400
`
`Filing date:
`
`12/03/2024
`
`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
`
`Attorney informa-
`tion
`
`Docket no.
`
`bitop AG
`joint stock company
`
`STOCKUMER STRAÃ#E 28
`WITTEN, 58453
`GERMANY
`
`Incorporated or
`registered in
`
`Germany
`
`ROBERT S. BRODER
`COLLARD & ROE, P.C.
`1077 NORTHERN BLVD.
`ROSYLN, NY 11676
`UNITED STATES
`Primary email: rbroder@collardroe.com
`Secondary email(s): olga@collardroe.com, law@collardroe.com
`5163659802
`040842
`
`Registration subject to cancellation
`
`Registration no.
`Register
`Registrant
`
`Registration date
`
`5098374
`Principal
`ECTO, LLC
`5350 ORCHARD STREET WEST, SUITE 201
`UNIVERSITY PLACE, WA 98467
`UNITED STATES
`
`12/13/2016
`
`Goods/services subject to cancellation
`
`Class 003. First Use: Jun 15, 2015 First Use In Commerce: Jun 15, 2015
`All goods and services in the class are subject to cancellation, namely: Non-medicated topical formu-
`lations for the treatment of various skin conditions, namely, preparations for the treatment of anti-
`aging, acne, folliculitis, dry skin, rosacea, melasma, and scars
`Class 005. First Use: Jun 15, 2015 First Use In Commerce: Jun 15, 2015
`All goods and services in the class are subject to cancellation, namely: Medicated topical formula-
`tions for various skin conditions, namely, preparations for the treatment of anti-aging, acne, folliculitis,
`dry skin, rosacea, melasma, scars and inflammation; non-medicated topical formulations for the treat-
`ment of inflammation
`
`Grounds for cancellation
`
`Abandonment
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`
`

`

`2009)
`
`Attachments
`
`Ecto Cancellation 120324.pdf(126713 bytes )
`
`Signature
`Name
`Date
`
`/rsb/
`Robert S. Broder
`12/03/2024
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.
`
`Mark: ECTO
`Registration No: 5098374
`Reg. Date: December 13, 2016
`
`
`
`
`
`
`bitop AG
`
`
`Petitioner,
`
`
`v.
`
`
`
` ECTO, LLC
`
`
` Registrant.
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`Pursuant to 15 U.S.C. § 1064, 37 C.F.R. § 2.111(b) and TBMP § 309.03(d), bitop AG
`
`(hereinafter “Petitioner”), a joint stock company of Germany with an address of Stockumer Straße
`
`28, 58453 Witten, Germany, believes that it is and will continue to be damaged by the continued
`
`registration of U.S. Registration No. 5098374 for the mark ECTO (the “ECTO Mark”), registered
`
`on December 13, 2016 (the “ECTO Registration”), and owned by ECTO, LLC (hereinafter
`
`“Registrant”), a limited liability company organized under the laws of Washington, with an address
`
`of 5350 Orchard Street West, Suite 201, University Place, WA 98467 and hereby petitions to cancel
`
`the ECTO Registration.
`
`As grounds for cancellation, Petitioner alleges that:
`
`1. Registrant is the owner of the ECTO Registration (Registration No: 5098374).
`
`2. The goods in the ECTO Registration (“the Registered Goods”) are:
`
`Non-medicated topical formulations for the treatment of various skin
`conditions, namely, preparations for the treatment of anti-aging, acne,
`folliculitis, dry skin, rosacea, melasma, and scars in International Class 03.
`
`
`
`
`
`
` Medicated topical formulations for various skin conditions, namely,
`preparations for the treatment of anti-aging, acne, folliculitis, dry skin,
`rosacea, melasma, scars and
`inflammation; non-medicated
`topical
`
`1
`
`

