Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA683981
`ESTTA Tracking number:
`07/16/2015
`
`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
`
`FABRIQ Technologies, Inc.
`Corporation
`3301 Arapahoe Ave. #208
`Boulder, CO 80303
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney informa-
`tion
`
`James J. Aquilina
`Design IP, P.C.
`5050 W. Tilghman St. Suite 435
`Allentown, PA 18104
`UNITED STATES
`tm@designip.com Phone:610-395-4900
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`Registration date
`3834274
`University of California San Francisco
`1500 Owens Street
`San Francisco, CA 94158
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`08/17/2010
`
`Class 044. First Use: 2007/09/01 First Use In Commerce: 2008/07/22
`All goods and services in the class are cancelled, namely: Medical testing services, namely, fitness
`evaluation; Providing assistance, fitness evaluation and consultation to individuals to help them make
`health, wellness and nutritional changes in their daily living to improve health
`
`Grounds for Cancellation
`
`Abandonment
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used.
`
`Trademark Act section 14
`Trademark Act section 14
`
`Attachments
`
`Petition to Cancel_w exhibits_FINAL.pdf(1039638 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
`
`/James J. Aquilina/
`James J. Aquilina
`07/16/2015
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of trademark Registration No.: 3,834,274
`
`For the mark: RUNSAFE (design plus words)
`
`Date registered: August 17, 2010
`
`FABRIQ Technologies, Inc.
`
`
`
`(Petitioner)
`
`v.
`
`University of California San Francisco
`
`(Registrant)
`
`
`
`
`
`PETITION TO CANCEL
`
`Petitioner FABRIQ Technologies, Inc., a Delaware corporation having a place of
`
`business at 3301 Arapahoe Ave. #208, Boulder, Colorado 80303, believes that it will be
`
`damaged by the above-identified registration, and hereby petitions to cancel the same. Petitioner
`
`is the owner of pending U.S. Trademark Serial No. 86659653 for the word mark RUNSAFE.
`
`To the best of Petitioner’s knowledge, the name and address of the current owner of the
`
`registration are: University of California San Francisco, 1500 Owens Street, San Francisco,
`
`California, 94158.
`
`The grounds for cancellation are as follows:
`
`1.) The registered mark has been abandoned. 15 U.S.C. § 1064(3).
`
`The registered mark is a stylized mark consisting “of a stylized green design of a running
`
`man facing the green stylized wording ‘RunSafe’”. The color green is claimed as a feature of the
`
` 
`
`1 
`
`

`
`mark. Registration Certificate for U.S. Trademark Registration No. 3,834,274. The mark
`
`drawing from the ‘274 Registration is reproduced below:
`
`(the “Registered Mark”)
`
`
`
`
`
`The registered mark has been abandoned due to discontinuation of its use for more than
`
`three years. The Lanham Act provides that a mark shall be deemed to be abandoned: “When its
`
`use has been discontinued with intent not to resume such use. Intent not to resume may be
`
`inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of
`
`abandonment.” 15 U.S.C. § 1127.
`
`
`
`On information and belief, for more than the past three years, Registrant and its affiliated
`
`parties have exclusively used the following stylized mark (hereinafter the “Alternate Mark”) in
`
`connection with the services listed in the ‘274 Registration:
`
`(the “Alternate Mark”)
`
`
`
`
`
`A printout from http://www.archive.org showing Registrant’s website located at
`
`http://irunsafe.com as it existed on April 14, 2012 is attached hereto as Exhibit A. It is clear
`
`from Exhibit A that Registrant and its affiliated parties were exclusively using the Alternate
`
`Mark—but not the Registered Mark—in connection with the services listed in the ‘274
`
` 
`
`2 
`
`

`
`Registration more than three years ago. Accordingly, it can be inferred from these circumstances
`
`that Registrant has intentionally abandoned the Registered Mark. 15 U.S.C. § 1127.
`
`
`
`Further, use of the Alternate Mark may not be used as evidence of continued use of the
`
`Registered Mark because the Alternate Mark creates a different commercial impression than the
`
`Registered Mark. A change in the form of a mark can be protected only if the distinctive
`
`characteristics of the mark before and after the alteration maintain the same, continuing
`
`commercial impression. See 3 McCarthy on Trademarks and Unfair Competition, § 17-26 (4th
`
`ed. 2012). As stated by the U.S. Court of Appeals for the Federal Circuit in the case of Van
`
`Dyne-Crotty, Inc. v. Wear-Guard Corp.
`
`The previously used mark must be the legal equivalent of the mark in question or
`indistinguishable therefrom, and the consumer should consider both as the same
`mark. … [E]ven if the two marks are confusingly similar, they still may not be
`legal equivalents. Instead, the marks must create the same, continuing commercial
`impression and the later mark should not materially differ from or alter the
`character of the [first] mark.
`
`926 F.2d 1156, 1159 (1991) (internal citations and quotations omitted). See also Data Concepts,
`
`Inc. v. Digital Consulting, Inc., 150 F.3d 620 (6th Cir. 1998); Brookfield Communs., Inc. v.
`
`West Coast Entm't Corp., 174 F.3d 1036 (9th Cir. 1999); PBI Performance Prods. v. NorFab
`
`Corp., 2007 U.S. Dist. LEXIS 58689, at *11-13 (E.D. Pa. Aug. 2, 2007).
`
`
`
`The Alternate Mark is not the legal equivalent of the Registered Mark and is clearly
`
`distinguishable from the Registered Mark. The Registered Mark contains a stylized green
`
`drawing of a running man on the left side of and facing the wording “RunSafe” in green letters.
`
`The Alternate Mark contains a blue, jagged line with a yellow circle above it on the left side of
`
`the wording “RunSafe” in black letters. Thus, the only similarity between the two marks is that
`
`they both contain the wording RunSafe. But this is not enough to create the same commercial
`
`impression between the marks. The Alternate Mark contains the colors blue, yellow, and black,
`
` 
`
`3 
`
`

