Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA491090
`ESTTA Tracking number:
`08/27/2012
`
`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
`
`Kingdom Security, L.L.C.
`LIMITED LIABILITY
`COMPANY
`PO BOX 1189
`La Porte, TX 77572
`UNITED STATES
`
`Citizenship
`
`Texas
`
`Correspondence
`information
`
`John S. Egbert
`Egbert Law Offices, PLLC
`1314 Texas, 21st Floor
`Houston, TX 77002
`UNITED STATES
`mail@egbertlawoffices.com Phone:713-224-8080
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3465275
`Kingdom Security, LLC
`529 East Skyline Drive
`Purcellville, VA 20132
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`07/15/2008
`
`Class 045. First Use: 2007/02/28 First Use In Commerce: 2007/02/28
`All goods and services in the class are cancelled, namely: Personal security consultation
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`85704340
`
`NONE
`
`Word Mark
`
`KINGDOM SECURITY
`
`Application Date
`
`08/15/2012
`
`Foreign Priority
`Date
`
`NONE
`
`
`ESTTA491090
`ESTTA Tracking number:
`08/27/2012
`
`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
`
`Kingdom Security, L.L.C.
`LIMITED LIABILITY
`COMPANY
`PO BOX 1189
`La Porte, TX 77572
`UNITED STATES
`
`Citizenship
`
`Texas
`
`Correspondence
`information
`
`John S. Egbert
`Egbert Law Offices, PLLC
`1314 Texas, 21st Floor
`Houston, TX 77002
`UNITED STATES
`mail@egbertlawoffices.com Phone:713-224-8080
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3465275
`Kingdom Security, LLC
`529 East Skyline Drive
`Purcellville, VA 20132
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`07/15/2008
`
`Class 045. First Use: 2007/02/28 First Use In Commerce: 2007/02/28
`All goods and services in the class are cancelled, namely: Personal security consultation
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act section 2(d)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`85704340
`
`NONE
`
`Word Mark
`
`KINGDOM SECURITY
`
`Application Date
`
`08/15/2012
`
`Foreign Priority
`Date
`
`NONE
`
`
`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 037. First use: First Use: 2007/02/23 First Use In Commerce: 2007/02/23
`Installation of commercial and industrial security systems; burglar alarm
`installation, maintenance and repair; fire alarm installation, maintenance and
`repair; installation, repair and replacement of locks; installation of intercom and
`public address systems, IP (Internet protocol) cameras, closed circuit television
`systems, access control systems, biometric identification apparatus
`
`Attachments
`
`85704340#TMSN.jpeg ( 1 page )( bytes )
`2720-1 Petition to Cancel.pdf ( 11 pages )(620196 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
`
`/2720-1/
`John S. Egbert
`08/27/2012
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`I11 the Matter of Registration No. 3,465,275
`Registered on July 15, 2008
`
`Kingdom Security, L.L.C.
`
`Petitioner,
`
`V.
`
`Kingdom Security, LLC
`
`Registrant.
`
`4'0JCoO'JC0'>0O'J<4OO<0'3OO'J€A0>0OO
`
`Cancellation No.
`
`PETITION FOR CANCELLATION
`
`The Petitioner, Kingdom Security, L.L.C. (hereinafter "Petitioner"), a Limited Liability
`
`Company of Texas, having an address of PO BOX 1189, La Porte, TX 77572, believes it is and will
`
`be damaged by the continued registration of U.S. Registration No. 3,465,275 on the Principal
`
`Register and hereby petitions for cancellation of said registration.
`
`As grounds for this petition, it is alleged that:
`
`1.
`
`Upon information and belief, Registrant Kingdom Security, LLC (hereinafter
`
`"Registrant") is a Limited Liability Company of Virginia having an address of 529 East Skyline
`
`Drive, Purcellville, VA 20132. Such limited liability company is listed as the owner of the
`
`"KINGDOM SECURITY AND DESIGN" Mark, U.S. Registration No. 3,465,275, registered on the
`
`Principal Register on July 15, 2008 for "Personal security consultation" in International Class 045.
`
`Registrant claims an alleged date of first use in commerce of February 28, 2007.
`
`2.
`
`Petitioner is owner of an application for the "KINGDOM SECUMTY" mark, U.S.
`
`Application No. 85/704,340, filed on August 15, 2012 for use on "Installation of commercial and
`
`industrial security systems; burglar alarm installation, maintenance and repair; fire alarm installation,
`
`
`
`maintenance and repair; installation, repair and replacement of locks; installation of intercom and
`
`public address systems, IP (Internet protocol) cameras, closed circuit television systems, access
`
`control systems, biometric identification apparatus" in International Class 037. A true copy of the
`
`records from the USPTO electronic database showing the status and title for said application is
`
`attached hereto as Exhibit A.
