Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA526770
`ESTTA Tracking number:
`03/14/2013
`
`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
`Address
`
`Mr. Sandless Franchise, LLC
`Limited Liability Company
`2970 Concord Road
`Aston, PA 19014
`UNITED STATES
`
`Citizenship
`
`Pennsylvania
`
`Attorney
`information
`
`Robert B. Famiglio
`FAMIGLIO & ASSOCIATES
`P.O. Box 1999
`Media, PA 19063-8999
`UNITED STATES
`RBFamiglio@FamiglioAssociates.com Phone:610-359-7300
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3636605
`Harris Research, Inc.
`1530 North 1000 West
`Logan, UT 84321
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`06/09/2009
`
`Class 037. First Use: 2003/06/30 First Use In Commerce: 2003/06/30
`All goods and services in the class are cancelled, namely: REFINISHING AND RESURFACING
`SERVICES FOR WOOD SURFACES, FURNITURE, FLOORS, CABINETS, DOORS, TRIMS
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`The mark is merely descriptive
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Trademark Act section 2(e)(1)
`
`Related
`Proceedings
`
`Harris Research, Inc. v. Mr. Sandless Franchise, LLC, et al. US District Court for
`District of Utah. Case No.: 1:12-CV-00120-TS
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`#NO SANDING, NO MESS, NO FUSS.# beginning in or about year
`2004; #NO DUST, NO ODOR & NO CLEANUP!#; beginning in or
`
`
`ESTTA526770
`ESTTA Tracking number:
`03/14/2013
`
`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
`Address
`
`Mr. Sandless Franchise, LLC
`Limited Liability Company
`2970 Concord Road
`Aston, PA 19014
`UNITED STATES
`
`Citizenship
`
`Pennsylvania
`
`Attorney
`information
`
`Robert B. Famiglio
`FAMIGLIO & ASSOCIATES
`P.O. Box 1999
`Media, PA 19063-8999
`UNITED STATES
`RBFamiglio@FamiglioAssociates.com Phone:610-359-7300
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3636605
`Harris Research, Inc.
`1530 North 1000 West
`Logan, UT 84321
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`06/09/2009
`
`Class 037. First Use: 2003/06/30 First Use In Commerce: 2003/06/30
`All goods and services in the class are cancelled, namely: REFINISHING AND RESURFACING
`SERVICES FOR WOOD SURFACES, FURNITURE, FLOORS, CABINETS, DOORS, TRIMS
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`The mark is merely descriptive
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Trademark Act section 2(e)(1)
`
`Related
`Proceedings
`
`Harris Research, Inc. v. Mr. Sandless Franchise, LLC, et al. US District Court for
`District of Utah. Case No.: 1:12-CV-00120-TS
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
`
`NONE
`
`Application Date
`
`NONE
`
`NONE
`#NO SANDING, NO MESS, NO FUSS.# beginning in or about year
`2004; #NO DUST, NO ODOR & NO CLEANUP!#; beginning in or
`
`
`
`about 2006; #NO SANDING, NO ODOR, NO MESS!# beginning in or
`about 2007; #NO DUST, NO CLEANUP & NO ODOR!# beginning in
`or about 2007; and #NO DUST, NO MESS, NO ODOR!# beginning
`early in 2008
`Wood refinishing services
`
`Goods/Services
`
`Attachments
`
`TTAB Complaint MS-AS FILED.pdf ( 6 pages )(79752 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
`
`/Robert B. Famiglio/
`Robert B. Famiglio
`03/14/2013
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.:
`
`:
`
`: :
`
`: :
`
`:
`
`: : :
`
`:
`
`In the Matter of Registration No. 3,636,605
`Date of Issue: June 09, 2009
`
`Mr. Sandless Franchise, LLC
`Petitioner
`
`
`
`v.
`
`Harris Research, Inc.
`Registrant
`
`Date: March 14, 2013
`
`______________________________________
`
`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`PETITION FOR CANCELLATION
`
`Petitioner Mr. Sandless Franchise, LLC (“Mr. Sandless”), a limited liability
`
`company and a statutory institution of the Commonwealth of Pennsylvania, located at
`
`2970 Concord Road, Aston, PA 19014, believes that it is being damaged by
`
`Registration No. 3,636,605 and hereby petitions to cancel the same.
