Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA663579
`ESTTA Tracking number:
`03/27/2015
`
`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
`
`Sons of Liberty Motorcycle Club
`Non Profit
`Citizenship
`1117 FM 359, Suite 200
`Richmond, TX 77406
`UNITED STATES
`
`Texas
`
`Attorney informa-
`tion
`
`David W. Showalter
`Showalter Law Firm
`1117 FM 359, Suite 200
`Richmond, TX 77406
`UNITED STATES
`david@showalterlaw.com Phone:281-341-5577
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`4703392
`John David Lewien
`206 Ashley Wayne
`Blanco, TX 78606
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/17/2015
`
`Class 041. First Use: 2009/04/10 First Use In Commerce: 2009/04/10
`All goods and services in the class are cancelled, namely: Organizing motorcycle riding events
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Priority and likelihood of confusion
`Dilution
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Related Proceed-
`ings
`
`Litigation for Trademark Infringement filed on March 27, 2015 in United States
`District Court, Southern District of Texas.
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`Registration Date
`
`Word Mark
`Design Mark
`
`86579150
`
`Application Date
`
`NONE
`
`NONE
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Description of
`Mark
`Goods/Services
`
`NONE
`
`Attachments
`
`SOLMC Grounds.pdf(49011 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 Overnight Courier on this date.
`
`Signature
`Name
`Date
`
`/David W. Showalter/
`David W. Showalter
`03/27/2015
`
`

`

`STATEMENT OF GROUNDS UPON WHICH PETITION FOR CANCELLATION IS BASED
`
`This is an action at law and equity for trademark infringement and dilution, false
`designation of origin, unfair competition, and injury to business reputation arising under the
`Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq. (“Lanham Act”) and the antidilution laws of
`the State of Texas and the common law.
`Plaintiff, Sons of Liberty Motorcycle Club, is a motorcycle club that initiated in Fort
`Bend County, Texas, and also has a significant online presence. Its mission is to promote
`freedom through the use of motorcycles and motorcycle related activities. Its organization and
`activities are based on libertarian principles and the concept of personal freedom. As such, it is
`not a 1% club and is not associated with the 1% in any respect.
`Defendant, Sons of Liberty, is a motorcycle club that initiated in Blanco County, Texas.
`It is sanctioned by the 1%. Upon information and belief, it has six chapters— including one
`located in North West Houston.
`John David Lewien is an officer of Sons of Liberty.
`To date, Defendants offer services, merchandise, and an online forum that exploit
`Plaintiff s common law name and trademark, Sons of Liberty Motorcycle Club. Defendants’
`organization and activities are not connected or affiliated with Plaintiffs in any way.
`Defendants’ use of Plaintiffs name and mark is likely, and intended, to confiise and
`deceive consumers and the public regarding its source and, as such, dilutes and tarnishes the
`distinctive quality of Plaintiff 5 services, merchandise, and message.
`Further, Defendants are harassing and threatening Plaintiff in an effort to cancel or coerce
`Plaintiff to abandon its superior and long—standing use of the name and mark. Plaintist first
`commercial use of the name “Sons of Liberty Motorcycle Club” was on November 3, 2008.
`Defendants’ first alleged commercial use of the name “Sons of Liberty” was on April 10, 2009.
`Despite Plaintiffs pre-existing use of the name and mark, Defendant Lewien filed a
`trademark for the name “Sons of Liberty” in connection with “organizing motorcycle riding
`events.” Immediately following its registration, on March 18, 2015, Defendant Sons of Liberty
`sent Plaintiff a cease and desist letter demanding that it abandon its name and provide
`Defendants with an accounting of all profits derived from the use thereof.
`Due to Plaintiff’s prior and superior use of the name and mark and Defendants’
`aggressive posturing, Plaintiff has no choice but to commence this action and protect its
`valuable, famous, and well-known trademark, Sons of Liberty Motorcycle Club.1
`
`1 The Sons of Liberty Motorcycle Club name and mark clearly satisfies all requirements that qualify it as
`famous and distinctive, considering: 1) the duration, extent, and geographical reach of the advertising and
`publicity of the mark; and 2) the amount, volume, and geographic extent of the service offered under the
`mark.
`
`