`
`whereas the Registered Mark contains only the color green. The Alternate Mark contains two
`
`stylized elements (the blue jagged line and yellow circle) that are not present in any form in the
`
`Registered Mark, and the Registered Mark contains a stylized element (the green running man)
`
`that is not present in any form in the Alternate Mark.
`
`
`
`In the PBI Performance case noted supra, the district court held that PBI’s use of a
`
`yellow checkered (grid) pattern did not create the same commercial impression as its trademark
`
`registration for a design of a black checkered (grid) pattern, and thereby held that PBI had
`
`abandoned its trademark registration. In the present case, the Alternate Mark creates a very
`
`different commercial impression from the Registered Mark due to the use of completely different
`
`stylistic elements and unique colors. Accordingly, the Alternate Mark may not be used as
`
`evidence of continued use of the Registered Mark, and due to Registrant’s intentional non-use of
`
`the Registered Mark for more than the past three years, the Registered Mark has been
`
`abandoned.1
`
`
`
`For the reasons set forth above, cancellation of the ‘274 Registration is believed in order
`
`and respectfully requested.
`
`2.) The registered mark is being used by the Registrant so as to misrepresent the source
`of the services in connection with which the mark is used. 15 U.S.C. § 1064(3).
`
`The official record of the ‘274 Registration as accessed through TSDR on July 15, 2015
`
`indicates that the current owner of the mark is “University of California San Francisco.”
`
`Attached as Exhibit B hereto is a copy of the specimen of use (“Specimen”) that was filed by
`
`Registrant on April 8, 2010 during prosecution of the application that matured into the ‘274
`
`                                                            
`1 It is worth noting that despite having the freedom in the past to attempt to register the word mark
`RUNSAFE, Registrant instead chose to register only the stylized Registered Mark. Having now
`recognized that its previous strategy limits the scope of its enforceable rights, it is telling that Registrant
`has recently filed two trademark applications (Serial Nos. 86666792 and 86671347) for the word mark
`RUNSAFE for various running-related goods and services. 
`
` 
`
`4 
`
`

`
`Registration. The Specimen clearly indicates that UCSF is the party offering the listed services.
`
`Specifically, the Specimen indicates that the “RunSafe Healthy Runners Clinic” is located “At
`
`the UCSF Sports Medicine Clinic”, the URL “runsafe.ucsf.edu” is provided at the bottom left of
`
`the Specimen, and the same stylized green drawing of a running man is located to the left of the
`
`language “UCSF Medical Center Sports Medicine” at the bottom right of the Specimen. Nothing
`
`in the USPTO’s official record for the ‘274 Registration provides any indication that UCSF is
`
`not the source of the services provided in connection with the ‘274 Registration.
`
`A letter from UCSF’s in-house legal counsel to Petitioner’s legal counsel dated June 17,
`
`2015 is attached hereto as Exhibit C. The first sentence of the second paragraph of this letter
`
`reads “Prior to your client’s adoption of the mark, the University granted an exclusive license to
`
`its RUNSAFE trademark to one of our licensees, Sportzpeak, Inc.” (emphasis in original). A
`
`screen
`
`capture
`
`taken
`
`
`
`July
`
`15,
`
`2015
`
`from UCSF’s website
`
`located
`
`at:
`
`http://orthosurg.ucsf.edu/patient-care/divisions/human-performance-center/services/runsafe/
`
`is
`
`attached hereto as Exhibit D. Nothing on this site indicates or suggests that UCSF is not the
`
`source of the services that are provided in connection with the RunSafe Alternate Mark.
`
`Accordingly, Registrant is using the Registered Mark so as to misrepresent the source of
`
`the services in connection with which the mark is used. 15 U.S.C. § 1064(3). For the reasons set
`
`forth above, cancellation of the ‘274 Registration is believed in order and respectfully requested.
`
`By: _/James J. Aquilina/___
`Design IP, P.C.
`Commerce Corporate Center
`5050 W. Tilghman St., Suite 435
`Allentown, PA 18104
`tel.: 610-395-4900
`fax: 610-680-3312
`e-mail: tm@designip.com
`
`Attorneys for Petitioner
`
` 
`
`
`
`
`
`Date: July 16, 2015
`
`
`
`5 
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on July 16, 2015, a true and correct copy of the attached Petition to
`
`Cancel was served upon the following, in accordance with 37 C.F.R. § 2.119, by depositing
`
`same in the United States mail, postage prepaid, and properly addressed as follows:
`
`University of California San Francisco
`ATTN: Angus M. McDonald, Esq.
`1500 Owens Street
`San Francisco, CA 94158
`
`
`
`
`
`
`
`
`
`
`Design IP, P.C.
`By: ___/James J. Aquilina/___
`Commerce Corporate Center
`5050 W. Tilghman St., Suite 435
`Allentown, PA 18104
`tel.: 610-395-4900
`fax: 610-680-3312
`e-mail: tm@designip.com
`
`Attorneys for Petitioner
`
`
`
`
`
`
`6 
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 
`
`

