Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA505440
`ESTTA Tracking number:
`11/14/2012
`
`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
`
`Flywheel Fitness LLC
`limited liability company
`2300 S. Lamar Blvd., Suite 105
`Austin, TX 78704
`UNITED STATES
`
`Citizenship
`
`Texas
`
`Attorney
`information
`
`Cathryn A. Berryman
`Winstead PC
`P.O. Box 131851
`Dallas, TX 75313
`UNITED STATES
`jmuennink@winstead.com, cberryman@winstead.com Phone:214.745.5172
`Registrations Subject to Cancellation
`
`Registration No
`Registrant
`
`4225193
`Flywheel Sports, Inc.
`263 13th Ave. South, Suite 340
`St. Petersburg, FL 33701
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`10/16/2012
`
`Class 025. First Use: 2010/02/01 First Use In Commerce: 2010/02/01
`All goods and services in the class are cancelled, namely: fitness apparel, namely, shirts, pants,
`shorts, hats, jackets, footwear
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Other
`Registration No
`Registrant
`
`4217593
`Flywheel Sports, Inc.
`263 13th Ave. South, Suite 340
`St. Petersburg, FL 33701
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Common law basis for cancellation
`Registration date
`10/02/2012
`
`Class 041. First Use: 2010/01/01 First Use In Commerce: 2010/01/01
`All goods and services in the class are cancelled, namely: providing fitness and exercise studio
`services, namely, indoor cycling instruction, personal training and physical fitness classes; counseling
`services in the field of exercise
`
`

`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Other
`Registration No
`Registrant
`
`4217592
`Flywheel Sports, Inc.
`263 13th Ave. South, Suite 340
`St. Petersburg, FL 33701
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Common-law basis for cancellation
`Registration date
`10/02/2012
`
`Class 041. First Use: 2010/01/01 First Use In Commerce: 2010/01/01
`All goods and services in the class are cancelled, namely: providing fitness and exercise studio
`services, namely, indoor cycling instruction, personal training and physical fitness classes; counseling
`services in the field of exercise
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Other
`Registration No
`Registrant
`
`3938710
`FLYWHEEL SPORTS, INC.
`263 13th Ave. South, Suite 340
`St. Petersburg, FL 33701
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Common law basis for cancellation
`Registration date
`03/29/2011
`
`Class 041. First Use: 2010/01/01 First Use In Commerce: 2010/01/01
`All goods and services in the class are cancelled, namely: Providing fitness and exercise studio
`services, namely, indoor cycling instruction, personal training and physical fitness classes; counseling
`services in the field of exercise
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Other
`Registration No
`Registrant
`
`4102794
`FLYWHEEL SPORTS, INC.
`263 13th Ave. South, Suite 340
`St. Petersburg, FL 33701
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Common law basis for cancellation
`Registration date
`02/21/2012
`
`Class 035. First Use: 2010/02/01 First Use In Commerce: 2010/02/01
`All goods and services in the class are cancelled, namely: Retail stores featuring fitness apparel
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`
`

`
`Priority and likelihood of confusion
`Other
`Registration No
`Registrant
`
`4191024
`FLYWHEEL SPORTS, INC.
`263 13th Ave. South, Suite 340
`St. Petersburg, FL 33701
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Trademark Act section 2(d)
`Common law basis for cancellaton
`Registration date
`08/14/2012
`
`Class 025. First Use: 2012/01/00 First Use In Commerce: 2012/01/00
`All goods and services in the class are cancelled, namely: Fitness apparel, namely, shirts, pants,
`shorts, hats, jackets, footwear
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Other
`Registration No
`Registrant
`
`3985839
`Flywheel Sports, Inc.
`263 13th Ave. South, Suite 340
`St. Petersburg, FL 33701
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Common law basis for cancellation
`Registration date
`06/28/2011
`
`Class 025. First Use: 2010/02/00 First Use In Commerce: 2010/02/00
`All goods and services in the class are cancelled, namely: Fitness apparel, namely, shirts, pants,
`shorts, hats, jackets, footwear
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Other
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Common law basis for cancellation
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`Goods/Services
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`FLYWHEEL FLYWHEEL FITNESS
`Providing fitness and exercise servcies, indoor cycling, indoor rowing,
`boot camps, personal training and physical fitness classes; consulting
`services in the field of physical fitness; t-shirs and fitness apparel;
`water bottles and towels; operation of web site dedicated to indoor
`cycling, indoor rowing and related physical fitness topics
`
`Attachments
`
`54907 Petition for Cancellation.pdf ( 3 pages )(39509 bytes )
`
`

