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`AUG 1 6
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`“T99
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Raymond Rundelli
`Calfee, Halter & Griswold, LLP
`1400 McDonald Investment
`
`Paper No.
`
`2
`
`Mailed August 16, 2002
`
`Center
`
`Reg. No. 2,117,435
`
`800 Superior Avenue
`Cleveland, OH 44114-2688
`
`Cancellation No. 32,994
`
`Jonathan E. Grant
`
`G r an t P a t ent s e rvi c e s
`2213 M Street, NW
`Suite 300A
`
`Washington, DC 20037
`
`'JLI
`F‘.
`.
`._;W
`
`r.|l
`
`HllllllllllIlllllllllllllllllllllllllllllllllIll!
`
`01-31-2003
`U.S. Patent 8: TMOfc/TM Mail Rcpt Dt. #77
`
`VSM Sewing,
`
`Inc.
`
`v.
`
`Panline U.S.A.,
`
`Inc.
`
`a copy of which is attached, has been filed to
`A petition,
`canbel
`the above—identified registration.
`-3
`
`Proceedings will be conducted in accordance with the
`Trademark Rules of Practice.
`
`A copy of every paper or communication filed by the
`registrant regarding this matter must be mailed to the
`person or persons named below.
`
`ANSWER IS DUE forty days after the mailing date hereof.
`(See Rule 1.7 for expiration date falling on Saturday,
`
`Sunday, or a holiday.)
`
`Discovery and testimony dates are set as indicated below.
`In each instance,
`a copy of the transcript of testimony,
`together with copies of documentary exhibits, must be
`served on the adverse party within thirty days after
`completion of the taking of testimony. Rule 2.125.
`
`

`
`
`
`Discovery period to open:
`
`September 5,
`2002
`
`Discovery period to close:
`
`March 4, 2003
`
`Testimony period for party in
`position of plaintiff to close:
`(opening thirty days prior thereto)
`
`Testimony period for party in
`position of defendant
`to close:
`(opening thirty days prior thereto)
`
`testimony period to close:
`Rebuttal
`(opening fifteen days prior thereto)
`
`June 2,
`2003
`
`August 1,
`2003
`
`September
`15, 2003
`
`Briefs shall be filed in accordance with Rule 2.l28(a) and
`
`(b).
`
`An oral hearing will be set only upon request filed
`
`as provided by Rule 2.l29.
`
`If the parties to this proceeding are also parties to other
`Board proceedings involving related marks or, during the
`pendency of this proceeding,
`they become parties to such
`proceeding ,
`they should notify the Board immediately,
`so
`that the
`ard can consider consolidation of proceedings.
`
`Torri N. Rodgers
`
`Legal Assistant
`Trademark Trial and Appeal Board
`(703) 308-9300, ext.l29
`
`

`
`
`
`‘
`
`EXPRESS MAILING CERTIFICATE
`"EXPRESS MAIL" Maili g La el No.1 E L0 8351' 7 (_‘)\o() 05
`Date of Deposit
`:
`0 Z
`_
`I hereby certify that this paper 0 fee is being deposited
`with the United States Postal Service "Express Mail Post Office to
`Addressee" service under 37 CFR 1.10 on the date indicated above
`and is addressed to the Assistant Commissioner for Trademarks, Box
`TTAB/Fee, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
`Typed or printed name of person signing this c
`‘ficate:
`
`/70¢/‘/f
`P/-Amt
`
`/E
`
`‘/3 rd
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No.:
`
`2,117,435
`
`For the Mark:
`
`SEW FUN
`
`Date of Issue:
`
`December 2, 1997
`
`Cancellation No. 9 9
`
`I
`
`) )
`
`)
`
`)
`
`) )
`
`) )
`
`)
`
`VSM SEWING INC.,
`
`Petitioner,
`
`v.
`
`PANLINE USA, INC.
`
`Registrant.
`
`Assistant Commissioner for Trademarks
`Box TTAB/FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Sir:
`
`TRANSMITTAL OF PETITION FOR CANCELLATION
`
`Transmitted herewith are the following:
`1. Petition for Cancellation with Exhibits;
`2. A check in the amount of $300.00 as payment of the Petition Fee; and
`3. A Return Receipt Postcard.
`
`{NEI-I0304.DOC;l}
`
`

`
`3
`
`-\
`
`It is believed that no fi.l1‘thCI‘ fee is required relating to the filing of this Petition. If this is not
`
`the case, the Patent Office is hereby authorized to charge any related fee to Deposit Account No. 03-
`
`0172. A duplicate copy of this sheet is attached.
`
`Respectfully submitted,
`
`RaymondtRundelli
`Danielle A. Somrak
`
`CALFEE, HALTER & GRISWOLD LLP
`1400 McDonald Investment Center
`
`800 Superior Avenue '
`Cleveland, Ohio 44114-2688
`(216) 622-8854
`FAX (216) 241-0816
`
`Attorneys for Petitioner VSM Sewing Inc.
`
`{NEH0304.DOC;l}
`
`

`
`__...l_fi.'.'~_._.-_.’i:_.
`
`EXPRESS MAILING CERTIFICATE
`
`"EXPRESS MAIL" Mailing Label No.: ELDBS WMDOUS
`
`7
`:
`Date of Deposit
`I hereby certify that this paper or fee is being deposited
`with the United States Postal Service "Express Mail Post Office to
`Addressee" service under 37 CFR 1.10 on the date indicated above
`and is addressed to the Assistant Commissioner for Trademarks, Box
`TTAB/Fee, 2900 Crystal Drive, Arlington, Virginia 22202-3513.
`Typed or printed name of person signing this certificate:
`
`
`
` Sighedz i I -' V.
`
`
`
`73/45 P , /4 7,4/c.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No.:
`
`2,117,435
`
`For the Mark:
`
`SEW FUN
`
`Date of Issue:
`
`December 2, 1997
`
`Cancellation No.:
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`)
`
`‘
`
`VSM SE WING INC.,
`
`Petitioner,
`
`v.
`
`PANLINE U.S.A, INC.,
`
`Registrant.
`
`Assistant Commissioner for Trademarks
`
`Box TTAB/FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`PETITION FOR CANCELLATION
`
`Petitioner, VSM Sewing Inc. fl<a Viking Sewing Machines Inc., is an Ohio corporation
`
`with its principal place of business at 31000 Viking Parkway, Westlake, Ohio 44145. Petitioner
`
`{RR0382.DOC;l}
`
`

`
`
`
`believes that it is, has been and will be damaged by the above-referenced registration (the
`
`“Registration”), and hereby petitions for the cancellation of the Registration.
`
`The grounds for cancellation are alleged as follows:
`
`1.
`
`Registrant, Panline U.S.A.,
`
`Inc. aka Alex-Panline U.S.A.,’ Inc.,
`
`is the
`
`owner of U.S. Trademark Registration No. 2,117,435 (the “’435 Registration”) for the mark
`
`SEW FUN in International Class 28 for “hobby craft sewing kits comprising felt cloth dolls,
`
`plastic pins including hat pins, hair pins, sewing pins and clothing pins, needles, sewing thread,
`
`embroidery floss, fabric, trimming for fabric, and buttons for clothing,” which was issued on
`
`December 2, 1997 based on a claimed first use in commerce date of January 2, 1996.
`2.
`Petitioner is and has been for many years in the business of developing,
`
`producing, marketing and selling household sewing machines and related products.
`
`3.
`
`In an effort to promote its overall business by generating and supporting
`
`the public’s interest in sewing, Petitioner adopted and has been using the mark SEW YOUNG,
`
`SEW FUN in commerce since at least January 1, 2000 in connection with goods, namely, sewing
`
`kits, and services, namely recreational camps, production of television programs, publication of
`
`information in printed and electronic form in the field of sewing, and instructions and seminars
`
`in the field of sewing.
`
`4.
`
`Petitioner promotes the goods and services it offers for sale and sells under
`
`the mark SEW YOUNG, SEW FUN in a variety of ways, including by way of a web site located
`
`at <www.sewyoungsewfun.com>.
`
`5.
`
`Petitioner is the owner of U.S. Trademark Application No. 76/242, 042
`
`(the “’042 Application”) for the mark SEW YOUNG, SEW FUN in International Class 9 for
`
`“downloadable electronic publications in the nature of brochures, instructions, patterns, and
`
`{RRO382.DOC;l}
`
`2
`
`

