ESTTA Tracking number:
`
`ESTTA1319405
`
`Filing date:
`
`10/31/2023
`
`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
`
`EMMANUEL ZUÃ#IGA SANCHEZ
`Individual
`Incorporated or
`registered in
`
`MEXICO
`
`PEREDO NUMERO 9
`COLONIA BARRIO SAN FRANCISCO
`JONACATEPEC, MR 62930
`MEXICO
`
`Attorney informa-
`tion
`
`Docket no.
`
`THOMAS D FOSTER
`TDFOSTER - INTELLECTUAL PROPERTY LAW
`11622 EL CAMINO REAL, SUITE 100
`SAN DIEGO, CA 92130
`UNITED STATES
`Primary email: foster@tdfoster.com
`858-922-2170
`7237.011-00
`
`Registration subject to cancellation
`
`Registration no.
`Register
`Registrant
`
`5986292
`Principal
`La Tia Mana LLC
`700 LAVACA ST.
`AUSTIN, TX 78701
`UNITED STATES
`
`Registration date
`
`02/11/2020
`
`Goods/services subject to cancellation
`
`Class 003. First Use: Apr 18, 2018 First Use In Commerce: Apr 18, 2018
`All goods and services in the class are subject to cancellation, namely: Beauty creams; Beauty
`creams for body care; Beauty balm creams; Face and body beauty creams
`
`Grounds for cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Registration subject to cancellation
`
`Registration no.
`Register
`Registrant
`
`6222842
`Principal
`La Tia Mana LLC
`1903 YANDELL
`
`Registration date
`
`12/15/2020
`
`

`

`EL PASO, TX 79903
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 005. First Use: Jun 5, 2019 First Use In Commerce: Jun 5, 2019
`All goods and services in the class are subject to cancellation, namely: Food supplements; Food sup-
`plements, namely, anti-oxidants; Dietary food supplements; Health food supplements; Mineral food
`supplements; all of the foregoing expressly excluding teas and herbal teas
`
`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.
`Register
`Registration date
`
`Word mark
`
`Design mark
`Description of
`mark
`
`Goods/services
`
`97071803
`
`Application date
`
`10/13/2021
`
`Principal
`NONE
`
`Foreign priority
`date
`CHPPNZ CHUPA PANZA JENGIBRE PIÃ#A + LINAZA TÃ# BASE DE RAÃ#Z
`DE JENGIBRE, PIÃ#A, LINAZA Y CANELA
`
`NONE
`
`The mark consists of the wording "CHPPNZ" written in a blue stylized font in the
`middle of five horizontal stripes stretched from one side to the other, one under
`the other, alternating the colors gold and purple. Below the wording there are the
`words "CHUPA PANZA", "written in a blue stylized font, each letter having white
`shadows, and the words "JENGIBRE" and the wording "PIÃ#A + LINAZA" writ-
`ten below the words "CHUPA PANZA", in a white stylized font and superim-
`posed on a blue curved rectangle. On the right lower part of the design there is a
`graphic representation of a brown ginger with three cut yellow slices and four
`green leaves, two on each side, with a straight black line starting from the bot-
`tom left and going until the margin. On the right of the ginger there is a graphic
`representation of a white cup, having inside gold tea and on the bottom right four
`brown graphic representations of cinnamon sticks with a green mint flower on
`top. On the lower left part of the design, there are the words "TÃ# BASE DE
`RAÃ#Z", "DE JENGIBRE, PIÃ#A," and "LINAZA Y CANELA" written one under
`the other in a red stylized font. All of the above is placed on a rectangular yellow
`label.
`Class 005. First use: First Use: None First Use In Commerce: None
`Anti-inflammatory gels; Anti-inflammatory ointments; Dietetic beverages adapted
`for medical purposes; Food supplements; Meal replacement shakes adapted for
`medical use; Medicated lotions for skin and body; Medicated soaps; Medicinal
`herbal extracts for medical purposes; Medicinal herbal preparations; Medicinal
`infusions for treating constipation; Medicinal tea; Mentholated ointment for med-
`ical use; Vitamin preparations all of the foregoing made in whole or significant
`part of Ginger, pineapple, flax, ginger root and Cinnamon
`
`U.S. application
`no.
`Register
`
`90896074
`
`Principal
`
`Application date
`
`08/23/2021
`
`