`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Overnight Courier on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/Cathryn A. Berryman/
`Cathryn A. Berryman
`11/14/2012
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration Nos. 4,225,193; 4,217,593; 4,217,592; 3,985,839;
`3,938,710; 4,102,794; and 4,191,024
`Date of Registrations: October 16, 2012; October 2, 2012; October 2, 2012; June 28,
`2011; March 29, 2011; February 21, 2012; and August 14, 2012, respectively
`
`Cancellation No.
`
`FLYWHEEL FITNESS, LLC
`
`Petitioner,
`
`v.
`
`FLYWHEEL SPORTS, INC.
`
`Respondent
`
`Box TTAB
`Commission for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`PETITION FOR CANCELLATION
`
`Petitioner, Flywheel Fitness, LLC, a Texas limited liability company, residing at
`
`2300 S. Lamar Blvd., Suite 105, Austin, Texas 78704, believes that it is or will be
`
`damaged by Registration Nos. 4,225,193; 4,217,593; 4,217,592; 3,985,839; 3,938,710;
`
`4,102,794; and 4,191,024 and hereby petitions to cancel same.
`
`The Registrant of the registrations in issue is shown as the Respondent, Flywheel
`
`Sports, Inc., having an address of P.O. Box 1816, New York, New York 10113.
`
`As grounds for this Petition, it is alleged that:
`
`1. (cid:9)
`
`Petitioner is the owner of common law rights in and to the marks and trade
`
`names FLYWHEEL, FLYWHEEL FITNESS and FLYWHEEL FITNESS & DESIGN
`
`(collectively the "Marks") used in commerce with the State of Texas and in interstate
`
`commerce within the United States (Internet) for providing the following goods and
`
`services: fitness and exercise services, indoor cycling, indoor rowing, boot camps;
`
`personal training and physical fitness classes; consulting services in the field of physical
`
`fitness; t-shirts and fitness apparel; water bottles; towels; and operation of web sites
`
`Flywheel Fitness, LLC v. Flywheel Sports, Inc. — Petition to Cancellation
`DALLAS_1 5956310v1
`
`

`
`dedicated to indoor cycling and indoor rowing and related physical fitness topics.
`
`(Petitioner's "Goods/Services").
`
`2.
`
`Petitioner is likely to be damaged by the continuance of the registrations in
`
`issue, and Petitioner's legal rights to obtain any trademark applications for the Marks are
`
`likely to be impaired by the continuation of the registrations.
`
`3.
`
`Petitioner further seeks cancellation on the grounds that Respondent have
`
`committed fraud in the declarations submitted in the applications from which the
`
`registrations issued. Upon information and belief, Respondent and/or the original
`
`applicant from whom Respondent acquired the registrations had actual knowledge of
`
`Petitioner and its prior use of the Marks on or before the applicable filing dates, and/or
`
`reasonably should have known about Petitioner and its prior use of the Marks, at least as
`
`early as August 1, 2009. Respondent signed the Declarations knowingly making the
`
`statement of no knowledge of Petitioner with intent to deceive the USPTO, and obtained
`
`registrations in issue as a direct result of such material false statement.
`
`4.
`
`Petitioner further seeks cancellation of Respondent's marks on the
`
`grounds that all of the marks covered by the registrations consist of or comprise marks
`
`which so resemble the marks and trade names FLYWHEEL and FLYWHEEL FITNESS
`
`previously used in the United States on or in conjunction with Petitioner's
`
`Goods/Services at least as early as August 1, 2009, as to be likely, when use on or in
`
`connection with the goods and services of Respondent to cause confusion or to cause
`
`mistake to deceive. Accordingly, Respondent's registrations should be canceled on the
`
`basis alone; or in the alternative, the Director should determine that a concurrent
`
`registration may be issued to Petitioner for its Marks with exclusive use in the State of
`
`Texas as Petitioner has become entitled to use its Marks as a result of its concurrent
`
`lawful use in commerce prior to the earliest of the filing dates of the registrations in issue
`
`issued under the U.S. Trademark Act.
`
`5.
`
`Petitioner further seeks cancellation of the registrations at issue on the
`
`grounds that, under common law, trademark rights within a certain territory are based on
`
`a priority of use of a mark within that territory. Based on information and belief,
`
`Petitioner has a priority of use within the State of Texas and within interstate commerce
`
`in the United States arising from its common law rights in the Marks.
`
`Flywheel Fitness, LLC v. Flywheel Sports, Inc. — Petition to Cancellation
`DALLAS_1 5956310v1
`
`

`
`6. (cid:9)
`maintain its invalid registrations. Further, the continued existence of such registrations
`
`Petitioner is likely to be damaged if Respondent is permitted continue to
`
`casts a cloud upon Petitioner's own right to continue to use, develop and expand the use
`
`of its Marks, as well as prevents Petitioner from proceeding to obtain registrations for its
`
`Marks. Thus, Respondent's registrations are a source of damage injury to Petitioner.
`
`WHEREFORE, Petitioner prays that Registration Numbers cited in this Petition
`
`be cancelled and that this Petition for Cancellation be sustained in favor of Petitioner.
`
`Petitioner authorizes the Commission to charge the filing fees to Winstead Deposit
`
`Account No. 23-2426.
`
`44
`Dated this ;if , day of November 2012.
`
`Respectfully submitted,
`
`FLYWHEEL FITNESS, LLC
`
`Cathryn A. Berryman
`Lekha Gopalakrishnan
`
`Attorneys for Petitioner
`
`WINSTEAD PC
`P.O. Box 131851
`Dallas, Texas 75313
`(214) 745-5172
`
`Flywheel Fitness, LLC v. Flywheel Sports, Inc. — Petition to Cancellation
`DALLAS _1 5956310v1