`
`3 .
`
`Registration ofPetitioner's "KINGDOM SECURITY" mark will inevitably be initially
`
`refused by the US Patent and Trademark Office by reason of the existence of Registrant's similar
`
`"KINGDOM SECURITY AND DESIGN" mark on the Principal Register. For this reason,
`
`Petitioner has a reasonable belief that the continued existence of Registrant's "KINGDOM
`
`SECURITY AND DESIGN" registration will prevent the application for Petitioner's "KINGDOM
`
`SECURITY" Mark from continuing to registration.
`
`4.
`
`Commencing prior to Registrant's alleged date offirst use ofRegistrant's Mark in U.S.
`
`commerce of February 28, 2007, and prior to the filing date of Registrant's Mark, Petitioner has
`
`engaged, and is now engaged in the manufacture, distribution, sale, advertising and promotion in
`
`interstate commerce of services in International Classes 037 under Petitioner's "KINGDOM
`
`SECURITY" mark.
`
`5.
`
`Use of Petitioner's "KINGDOM SECURITY" marks has been continuous, exclusive,
`
`public, and substantial since a date of first use in U.S. commerce at least as early as February 23,
`
`2007.
`
`6.
`
`Registrant's Mark is confusingly similar to Petitioner's "KINGDOM SECURITY"
`
`mark because:
`
`
`
`a.
`
`Registrant's mark is identical in appearance to Petitioner's "KINGDOM
`
`SECURITY" mark;
`
`b.
`
`Registrant's mark is
`
`identical
`
`in sound to Petitioner's
`
`"KINGDOM
`
`SECURITY" mark;
`
`c.
`
`Registrant's mark is identical in connotation to Petitioner's "KINGDOM
`
`SECURITY" mark;
`
`(1.
`
`the services of Petitioner and the services of Registrant are similar and are
`
`marketed through the same channels oftrade and to the same general class of
`
`consumers; and
`
`e.
`
`Petitioner's "KINGDOM SECURITY" mark enjoys a high level of
`
`distinctiveness.
`
`7.
`
`As a result ofPetitioner's promotion and use ofPetitioner's "KINGDOM SECURITY"
`
`mark in connection with its services, the trade and purchasing public have come to know and
`
`recognize Petitioner's "KINGDOM SECURITY" mark and have associated the same with Petitioner
`
`and Petitioner's services.
`
`8.
`
`Petitioner's "KINGDOM SECURITY" mark constitutes the lawful, valued, subsisting,
`
`and exclusive property of Petitioner. As a result of the high quality of Petitioner's services, and the
`
`extensive services rendered and advertising made under Petitioner's "KINGDOM SECURITY" mark,
`
`the aforementioned mark has become an intrinsic and essential part of the valuable goodwill and
`
`property of Petitioner and are recognizable and associated by the public as a symbol identifying and
`
`distinguishing Petitioner's services as those of exceptional quality.
`
`
`
`9.
`
`Registrant's Mark so resembles Petitioner's "KINGDOM SECURITY" mark as to be
`
`likely to cause confusion or mistake, to suggest a connection, or to deceive purchasers into believing
`
`that Registrant's services originate with Petitioner and/or are endorsed or sponsored by the Petitioner,
`
`and/or that Registrant and/or its services are otherwise affiliated with the Petitioner and its services.
`
`10.
`
`The continuing use by Registrant of the confusingly similar Registrant's Mark will
`
`inexorably have an adverse effect upon the Value of Petitioner's "KINGDOM SECURITY" mark.
`
`Ifthis Cancellation is not sustained, any defect, objection to, or fault found with Registrant's services
`
`rendered under Registrant's Mark would necessarily reflect on and seriously injure the valuable
`
`goodwill and reputation that Petitioner has established for its services.
`
`11.
`
`As a result of Petitioner's prior use of Petitioner's "KINGDOM SECURITY" mark
`
`on closely related services, Registrant's mark is not allowed to continue its registration under Section
`
`2(d) of the Trademark Act and should be cancelled in this proceeding accordingly.
`
`12.
`
`Based on the foregoing, the continued registration ofU. S. Registration No. 3,465,275
`
`for "KINGDOM SECURITY AND DESIGN" for use on services in International Class 045 has, and
`
`will continue to, cause injury and damage to Petitioner. Petitioner believes it will be free to register
`
`its "KINGDOM SECURITY" mark on the Principal Register if U.S. Registration No. 3,465,275 is
`
`cancelled.
