throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA457601
`ESTTA Tracking number:
`02/21/2012
`
`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
`
`HEADLINE SHIRTS, LLC
`Corporation
`3265 17th Street, Suite 104
`San Francisco, CA 94110
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Pondra Perkins
`Royse Law Firm
`11150 Santa Monica Blvd., Suite 1200
`Los Angeles, CA 90025
`UNITED STATES
`pperkins@rroyselaw.com Phone:310-405-0127
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`4049563
`HEADLINES, INC.
`6671 Pinnock Street
`West Bloomfield, MI 48324
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`11/01/2011
`
`Class 025. First Use: 2008/05/12 First Use In Commerce: 2008/05/12
`All goods and services in the class are cancelled, namely: Headwear; scarves; shirts; silk scarves;
`baseball caps; sweat shirts; sweaters; T-shirts; camp shirts; golf shirts; hooded sweat shirts; knit
`shirts; long-sleeved shirts; polo shirts; sport shirts
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`77727143
`
`NONE
`
`Word Mark
`
`HEADLINE SHIRTS
`
`Application Date
`
`05/01/2009
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2004/07/00 First Use In Commerce: 2004/07/00
`T-shirts; sweatshirts and hooded sweatshirts; neckties
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`4070664
`
`12/13/2011
`
`HEADLINE
`
`Application Date
`
`05/10/2011
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2010/12/01 First Use In Commerce: 2010/12/01
`Wallets
`
`U.S. Registration
`No.
`Registration Date
`
`4070695
`
`12/13/2011
`
`Word Mark
`
`HEADLINE
`
`Application Date
`
`05/10/2011
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`Attachments
`
`NONE
`
`Class 026. First use: First Use: 2005/09/01 First Use In Commerce: 2005/09/01
`Belt buckles
`
`77727143#TMSN.jpeg ( 1 page )( bytes )
`85316739#TMSN.jpeg ( 1 page )( bytes )
`85317351#TMSN.jpeg ( 1 page )( bytes )
`Cancellation_HEADLINES_ 02172012 FINAL.pdf ( 5 pages )(255181 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
`
`/Pondra Perkins/
`Pondra Perkins
`02/21/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Registration No. 4049563
`Filed: March 25, 2008
`Registration Date: November 1, 2011
`For the mark HEADLINES
`
`HEADLINE SHIRTS, LLC,
`
`Cancellation No.
`
`Petitioner,
`
`vs.
`
`HEADLINES, INC.
`
`Registrant.
`
`PETITION FOR CANCELLATION
`
`HEADLINE SHIRTS, LLC (hereinafter “Petitioner”), a Delaware corporation having its
`
`principal place of business at 3265 17”‘ Street, Suite 104, San Francisco California 94110,
`
`is being
`
`and will be damaged by the continued registration of the HEADLINES mark as set forth in U.S.
`
`Trademark Registration Number 4049563 (hereinafter “Registered Mark”), registered by Headlines,
`
`Inc. (hereinafter “Registrant”), in connection with goods in International Class 25, and Petitioner
`
`hereby petitions to cancel Registration No.4049563 in accordance with the provisions of Section 14
`
`ofthe Lanham Act (15 USC § 1064).
`
`Petitioner hereby petitions to cancel the Registered Mark.
`
`PETITION FOR CANCELLATION
`
`