`
`
`
`videos in the field of sewing,” in International Class 16 for “collections of instructional
`
`brochures, sewing patterns, and project ideas in the field of sewing; magazines, newsletters, and
`
`brochures in the field of sewing” and in International Class 41 for “recreational camps;
`
`production of‘television programs; electronic publishing services, namely, publication of text and
`
`graphic works of others on CD-ROMS featuring sewing; publication of magazines, newsletters,
`
`and brochures featuring sewing; workshops and seminars in the field of sewing.”
`
`6.
`
`The ‘042 Application was initially refused registration under Section 2(d)
`
`in view of the ‘435 Registration in an Office Action dated August 24, 2001. Petitioner made
`
`arguments in an attempt to persuade the Examining Attorney that a refusal to register on that
`basis was unwarranted. The Examining Attorney rejected those arguments and made the Section
`2(d) refusal final in an Office Action May 7, 20l)2.
`
`7.
`
`On information and belief, Registrant has its principal place of business at
`
`251 Union Street, Northvale, New Jersey 07647.
`
`8.
`
`Registrant is in the business of, inter alia, selling arts and crafi: products
`
`for children, including but not limited to a “dress up bear” sewing activity kit the packaging of
`
`which at one time apparently bore the mark SEW FUN.
`
`9.
`
`On information and belief, Registrant has discontinued use of the
`
`designation SEW FUN as a mark in connection with all of the goods identified in the ‘435
`
`Registration. A recent search of Registrant’s online catalog at <wvvw.alextoys.com> indicates
`
`“No products found which name or description contains ‘Sew Fun’.” (See Attachment A.) The
`
`“sewing an weaving” page of Registrant’s online catalog showing the product previously
`
`associated with the mark SEW FUN does not identify the product or any other product with that
`
`designation.
`
`(See Attachment B.) An inquiry to an authorized online dealer of Registrant’s
`
`{RR0382.DQC;1}‘
`
`3
`
`

`
`
`
`3 products indicates that the product previously associated with the mark SEW FUN is “not
`
`stocked or has been discontinued.” (See Attachment C.)
`
`10.
`
`On information and belief, when Registrant discontinued use of the
`
`designation SEW FUN as a mark, it did so with intent notito resume use.
`
`In the alternative,
`
`whatever Registrant’s intentions at the time it discontinued use of the designation SEW FUN as a
`
`mark, Registrant thereafter developed an intent not to resume use. As a result, the mark SEW
`
`FUN has been abandoned by Registrant and the Registration is subject to cancellation pursuant
`
`to 15 U.S.C. § 1064(3).
`
`11.
`
`On information and belief, Registrant has not used the designation SEW
`
`FUN as a mark for more than three consecutive years. A GOOGLETM search of the Internet
`
`shows the most reference to the product of Registrant’s associated with the mark SEW FUN that
`actually includes the mark SEW FUN dates back to November 1997.
`(See Attachment D.) As a
`
`result, there is prima facie evidence that the mark SEW FUN has been abandoned by Registrant
`
`and the Registration is subject to cancellation pursuant to 15 U.S.C. § 1064(3).
`
`12.
`
`The
`
`continued existence of
`
`the Registration despite Registrant’s
`
`abandonment of the mark SEW FUN casts a cloud on Petitioner’s own right to use, develop, and
`
`expand the use of the designation SEW YOUNG, SEW FUN as a mark in the United States, and,
`
`as such is and would continue to be a source of damage and injury to Petitioner.
`
`13..
`
`The
`
`continued existence of the Registration despite Registrant’s
`
`abandonment of the mark SEW FUN would likely prevent Petitioner from obtaining a
`
`registration for the mark SEW YOUNG, SEW FUN based on its use of the mark, and, as such is
`
`likely to be a source of injury to Petitioner.
`
`{RR0382.DOC;l}
`
`4
`
`

