Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`
`ESTTA1277582
`
`Filing date:
`
`04/11/2023
`
`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
`
`Admar International, Inc.
`Corporation
`1200 UNIVERSITY AVENUE
`MONROE, LA 71203
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`ROBERT M. CHIAVIELLO
`NUBYLAW
`3030 AURORA AVENUE
`MONROE, LA 71201
`UNITED STATES
`Primary email: bobc@nuby.com
`Secondary email(s): carleyl@nuby.com
`318-410-4012
`
`Docket no.
`
`Registration subject to cancellation
`
`Registration no.
`Register
`Registrant
`
`Registration date
`
`5672782
`Principal
`Xiao, Yao
`NO. 498 SHAOSHAN SOUTH RD, TIANXIN DIST
`CHANGSHA, HUNAN, 410000
`CHINA
`
`02/12/2019
`
`Goods/services subject to cancellation
`
`Class 025. First Use: Nov 15, 2017 First Use In Commerce: Nov 15, 2017
`All goods and services in the class are subject to cancellation, namely: Adhesive bras; Athletic appar-
`el, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Bathing costumes;
`Brassieres; G-strings; Knit shirts; Leg shapers; Lingerie; Maternity lingerie; Nipple covers, namely,
`pasties; Shapewear; Sports pants; Sports shirts; Swimwear; Underpants; Vests; Yoga pants
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Marks cited by petitioner as basis for cancellation
`
`U.S. application
`no.
`
`88634179
`
`Application date
`
`09/27/2019
`
`

`

`Register
`Registration date
`
`Principal
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 003. First use: First Use: None First Use In Commerce: None
`Baby bubble bath, Baby hand soap, Baby lotion, Baby oil, Baby oils, baby
`powder,  Baby powders, Baby sun creams, Baby wipes impregnated with
`cleaning preparations, Body cream, Body cream soap, Body creams, Body lo-
`tion, Body lotions, Body oil, Body oils, Body powder, Body scrub, Body scrubs,
`Body sprays, Body wash--Â all the foregoing for use only by babies, infants and
`children;Â Dish detergents;Â Face creams for use only by babies, infants and
`children;Â Laundry detergent; laundry detergents;Â Â Laundry fabric conditioner;
`Laundry soap;Â Lip balm, Lip cream, Moisturizing creams, Â Moisturizing pre-
`parations for the skin--Â all the foregoing for use only by babies, infants and chil-
`dren;Â Cases for baby wipes impregnated with cleaning preparations; Deodor-
`ants for body care;Â Â Disposable wipes impregnated with cleaning chemicals
`or compounds for industrial and commercial use; Face and body beauty creams,
`Face and body creams, Face and body lotions, Facial moisturizers--Â all the
`foregoing for use only by babies, infants and children;Â Hand cleaning
`gels;Â Hand cleaners;Â Liquid laundry detergent;Â Liquid soaps for laundry; Lo-
`tions for face and body care, Moisturizing body lotions--Â all the foregoing for
`use only by babies, infants and children;Â Nasal cleaning preparations for per-
`sonal sanitary purposes; Non-medicated lip balm that does not contain
`beeswax;Â Non-medicated lip balms;Â Non-medicated lip care prepara-
`tions;Â Non-medicated balms for use on lips;Â Non-medicated herbal body care
`products, namely, body oils, salves, and lip balms;Â Non-medicated lotions for
`body;Â Non-medicated skin care preparation, namely, body mist--Â all the fore-
`going for use only by babies, infants and children;Â Non-medicated soaps for
`babies;Â Powder laundry detergents;Â Pre-moistened towelettes impregnated
`with a detergent for cleaning;Â Scented body lotions and creams for babies, in-
`fants and children;Â Skin moisturizer;Â Skin moisturizing gel;Â Â Skin care pre-
`parations, namely, body balm--Â all the foregoing for use only by babies, infants
`and children;Â Skin cleanser in liquid spray form for use as a baby wipe alternat-
`ive;Â Tooth cleaning preparations
`
`U.S. registration
`no.
`Register
`Registration date
`
`6097906
`
`Principal
`07/07/2020
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 005. First use: First Use: Jan 1, 1998 First Use In Commerce: Jan 1, 1998
`Aloe vera gel for therapeutic purposes; Aloe vera preparations for therapeutic
`purposes; Anti-bacterial soap; Anti-cough drops; Anti-inflammatories; Anti-
`inflammatory and antipyretic preparations; Anti-inflammatory gels; Anti-
`inflammatory ointments; Anti-inflammatory salves; Anti-inflammatory sprays;
`Anti-itch cream; Anti-itch ointment; Antibacterial hand lotions; Antibacterial hand
`soaps; Antibacterial handwash; Antibacterial handwashes; Antibacterial liquid
`soap; Antibacterial liquid soaps; Antibacterial skin soaps; Antibacterial soap; An-
`
`