`

`formulations for the treatment of inflammation in International Class 03.
`
`
`3. Petitioner is the owner of U.S. Trademark Application Serial No. 79406369 for the mark
`
`ECTOCARE (the “ ECTOCARE Application”).
`
`4. The goods in the ECTOCARE Application are:
`
` Chemical substances, chemical materials and chemical preparations and natural
`elements, in particular biological preparations for industrial or scientific use;
`biological preparations for industrial use; biological preparations for scientific use;
`biological substances [other than for medical or veterinary use]; chemical
`humectants; chemical substances as adsorbents for inhalation gases; filtering
`materials of chemical substances; filtering materials of mineral substances; gases for
`use with aerosols; preservatives for pharmaceutical preparations in International
`Class 01.
`
`
`
`
`
`
` Body care preparations; body cleansing and body care preparations; eye and nail care
`preparations; eye gel pads for cosmetic purposes; eye compresses for cosmetic
`purposes; eye care preparations, not for medical purposes; eye gels; eye creams; eye
`gel masks; tanning creams and lotions; skin tightening creams; creams for the
`prevention of wrinkles; anti-wrinkle creams; moisturizing creams; moisturizing gels;
`age retardant gels; facial gels; facial creams; facial lotions; facial packs; facial
`cleansing preparations; facial washes [cosmetics]; facial masks; skin care
`preparations for wrinkle reduction; hand milks; hand creams; hand lotions; hand
`cures for skin care; hand lotions, not for medical purposes; skin clarifying lotions,
`not for medical purposes; cosmetic lotions for strengthening fingernails; cosmetic
`preparations for wrinkle reduction for application to the face; cosmetic creams for
`firming skin around eyes; cosmetic facial scrubs; lotions for cosmetic purposes;
`lotions for cellulite reduction; lotions for aromatherapy; age retardant lotions; lotions
`for the eyes; lotions against eye wrinkles; shaving lotions; lotions for strengthening
`fingernails; lotions for use after sunbathing; lotions for application to the skin; body
`mask lotions; lotions for facial and body care; body and beauty care preparations in
`the form of lotions; cosmetic preparations for facial care; non-medicated stimulating
`lotions for the skin; non-medicated cleansing preparations for intimate hygiene;
`preparations for improving the under-eye area; perfumed lotions [toilet preparations];
`beauty care preparations for the face; tissues impregnated with cosmetic lotions;
`toning lotions for the face, body and hands; vaginal douches for intimate cleansing
`or deodorizing purposes; all the foregoing goods for purely cosmetic purposes in
`International Class 03.
`
`Eye drops; collyrium and medicated eye washes; anti-inflammatory gels; anti-
`inflammatory preparations; anti-inflammatory ointments; anti-inflammatory sprays;
`hygiene preparations and articles; hygiene preparations and articles, in particular
`medical hygiene preparations; lubricating gels for personal use; silicone-based
`lubricants for personal use; water-based lubricants for personal use; preparations for
`use in vaginal lubrication; hygienic lubricants; personal sexual lubricants; inhalants;
`solutions for medical use for irrigation of the nasal passages; throat lozenges;
`
`
`
`2
`
`

`

`medicated body gels; medicated body powders; medicated body creams; medicated
`hand washes; medicated face washes; medicated and disinfectant soaps and
`detergents; medicated hand lotions: medicated mouth rinses; medicated ointments for
`use on the skin; medicated ointments for use on the mucous membrane; medicated
`ointments for use in the eye; medicated sprays; medicated throat sprays; medicated
`dressings, medical plasters and receptacles for applying medicines; hand creams for
`medical use; eye pads for medical use; pharmaceutical preparations for ophthalmic
`use; topical pharmaceutical preparations; intimate cleansing preparations for medical
`use; preparations for ocular lubrication; nasal decongestants; nasal sprays; nasal
`drops; nasal drops for the treatment of allergies; pharmaceutical preparations and
`substances with anti-inflammatory properties; pharmaceutical preparations for the
`prevention of allergies; solutions for contact lenses; cleaning preparations for contact
`lenses; contact lense wetting solutions; pharmaceutical throat sprays; cleansing
`solutions for medical purposes; sprays for reducing swelling of the nasal mucous
`membrane; sprays for use in the throat; sprays in aerosol form for use on the skin;
`vaginal douches for medical purposes; vaginal moisturizers; all the foregoing goods
`for purely medical purpose in International Class 05.
`
`Medical and veterinary apparatus and instruments; medical and veterinary apparatus
`and instruments, in particular dosage dispensers for medical use; eye baths; eye wash
`cups for medical purposes; eye drop guides; humidifying apparatus for medical use;
`humidifiers for use with respiratory therapy apparatus; nasal irrigators, electric;
`electric vaporisers for administering steam inhalants; power operated sprayers for
`medical purposes; chambers for inhalers; inhalers; apparatus for administering drugs
`by inhalation; inhalers for medical purposes [sold empty]; inhalers for the
`evaporation of para-medical substances; medical apparatus for facilitating the
`inhalation of pharmaceutical preparations; inhalers for medical use; nasal douches;
`nasal irrigators, non-electric; cooling sprays for medical purposes; nebulisers for
`medical purposes; sprayers [hand-operated] for medical use; applicators for
`pharmaceutical preparations in International Class 10.
`
`
`
`
`
`
`
`5. On or about October 28, 2024, Petitioner received an Office Action from the United States
`
`Patent and Trademark Office refusing registration of its ECTOCARE Application based on a
`
`likelihood of confusion with Registrant’s ECTO Mark, under Trademark Act Section 2(d), 15
`
`U.S.C. § 1052(d) and TMEP § 1207.01 et seq.
`
`6. Petitioner has standing to bring this action given that its ECTOCARE Application
`
`(Serial No: 79406369) has been refused registration based on Registrant’s ECTO Registration
`
`(Reg. No: 5098374).
`
`
`
`3
`
`