`
`As grounds for this Petition, it is alleged that:
`
`1. Registrant, Harris Research, Inc., or, upon information and belief, its
`
`successor in interest NHance, Inc., a corporation organized and existing under the laws
`
`of Utah, and doing business at 1530 North 1000 West, Logan, UT 84321, is the owner
`
`of United States Trademark Registration No. 3,636,605 for “No Dust. No Mess. No
`
`Page 1 of 6
`
`
`
`Odor.” for: Refinishing and resurfacing services for wood surfaces, furniture, floors,
`
`cabinets, doors, trims” in International Class 037.
`
`2. Registrant claims a date of first use of the No Dust. No Mess. No Odor. mark
`
`on June 30, 2003.
`
`3. Registrant filed its application for the above said trademark on July 03, 2008.
`
`4. Registrant was issued the above said trademark registration on June 09, 2009
`
`and said mark is presently registered on the principal register.
`
`
`
`5. Petitioner is a direct competitor of the Registrant, and had been using terms
`
`similar to components of the registration of the Registrant to describe generically its
`
`services in the processing, refinishing and resurfacing wood surfaces and floors, which
`
`creates no dust, creates no mess, and creates no odor. Petitioner, and indeed the
`
`entire industry, needs to refer to its process in descriptive terms as creating no odor or
`
`mess, or dust, which described Petitioner’s services.
`
`6. If it is deemed that Registrant’s mark is not descriptive or generic, then, and in
`
`that event, Petitioner avers it has priority of use of some or all of the components of
`
`Registrant’s mark which predated Registrant’s filings and on information and belief,
`
`predates Registrant’s actual date of first use of its claimed mark.
`
`7. Petitioner has used similar and/or identical terms as a mark or descriptive use
`
`in interstate commerce, in advertising its services to that of the Registrant’s mark, to wit
`
`“No Sanding, No Mess, No Fuss.” beginning in or about year 2004; “No dust, No odor &
`
`No cleanup!”; beginning in or about 2006; “No sanding, No odor, No mess!” beginning in
`
`or about 2007; “No dust, No cleanup & No odor!” beginning in or about 2007; and “No
`
`Dust, No Mess, No Odor!” beginning early in 2008, all for services which encompass
`
`wood floor refinishing.
`
`Page 2 of 6
`
`
`
`8. Petitioner avers that it has been using the descriptive phrase and formative
`
`components of the above said registered mark to describe its services before the filing
`
`date of application for said registered mark, and, before the actual date of first use by
`
`the Registrant.
`
`9. On information and belief, it appears that the industry providing similar
`
`services of the Registrant have historically used and continue to use components of,
`
`formatives of, or on occasion the entire mark claimed by the Registrant as a functional,
`
`generic or descriptive label for services provided by many in the same trade.
`
`10. Upon information and belief, Registration No. 3,636,605 was improperly
`
`obtained by the Registrant because the formal papers filed by the Registrant to obtain
`
`the registration contained inaccurate statements regarding the date of first use and the
`
`actual entitlement to the registration thereafter obtained.
`
`11. The statements made in the application process was with an intent to induce
`
`authorized agents of the U.S. Patent and Trademark Office to grant the said registration
`
`for “No Dust. No Mess. No Odor.” having reasonably relied upon the Registrant’s
`
`statement including the specimens of use filed therein. The Registrant did not legally
`
`qualify for the mark.
`
`12. Registrant, by virtual of the industry’s and the petitioner’s long standing prior
`
`use, did not have exclusive control over use of the components of the mark “No Dust.
`
`No Mess. No Odor.” for a service which presents no dust, no mess, no odor, or any
`
`combination thereof at the time it made application for trademark registration.
`
`Therefore, the Registrants’ filing is invalid.
`
`13. The Petitioner’s services are closely related to the type of services provided
`
`by Registrant under the mark. Moreover, the Petitioner’s processes and services
`
`provided to the public produce no odor, produce no mess, and produce no dust and
`
`Page 3 of 6
`
`
`
`Petitioner needs to describe its services using components of the registered mark to
`
`convey to the public in simple, widely used and generic and/or descriptive terms that its
`
`services creates no dust, no mess, and no odor and other simple and/or related
`
`formatives as descriptions of the services for which the Registrant has registered the
`
`mark.
