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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA518718
`ESTTA Tracking number:
`01/29/2013
`
`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
`
`Wayne Wright, LLP
`Citizenship
`Partnership
`A. Wayne Wright, A. Wyatt Wright
`5707 Interstate 10 West
`San Antonio, TX 78201
`UNITED STATES
`
`Texas
`
`Attorney
`information
`
`Charles W. Hanor
`Charles W. Hanor, P.C.
`750 Rittiman Road
`San Antonio, TX 78209
`UNITED STATES
`trademarks@hanor.com Phone:210-829-2002
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3943943
`Ruggero Provenghi PLLC
`7400 Viscount, Suite 205
`El Paso, TX 79925
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`04/12/2011
`
`Class 045. First Use: 2007/05/01 First Use In Commerce: 2007/05/01
`All goods and services in the class are cancelled, namely: Legal services
`
`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
`
`Word Mark
`
`85716080
`
`Application Date
`
`08/29/2012
`
`NONE
`
`Foreign Priority
`Date
`YOU DESERVE RESPECT AND JUSTICE SO WE DEMAND IT!
`
`NONE
`
`

`
`Design Mark
`
`Description of
`Mark
`Goods/Services
`
`NONE
`
`Class 045. First use: First Use: 1996/09/13 First Use In Commerce: 1996/09/13
`Legal services
`
`Attachments
`
`85716080#TMSN.jpeg ( 1 page )( bytes )
`20130129 Petition to Cancel.pdf ( 5 pages )(93410 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
`
`/charles w hanor/
`Charles W. Hanor
`01/29/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`In the matter of Registration No. 3,943,943
`
`Mark: YOU DESERVE REPECT AND
`JUSTICE SO WE DEMAND IT!
`
`Registered: April, 12, 2011
`
`
`
`
`
`Wayne Wright, LLP
`Petitioner
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`Ruggero Provenghi, PLLC
`Respondent
`
`
`
`
`
`
`
`
`
`PETITON TO CANCEL
`
`The Petitioner is Wayne Wright, LLP, a Texas limited partnership whose address
`
`1.
`
`is 5707 Interstate Ten West, San Antonio, Texas 78201
`
`2.
`
`The name and address of the current owner of the Registration No. 3,943,943
`
`sought to be cancelled is Ruggero Provenghi, PLLC, a Texas professional limited liability
`
`company, whose address is 7400 Viscount, Suite 205, El Paso, Texas 79925.
`
`3.
`
`The attorney of record for Mr. Provenghi is Jeanne C. Collins of Kemp Smith,
`
`LLP, 221 North Kansas, Suite 1700, El Paso, Texas 79901.
`
`4.
`
`The above-identified Petitioner believes that it will be damaged by the above-
`
`identified registration and hereby petitions to cancel same.
`
`5.
`
`Since at least as early as September 13, 1996, Petitioner, Wayne Wright, LLP has
`
`continuously used and advertised the mark YOU DESERVE RESPECT AND JUSTICE SO WE
`
`DEMAND IT! in connection with the advertising and offering of its legal services.
`
`

`
`6.
`
`Petitioner has done business and has represented clients throughout the state of
`
`Texas, including El Paso, Texas, using its mark YOU DESERVE RESPECT AND JUSTICE SO
`
`WE DEMAND IT! since long prior to 2007.
`
`7.
`
`RgvkvkqpgtÓu" wug" qh" its YOU DESERVE RESPECT AND JUSTICE SO WE
`
`DEMAND IT! mark has been valid and continuous since at least as early as August 29, 1996.
`
`8.
`
`Petitioner has extensively advertised its mark YOU DESERVE RESPECT AND
`
`JUSTICE SO WE DEMAND IT! on its website and on cable broadcast television since 1997 and
`
`has advertised it throughout the state of Texas and throughout the United States since 1997.
`
`9.
`
`RgvkvkqpgtÓu" oark YOU DESERVE RESPECT AND JUSTICE SO WE
`
`DEMAND IT! is a famous mark.
`
`10.
`
`Petitioner and Respondent are both personal injury attorneys who represent their
`
`clients on a contingent fee basis.
`
`11.
`
`PetitionerÓu" cvvqtpg{u and RespondentÓu" cvvqtpg{u" both include board certified
`
`personal injury attorneys with the State Bar of Texas.
`
`12.
`
`Petitioner has offices in San Antonio, Austin, Corpus Christi, Houston, and El
`
`Paso, Texas.
`
`13.
`
`Petitioner and Respondent both operate interactive websites that solicit the same
`
`clients and legal services.
`
`14.
`
`Provenghi filed its application to register YOU DESERVE RESPECT &
`
`JUSTICE SO I FIGHT FOR IT on August 10, 2010 after it was notified by Petitioner on July 20,
`
`4232"vjcv"kv"ycu"kphtkpikpi"RgvkvkqpgtÓu"octm." YOU DESERVE RESPECT AND JUSTICE SO
`
`WE DEMAND IT!
`
`