`
`
`
`WHEREFORE, Petitioner believes that
`
`it has been and will be damaged by the
`
`Registration and prays that it be cancelled and that this Petition for Cancellation be granted.
`
`This Petition for Cancellation with exhibits is submitted in duplicate, along with the
`
`required filing fee of $300.00.
`
`Respectfully submitted,
`
`M lam
`
`
`Raymond undelli
`Danielle A. Sornrak
`
`CALFEE, HALTER & GRISWOLD LLP
`1400 McDonald Investment Center
`
`800 Superior Avenue
`Cleveland, Ohio 44114-2688
`(216) 622-8854
`FAX (216) 241-0816
`
`Attorneys
`INC.
`
`for Petitioner VSM SEWING
`
`{RR0382.DOC;l}
`
`

`
`
`> Catalog
`-
`’
`t
`_
`page 1 of1
`
`A|.IZX@
`
`"’
`
`ABOUT ALEX
`
`@
`
`AUWWTY ZGJE
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`*0
`
`PARENTS
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`STIRE FWDEH.
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`CATALOG
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`No products found for which name or description contains 'sew fun‘.
`
`'
`
`'2
`
`a.
`0
`
`Terms of Use - Privacy Policy - Contact Us - Link to Us
`
`ALEX is a registered trademark of Paniine USA. © All Rights Reserved.
`
`
`
` EXHIBIT
`_A__
`
`
`
`cate2orv=&stFsew+fun&findit.x=. . .
`
`7/18/2002
`
`httn-//aievfnve nnm/shnn/srnhresiilt n.<n'.7a oe=&nrice=
`
`
`
`
`
`

`
`
`
`> Catalog > Products
`
`Page 1 of 2
`
`
`
`;| [X
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`
`®
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`’
`ABOUT ALE):
`
`@
`AIXTWITY ZONE
`
`an
`PARENTS
`
`‘,‘;w*
`STDRE FWDEE
`
`A
`CATALOG
`
`LOOP & CURL - ANIMAL
`
`Description: Have fun creating unique dimensional art by looping and
`curling fuzzy pipe cleaners onto colorful cardboard pictures.
`- Suitable for ages: 4+
`V
`- Suggested Retail Price: $8.00 each
`
`,
`
`LOOP & CURL - GARDEN
`Description: Have fun creating unique dimensional art by looping and
`" curling fuzzy pipe cleaners onto colorful cardboard pictures.
`0 Suitable for ages: 4+
`- Suggested Retail Price: $8.00 each
`
`
`
`DRESS UP BEAR KIT
`
`Description: Everything you need to design and sew a colorful
`’ outfit for this cuddly bear.
`- Suitable for ages: 7+
`- Suggested Retail Price: $20.00 each
`Awards: Oppenheim Toy Portfolio Platinum Award, Oppenheim
`Toy Portfolio Gold Seal Award, CHILD Magazine's Best Toy's of
`the Year 1997, The National Parenting Publications Awards -
`Honors
`
`
`
`BEGINNER WEAVING LOOM
`
`Description: Beginner weavers will find it simple to create beautiful
`.3 works of handwoven art on this quality hardwood loom.
`0 Suitable for ages: 7+
`0 Suggested Retail Price: $17.00 each
`
`ADVANCED WEAVING LOOM
`
`'
`'
`
`W Description: Weave jewel-toned works of art on this large quality
`, hardwood loom.
`- Suitable for ages: 7+
`0 Suggested Retail Price: $30.00 each
`
` EXHIBIT
`
`_E2_
`
`s - Link to Us
`
`htmr//alextnvs_cnm/shnn/nmducts.asn?dent%5Fid=1030&t%5FdeDt%5Fid=1000&mscssid...
`
`7/18/2002
`
`

`
`
`
`‘ALEX > Catalog > Products‘
`
`"
`
`‘
`
`V
`
`Page 2 of2
`
`ALEX is a registered trademark of Panline USA. © All Rights Reserved.
`
`httn://alextovs.com/shon/nroducts.asv?dent%5Fid=103 0&t%5Fdent%5Fid=1000&mscssid... 7/18/2002
`
`

`
`
`5
`
`_1-‘~.‘rnaz_c>n.com: buying info: Dress Up Bear: Sewing Kit)
`
`. a.ifiia;on.com.
`;Y0—URACCOU?lI'i
`'\j£é_5'viEvvcART | WISH LIST |
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`RESOURCE
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`Imag1narium.com sworn
`BRANDS
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`CENTER
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`snows:
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`| HELP
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`Page I of4
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`E 5
`
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`
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`GREAT
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`lmaginarium.com
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`Dress Up Bear: Sewing Kit
`9-y~--—-'9-‘I-5--93
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`Online item Number
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`Try our _Tox Emds;
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`Top Sellers in Toys
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`Our Price: $19.99
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`This item is not
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`~
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`t9}4ll.ishlis:
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`€.,,'9$£1d.‘9,'!‘7*‘.?‘¥Fi.l09 Beaiéyzg
`Don't have one?‘
`We'll set one up for you.
`
`discontinued. §_2_ustomers also sho_p_ge_cl for these
`similar items.
`
`Learning Values: (learn more)
`~19‘
`NIGIDR S'KllJ.§
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`V INDEPENDENY
`
`PLAY
`
`@ Awards: Winner of a 2001 Op_penheim Toy_Portfolio Award
`
`Manufacturer's age: 7 years and up
`our recom;nended age: 7 - 11 years
`More age in o
`Shipping: Currently, item can be shipped only within the U.S.
`Box Size (in inches): 5.4 x 10.3 x 5.1
`Sh‘
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`d .
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`SKN: 267142
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`‘
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`Raymond, r_a_;;e_tJ1§_1t_;e_m_ to get personal recommendations.
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`s:~‘r£W:r§.:~i‘:
`Electronic Fib Finder Game Customer Rating:
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`1'
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`B-9-Q-lg!-Z—¢—E
`E2_1_'B_P-8 AA
`-
`B-a-t-t-Q-:1-E-3-S-('85
`Pack)
`2- LILGL-QH
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`Kaiba
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`3,
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`Talking Buzz
`Lightyear
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`' Delivered by
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`_lL’£9i'l...<"="'_lU.|'_lIl.._-..§_QDZ|.
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`hfln-//www amazon.cnm/exec/ohidos/ASIN/BOOOOOJHPY/ref=nosim/aleX—2O
`
`EX H l B rr
`
`_LL
`
`002
`
`

`
`
`
`_C.hi1d - Best Toys of the Year
`(‘
`
`5.
`
`Tb
`
`o
`
`Page 1 of 1
`
`
`
`‘ AI.I:.\z
`
`’*
`
`ABOUT ALEX
`
`«u
`
`AC'T‘lVTTY $5 PARENTS
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`STIflE FWDEH
`
`A
`CRTJILIG
`
`{ back to ALEX in the News
`
`child
`
`November 1997
`
`..
`
`r)
`
`chilc1’s DES COYS
`i
`year
`
`2*
`r
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`“\;V
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`
`
`
`Text by Samantha Phillips
`Photography by Christopher Gallo
`
`6AND UP
`
`Sew fun dress-up bear This kit comes with everything needed
`to outfit a bare, 10-inch-tall teddy. Why kids like it: "I
`designed and made my bear's clothes" Why experts like it:
`Sewing boosts concentration; built-in choices encourage
`creativity.
`ALEX, $17. 800-666-ALEX.
`
`
`
`I£Em_5_9Lll_5£ ' E_l'l¥_3.C.¥__P.Q'_iQ£ ‘ .§_0....[1§§.QI_.LJ_._S_
`
`ALEX is a registered trademark of Panline USA. © All Rights Reserved.
`
`httn://vvww.alextovs.com/ahoutalex/alex in
`
`EXHIBIT
`
`__D_ 7.htm
`
`6/21/2002