`
`Exhibit
`Exhibit
`A
`
`

`
`RunSafe | Sports Wellness
`
`http://irunsafe.com/
`
`Go
`
`18 captures
`27 Oct 11 - 26 Dec 14
`
`Page 1 of 1
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`About | Investors | Centers | Experts | Partners | Privacy Statement | Terms of Use | Support | Contact
`
`2011 - 2012 Sportzpeak, Inc
`
`https://web.archive.org/web/20120414104516/http://irunsafe.com/
`
`7/13/2015
`
`

`
`Exhibit
`Exhibit
`B
`
`

`
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`
`Exhibit
`Exhibit
`C
`
`

`
`THE REGENTS OF THE TJNIVERSITY OF CALIFORNIA
`OFFICE OF THE GENERAL COIJNSEL
`
`liii Franklin Street, 8th Floor • Oakland, California 94607-5200 • (510) 987-9800 • FAX (510) 987-9757
`
`Charles F. Robinson
`GENERAL COUNSEL AND VICE PRESIDENT - LEGAL AFFAIRS
`
`Writer’s direct line: (510) 987-9737
`E-mail: angus.niacdonald@ucop.edu
`
`June 17, 2015
`
`VIA EMAIL (darnonneagledesignip.corn)
`Damon A. Neagle
`DESIGN IP
`5050 W. Tilghrnan Street, Suite 435
`Allentown, Pennsylvania 18104
`
`Re:
`
`RUNSAFE Trademark
`
`Dear Mr. Neagle:
`
`I write in response to your March 11, 2015 letter to Darnele Wright regarding the RI.JNSAFE
`trademark owned by the University of California (the “University”). We have carefully
`considered your proposal for a co-existence agreement. We decline your invitation.
`
`Prior to your client’s adoption of the mark, the University granted an exclusive license to its
`RIJNSAFE trademark to one of our licensees, Sportzpeak, Inc. We spoke with Sportzpeak’s
`representatives, and given our exclusive licensing arrangement with them, the University cannot
`agree to permit the co-existence of another entity using RUNSAFE in connection with goods and
`services that are so similar to what our licensee is currently doing under the RUNSAFE mark.
`And contrary to your letter’s assertions, there is certainly a likelihood of confusion associated
`with your client’s use of RUNSAFE, which is identical to the University’s trademark. Based on
`the description in your letter as well as your client’s recent intent-to-use trademark application
`fur RUNSAFE (U.S. Ser. No. 86659653), your client will be using RUNSAFE in connection
`with software for tracking fitness activities and alerting runners of health or safety issues. This is
`nearly identical to what Sportzpeak is doing (and is licensed to do) under the University’s
`RUNSAFE mark. At the very least, your client’s use of the mark is sufficiently related to the
`goods and services provided by the University or our licensee for the past several years under the
`exact same mark.
`
`

`
`Damon A. Neagle
`June 17, 2015
`Page 2
`
`Given this likelihood of confusiOn and the University’s priority, we ask that you immediately
`withdraw all RUNSAFE trademark applications that you filed in all jurisdictions, including U.S.
`Ser. No. 86659653. If you refuse, we will take necessary steps to enforce the University’s rights.
`We wish to resolve this matter amicably and look forward to hearing from you soon about the
`matters set forth above. Nothing in this letter should be deemed a waiver, admission, or license
`by the University, which reserves all of its rights and remedies.
`
`Senior Counsel, Intellectual Property
`University of California, Office of the President
`
`cc:
`
`Darnele L. Wright, UCSF Deputy Campus Counsel
`Raffi V. Zero unian, Hanson Bridgett LLP
`
`

`
`Exhibit
`Exhibit
`D
`
`

`
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`HiPAA SIATEMENT i COF‘YRlG§-it 2015
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