`
`As grounds for cancellation, Petitioner alleges as follows:
`
`1. According to the records of the United States Patent and Trademark Office, on or about
`
`November 1, 2011, Registrant, Headlines, Inc., a Michigan corporation with an address at 6671
`
`Pinnock Street, West Bloomfield, Michigan 948324, is the owner of the Registered Mark, for the
`
`mark HEADLINES in connection with the following goods in International Class 25:
`
`Headwear; scarves; shirts; silk scarves; baseball caps; sweat shirts; sweaters; T~shirts; camp
`shirts; golf shirts; hooded sweat shirts; knit shirts; long-sleeved shirts; polo shirts; sport
`shirts.
`
`2. Petitioner is a well-known clothing and accessory company that manufactures and
`
`distributes merchandise bearing the HEADLINE and/or HEADLINE SHIRTS mark.
`
`3. Petitioner has continuously used the HEADLINE and/or HEADLINE SHIRTS mark since
`
`as early as 2004 to identify its goods, which use predates Registrant’s claimed first use date and first
`
`use in commerce anywhere date of May 12, 2008 for the Registered Mark.
`
`4. Petitioner is the owner of trademark registrations for the mark HEADLINE, which are
`
`registered with the United States Patent and Trademark Office for various goods in International
`
`Classes, including Registration No. 4070664 in International Class 18 for wallets and Registration
`
`No. 4070695 in International Class 26 for belt buckles.
`
`5. Petitioner has also submitted an application for the mark HEADLINE SHIRTS in
`
`International Class 25, Serial No. 77727143, in connection with the following goods: T-shirts;
`
`sweatshirts and hooded sweatshirts; and neckties. However, despite Petitioner’s prior use of the
`
`mark HEADLINE SHIRTS for International Class 25 goods, Petitioner has not yet been able to
`
`secure registration rights to that class of goods, and instead Petitioner’s application has been
`
`suspended since 2009, due to Registrant’s earlier application filing date.
`
`PETITION FOR CANCELLATION
`
`

`
`6. The goods identified in the Registered Mark namely, T-shirts, sweatshirts, and hooded
`
`sweat shirts, are identical goods as the clothing offered by Petitioner and associated with
`
`Petitioner’s HEADLINE and HEADLINE SHIRTS marks, and are the type of goods which are
`
`available in the same channels of trade and offered to the same prospective customers. Accordingly,
`
`Registrant’s goods, as set out in the Registered Mark description of goods, and Petitioner’s goods
`
`are so similar and the respective marks are confusingly similar as to cause suspension, as well as
`
`confusion, mistake and deception among purchasers and users as to the source or origin.
`
`7. As the prior users, Petitioner has, with respect to its goods, valid common law rights in its
`
`HEADLINE and HEADLINE SHIRTS marks. Registration of the Registered Mark is in violation
`
`and degradation of those common law rights and is likely to cause confusion, mistake and deception
`
`among purchasers and users as to the source or origin of the products, thereby causing loss, damage
`
`and injury to Petitioner and the consuming public.
`
`8.
`
`If the Registered Mark continues to be registered, the public will reasonably and mistakenly
`
`believe that Registrant’s goods are provided by Petitioner, all to the detriment of consumers and
`
`Petitioner. Persons familiar with Petitioner’s marks would be likely to confuse Registration’s goods
`
`as products made, sold, and offered by Petitioner or under the authority of Petitioner. Any such
`
`confusion in trade would result in a loss of distinctiveness of Petitioner’s marks, loss of sales to
`
`Petitioner, and would damage the goodwill that Petitioner has obtained in its HEADLINE and
`
`HEADLINE SHIRTS marks.
`
`9.
`
`If Registration No. 4049563 continues to be registered, Registrant would thereby maintain
`
`primafacie rights to use its Registered Mark. Such registration would be a source of damage and
`
`injury to Petitioner.
`
`PETITION FOR CANCELLATION
`
`

`
`WHEREFORE, Petitioner believes that it will be damaged by the continued registration of
`
`the Registered Mark and respectfully requests that the Petition for Cancellation be sustained in
`
`favor of Petitioner Headline Shirts, LLC and that the U.S. Registration No. 404953 be cancelled.
`
`Respectfully Submitted,
`
`HEADLIRTS, LLC
`
`
`
`:0
`V
`»
`5
`By:
`Pondra S. Perkins (CA S N #246261)
`Royse Law Firm, PC
`11150 Santa Monica Blvd.
`
`Los Angeles, CA 90025
`Telephone: (310) 405-0127
`Fax: (310) 405—0125
`Email: pperkins@rroyselaw.com
`
`Attorney for Petitioner
`
`DATED: February 2:
`
`, 2012
`
`PETITION FOR CANCELLATION
`
`

`
`CERTIFICATE OF SERVICE
`I hereby certify that a copy of the foregoing Petition to Cancel Registration No. 4049563
`was served on the Registrant by First Class Mail, postage prepaid, on this
`day of February
`2012 to:
`
`
`
`r
`
`’
`
`/f:
`
`"
`
`By:
`Pon
`
`
`
`5
`S. Perkins
`
`David Silver
`
`HEADLINES, INC
`6671 Pinnock
`
`West Bloomfield, MI 48324
`
`PETITION FOR CANCELLATION

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket