Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA389762
`ESTTA Tracking number:
`01/24/2011
`
`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
`
`James P. Owen
`Citizenship
`Individual
`98 San Jacinto Blvd. FSR No. 1904
`Austin, TX 78701
`UNITED STATES
`
`UNITED STATES
`
`Correspondence
`information
`
`Christopher L. Graff
`Pirkey Barber LLP
`600 Congress Avenue Suite 2120
`Austin, TX 78701
`UNITED STATES
`cgraff@pirkeybarber.com, jmatthysse@pirkeybarber.com,
`kripperda@pirkeybarber.com, tmcentral@pirkeybarber.com Phone:5123225200
`Registration Subject to Cancellation
`
`Registration No
`Registrant
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`3727964
`Paragon Foundation, Inc.
`1209 Michigan Avenue
`Alamogordo, NM 88310
`UNITED STATES
`Goods/Services Subject to Cancellation
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`Registration date
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`12/22/2009
`
`Class 016. First Use: 2007/12/01 First Use In Commerce: 2007/12/01
`All goods and services in the class are cancelled, namely: Magazines featuring western and rural
`culture
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`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Abandonment
`Priority and likelihood of confusion
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`Trademark Act section 2(d)
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`Mark Cited by Petitioner as Basis for Cancellation
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`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
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`NONE
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`Application Date
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`NONE
`
`NONE
`COWBOY ETHICS
`Motivational speaking and educational services; promotional products
`and materials, including printed materials.
`
`
`ESTTA389762
`ESTTA Tracking number:
`01/24/2011
`
`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
`
`James P. Owen
`Citizenship
`Individual
`98 San Jacinto Blvd. FSR No. 1904
`Austin, TX 78701
`UNITED STATES
`
`UNITED STATES
`
`Correspondence
`information
`
`Christopher L. Graff
`Pirkey Barber LLP
`600 Congress Avenue Suite 2120
`Austin, TX 78701
`UNITED STATES
`cgraff@pirkeybarber.com, jmatthysse@pirkeybarber.com,
`kripperda@pirkeybarber.com, tmcentral@pirkeybarber.com Phone:5123225200
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3727964
`Paragon Foundation, Inc.
`1209 Michigan Avenue
`Alamogordo, NM 88310
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`12/22/2009
`
`Class 016. First Use: 2007/12/01 First Use In Commerce: 2007/12/01
`All goods and services in the class are cancelled, namely: Magazines featuring western and rural
`culture
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Abandonment
`Priority and likelihood of confusion
`
`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/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`COWBOY ETHICS
`Motivational speaking and educational services; promotional products
`and materials, including printed materials.
`
`
`
`Attachments
`
`JPOX011 Petition For Cancellation CLG.pdf ( 6 pages )(25628 bytes )
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`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.
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`Certificate of Service
`
`Signature
`Name
`Date
`
`/s/ Christopher L. Graff
`Christopher L. Graff
`01/24/2011
`
`
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In Re Registration No. 3,727,964
`Mark: LIVING COWBOY ETHICS
`Registrant: Paragon Foundation, Inc.
`Issued: December 22, 2009
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`JAMES P. OWEN, §
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`§
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`Petitioner,
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`§ Cancellation No. ___________
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`§
`v.
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`§
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`§
`PARAGON FOUNDATION, INC., §
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`§
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`Registrant.
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`§
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`PETITION FOR CANCELLATION
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`Petitioner James P. Owen, an individual citizen of the United States, having a residence
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`at 98 San Jacinto Blvd. FSR No. 1904, Austin, Texas 78701, believes that he is and will continue
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`to be damaged by Registration No. 3,727,964 (the “Registration”), and hereby petitions to cancel
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`the same under the provisions of 15 U.S.C. § 1064. As grounds for cancellation, Petitioner
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`asserts the following:
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`1.
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`Since at least as early as 2005, Petitioner and/or his related entities have used his
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`coined mark COWBOY ETHICS in connection with a wide variety of goods and services,
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`including motivational speaking and educational services, as well as associated promotional
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`products and materials, including printed materials. Petitioner’s COWBOY ETHICS goods and
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`services celebrate the essence of traditional Western values, and the benefits of recapturing those
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`values in today’s society. Petitioner’s book “Cowboy Ethics, What Wall Street Can Learn from the
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`Code of the West” has been highly acclaimed since its first publication in 2004.
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`2.
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`Over the years, Petitioner has extensively used and promoted his COWBOY
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`ETHICS mark. Additionally, Petitioner has expended considerable effort and expense in
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`promoting his COWBOY ETHICS mark, and the goods and services offered thereunder. As a
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`result of such use and promotion, the COWBOY ETHICS mark has acquired a favorable
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`reputation to consumers as an identifier and symbol of Petitioner and his goods and services. As
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`a result of Petitioner’s use and promotion, Petitioner has developed significant goodwill in the
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`COWBOY ETHICS mark, and strong common law rights in that mark.
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`3.
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`On May 20, 2009, well after Petitioner began using his COWBOY ETHICS mark,
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`Registrant filed an application to register the mark LIVING COWBOY ETHICS for “Magazines
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`featuring western and rural culture” in Class 16 with a claimed first-use date of December 1,
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`2007.