`

`tibacterial spray; Antibacterial wipes; Babies' diaper-pants; Babies' diapers; Ba-
`bies' diapers of paper; Babies' napkin-pants; Babies' napkins; Babies' swim di-
`apers; Baby diapers; Baby food; Baby foods; Breast pads; Calamine lotion; Dis-
`posable sanitizing wipes; Disposable training pants; Haemorrhoid preparations;
`Hemorrhoid preparations; Hemorrhoid treatment preparations; Hemorrhoidal
`ointments; Herbal supplements; Homeopathic supplements; Hydrocortisone
`cream; Infant cloth diapers; Infant diaper covers; Infant formula; Insect repel-
`lents; Insect repellents in pre-moistened towelette form; Insect-repellents; Kits
`comprised primarily of sanitizer gel and disinfecting wipes and also including
`sanitary masks, plastic gloves and hand cream used for germ prevention;
`Mentholated ointment for medical use; Mercurial ointments for medical use; Nail
`fungus treatment preparations; Non-medicated topical gel for the prevention and
`treatment of allergies; Non-medicated topical gel for the prevention and treat-
`ment of cold and flu; Nursing pads; Nutritional supplements; Nutritional supple-
`ments, namely, probiotic compositions; Pharmaceutical skin lotions; Prepara-
`tions for repelling animals, birds and insects; Teething gels; Topical dermatolo-
`gical preparations that treat insect bites and stings; Topical first aid gel; Topical
`gel for medical and therapeutic treatment of diaper rash; Wearable insect re-
`pelling devices for attachment to clothing sold pre-filled with insect repelling pre-
`parations; Anti-insect spray; Bracelets impregnated with insect repellent; Breast-
`nursing pads; Dietary and nutritional supplements; Disposable baby diapers;
`Disposable swim diapers for children and infants; First aid kits; First aid kits for
`domestic or other non-professional use; Food for babies; Food for infants; Food
`for infants, namely, human breast milk; Gels, creams and solutions for dermato-
`logical use; Homeopathic anti-inflammatory ointment; In vitro gender prediction
`test kit; In-vitro ovulation prediction test kit for home use; Liquid herbal supple-
`ments; Liquid nutritional supplement; Medicated baby oils; Medicated baby
`powders; Medicated cream soap; Medicated creams for treating dermatological
`conditions; Medicated shampoos for babies; Medicated skin care preparations,
`namely, creams, lotions, gels, toners, cleaners and peels; Medicated soaps for
`babies; Medicated supplements for foodstuffs for babies; Medicinal creams for
`skin care; Mineral nutritional supplements; Mosquito-repellent patches for ba-
`bies; Multipurpose medicated antibiotic cream, analgesic balm and mentholated
`salve; Nappies as baby diapers; Natural herbal supplements; Ovulation test kits;
`Powdered milk for babies; Pregnancy test kits for home use; Preparations to
`prevent nail-biting and thumb-sucking; Tissues impregnated with antibacterial
`preparations; Topical analgesic creams
`
`U.S. application
`no.
`Register
`Registration date
`
`97873816
`
`Principal
`NONE
`
`Application date
`
`04/05/2023
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 007. First use: First Use: None First Use In Commerce: None
`Electric food blenders for household purposes; Electric food mixers for house-
`hold purposes; Electric food processors for household purposes; Electric fruit
`peelers; Electric fruit squeezers for household purposes; Electric juice extract-
`ors; Electric juicers; Electric mixers for household purposes; Electric hand-held
`mixers for household purposes; Fruit presses, electric, for household purposes;
`Hand-held electric-powered food processors
`
`U.S. registration
`no.
`
`6103677
`
`Application date
`
`09/27/2019
`
`

