Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA441126
`ESTTA Tracking number:
`11/15/2011
`
`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
`Composed Of:
`
`Address
`
`Western Glove Works
`CANADA
`Citizenship
`Partnership
`Western Glove Works Ltd and WGW Limited Partnership both of which are
`registered in the Province of Manitoba, Canada
`555 Logan Avenue
`Winnipeg, R3A 0S4
`CANADA
`
`Attorney
`information
`
`Teresa C. Tucker
`Grossman Tucker Perreault & Pfleger PLLC
`55 South Commercial Street
`Manchester, NH 03101
`UNITED STATES
`ttucker@gtpp.com Phone:603-668-6560
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`Registration date
`2275591
`SILVER STAR DISTRIBUTION COMPANY, INC.
`SUITE B 1050 CALLE AMANECER
`SAN CLEMENTE, CA 92673
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`09/07/1999
`
`Class 025. First Use: 1997/01/10 First Use In Commerce: 1997/01/10
`All goods and services in the class are cancelled, namely: Clothing, namely, T-Shirts, sweatshirts,
`hats, jeans, and khaki pants
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Abandonment
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`
`Related
`Proceedings
`
`Opposition No. 91196715
`
`Attachments
`
`Petition.Cancellation.11.15.11.pdf ( 6 pages )(273214 bytes )
`
`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.
`
`Certificate of Service
`
`

`
`Signature
`Name
`Date
`
`/tct/
`Teresa C. Tucker
`11/15/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In Re Trademark Reg. No.
`
`2275591
`
`Dated:
`
`Mark:
`
`Class:
`
`September 7, 1999
`
`SILVER STAR
`
`‘
`
`INT. 25
`
`)
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`)
`
`)
`
`)
`
`Cancellation No.
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`)
`)
`)
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`) )
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`)
`)*
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`WESTERN GLOVE WORKS
`Petitioner
`
`V.
`
`ABG SSIP LLC.
`Registrant
`
`PETITION FOR CANCELLATION
`
`Western Glove Works, a partnership registered under the laws of Canada, with an address
`
`of 555 Logan Avenue, Winnipeg, R3A 0S4, Canada, believes that it will be damaged by the
`
`continued registration of the mark “SILVER STAR” shown in Registration No. 2275591, dated
`
`September 7, 1999, by ABG SSIP LLC (hereinafter the SILVER STAR Registration), and
`
`hereby petitions to cancel same.
`
`The grounds for cancellation of said registration are as follows:
`
`1.
`
`Petitioner is the owner of the following trademarks comprising the term
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`“SILVER” and “SILVER JEANS” as shown in the following Federal Trademark Registrations
`
`(hereinafter the “SILVER Registrations”).
`
`

`
`
`
`
`
`REGISTRATION
`ADATE oF
`-
`TRADEMARK
`
`NUMBER
`1
`REGISTRATION
`
`
`
`SILVER
`
`2399553
`
`October 31, 2000
`
`SILVER JEANS
`
`3197044
`
`January 9, 2007
`
`
`
`2.
`
`Petitioner has been using the marks shown in the Silver Registrations in
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`commerce, in connection with the Class 25 goods identified in said Registrations, since at least
`
`as early as 1983 including as a house mark for a full line of apparel.
`
`3.
`
`Petitioner and Respondent currently are parties to trademark opposition
`
`proceedings before the Trademark Trial and Appeal Board, namely Opposition No. 91196715.
`
`BACKGROUND
`
`4.
`
`On information and belief, on January 8, 1998, Respondent’s predecessor in
`
`interest, East Coast Urethane, Inc., filed an Application with the United States Patent and
`
`Trademark Office for “SILVERSTAR,” assigned Serial No. 75416316 in Class 25, for
`
`“Clothing, namely, T-shirts, sweatshirts, hats, jeans, and khaki pants,” and in Class 28 for
`
`”””””””””””””””””””””””””””””'?7§i2;£$EE;{{iSQQQEQSVBEEHELBEENSHQEEIQLIETQI}{”S5EiHe}E”é§i}iI§$ODi;£i1§}'§Ic3:I3§7ii€55”AMCAWWATTMWWWW
`
`Application subsequently matured to Registration No. 2275591 (hereinafter the SILVER STAR
`
`Registration”).
`
`5.
`
`On information and belief, an assignment of the SILVER STAR Registration to
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`ECI, Inc. dated October 15, 2001, was recorded with the U.S. Trademark Office at Reel 2503,
`
`Frame 0101.
`
`6.
`
`On information and belief, an assignment of the SILVER STAR Registration
`
`from ECI, Inc. to Silver Star Distribution Company, Inc., dated February 24, 2004, was recorded
`
`with the U.S. Trademark Office at Reel 2799, Frame 0166.
`
`