`

`
`REGISTRANT ABANDONED ITS ECTO REGISTRATION
`
`
`
`7. Paragraphs 1-6 are incorporated as if fully set forth herein.
`
`8. Petitioner conducted an investigation into whether Registrant is currently actively using,
`
`or had ever genuinely used, the ECTO Mark in interstate commerce for all of the Registered
`
`Goods under the ECTO Mark.
`
`9. Petitioner’s investigation failed to identify any indication that Registrant has ever
`
`rendered all of the Registered Goods under Registrant’s ECTO Mark in commerce in the United
`
`States.
`
`10. Petitioner’s investigation failed to identify any indication that Registrant made active
`
`bona fide use of the ECTO Mark in the ordinary course of trade for all of the Registered Goods
`
`as of September 21, 2015, the date of filing of its application for the ECTO Mark.
`
`11. Petitioner’s investigation failed to identify any indication that Registrant made active
`
`bona fide use of the ECTO Mark in the ordinary course of trade for all of the Registered Goods
`
`as of December 7, 2022 the date of filing of its combined Section 8 and 15 declaration for the
`
`ECTO Mark.
`
`12. Petitioner’s investigation failed to identify any indication that Registrant is currently
`
`rendering any of Registered Goods under the ECTO Mark in commerce in the ordinary course of
`
`trade.
`
`13. Upon information and belief, Registrant has not used the ECTO Mark in the ordinary
`
`course of trade with each of the Registered Goods within United States commerce.
`
`14. Upon information and belief, Registrant is not presently using the ECTO Mark in
`
`commerce in the United States in the ordinary course of business in connection with the Registered
`
`Goods and does not have an intent to resume use.
`
`
`
`4
`
`

`

`15. Upon information and belief, Registrant has abandoned use of the ECTO Mark with an
`
`unequivocal intent not to resume use within any reasonable time period.
`
`16. The continued registration of Registrant’s ECTO Mark is causing and will continue to
`
`cause irreparable harm, injury, and damage to Petitioner.
`
`17. As a result of Registrant’s non-use of the ECTO mark for the Registered Goods, the ECTO
`
`Registration (Reg. No. 5098374) must be cancelled.
`
`18. As a result of Registrant’s abandonment of the ECTO Mark, without an intent to resume
`
`use, the ECTO Registration (Reg. No. 5098374) must be cancelled.
`
`
`
`FRAUD
`
`19. Paragraphs 1-18 are incorporated as if fully set forth herein
`
`20.
`
`On September 21, 2015, Registrant filed U.S. Application Serial No. 86763006 for
`
`the ECTO Mark based on its use of the mark under §1(a) of 15 USC 1051 (“Registrant’s ECTO
`
`Application”).
`
`21.
`
`In connection with Registrant’s ECTO Application, Registrant declared, under 18
`
`U.S.C. §1001, that it had been rendering all of the Registered Goods in commerce under or in
`
`connection with the ECTO Mark since at least as early as June 15, 2015.
`
`22. Upon information and belief, Registrant was not rendering all of the Registered
`
`Goods under the ECTO Mark in Interstate commerce as of June 15, 2015 as Registrant
`
`declared, under 18 U.S.C. §1001, in its use based ECTO Application.
`
`23. Upon information and belief, Registrant was not rendering all of the Registered
`
`Goods under the ECTO Mark in Interstate commerce when Registrant filed its use based ECTO
`
`Application for the ECTO Mark on September 21, 2015.
`
`24.
`
`In connection with Registrant’s December 7, 2022 combined 8 & 15 declaration
`
`for the ECTO Registration, Registrant declared that it had continuously been rendering all the
`
`
`
`5
`
`