`
`15.
`
`Ruggero Provenghi, PLLC received a registration for YOU DESERVE RESPECT
`
`& JUSTICE SO I FIGHT FOR IT on April 12, 2011 in class 45, for legal services.
`
`16.
`
`The claimed first-use date of the mark in commerce for YOU DESERVE
`
`RESPECT & JUSTICE SO I FIGHT FOR IT was May 1, 2007.
`
`17.
`
`TgurqpfgpvÓu" hktuv" wug" ycu ygnn" chvgt" RgvkvkqpgtÓu" hktuv-use of YOU DESERVE
`
`RESPECT AND JUSTICE SO WE DEMAND IT!
`
`18.
`
`Respondent knew about Petitioner and its prior use of its mark YOU DESERVE
`
`RESPECT AND JUSTICE SO WE DEMAND IT!, and with such knowledge filed an application
`
`to register its YOU DESERVE RESPECT & JUSTICE SO I FIGHT FOR IT mark.
`
`19.
`
`Respondent has a website, www.elpasotexasinjurylawyer.com, which shows use
`
`of RespondentÓs YOU DESERVE RESPECT & JUSTICE SO I FIGHT FOR IT mark for legal
`
`services.
`
`20.
`
`Petitioner has a website, www.waynewright.com, which shows use of RgvkvkqpgtÓu
`
`YOU DESERVE RESPECT AND JUSTICE SO WE DEMAND IT! mark for legal services.
`
`Petitioner filed a trademark application for the YOU DESERVE RESPECT AND JUSTICE SO
`
`WE DEMAND IT! mark on August 29, 2012 and was given Application number 85/716,080 in
`
`International Class 45 for legal services.
`
`21.
`
`The TgurqpfgpvÓu"YOU DESERVE RESPECT & JUSTICE SO I FIGHT FOR IT
`
`registration is currently blocking the allowance and registration qh"RgvkvkqpgtÓu"[QW"FGUGTXG"
`
`RESPECT AND JUSTICE SO WE DEMAND IT! mark based on the determination by the
`
`United States Patent & Trademark Office that the marks are likely to cause confusion in the
`
`market place and mislead purchasers into mistaking the goods as coming from a common source.
`
`

`
`22.
`
`Given that the first use date for YOU DESERVE RESPECT AND JUSTICE SO
`
`WE DEMAND IT! long rtgegfgu"vjg"hktuv"wug"fcvg"qh"RtqxgpijkÓu"YOU DESERVE RESPECT
`
`& JUSTICE SO I FIGHT FOR IT mark by over a decade, there is no disputable issue as to
`
`RgvkvkqpgtÓu"priority of use.
`
`23.
`
`Rgvkvkqpgt"ku"dgkpi"fcocigf"d{"vjg"TgikuvtcpvÓu"tgikuvtcvkqp0
`
`24. Yjgtghqtg."vjg"Rgvkvkqpgt"tgurgevhwnn{"tgswguvu"vjg"ecpegnncvkqp"qh"vjg"TgikuvtcpvÓu"
`
`YOU DESERVE RESPECT & JUSTICE SO I FIGHT FOR IT mark so that RgvkvkqpgtÓu"octm,
`
`YOU DESERVE RESPECT AND JUSTICE SO WE DEMAND IT!, may be registered.
`
`Dated: January 29, 2013.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Charles W. Hanor
`Charles W. Hanor
`Charles W. Hanor, P.C.
`750 Rittiman Road
`San Antonio, TX 78209
`(210) 829-2002 Direct
`(210) 829-2001 Fax
`
`Attorney for Applicant
`Wayne Wright, LLP
`
`
`
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that the foregoing was served via U.S. First Class Mail on January 29, 2013 to
`
`Tgurqpfgpv"cpf"vq"TgurqpfgpvÓu"eqwpugn"cv"vjg"hqnnqykpi"cfftguugu:
`
`Ruggero Provenghi
`Ruggero Provenghi, PLLC
`7400 Viscount
`Suite 205
`El Paso, Texas 79925
`
`Jeanne C. Collins
`Kemp Smith, LLP
`221 North Kansas
`Suite 1700
`El Paso, Texas 79901
`
`
`
`
`
`
`
`/s/ Charles W. Hanor
`Charles W. Hanor

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