Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA231353
`ESTTA Tracking number:
`08/19/2008
`
`Filing date:
`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 requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Farmhouse Entertainment, LLC
`Limited Liability Company
`Citizenship
`19 Music Square West Suite F
`Nashville, TN 37203
`UNITED STATES
`
`Tennessee
`
`Attorney
`information
`
`William Y. Klett, III
`Nexsen Pruet, LLC
`PO Drawer 2426
`Columbia, SC 29202
`UNITED STATES
`wklett@nexsenpruet.com Phone:803-253-8205
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3480036
`Carter, John R
`120 Willow Ridge Lane
`Pelham, AL 35124
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`08/05/2008
`
`Class 041. First Use: 1977/02/01 First Use In Commerce: 1977/02/01
`All goods and services in the class are cancelled, namely: Entertainment in the nature of visual and
`audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Abandonment
`Priority and likelihood of confusion
`
`Related
`Proceedings
`
`Application No. 77/411,440
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`Trademark Act section 2(d)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`77411440
`
`NONE
`
`Word Mark
`
`TELLURIDE
`
`Application Date
`
`03/03/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA231353
`ESTTA Tracking number:
`08/19/2008
`
`Filing date:
`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 requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Farmhouse Entertainment, LLC
`Limited Liability Company
`Citizenship
`19 Music Square West Suite F
`Nashville, TN 37203
`UNITED STATES
`
`Tennessee
`
`Attorney
`information
`
`William Y. Klett, III
`Nexsen Pruet, LLC
`PO Drawer 2426
`Columbia, SC 29202
`UNITED STATES
`wklett@nexsenpruet.com Phone:803-253-8205
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3480036
`Carter, John R
`120 Willow Ridge Lane
`Pelham, AL 35124
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`08/05/2008
`
`Class 041. First Use: 1977/02/01 First Use In Commerce: 1977/02/01
`All goods and services in the class are cancelled, namely: Entertainment in the nature of visual and
`audio performances, namely, musical band, rock group, gymnastic, dance, and ballet performances
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Abandonment
`Priority and likelihood of confusion
`
`Related
`Proceedings
`
`Application No. 77/411,440
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`Trademark Act section 2(d)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`77411440
`
`NONE
`
`Word Mark
`
`TELLURIDE
`
`Application Date
`
`03/03/2008
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 041. First use: First Use: 2006/04/03 First Use In Commerce: 2006/04/03
`Entertainment in the nature of visual and audio performances, namely a musical
`band
`
`Attachments
`
`77411440#TMSN.jpeg ( 1 page )( bytes )
`PetitionforCancellation.pdf ( 6 pages )(191617 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/wklett/
`William Y. Klett, III
`08/19/2008
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Registration No. 3,480,036
`
`Mark: TELLURIDE
`
`§
`
`3 §
`
`3
`3
`g
`
`Farmhouse Entertainment, LLC,
`
`Petitioner,
`
`V.
`John R. Clark,
`Registrant.
`
`PETITION FOR CANCELLATION
`
`Farmhouse Entertainment, LLC, a Tennessee limited liability company having its
`
`place of business at 19 Music Square West, Suite F, Nashville, Tennessee 37203
`
`(“Petitioner”) believes that it will be damaged by the registration of the mark shown in
`
`Registration No. 3,480,036 in International Class 041, and hereby petitions to cancel
`
`same. To the best of Petitioner's knowledge, the owner of the registration is John R.
`
`Carter, an individual whose address is 120 Willow Ridge Lane, Pelham, Alabama
`
`35124.
`
`As grounds for cancellation, it is alleged:
`
`1.
`
`Petitioner is a Tennessee limited liability company having its principal
`
`business in Nashville, Tennessee.
`
`2.
`
`Petitioner is the legal entity for the musical group Tel|uRide, a band that
`
`writes, records, and performs throughout the United States.
`
`3.
`
`Petitioner is the owner of U.S. Application Serial No. 77/411440, filed
`
`March 3, 2008, for TELLURIDE for “entertainment in the nature of visual and audio
`
`
`
`performances. namely a musical band” in International Class 41.
`
`4.
`
`Petitioner has adopted and continuously used its TELLURIDE mark since
`
`at least as early as April of 2006 to the present in connection with its entertainment
`
`services.
`
`5.
`
`Petitioner is the owner of the domain name wvvw.te||urideband.com, used
`
`in connection with Petitioner’s website since April, 2006.
`
`6.
`
`Petitioner has expended considerable effort and expense in promoting its
`
`TELLURIDE mark, and the services thereunder, with the result that the relevant public
`
`has come to know, rely upon, and recognize the services and music of Petitioner by its
`TELLURIDE mark.
`h
`
`7.
`
`Petitioner has acquired valuable goodwill
`
`in its TELLURIDE mark as a
`
`result of the use of said mark for Petitioner’s services and music.
`
`8.
`
`Petitioner’s mark represents Petitioner’s substantial goodwill which has
`
`accrued to Petitioner by virtue of the widespread and prominent use of Petitioner’s
`
`TELLURIDE mark and for Petitioner’s high-quality services and music.
`
`9.
`
`Petitioner has used its TELLURIDE mark openly and in
`
`interstate
`
`commerce on or in connection with its music and services prior to the filing date of
`
`Registrant
`
`for Registrant’s TELLURIDE mark, and is
`
`the proper owner of
`
`the
`
`TELLURIDE mark for said services and business.
`
`10.
`
`There is a high degree of similarity between Petitioner's TELLURIDE mark
`
`and Registrant’s TELLURIDE mark, between Petitioner’s services and Registrant’s
`
`services, and between Petitioner's and Registrant’s channels of trade.
`
`In fact, they are
`
`virtually identical.
`
`
`
`11.