`

`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`
`Goods/services
`
`U.S. application
`no.
`Register
`Registration date
`
`Word mark
`Design mark
`Description of
`mark
`
`Goods/services
`
`NONE
`
`Foreign priority
`date
`CHUPA PANZA GEL DE JENGIBRE 100% NATURAL
`
`NONE
`
`The mark consists of the wording "CHUPA PANZA" written in a brown stylized
`font, under which there is the wording "GEL DE JENGIBRE" written in a light
`brown surrounded by a brown shadow. The wording is placed over an image of
`pink ginger with green leaves on the upper right part, and three slices of yellow
`ginger in the left part. On the right side of the image, there is the wording "100%
`NATURAL" written one under the other in a brown stylized font. The entire
`design is flanked by two human torsos, in the left part being a pink hand pitching
`the hips fat above a white skirt, and in the right side is person with pink skin
`measuring the waist with a yellow tape measure above a white skirt. The entire
`design is placed on a white background that is not a part of the mark.
`Class 005. First use: First Use: None First Use In Commerce: None
`Dietetic infusions for medical use; Food supplements; Medicated lotions for
`body; Medicinal tea; Slimming tea for medical purposes all of the foregoing
`made in whole or significant part of ginger
`
`90800313
`
`Application date
`
`06/29/2021
`
`Principal
`NONE
`
`Foreign priority
`date
`CHUPA PANZA GEL DE JENGIBRE 100% NATURAL
`
`NONE
`
`The mark consists of the wording "CHUPA PANZA" written in a brown stylized
`font, under which there is the wording "GEL DE JENGIBRE" written in a light
`brown surrounded by a brown shadow. The wording is placed over an image of
`a ginger appearing in pink with green leaves on the upper right part, and three
`slices of yellow ginger in the left part. On the right side of the image, there is the
`wording "100% NATURAL" written one under the other in a brown stylized font.
`The entire design is flanked by two human torsos, in the left part being a pink
`hand pitching the hips fat above a white skirt, and in the right side is person with
`pink skin measuring the waist with a yellow tape measure above a white skirt.
`The entire design is placed on a white background that is not a part of the mar.
`Class 030. First use: First Use: None First Use In Commerce: None
`Tea; Fruit teas; Herbal infusions; Instant tea; Mixes for making tea; Tea-based
`beverages; Tea extracts; Tea for infusions all of the foregoing made in whole or
`significant part of ginger
`
`U.S. application
`no.
`Register
`Registration date
`
`90714888
`
`Principal
`NONE
`
`Application date
`
`05/17/2021
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`Design mark
`Description of
`mark
`
`RETO CHUPAPANZA
`
`The mark consists of the stylized wording "RETO" written in a red, above the
`word "CHUPAPANZA" written in a yellow surrounded by a black stylized shad-
`ow. Above the wording there is a mascot with pink skin, which has a red hat with
`white lines, a black, red and white mouth, a red scarf around its neck, a green
`and yellow vest, a green and yellow belt, and yellow and black gloves. The white
`
`

`

`Goods/services
`
`outside the design is just transparent background and is not claimed as a fea-
`ture of the mark.
`Class 005. First use: First Use: None First Use In Commerce: None
`Balms for medical purposes; Dietary supplemental drinks; Dietetic infusions for
`medical use; Massage gels for medical purposes; Meal replacement drink mixes
`adapted for medical use; Medical preparations for slimming purposes; Medic-
`ated lotions for body; Medicated soap; Medicinal tea; Mentholated ointment for
`medical use; Slimming pills
`
`Attachments
`
`7237.011-00 20231031 CANCELLATION PETITION.pdf(128644 bytes )
`
`Signature
`Name
`Date
`
`/Thomas D. Foster/
`Thomas D. Foster
`10/31/2023
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
` )
`ZUÑIGA SANCHEZ, EMMANUEL ) Cancellation No. ____________
`
`
`
`Petitioner, )
`
`
`
`
`
`
` ) In the Matter of U.S. Trademark
`
`
`
`
`
`
` ) Registration No.: 5986292
`
`
`
`
`
`
` )
`
`Mark: CHUPA PANZA
`
`
`
`
`
`
`
` )
`
`Date Registered: Feb. 11, 2020
`
`
`
`
`
`
` )
`
`
`
`
`
`
`
`
`
` ) In the Matter of U.S. Trademark
`
`
`
`
`
`
` ) Registration No.: 6222842
`v.
`
`
`
`
`
` )
`
`Mark: CHUPA PANZA
`
`
`
`
`
`
`
` )
`
`Date Registered: Dec. 15, 2020
`LA TIA MANA LLC
`
`
` )
`Registrant.
` )
`
`
`
` )
`
`
`
`
`
`
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`Emmanuel Zuniga Sanchez (hereinafter “Petitioner”), a Mexican citizen markets
`
`in the United States his CHUPA PANZA brand of Anti-inflammatory gels; Anti-
`
`inflammatory ointments; Dietetic beverages adapted for medical purposes; Food
`
`supplements; Meal replacement shakes adapted for medical use; Medicated lotions for
`
`skin and body; Medicated soaps; Medicinal herbal extracts for medical purposes;
`
`Medicinal herbal preparations; Medicinal infusions for treating constipation; Medicinal
`
`tea; Mentholated ointment for medical use; Vitamin preparations all of the foregoing
`
`made in whole or significant part of Ginger, pineapple, flax, ginger root and Cinnamon;
`
`and his CHUPA PANZA brand of Dietetic infusions for medical use; Food supplements;
`
`Medicated lotions for body; Medicinal tea; Slimming tea for medical purposes all of the
`
`foregoing made in whole or significant part of ginger and his CHUPA PANZA brand of
`
`Tea; Fruit teas; Herbal infusions; Instant tea; Mixes for making tea; Tea-based
`
`7237.011-00
`
`
`