`
`14. In the Registrant’s application for the above referenced trademark,
`
`Registrant’s representative endorsed the Declaration that it “believes applicant to be
`
`entitled to use such mark in commerce; to the best of his/her knowledge and belief no
`
`other person, firm, corporation, or association has the right to use the mark in
`
`commerce, either in the identical form thereof or in such near resemblance thereto as to
`
`be likely, when used on or in connection with the goods/services of such other person to
`
`cause confusion, or to cause mistake, or to deceive; . . .”
`
`15. The Petitioner had widely advertised and marketed its similar services using
`
`the Registrant’s claimed mark in direct competition with Registrant throughout the
`
`country in a significant fashion as to make it unlikely or impossible for Registrant not to
`
`know that prior to filing its application the Petitioner had prior use of the phrase “No
`
`Dust, No Mess, No Odor” and other formatives as will be proved at the trial of this
`
`matter.
`
`16. The Registrant has asserted, and is presently asserting, its claimed rights
`
`under the Registration against the Petitioner claiming the Petitioner may not use the
`
`terms “No dust. No mess. No odor.” or certain combinations thereof, without incurring
`
`liability to the Registrant.
`
`17. Moreover, the continued existence of Registrant’s registration casts a cloud
`
`upon Petitioner’s right as well as the industry’s right to continue to use and to expand
`
`the use of its descriptive terms for its services.
`
`Page 4 of 6
`
`
`
`18. Registrant’s own specimen of use filed to obtain its registration demonstrates
`
`that the mark is used by Registrant as descriptive terms to describe its own services as
`
`listed on its specimens of use in the file wrapper and should not have been approved by
`
`the examiner for registration.
`
`19. If Registrant is allowed to maintain its invalid registration, the same may be
`
`deemed incontestable after five years from the date of registration, and Registrant
`
`would thereby obtain an incontestable right to use its mark in commerce further
`
`damaging Petitioner’s rights to describe its services using plain and ordinary language.
`
`Such continued registration held by the Registrant is the cause and source of damage
`
`and injury to the Petitioner.
`
`20. Petitioner has been and will continue to be damaged by the existence of
`
`Registration No. 3,636,605.
`
`WHEREFORE, Petitioner believes that it has and will continue to be damaged by
`
`Registration No. 3,636,605 and prays that this Petition for Cancellation be sustained in
`
`favor of Petitioner, that judgment be entered against Registrant and that U.S.
`
`Trademark Registration No. 3,636,605 be cancelled.
`
`Dated: March 14, 2013
`
`Respectfully Submitted,
`
`/s/ Robert B. Famiglio
`Robert B. Famiglio, Esquire
`USPTO Reg. No. 29,305
`Attorney for Petitioner
`FAMIGLIO & ASSOCIATES
`P.O. Box 1999
`Media, PA 19063
`610-359-7300
`
`Page 5 of 6
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of this Petition for Cancellation has been served to the
`
`Registrant as addressed below by deposit with the U.S. Postal Service via First Class
`
`Certified Return Receipt Mail.
`
`Harris Research, Inc.
`1530 North 1000 West
`Logan, UT 84321
`
`Served to Registrant’s current attorney of record via electronic mail by PDF only to:
`
`Brian C. Kunzler, Esq.
`Kunzler Needham Massey & Thorpe
`8 East Broadway, Suite 600
`Salt Lake City, UT 84111
`docket@kunzlerip.com
`
`And a true and correct copy provided to Registrants’ other known attorney via electronic
`mail by PDF only to:
`
`Lewis M. Francis, Esq.
`Jones Waldo Holbrook & McDonough PC
`170 South Main Street, Suite 1500
`Salt Lake City, UT 84101
`Lfrancis@joneswaldo.com
`
`Dated: March 14, 2013
`
`By:
`
`/s/ Robert B. Famiglio
`Robert B. Famiglio, Esquire
`USPTO Reg. No. 29,305
`Attorney for Petitioner
`FAMIGLIO & ASSOCIATES
`P.O. BOX 1999
`Media, PA 19063
`610-359-7300
`
`Page 6 of 6
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