`

`Register
`Registration date
`
`Principal
`07/14/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 008. First use: First Use: Jan 1, 1998 First Use In Commerce: Jan 1, 1998
`Emery boards; Fingernail clippers; Flatware, namely, forks, knives, and spoons;
`Manicure sets; Nail clippers; Nail scissors; Tableware, namely, knives, forks and
`spoons; Disposable tableware, namely, knives, forks and spoons; Disposable
`tableware, namely, spoons; Forks and spoons being tableware; Forks being
`tableware; Knives being tableware; Knives, forks, and spoons being tableware;
`Spoons being tableware
`
`U.S. registration
`no.
`Register
`Registration date
`
`2335700
`
`Principal
`03/28/2000
`
`Application date
`
`04/20/1999
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 010. First use: First Use: Jan 1, 1998 First Use In Commerce: Jan 1, 1998
`Infant Pacifier(s)
`
`U.S. registration
`no.
`Register
`Registration date
`
`6103678
`
`Principal
`07/14/2020
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 010. First use: First Use: Jan 1, 1998 First Use In Commerce: Jan 1, 1998
`Babies' bottles; Baby bottle nipples; Baby bottle that plays sounds using wire-
`less technology; Baby bottles; Baby feeding dummies; Baby feeding pacifiers;
`Baby nursers; Breast milk storage bottles; Breast pumps; Breast shields; Breast
`warmer pads for medical purposes; Dropper bottles for administering medica-
`tion, sold empty; Droppers for administering medication, sold empty; Feeding
`bottle teats; Feeding bottles; Gum massaging instruments; Nasal aspirators;
`Nursing bottles; Pacifier clips; Pacifier cloth for attachment to infant pacifiers;
`Spoons for administering medicine; Teething rings; Thermometers for medical
`purposes; Thermometers for medical use; Bottle holders for holding babies'
`bottles, namely, holders for holding babies' bottles during feeding in the nature
`of flexible braces for wearing around the neck of the person holding a feeding
`baby; Bottle holders for holding babies' bottles, namely, holders for holding ba-
`bies' bottles in the nature of rigid braces for clamping to babies' seats during
`feeding; Clinical thermometers; Clips for pacifiers; Cups adapted for feeding ba-
`bies and children; Dishes adapted for feeding babies and children; Disposable
`
`

`

`baby bottle liners; Disposable feeding bottle teats; Disposable teats being paci-
`fiers for babies; Dummies for babies; Ear thermometers; Fever thermometers;
`Gum massagers for babies; Infrared thermometers for medical purposes;
`Nipples for baby bottles; Pacifiers for babies; Pouches specially adapted for
`holding pacifiers; Teats being pacifiers for babies; Teething rings incorporating
`baby rattles
`
`U.S. registration
`no.
`Register
`Registration date
`
`6429010
`
`Principal
`07/20/2021
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 011. First use: First Use: Jun 30, 1995 First Use In Commerce: Jun 30,
`1995
`Baby bottle sterilizers; child safe protective covers for bathtub spouts; electric
`warmers for feeding bottles; toilet trainer seats, namely, smaller training seats
`for attachment to full-size toilets and toilet seats for training purposes; electric
`heaters for babies' bottles; heaters, electric, for feeding bottles; toilet bowls for
`children; toilet seat adaptors for children in the nature of a plastic device that is
`specially adapted to rest on a toilet seat; toilet seats for children
`
`U.S. registration
`no.
`Register
`Registration date
`
`6118908
`
`Principal
`08/04/2020
`
`Application date
`
`01/28/2020
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 012. First use: First Use: Nov 18, 2013 First Use In Commerce: Nov 18,
`2013
`Child restraints for vehicle seats; Child safety harnesses for vehicle seats; Chil-
`dren's safety belts for use in vehicles; Cup holders for use in automobiles; Cup
`holders for use in vehicles; Cup holders for vehicles; Seat safety harnesses for
`motor cars; Stroller covers; Stroller hoods; Aftermarket automobile accessories,
`namely, car interior organizer bags, nets and trays specially adapted for fitting in
`vehicles; Baby strollers; Bags adapted for strollers; Blankets specially adapted
`for baby strollers; Canopies for baby strollers; Car interior organizer bags spe-
`cially adapted for fitting in vehicles; Covers for baby strollers; Fitted car seat cov-
`ers; Fitted stroller mosquito nets; Fitted covers for children's car seats; Vehicle
`seat cushions; Vehicle seat protectors
`
`U.S. registration
`no.
`Register
`Registration date
`
`6259435
`
`Principal
`02/02/2021
`
`Word mark
`
`NUBY
`
`Application date
`
`02/03/2020
`
`Foreign priority
`date
`
`NONE
`
`