`

`Registered Goods in commerce under or in connection with the ECTO Mark for five (5)
`
`consecutive years after December 13, 2016, the date of registration.
`
`25.
`
`Upon information and belief, Registrant was not rendering all of the Registered
`
`Goods under the ECTO Mark in Interstate commerce as of December 7, 2022 as Registrant
`
`declared, under 18 U.S.C. §1001, in its December 7, 2022 combined 8 & 15 declaration.
`
`26.
`
`Upon information and belief, Registrant is not currently rendering use of the
`
`Registered Mark in the ordinary course of business in interstate commerce in connection with all
`
`of the Registered Goods under the ECTO Mark.
`
`27.
`
`Upon information and belief, Registrant willfully, in bad faith, and with the intent
`
`to obtain that to which the Registrant otherwise would not have been entitled, falsely stated that
`
`its ECTO Mark was in use in U.S. commerce to render all of the Registered Goods as of the
`
`ECTO Application filing date.
`
`28.
`
`Upon information and belief, Applicant committed fraud in filing the ECTO
`
`Application by knowingly and willfully making specific false, material representations of fact in
`
`its declaration, under 18 U.S.C. §1001, with the intent of obtaining a registration to which it
`
`otherwise is not entitled.
`
`29.
`
`Upon information and belief, Applicant committed fraud in filing the ECTO
`
`Application for the ECTO Mark by knowingly and willfully making specific false, material
`
`representations of fact in its declaration or oath under 18 U.S.C. §1001 with the intent of obtaining
`
`a registration to which it otherwise is not entitled by declaring that, to the best of the Applicant’s
`
`knowledge and belief, “[t]he [ECTO] [M]ark is in use in commerce and was in use in commerce
`
`as of the date of the application or in connection with [all of] the goods/services in the application”.
`
`30.
`
`Upon information and belief, Registrant knew, or should have known, that its ECTO
`
`Mark was not in use in U.S. commerce on all of the Registered Goods as of the alleged June 15,
`
`
`
`6
`
`

`

`2021 first use date set forth in the ECTO Application.
`
`31.
`
`Upon information and belief, Registrant knew, or should have known, that its
`
`ECTO Mark was not in bona fide use in the ordinary course of business connection with all of
`
`the Registered Goods at the time of filing its ECTO Application because all of the Registered
`
`Goods were never rendered in interstate commerce within the Unites States under the ECTO
`
`Mark as asserted in the ECTO Application.
`
`32. Upon information and belief, Registrant willfully, in bad faith, and with the intent to maintain
`
`that to which the Registrant otherwise would not have been entitled, falsely stated in its combined
`
`Section 8 & 15 declaration that its ECTO Mark was continuously in use in U.S. commerce for
`
`five years following the date of registration in connection with all of the Registered Goods as of
`
`the combined Section 8 & 15 declaration filing date.
`
`33. Upon information and belief, Registrant committed fraud in filing the combined Section 8 & 15
`
`declaration for the ECTO Registration by knowingly and willfully making specific false,
`
`material representations of fact in its declaration, under 18 U.S.C. §1001, with the intent of
`
`maintaining a registration to which it otherwise is not entitled.
`
`34. Upon information and belief, Registrant committed fraud in filing the combined Section 8 & 15
`
`declaration ECTO Registration for the ECTO Mark by knowingly and willfully making specific
`
`false, material representations of fact in its declaration or oath under 18 U.S.C. §1001 with the
`
`intent of obtaining a registration to which it otherwise is not entitled by declaring that, to the best
`
`of the Registrant’s knowledge and belief, “[t]he [ECTO] [M]ark has been in continuous use in
`
`commerce for five consecutive years after the date of registration, or the date of publication under
`
`15 U.S.C. § 1062(c), and is still in use in commerce on or in connection with all goods/services,
`
`or to indicate membership in the collective membership organization, listed in the existing
`
`registration.”
`
`
`
`7
`
`

`

`35. Continued registration of the ECTO Mark damages and will continue to damage Petitioner
`
`because Registrant’s ECTO Registration has been fraudulently obtained
`
`
`
`
`
`WHEREFORE, Petitioner, by its undersigned counsel of record, respectfully requests that
`
`the ECTO Registration (Reg. No. 5098374) be cancelled pursuant to 15 U.S.C. § 1064, 37 C.F.R.
`
`§ 2.111(b) and TBMP § 309.03(d) on the grounds that Registrant either never used the ECTO
`
`Mark for all of the Registered Goods in the ordinary course of business or abandoned all use of the
`
`ECTO Mark and committed fraud when it filed its ECTO Application and committed fraud when
`
`it filed its combined Section 8 & 15 declaration ECTO Registration for the ECTO Mark and that
`
`the Trademark Trial and Appeal Board grant any and all further relief to Petitioner that the Board
`
`finds necessary and just under the circumstances.
`
`
`
`Dated: Roslyn, New York
` December 3, 2024
`
`
`
`
`
`
`
`
` Collard & Roe, P.C.
`
`By: /rsb/___________
`Robert S. Broder, Esq.
`Attorneys for Petitioner
`Collard & Roe, P.C.
`1077 Northern Blvd.
`Roslyn, NY 11576
`Tel: (516) 282-0224
`rbroder@collardroe.com
`
`
`
`
`
`
`
`
`8
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`