`

`beverages; Tea extracts; Tea for infusions all of the foregoing made in whole or
`
`significant part of ginger and his RETO CHUPAPANZA brand of Balms for medical
`
`purposes; Dietary supplemental drinks; Dietetic infusions for medical use; Massage gels
`
`for medical purposes; Meal replacement drink mixes adapted for medical use; Medical
`
`preparations for slimming purposes; Medicated lotions for body; Medicated soap;
`
`Medicinal tea; Mentholated ointment for medical use; Slimming pills. Mr. Sanchez has a
`
`principal place of business at Peredo Numero 9 Colonia Barrio San Francisco
`
`Jonacatepec, Morelos Mexico 62930. He believes that he is damaged and will continue
`
`to be damaged by U.S. Registration No. 5986292, issued February 11, 2020, for the
`
`mark CHUPA PANZA, and U.S. Registration No. 6222842, issued December 15, 2020,
`
`for the mark CHUPA PANZA, both registered to La Tia Mana LLC. (hereinafter
`
`“Registrant”), a Texas limited liability company which has a principal place of business
`
`at 1903 Yandell El Paso TEXAS 79903. Petitioner hereby petitions to cancel these
`
`same registrations pursuant to 15 U.S.C. § 1064.
`
`
`
`As grounds in support of its Petition for Cancellation, Petitioner asserts as
`
`follows:
`
`Petitioner’s Long-Standing Use of CHUPA PANZA as a Trademark
`
`1.
`
`Petitioner has for many years, and long prior to any date for first use upon which
`
`Registrant can rely, adopted, and continuously used the “CHUPA PANZA” name and
`
`trademark (“Petitioner’s Mark”) in the United States of America on Anti-inflammatory
`
`gels; Anti-inflammatory ointments; Dietetic beverages adapted for medical purposes;
`
`Food supplements; Meal replacement shakes adapted for medical use; Medicated
`
`lotions for skin and body; Medicated soaps; Medicinal herbal extracts for medical
`
`7237.011-00
`
`
`

`

`purposes; Medicinal herbal preparations; Medicinal infusions for treating constipation;
`
`Medicinal tea; Mentholated ointment for medical use; Vitamin preparations all of the
`
`foregoing made in whole or significant part of Ginger, pineapple, flax, ginger root and
`
`Cinnamon; Dietetic infusions for medical use; Food supplements; Medicated lotions for
`
`body; Medicinal tea; Slimming tea for medical purposes all of the foregoing made in
`
`whole or significant part of ginger; Tea; Fruit teas; Herbal infusions; Instant tea; Mixes
`
`for making tea; Tea-based beverages; Tea extracts; Tea for infusions all of the
`
`foregoing made in whole or significant part of ginger; Balms for medical purposes;
`
`Dietary supplemental drinks; Dietetic infusions for medical use; Massage gels for
`
`medical purposes; Meal replacement drink mixes adapted for medical use; Medical
`
`preparations for slimming purposes; Medicated lotions for body; Medicated soap;
`
`Medicinal tea; Mentholated ointment for medical use; Slimming pills.
`
`2.
`
`Petitioner is the owner of pending U.S. Trademark Application Serial No.
`
`97071803 for the CHUPA PANZA & Design mark (“Petitioner’s First Application”) on the
`
`Principal Register. The applied for goods are “Anti-inflammatory gels; Anti-inflammatory
`
`ointments; Dietetic beverages adapted for medical purposes; Food supplements; Meal
`
`replacement shakes adapted for medical use; Medicated lotions for skin and body;
`
`Medicated soaps; Medicinal herbal extracts for medical purposes; Medicinal herbal
`
`preparations; Medicinal infusions for treating constipation; Medicinal tea; Mentholated
`
`ointment for medical use; Vitamin preparations all of the foregoing made in whole or
`
`significant part of Ginger, pineapple, flax, ginger root and Cinnamon” in International
`
`Class 005. This first application was filed on October 13, 2021, claiming rights under
`
`Section 44E to a Mexican registration and an intention to use the mark in commerce.
`
`7237.011-00
`
`
`