`

`Design mark
`Description of
`mark
`Goods/services
`
`NONE
`
`Class 016. First use: First Use: Jan 1, 1998 First Use In Commerce: Jan 1, 1998
`Baby books; Illustrations; Prints; Art prints; Art prints on canvas; Children's
`books; Children's activity books; Children's interactive educational books; Color
`prints; Flip books; Graphic prints; Graphic prints and representations; Memory
`boxes, namely, cardboard boxes containing cardboard cards for displaying and
`storing babies and children keepsakes and mementos; Pictorial prints; Picture
`books; Printed stories in illustrated form; Story books
`
`U.S. registration
`no.
`Register
`Registration date
`
`6441853
`
`Principal
`08/03/2021
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 020. First use: First Use: Apr 30, 1994 First Use In Commerce: Apr 30,
`1994
`Baby bouncers; Baby changing mats; Baby changing platforms; Baby walkers;
`Booster seats; Bottle racks; Clothes hangers; Bath seats for babies; Cots for ba-
`bies; Cribs for babies; Furniture primarily of metal, namely, mirrors, bed frames,
`dining tables, coffee tables, end tables, desks, display cases, shelving, dog
`gates, and baby gates; Hangers for clothes; High chairs for babies; Non-metal
`safety gates for babies, children, and pets; Plastic bottle caps for storing
`powdered nutritional supplements and for dispensing those supplements into the
`bottle; Playpens for babies; Portable baby bath seats for use in bath tubs
`
`U.S. registration
`no.
`Register
`Registration date
`
`6441854
`
`Principal
`08/03/2021
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 021. First use: First Use: Apr 30, 1994 First Use In Commerce: Apr 30,
`1994
`Baby bathtubs; Combs; Electric tooth brushes; Hair brushes; Hair, nail and tooth
`brushes; Hairbrushes; Infant bathtubs; Plastic bath racks; Plastic bathtubs for
`children; Potties for children; Tooth brushes; Toothbrush cases; Toothbrush
`holders; Electric toothbrush replacement heads; Electric toothbrushes; Electrical
`toothbrushes; Finger toothbrushes; Finger toothbrushes for babies; Hair combs;
`Home dental care product for babies and children's gums and teeth, namely, fin-
`ger brushes; Interdental brushes for cleaning the teeth; Manual toothbrushes;
`Oral care kit comprising toothbrushes and floss; Portable potties for children;
`Powder applicator sold empty for holding and dispensing baby powder; Tooth
`brushes, non-electric; Toothbrushes; Toothbrushes, electric
`
`

`

`U.S. registration
`no.
`Register
`Registration date
`
`6412058
`
`Principal
`07/06/2021
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 022. First use: First Use: Jan 9, 2012 First Use In Commerce: Jan 9, 2012
`Bath toy organizers in the nature of net bags secured by suction cups; Multi-
`strand lanyard used to attach a child's toys, bottles, books, sippy cup and other
`similar items to a stroller, car seat, high chair, store cart or other similar apparat-
`us
`
`U.S. registration
`no.
`Register
`Registration date
`
`6103679
`
`Principal
`07/14/2020
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 024. First use: First Use: Jan 1, 1998 First Use In Commerce: Jan 1, 1998
`Baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted
`crib sheets, crib skirts, crib blankets, and diaper changing pad covers not of pa-
`per; Baby blankets; Burp cloths; Diaper changing pads not of paper; Diaper
`changing cloths for babies; Sleeping bags for babies
`
`U.S. registration
`no.
`Register
`Registration date
`
`6412059
`
`Principal
`07/06/2021
`
`Application date
`
`09/27/2019
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 024. First use: First Use: May 30, 1994 First Use In Commerce: May 30,
`1994
`Children's towels
`
`U.S. application
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`
`97206134
`
`Principal
`NONE
`
`NUBY
`
`Application date
`
`01/06/2022
`
`Foreign priority
`date
`
`NONE
`
`

`

`Description of
`mark
`Goods/services
`
`NONE
`
`Class 025. First use: First Use: Oct 31, 1998 First Use In Commerce: Oct 31,
`1998
`Headbands; Shoes; Socks; Bibs for babies, sleeved, not of paper; Bibs not of
`cloth or paper; Bibs not of paper; Shoe soles; Shoes for Babies; Shoes with
`hook and pile fastening tapes; Socks and stockings; Training shoes; Ankle
`socks; Anklets; Baby bibs not of paper; Children's and infants' cloth bibs; Chil-
`dren's cloth eating bibs; Cloth bibs; Infants' shoes; Infants' shoes and boots;
`Knitted baby shoes; Non-slip socks; Plastic baby bibs; Silicone baby bibs; Slip-
`on shoes; Slipper socks
`
`U.S. registration
`no.
`Register
`Registration date
`
`6653480
`
`Principal
`02/22/2022
`
`Application date
`
`04/28/2021
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`Goods/services
`
`NUBY
`
`NONE
`
`Class 035. First use: First Use: Dec 5, 2008 First Use In Commerce: Dec 5,
`2008
`On-line retail store services featuring products for babies, children and care
`givers; The bringing together, for the benefit of others, of products for babies,
`children and care givers, excluding the transport thereof, enabling customers to
`conveniently view and purchase those goods by means of on-line retail stores
`
`Attachments
`
`Newbby - US Cancellation - Reg No - Petition - Final.pdf(262767 bytes )
`
`Signature
`Name
`Date
`
`/Robert M. Chiaviello/
`Robert M. Chiaviello
`04/11/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Registration No. 5,672,782
`
`For the Mark: NEWBBY
`
`Registered: 12 February 2019
`
`
`ADMAR INTERNATIONAL, INC.,
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`Cancellation No. _________
`
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` )
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`
`
`v.
`
`
`YAO XIAO,
`
`
`
`
`
`
`
`
`
`Respondent.
`
`
`
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`Admar International, Inc., Petitioner, a corporation organized and existing under the laws
`
`of Delaware with a principal place of business at 1200 University Avenue, Monroe, LA 71203,
`
`believes that it has been and will continue to be damaged by U.S. Trademark Registration No.
`
`5,672,782 for the mark NEWBBY, and hereby petitions for cancellation of the NEWBBY
`
`registration pursuant to Section 14(1) of the Lanham Trademark Act of 1946 ("Lanham Act"), 15
`
`U.S.C. § 1064(1).
`
`As grounds for cancellation, Petitioner alleges as follows:
`
`1. Petitioner is in the business of owning and licensing intellectual property.
`
`
`
`1
`
`