`
`WHEREFORE, Petitioner respectfully requests that the Trademark Trial and Appeal Board
`
`cancel U.S. Registration No. 3,465,275.
`
`Petitioner hereby submits the requisite filing fee of $300.00 for the Petition to Cancel
`
`Registrant’s registration in International Class 045.
`
`
`
`August 27, 2012
`
`Date
`
`Respectfully submitted,
`
`/2720-1/
`_
`John S. Egbert
`Reg. No. 30,627
`Kevin S. Wilson
`
`Egbert Law Offices, PLLC
`1314 Texas AVe., 21“ Floor
`
`Houston, Texas 77002
`
`(713)224-8080
`(713)223-4873 (Fax)
`
`ATTORNEYS FOR PETITIONER
`
`Kingdom Security, L.L.C.
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that on August 27, 2012, a true and correct copy of the foregoing document
`
`is being sent by first class mail to the following address of record for the Registrant:
`
`Wimbush Clifford Lavor
`
`Kingdom Security
`529 E. Skyline Dr.
`Purcellville, VA 20132-6160
`
`REGISTRANT
`
`/2720-l/
`
`John S. Egbert
`Reg. No. 30,627
`Kevin S. Wilson
`
`Egbert Law Offices, PLLC
`1314 Texas AVe., 21“ Floor
`
`Houston, Texas 77002
`
`(713)224-8080
`(713)223-4873 (Fax)
`
`ATTORNEYS FOR PETITIONER
`
`Kingdom Security, L.L.C.
`
`JSE:mfs
`
`Our File: 2720-1
`
`
`
`Exhibit "A"
`
`
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2012-08-22 16:18:11 ET
`
`Serial Number: 85704340 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number:(NOT AVAILABLE)
`
`Mark
`
`KINGDOM SECURITY
`
`(words only): KINGDOM SECURITY
`
`Standard Character claim: Yes
`
`Current Status: New application will be assigned to an examining attorney approximately 3 months
`after filing date.
`
`Date of Status: 2012-08-18
`
`Filing Date: 2012-08-15
`
`Transformed into a National Application: No
`
`Registration Date: (DATE NOT AVAILABLE)
`
`Register: Principal
`
`Law Office Assigned: (NOT AVAILABLE)
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at Tradema1'kAssistanceCenter§zDusptoxgov
`
`Current Location: 042 —New Application Processing
`
`Date In Location: 2012-08-18
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`
`
`1. Kingdom Security, L.L.C.
`
`Address:
`
`Kingdom Security, L.L.C.
`PO BOX 1189
`
`La Porte, TX 77572
`United States
`
`Legal Entity Type: Limited Liability Company
`State or Country Where Organized: Texas
`
`GOODS AND/OR SERVICES
`
`International Class: 037
`
`Class Status: Active
`
`Installation of commercial and industrial security systems; burglar alarm installation, maintenance and
`repair; fire alarm installation, maintenance and repair; installation, repair and replacement of locks;
`installation of intercom and public address systems, IP (Internet protocol) cameras, closed circuit
`television systems, access control systems, biometric identification apparatus
`Basis: 1(a)
`First Use Date: 2007-02-23
`
`First Use in Commerce Date: 2007-02-23
`
`ADDITIONAL INFORMATION
`
`(NOT AVAILABLE)
`,2,
`"f;'éAA'7' W
`—
`
`..
`
`VD
`
`.
`
`.....,.:.._,.,..A
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`,..______,.__..__._...__....._.____......_...
`
`.,.
`
`....__~
`
`._..._..
`
`PROSECUTION HISTORY
`
`NOTE: To View any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2012-08-18 - New Application Entered In Tram
`
`,.__...._._.._.__...__.....__..._........_._._..._....I__..._.__..........__~......_...__.___._.._,.,......_.n.._s._......_...._.._s..._......_...._..,,.....,_..,..._.............
`
`_.I.
`
`.,.._..
`
`_
`
`ATTORNEY/C ORRESPONDENT INFORMATION
`
`Attorney of Record
`John S. Egbert
`
`Correspondent
`JOHN S. EGBERT
`
`
`
`EGBERT LAW OFFICES, PLLC
`
`1314 TEXAS AVE., 21 ST FLOOR
`HOUSTON, TX 77002
`Phone Number: 713-224-8080
`
`Fax Number: 713-223-4873
`
`
`
`é
`
`j
`
`fI
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`
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`United States Patent and Trademark Office
`
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`Assignments on the Web > Trademark Query
`
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`
`For Serial Number: 85704340
`if you have any comments or questions concerning the data displayed, contact PRD / Assignments at 571-272-3350. v.2.3.2
`Web interface last modified: July 10, 2012 v2.3.2
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