`

`3.
`
`Petitioner is the owner of a second pending U.S. Trademark Application Serial
`
`No. 90896074 for the CHUPA PANZA & Design mark (“Petitioner’s Second
`
`Application”) on the Principal Register. The applied for goods are “Dietetic infusions for
`
`medical use; Food supplements; Medicated lotions for body; Medicinal tea; Slimming
`
`tea for medical purposes all of the foregoing made in whole or significant part of ginger”
`
`in International Class 005. This second application was filed on August 23, 2021,
`
`claiming rights under Section 44E to a Mexican registration and an intention to use the
`
`mark in commerce.
`
`4.
`
`Petitioner is the owner of a third pending U.S. Trademark Application Serial No.
`
`90800313 for the CHUPA PANZA & Design mark (“Petitioner’s Third Application”) on
`
`the Principal Register. The applied for goods are “Tea; Fruit teas; Herbal infusions;
`
`Instant tea; Mixes for making tea; Tea-based beverages; Tea extracts; Tea for infusions
`
`all of the foregoing made in whole or significant part of ginger” in International Class
`
`030. This third application was filed on June 29, 2021, claiming rights under Section
`
`44E to a Mexican registration and an intention to use the mark in commerce.
`
`5.
`
`Petitioner is the owner of a fourth pending U.S. Trademark Application Serial No.
`
`90714888 for the RETRO CHUPA PANZA & Design mark (“Petitioner’s Fourth
`
`Application”) on the Principal Register. The applied for goods are “Balms for medical
`
`purposes; Dietary supplemental drinks; Dietetic infusions for medical use; Massage gels
`
`for medical purposes; Meal replacement drink mixes adapted for medical use; Medical
`
`preparations for slimming purposes; Medicated lotions for body; Medicated soap;
`
`Medicinal tea; Mentholated ointment for medical use; Slimming pills” in International
`
`7237.011-00
`
`
`

`

`Class 005. This fourth application was filed on May 17, 2021, claiming an intention to
`
`use the mark in commerce.
`
`6.
`
`The USPTO has refused the first two and the fourth of Petitioner’s Applications
`
`(the CHUPA PANZA Marks) under Section 2(d) because of a likelihood of confusion
`
`with U.S. Trademark Registration Nos. 5986292 and 6222842 for the mark CHUPA
`
`PANZA (“Registrant’s Marks”).
`
`7.
`
`By virtue of Petitioner’s extensive advertising and promotion of his goods under
`
`the CHUPA PANZA Marks, those goods have become recognizable by the public as
`
`exclusively denoting Petitioner and his goods. In addition, the CHUPA PANZA mark has
`
`come to symbolize the reputable quality of Petitioner’s goods. As a result of Petitioner’s
`
`substantial effort and investment on behalf of his brand, the goodwill inherent in the
`
`CHUPA PANZA Mark is a valuable asset of Petitioner.
`
`8.
`
`Petitioner’s CHUPA PANZA Marks are strong marks entitled to a broad range of
`
`protection.
`
`9.
`
`Petitioner’s CHUPA PANZA Marks are highly distinctive, as reflected by the lack
`
`of third-party usage in commerce and lack of third-party registration of marks containing
`
`CHUPA PANZA for similar goods.
`
`Registrant’s Registration
`
`10.
`
`The Registrant is the owner of record of the U.S. Registration Nos. 5986292 and
`
`6222842 for the CHUPA PANZA mark for “Beauty creams; Beauty creams for body
`
`care; Beauty balm creams; Face and body beauty creams” in International Class 003
`
`and “Food supplements; Food supplements, namely, anti-oxidants; Dietary food
`
`supplements; Health food supplements; Mineral food supplements; all of the foregoing
`
`7237.011-00
`
`
`