`
`Petitioner’s TELLURIDE mark is distinctive and famous in the music
`
`industry.
`
`12.
`
`Registration No. 3,480,036 (the ‘"036 Registration”), filed December 20,
`
`2007' and issued August 5, 2008, sought
`
`to be cancelled,
`
`is for the trademark
`
`TELLURIDE for “entertainment in the nature of visual and audio performances, namely,
`
`musical band, rock group, gymnastic, dance, and ballet performances" in International
`
`Class 041.
`
`13.
`
`The date of first use in commerce alleged by Registrant
`
`in its ‘036
`
`Registration is February 1, 1977.
`
`14.
`
`Upon information and belief, Registrant discontinued all use of
`
`the
`
`TELLURIDE mark for more than ten (10) years, abandoning any rights it may have had
`
`in the TELLURIDE mark.
`
`15.
`
`Upon information and belief, Registrant ceased all use in commerce of the
`
`TELLURIDE mark, having ceased to perform or sell musical recordings, with no intent to
`
`resume use of the mark.
`
`16.
`
`Petitioner began use of the TELLURIDE mark following Registrant’s
`
`abandonment of any alleged rights Registrant may have had.
`
`17.
`
`Petitioner has made continuous use of the TELLURIDE mark since prior to
`
`Registrant’s filing of his application for the registration sought to be cancelled.
`
`18.
`
`Registrant had actual knowledge of Petitioner’s use of the TELLURIDE
`
`mark prior to Registrant’s filing of his application for the registration sought to be
`
`cancelled, as evidenced by correspondence sent by Registrant to Petitioner prior to
`
`Registrant’s filing his application.
`
`
`
`19.
`Registrant, in his application for registration, expressly declared that:
`To the best of his/her knowledge and belief no other person, firm, corporation, or
`association has the right to use the mark in commerce, either in the identical form
`thereof or in such near resemblance thereto as to be likely, when used on or in
`connection with the goods/services of such other person, to cause confusion, or
`to cause mistake, or to deceive.
`
`20.
`
`In light of Registrant’s actual knowledge of Petitioner’s use of
`
`the
`
`TELLURIDE mark, Registrant knowingly made false statements in the declaration of the
`
`application that matured into the ‘O36 Registration.
`
`21.
`
`Registrant procured the “O36 Registration in violation of section 1(a) of the
`
`Lanham Act
`
`through knowingly making false, material
`
`representations of fact
`
`in
`
`connection with his application.
`
`22.
`
`The application for the ‘036 Registration is void ab initio, and must be
`
`cancelled.
`
`23.
`
`Further,
`
`if Registrant is permitted to retain the registration sought to be
`
`cancelled, and the prima facie ownership of an exclusive right to use in commerce the
`
`mark TELLURIDE on the services offered by Registrant, Petitioner will be damaged.
`
`24.
`
`If Registrant is permitted to retain the registration sought to be cancelled,
`
`Petitioner’s TELLURIDE mark will be unlawfully diluted.
`
`25.
`
`Registrant’s mark, when used in connection with Registrant’s services, is
`
`likely to cause confusion, or to cause a mistake, or to deceive, about the source or
`
`origin of Registrant’s services or about Petitioner's services, or is likely to cause
`
`consumers to believe that Petitioner’s sponsors or endorses Registrant, or vice versa,
`
`when it does not.
`
`26.
`
`Any such confusion or mistake is likely to harm Petitioner’s commercial
`
`
`
`interests.
`
`27. Moreover, any defect, objection or fault found with Registrant’s music or
`
`services marketed under Registrant’s’TELLURlDE mark would necessarily reflect upon
`
`or seriously injure the reputation which Petitioner has established for Petitioner's music
`
`and services under the TELLURIDE mark.
`
`28.
`
`The Registration of TELLURIDE by Registrant reflects great injury and
`
`damage on Petitioner,
`
`the reputation of Petitioner, and the goodwill accruing to
`
`Petitioner through Petitioner’s extensive use in advertising of Petitioner’s mark in
`
`connection with its music and services.
`
`29.
`
`Further,
`
`if Registrant is permitted to retain the registration sought to be
`
`cancelled, a cloud will be placed upon a Petitioner’s title in and to its TELLURIDE mark
`
`and on its right to enjoy the free and exclusive use thereof in connection with the
`
`marketing and provision of Petitioner’s music and services, all
`
`to the injury and
`
`detriment of Petitioner.
`
`30.
`
`Under Section 2(d) of the Lanham Act, Registrant
`
`is not entitled to
`
`registration because from the time of Registrant’s first use of its mark, Registrant’s mark
`
`so resembled Petitioner’s TELLURIDE as to be likely to cause confusion, mistake, or to
`
`deceive.
`
`31.
`
`Petitioner is entitled to cancel Registrant’s registration because Petitioner
`
`is the prior user of a confusingly similar trademark.
`
`WHEREFORE, Petitioner believes that it is or will be damaged by Registration
`
`No. 3,480,036, and hereby petitions for cancellation thereof as this mark relates to all of
`
`the goods and services recited therein in each class for which Registrant’s mark is
`
`
`
`registered.
`
`A duplicate Petition for Cancellation is enclosed herewith. All filing fees required
`
`by 37 CFR §2.6(a)(16) are requested to be charged to Petitioner’s Counsel's Deposit
`
`Account.
`
`Respectfully submitted,
`FARMHOUSE ENTERTAINMENT, LLC.
`
` Illiam Y. Kle
`
`Registration N . 4 ,903
`NEXSEN PRUET, LLC
`
`1230 Main Street, Suite 700
`Post Office Drawer 2426
`
`Columbia, South Carolina 29202
`(803) 771-8900
`
`August 19 2008
`Columbia, South Carolina
`
`Attorneys for Farmhouse Entertainment, LLC
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