`

`2. Petitioner is the owner of sixteen U.S. Trademark registrations and applications for the word
`
`mark NUBY in the various international classes, including international class 25, and for the
`
`various goods and services as set out in the chart attached as Exhibit A.
`
`3. Petitioner has licensed the NUBY word mark in interstate commerce in the United States to
`
`Luv n’ care, Ltd., continuously since January 1, 1998, for use in connection with the sale and
`
`distribution of products for infants, children and mothers including clothing and other
`
`products falling within international class 25. All good will associated with the use of the
`
`NUBY mark accrues to the benefit of Petitioner.
`
`4. As a result of the widespread, continuous, and exclusive use of the NUBY mark, on products
`
`for infants, children and mothers including clothing and other products falling within
`
`international class 25, to identify Petitioner as their ultimate source, Petitioner owns valid
`
`and subsisting federal statutory and common law rights to the NUBY mark in international
`
`class 25.
`
`5. Petitioner’s NUBY mark is distinctive to both the consuming public and Petitioner’s trade.
`
`6. Petitioner and Petitioner’s licensee have expended substantial time, money and resources
`
`marketing and promoting products for infants, children and mothers including clothing and
`
`other products falling within international class 25 sold under the NUBY mark throughout
`
`the United States including the use of point of purchase materials, displays and social media.
`
`7. The products for infants, children and mothers, including clothing and other products falling
`
`within international class 25, Petitioner has licensed under the NUBY mark are of high
`
`quality encompassing attractive and unique product designs and are constructed of high
`
`quality materials using state of the art manufacturing. Petitioner has at all times exercised
`
`
`
`2
`
`