`
`7.
`
`On information and belief, on September 7, 2005 Respondent’s predecessor,
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`Silver Star Distribution Company, Inc., filed a Combined Declaration of Use and Incontestability
`
`under Sections 8 and 15, deleting Class 28 skateboard wheels from the registration and claiming
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`current use and five years continuous use of the mark for “clothing, namely, T-shirts, sweatshirts,
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`hats, jeans, and khaki pants.” Said filing included an image file described as “Digital photo of t-
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`shirt bearing subject mark, including close-up photo of mark.” (hereinafter the “Declaration”).
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`On information and belief, the specimen comprises a computer generated image of a t—shirt and
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`is not a photo of an actual t—shirt.
`
`8.
`
`On information and belief, on October 3, 2007, Respondent’s predecessor, Silver
`
`Star Distribution Company, Inc., filed an Amendment under Section 7 to amend the trademark to
`
`two words, namely SILVER STAR (two words). The Amendment was subsequently granted.
`
`9.
`
`Before commencing this cancellation action, Petitioner engaged the
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`services of a private investigator to determine when Respondent’s predecessors used the
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`“SILVER STAR” mark and whether Respondent or Respondent’s predecessor was using the
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`“SILVER STAR” mark in the United States in connection with all of the goods referenced in the
`
`””””””””"WMW"BEE'iaI£§{{E>?1?IiScT€v“i{i?fifs7f}§3€fi13}i?&fiE'EéfifiéE13SA'iHE_13SE§i2{££E6}IIJVEEWIHIEETMWWWNH'MM'MMW
`
`10.
`
`The investigator conducted an online search for information regarding
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`Respondent’s predecessors in interest’s use of SILVERSTAR or SILVER STAR for apparel and
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`did not locate any such use other than the current web site at www.silverstarnow.com, believed
`
`to be Respondent’s predecessor, Silver Star Distribution Company, Inc.’s web site at that time.
`
`The investigation showed that neither East Coast Urethane nor ECI, Inc. were selling any goods
`
`after 2001.
`
`1 1.
`
`The investigator then contacted a representative for Respondent’s immediate
`
`predecessor, Silver Star Distribution Company, Inc., and learned that Silver Star Distribution
`
`

`
`it Company, Inc. did not ofrelapparei ‘under the SiILVERiiiSiTARiniark until areas: 2005 and did“ 0
`
`if
`
`A
`
`C
`
`A
`
`A
`
`I
`
`not offer jeans for sale under the SILVER STAR mark until at least 2007.
`
`ABANDONMENT
`
`12.
`
`On information and belief, on February 24, 2004, ECI, Inc. executed a document
`
`purported to assign its entire interest in the SILVER STAR Registration, and rights in the
`
`“SILVER STAR” mark, to Registrant’s predecessor.
`
`13.
`
`On information and belief, and based upon the results of the investigation
`
`commissioned by Petitioner, the SILVER STAR trademark was not being used in connection
`
`with the Class 25 goods identified in the SILVER STAR Registration at the time of the 2004
`
`assignment.
`
`14.
`
`On information and belief, and upon the results of the investigation commissioned
`
`by Petitioner, the “SILVER STAR” mark had not been in use by ECI, Inc. for the Class 25 goods
`
`identified in the SILVER STAR Registration, at the time of the assignment nor for years prior to
`
`the assignment. Accordingly, there was no goodwill associated with the SILVER STAR mark
`
`with respect to apparel at the time the assignment was executed. As a result, the assignment was
`
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`Inc. and any prior rights in the mark were abandoned.
`
`FRAUD ON THE TRADEMARK OFFICE
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`15.
`
`On information and belief, and upon the results of the investigation
`
`commissioned by Petitioner, Respondent’s predecessor was not using the SILVER STAR mark
`
`on all the Class 25 goods identified in the SILVER STAR Registration at the time the
`
`Declaration was filed.
`
`16.
`
`On information and belief, and upon the results of the investigation
`
`commissioned by Petitioner, Respondent filed a knowingly fraudulent Declaration.
`
`

`
`I 17.
`
`Based on the foregoing, the maintenance and incontestability status of the
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`SILVER STAR Registration was obtained fraudulently by claiming use of the mark with goods
`
`not actually produced or marketed by Respondent’s predecessor, and Respondent’s predecessor
`
`knew such goods were not being manufactured or sold under the SILVER STAR trademark.
`
`18.
`
`On information and belief, and upon the results of the investigation commissioned
`
`by Petitioner, Respondent committed fraud on the Patent and Trademark Office in the
`
`maintenance of the SILVER STAR Registration by making material representations of fact in its
`
`Declaration which it knew or should have known to be false.
`
`19.
`
`On information and belief, and upon the results of the investigation commissioned
`
`by Petitioner, Respondent deliberately attempted to mislead the United States Patent and
`
`Trademark Office into maintaining the SILVER STAR Registration by making false declarations
`
`stating the mark was in use in commerce in connection with all of the goods identified in the
`
`Registration and had been in continuous use for five years at the time of filing the Declaration.
`
`20.
`
`On information and belief, and upon the results of the investigation commissioned
`
`by Petitioner, the Section 8 and 15 Declaration was granted for the SILVER STAR Registration
`
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`
`maintain registration and obtain incontestability status.
`
`21.
`
`Petitioner has been or will continue to be damaged by the existence of the
`
`SILVER STAR Registration because Petitioner has used its SILVER trademarks since prior to
`
`the date of first use claimed in the SILVER STAR Registration and the SILVER STAR
`
`Registration could pose an economic threat to Petitioner, its customers, assigns, since it would
`
`make possible harassment by litigation.
`
`WHEREFORE, Petitioner prays that Registration No. 2275591 be cancelled, and that this
`
`Petition be granted in favor of Petitioner.
`
`

`
`,/
`
`WESTE5I7\I GLOVE WORKS
`
`
`By K ,
`Teresa C. Tucker
`
`Attorney for Petitioner
`Grossman, Tucker, Perreault & Pfleger, PLLC
`55 S. Commercial Street
`
`Manchester, NH 03101
`603-668-6560
`
`Email ttucker@gtpp.com
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a true and complete copy of the subject Petition for Cancellation
`was served upon the Registrant’s domestic representative of record Via First Class Mail, this 15”‘
`day of November, 2011 to the following:
`
`Lisa B. Lane
`
`Fox Rothschild LLP
`
`PO Box 5231
`
`Princeton NJ 08543~523l