`

`expressly excluding teas and herbal teas” in International Class 005 respectively.
`
`(hereinafter “Registrant’s Goods”)
`
`11. Registrant’s application for the goods in International Class 003 was filed on May
`
`2, 2019, and was granted registration on February 11, 2020. Registrant claims to have
`
`first used the CHUPA PANZA mark on the identified goods on May 2, 2019, and claims
`
`April 18, 2018, as the date the mark was first used in commerce in connection with the
`
`identified goods.
`
`12. Registrant’s application for the goods in International Class 005 was filed on
`
`June 5, 2019, and was granted registration on December 15, 2020. Registrant claims to
`
`have first used the CHUPA PANZA mark on the identified goods on May 2, 2019, and
`
`claims June 5, 1019, as the date the mark was first used in commerce in connection
`
`with the identified goods.
`
`Likelihood of Confusion – Section 2(d)
`
`13. Petitioner incorporates Paragraphs 1 through 12 herein.
`
`14. Upon information and belief, Petitioner’s first use in commerce of its CHUPA
`
`PANZA Marks in the United States of America precedes any priority date on which
`
`Registrant may rely.
`
`15. Registrant’s CHUPA PANZA marks are identical to Petitioner’s CHUPA PANZA
`
`Marks since the dominant part of each party’s mark are the words CHUPA PANZA.
`
`16. Petitioner’s CHUPA PANZA Marks and Registrant’s CHUPA PANZA Marks are
`
`identical, in sound, meaning, appearance, and commercial impression.
`
`17. Registrant’s Goods are identical or closely related to Petitioner’s Goods which he
`
`has long offered in the United States under his CHUPA PANZA trademark.
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`7237.011-00
`
`
`

`

`18. Upon information and belief, the classes of customers for Registrant’s Goods and
`
`Petitioner’s Goods are identical or substantially overlapping.
`
`19. Upon information and belief, the channels of trade for Registrant’s Goods and
`
`Petitioner’s Goods are identical or substantially overlapping.
`
`20. Accordingly, purchasers are likely to believe and would be justified in believing
`
`that Registrant’s Goods originate from Petitioner or from an entity in some way
`
`associated with, endorsed by, or sponsored by Petitioner.
`
`21. Registrant’s Registration of the CHUPA PANZA mark is inconsistent with
`
`Petitioner’s prior rights in its CHUPA PANZA Marks.
`
`22. Registrant’s use and registration of the CHUPA PANZA mark for Registrant’s
`
`Goods is likely to cause confusion, deception, or mistake and irreparable damage and
`
`injury to Petitioner, in violation of § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`23. Petitioner is damaged and will continue to be damaged by the use and
`
`registration of Registrant’s CHUPA PANZA marks within the meaning of 15 U.S.C. §
`
`1064.
`
`WHEREFORE, Petitioner prays that this Petition for Cancellation be granted, that
`
`judgment be entered against Registrant, and that United States Trademark Registration
`
`Nos. 5986292 and 6222842 both be cancelled.
`
`
`
`
`
`
`
`
`
`///
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`7237.011-00
`
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`

`

`
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`Petitioner appoints the undersigned as its attorneys to prosecute and to transact
`
`all business in the Patent and Trademark Office connected therewith.
`
`Respectfully submitted,
`
`Date: October 31, 2023 TDFoster - Intellectual Property Law
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`_/Thomas D. Foster/_
`Thomas D. Foster, Esq
`Registration No. 44,686
`Counsel for Petitioner
`11622 El Camino Real, Suite 100
`San Diego, CA 92130
`Phone: 858.922.2170
`Fax: 888.757.3817
`foster@tdfoster.com
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`CERTIFICATE OF ELECTRONIC FILING
`
`I hereby certify that the PETITION FOR CANCELLATION is being transmitted
`
`electronically to the Trademark Trial and Appeal Board, U.S. Patent and Trademark
`Office, via the ESTTA system, on the date identified below.
`
`
`Dated: October 31, 2023 _/Thomas D. Foster/_
`
`
`
`
`
`Thomas D. Foster, Esq
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`7237.011-00
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`