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`4.
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`There is no issue as to priority, as Petitioner’s use of his COWBOY ETHICS
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`mark predates Registrant’s claimed first use date of December 1, 2007.
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`5.
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`The mark of the registration sought to be cancelled (LIVING COWBOY
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`ETHICS) so nearly resembles Petitioner’s COWBOY ETHICS mark as to be likely, when used
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`in connection with the identified goods of Registrant, to cause confusion, or to cause mistake, or
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`to deceive. Purchasers and prospective purchasers are likely to mistakenly believe that the
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`products Registrant offers under Registrant’s LIVING COWBOY ETHICS mark are produced,
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`sponsored, endorsed, or approved by Petitioner, or are in some way affiliated, connected, or
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`associated with Petitioner or his products and services offered under the COWBOY ETHICS
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`mark. Furthermore, any defect, objection, or fault found with Registrant’s goods offered under
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`the mark LIVING COWBOY ETHICS would necessarily reflect upon and seriously injure the
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`reputation that Petitioner has established for his COWBOY ETHICS products and services. The
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`Registration should therefore be cancelled under 15 U.S.C. §§ 1052(d) and 1064(1).
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`6.
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`If Registrant is permitted to continue to maintain the Registration sought to be
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`cancelled, Registrant’s right to use the mark of the Registration may become incontestable, and
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`in any event, the continued existence of the Registration casts a cloud upon Petitioner’s right to
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`continue to use, register, and expand the use of his COWBOY ETHICS mark. Such Registration
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`would thus be a source of damage and injury to Petitioner.
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`7.
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`Additionally, the Registration should be cancelled because the Registrant has
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`abandoned use of the mark as registered. In 2009, Registrant changed the name of its magazine
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`to THE COWBOY WAY. Thus, Registrant has discontinued use of the mark LIVING
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`COWBOY ETHICS with intent not to resume such use. Accordingly, the Registration should be
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`cancelled pursuant to 15 U.S.C. § 1064(3).
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`8.
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`Further, the Registration should be cancelled because the Registrant procured the
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`Registration fraudulently.
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`9.
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`In its application filed on May 20, 2009, under notice of Section 1001 of Title 18
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`of the United States Code, Registrant stated that it was the owner of the mark LIVING
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`COWBOY ETHICS and that no other person, firm, corporation, or association had the right to
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`use the mark in commerce, either in the identical form thereof or in such near resemblance
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`thereto as to be likely, when used on or in connection with the goods/services of such other
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`person, to cause confusion, or to cause mistake, or to deceive. However, Registrant knew at the
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`time of its application that Petitioner owned the mark COWBOY ETHICS, that Petitioner had
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`the right to use COWBOY ETHICS, and that Registrant needed Petitioner’s consent to use the
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`mark LIVING COWBOY ETHICS.
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`3
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`10.
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`On April 29, 2009 (three weeks before Registrant filed its application), Registrant
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`emailed a “trademark letter” to Petitioner acknowledging Petitioner’s COWBOY ETHICS
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`trademark, and further stating that Registrant had “been told by the auditors that we need the
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`attached letter signed by you.” Petitioner denied his consent to Registrant’s request.
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`11.
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`Furthermore, Registrant has publicly acknowledged that it adopted the mark
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`LIVING COWBOY ETHICS based upon Petitioner and his COWBOY ETHICS trademark.
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`12.
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`The statements in Registrant’s application were made by an authorized agent of
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`Registrant with the knowledge and belief that those statements were false. Those false
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`statements were made with the intent to induce authorized agents of the United States Patent and
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`Trademark Office to grant Registrant’s application for registration, and, reasonably relying upon
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`the truth of those false statements, the United States Patent and Trademark Office did, in fact,
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`grant that registration to Registrant. Petitioner was damaged by those false statements, and the
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`registration issued in reliance thereon, in that Petitioner has priority of rights for its trademark,
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`and Petitioner’s continued and legal use of its mark will be impaired by the continued
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`registration of Registrant’s purposed mark.
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`WHEREFORE, for the reasons set forth above, Petitioner is or will be damaged by
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`United States Registration No. 3,727,964 and petitions for cancellation thereof.
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`4
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`Respectfully submitted,
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`
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`/s/ Christopher L. Graff
`Christopher L. Graff
`
`Jered E. Matthysse
`PIRKEY BARBER LLP
`600 Congress Avenue, Suite 2120
`Austin, Texas 78701
`512.322.5200
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`ATTORNEYS FOR JAMES P. OWEN
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`Date: January 24, 2011
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PETITION FOR
`CANCELLATION has been served via First Class Mail, postage pre-paid, on Registrant at the
`address of record below, on January 24, 2011:
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`Paragon Foundation, Inc.
`1209 Michigan Ave.
`Alamogordo, NM 88310
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`with a courtesy copy to its attorney of record:
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`Fernando Velez, Jr.
`Reicker Pfau Pyle & McRoy, LLP
`1421 State Street, Suite B
`Santa Barbara, CA 93101-2507
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`/s/ Christopher L. Graff
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`6
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