`

`control over the quality of the products licensed for use under the NUBY mark to insure that
`
`they are of the highest quality.
`
`8. Upon information and belief, Respondent, Yao Xiao, an individual with an address at No.
`
`498 Shaoshan South Road, Tianxin Dist Changsha, Hunan, China 410000, is the current
`
`listed owner of Registration No. 5,672,782 for the mark NEWBBY in connection with
`
`Adhesive bras; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,
`
`athletic uniforms; Bathing costumes; Brassieres; G-strings; Knit shirts; Leg shapers;
`
`Lingerie; Clothing lingerie; Nipple covers, namely, pasties; Shapewear; Sports pants; Sports
`
`shirts; Swimwear; Underpants; Vests; Yoga pants, all in International Class 25. That
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`trademark registration, based on an application filed on February 5, 2018, was issued on
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`February 12, 2019.
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`9. Petitioner’s NUBY mark has priority over Respondent’s mark because Petitioner’s first-use
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`date of the NUBY mark predates the filing, first use and first use in commerce dates of
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`Respondent’s application for Registration No. 5,672,782 or any other date on which the
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`Respondent may rely for purposes of priority.
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`10. Respondent’s mark when spoken or used verbally is so like Petitioner’s NUBY mark as to
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`be likely to cause confusion, mistake, or deceive consumers into believing that Respondent’s
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`goods and services originate from, are sponsored or endorsed by or are somehow associated
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`with Petitioner.
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`11. The goods and services covered by Respondent’s Trademark Registration No. 5,672,782 are
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`used in connection with products identical to the products for mothers including clothing,
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`and other products falling within international class 25, Petitioner offers under its NUBY
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`mark.
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`12. Respondent’s Trademark Registration No. 5,672,782 is unrestricted as to consumers or trade
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`channels. As such, it is presumed that Respondents’ goods and services identified in the
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`challenged registration are sold to ordinary consumers of products for mothers including
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`clothing and other products falling within international class 25 using Petitioner’s mark
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`including consumers of products for mothers including clothing and other products falling
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`within international class 25 and travel in all ordinary trade channels through which
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`Petitioner’s licensee sells its clothing and other products falling within international class 25
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`under the NUBY mark.
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`GROUND FOR CANCELLATION –
`PRIORITY AND LIKELIHOOD OF CONFUSION
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`13. Respondent’s registration should be cancelled because it consists of a mark which is verbally
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`identical to Petitioner’s previously used NUBY mark as to be likely, when used in connection
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`with Respondent’s goods and services, to cause confusion, mistake, or deception, and to
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`cause damage to Petitioner thereby.
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`WHEREFORE, Petitioner respectfully requests that its cancellation be sustained, and the
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`Respondent’s Trademark Registration No. 5,672,782 be cancelled.
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`Respectfully submitted this 11th day of April 2023,
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`_/s/Robert M. Chiaviello Jr._____
`Robert M. Chiaviello, Jr.
`NubyLaw
`New York Bar No. 2148687
`Texas Bar No. 04190720
`Louisiana Bar No. 37370
`3030 Aurora Avenue
`Monroe, LA 71201
`(318) 410-4012
`bobc@nuby.com
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`Attorney for Petitioner Admar International, Inc.
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`EXHIBIT A
`EXHIBIT A
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`5
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`Serial
`Number
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`Class
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`88634179 3
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`6097906
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`5
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`Nuby Word Mark Applications
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`Goods
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`Baby bubble bath; Baby hair conditioner; Baby hand soap; Baby lotion; Baby oil;
`Baby oils; Baby powder; Baby powders; Baby shampoo; Baby sun creams; Baby
`wipes impregnated with cleaning preparations; Body cream; Body cream soap;
`Body creams; Body lotion; Body lotions; Body oil; Body oils; Body powder; Body
`scrub; Body scrubs; Body sprays; Body wash; Dish detergents; Face creams;
`Laundry detergent; Laundry detergents; Laundry fabric conditioner; Laundry soap;
`Lip balm; Lip balm; Lip cream; Moisturizing creams; Moisturizing creams;
`Moisturizing preparations for the skin; Shampoo-conditioners; Shampoos; Cases
`for baby wipes impregnated with cleaning preparations; Deodorants for body care;
`Disposable wipes impregnated with cleaning chemicals or compounds for industrial
`and commercial use; Face and body beauty creams; Face and body creams; Face
`and body lotions; Facial moisturizers; Hair shampoo; Hair shampoos and
`conditioners; Hand cleaning gels; Hand cleaners; Liquid laundry detergents; Liquid
`soaps for laundry; Lotions for face and body care; Moisturizing body lotions; Nasal
`cleaning preparations for personal sanitary purposes; Non-medicated lip balm that
`does not contain beeswax; Non-medicated lip balms; Non-medicated lip care
`preparations; Non-medicated balms for use on lips; Non-medicated herbal body
`care products, namely, body oils, salves, and lip balms; Non-medicated lotions for
`body; Non-medicated skin care preparation, namely, body mist; Non-medicated
`soaps for babies; Non-medicated soaps for babies; Powder laundry detergents;
`Pre-moistened towelettes impregnated with a detergent for cleaning; Scented
`body lotions and creams; Shampoos for babies; Skin moisturizer; Skin moisturizing
`gel; Skin care preparations, namely, body balm; Skin cleanser in liquid spray form
`for use as a baby wipe alternative; Tooth cleaning preparations
`Aloe vera gel for therapeutic purposes; Aloe vera preparations for therapeutic
`purposes; Anti-bacterial soap; Anti-cough drops; Anti-inflammatories; Anti-
`inflammatory and antipyretic preparations; Anti-inflammatory gels; Anti-
`inflammatory ointments; Anti-inflammatory salves; Anti-inflammatory sprays;
`Anti-itch cream; Anti-itch ointment; Antibacterial hand lotions; Antibacterial hand
`soaps; Antibacterial handwash; Antibacterial handwashes; Antibacterial liquid
`soap; Antibacterial liquid soaps; Antibacterial skin soaps; Antibacterial soap;
`Antibacterial spray; Antibacterial wipes; Babies' diaper-pants; Babies' diapers;
`Babies' diapers of paper; Babies' napkin-pants; Babies' napkins; Babies' swim
`diapers; Baby diapers; Baby food; Baby foods; Breast pads; Calamine lotion;
`Disposable sanitizing wipes; Disposable training pants; Haemorrhoid preparations;
`Hemorrhoid preparations; Hemorrhoid treatment preparations; Hemorrhoidal
`ointments; Herbal supplements; Homeopathic supplements; Hydrocortisone
`cream; Infant cloth diapers; Infant diaper covers; Infant formula; Insect repellents;
`Insect repellents
`in pre-moistened towelette form;
`Insect-repellents; Kits
`comprised primarily of sanitizer gel and disinfecting wipes and also including
`sanitary masks, plastic gloves and hand cream used for germ prevention;
`Mentholated ointment for medical use; Mercurial ointments for medical use; Nail
`fungus treatment preparations; Non-medicated topical gel for the prevention and
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`treatment of allergies; Non-medicated topical gel for the prevention and treatment
`of cold and flu; Nursing pads; Nutritional supplements; Nutritional supplements,
`namely, probiotic compositions; Pharmaceutical skin lotions; Preparations for
`repelling animals, birds and insects; Teething gels; Topical dermatological
`preparations that treat insect bites and stings; Topical first aid gel; Topical gel for
`medical and therapeutic treatment of diaper rash; Wearable insect repelling
`devices for attachment to clothing sold pre-filled with insect repelling preparations;
`Anti-insect spray; Bracelets impregnated with insect repellent; Breast-nursing
`pads; Dietary and nutritional supplements; Disposable baby diapers; Disposable
`swim diapers for children and infants; First aid kits; First aid kits for domestic or
`other non-professional use; Food for babies; Food for infants; Food for infants,
`namely, human breast milk; Gels, creams and solutions for dermatological use;
`Homeopathic anti-inflammatory ointment; In vitro gender prediction test kit; In-
`vitro ovulation prediction test kit for home use; Liquid herbal supplements; Liquid
`nutritional supplement; Medicated baby oils; Medicated baby powders; Medicated
`cream soap; Medicated creams for treating dermatological conditions; Medicated
`shampoos for babies; Medicated skin care preparations, namely, creams, lotions,
`gels, toners, cleaners and peels; Medicated soaps for babies; Medicated
`supplements for foodstuffs for babies; Medicinal creams for skin care; Mineral
`nutritional supplements; Mosquito-repellent patches for babies; Multipurpose
`medicated antibiotic cream, analgesic balm and mentholated salve; Nappies as
`baby diapers; Natural herbal supplements; Ovulation test kits; Powdered milk for
`babies; Pregnancy test kits for home use; Preparations to prevent nail-biting and
`thumb-sucking; Tissues impregnated with antibacterial preparations; Topical
`analgesic creams.
`Electric food blenders for household purposes; Electric food mixers for household
`purposes; Electric food processors for household purposes; Electric fruit peelers;
`Electric fruit squeezers for household purposes; Electric juice extractors; Electric
`juicers; Electric mixers for household purposes; Electric hand-held mixers for
`household purposes; Fruit presses, electric, for household purposes; Hand-held
`electric-powered food processors
`Emery boards; Fingernail clippers; Flatware, namely, forks, knives, and spoons;
`Manicure sets; Nail clippers; Nail scissors; Tableware, namely, knives, forks and
`spoons; Disposable tableware, namely, knives, forks and spoons; Disposable
`tableware, namely, spoons; Forks and spoons being tableware; Forks being
`tableware; Knives being tableware; Knives, forks, and spoons being tableware;
`Spoons being tableware.
`Infant Pacifier(s).
`Babies' bottles; Baby bottle nipples; Baby bottle that plays sounds using wireless
`technology; Baby bottles; Baby feeding dummies; Baby feeding pacifiers; Baby
`nursers; Breast milk storage bottles; Breast pumps; Breast shields; Breast warmer
`pads for medical purposes; Dropper bottles for administering medication, sold
`empty; Droppers for administering medication, sold empty; Feeding bottle teats;
`Feeding bottles; Gum massaging instruments; Nasal aspirators; Nursing bottles;
`Pacifier clips; Pacifier cloth for attachment to infant pacifiers; Spoons for
`administering medicine; Teething rings; Thermometers for medical purposes;
`Thermometers for medical use; Bottle holders for holding babies' bottles, namely,
`holders for holding babies' bottles during feeding in the nature of flexible braces for
`wearing around the neck of the person holding a feeding baby; Bottle holders for
`holding babies' bottles, namely, holders for holding babies' bott