Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA696082
`ESTTA Tracking number:
`09/15/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92061837
`Plaintiff
`FABRIQ Technologies, Inc.
`JAMES J AQUILINA
`DESIGN IP PC
`5050 W TILGHMAN ST , SUITE 435
`ALLENTOWN, PA 18104
`UNITED STATES
`tm@designip.com
`Motion to Amend Pleading/Amended Pleading
`James J. Aquilina
`tm@designip.com, jamesaquilina@designip.com
`/James J. Aquilina/
`09/15/2015
`Amended Petition to Cancel_Pleading_w_Exhibits.pdf(1187682 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`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.
`
`FIRST AMENDED PETITION TO CANCEL TRADEMARK REGISTRATION
`
`Petitioner FABRIQ Technologies, Inc., by and through its undersigned counsel, states as
`
`its First Amended Petition to Cancel against Registrant University of California San Francisco
`
`the following:
`
`I.
`
`PARTIES
`
`1. Petitioner FABRIQ Technologies, Inc. (hereinafter “Petitioner”) is a Delaware
`
`corporation having a place of business at 3301 Arapahoe Ave. #208, Boulder, Colorado 80303.
`
`2. On information and belief, University of California San Francisco (hereinafter “UCSF”)
`
`is a California corporation having a place of business at 1500 Owens Street, San Francisco,
`
`California 94158.
`
`II.
`
`GENERAL ALLEGATIONS
`
` 
`
`1 
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`

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`3. On information and belief, UCSF is the current owner of U.S. Trademark Registration
`
`No. 3,834,274 (hereinafter the “’274 Registration”) for a stylized mark consisting “of a stylized
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`green design of a running man facing the green stylized wording ‘RunSafe’” (hereinafter the
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`“Registered Mark”). The color green is claimed as a feature of the mark in the ‘274 Registration.
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`A copy of the registration certificate for the ‘274 Registration is attached hereto as Exhibit A.
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`4. On information and belief, UCSF has granted an exclusive license to use the Registered
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`Mark to Sportzpeak, Inc. (hereinafter “Sportzpeak”). A letter from in-house counsel for UCSF
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`to Petitioner’s representative dated June 17, 2015—in which UCSF states in the second
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`paragraph that an exclusive license to the Registered Mark to Sportzpeak has been granted—is
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`attached hereto as Exhibit B.
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`5. In the third and fourth paragraphs of the letter identified in paragraph 4, UCSF alleged
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`that Petitioner’s use of the RUNSAFE mark would create a likelihood of confusion with UCSF’s
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`rights in the Registered Mark, and requested that Petitioner withdraw its pending U.S. Trademark
`
`Serial No. 86659653.
`
`6. On information and belief, Sportzpeak is a Delaware corporation having a place of
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`business at 98 Midcrest Way, San Francisco, California 94131.
`
`7. On
`
`information and belief, Sportzpeak operates
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`the website
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`located at:
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`https://www.irunsafe.com (hereinafter the “Sportzpeak Website”). A screenshot from the
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`Sportzpeak Website taken on September 15, 2015 is attached hereto as Exhibit C. This
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`screenshot shows the use of an alternative stylized mark (hereinafter the “Alternative Mark”)
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`incorporating the term “RunSafe.”
`
` 
`
`2 
`
`

`
`8. A screenshot from http://www.archive.org showing the Sportzpeak Website as it existed
`
`on April 14, 2012 is attached hereto as Exhibit D. This screenshot shows the Alternative Mark,
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`but not the Registered Mark.
`
`9. On
`
`information
`
`and
`
`belief, UCSF
`
`operates
`
`the webpage
`
`located
`
`at:
`
`http://orthosurg.ucsf.edu/patient-care/divisions/human-performance-center/services/runsafe/
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`(hereinafter the “UCSF Webpage”). A screenshot from http://www.archive.org showing the
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`UCSF Website as it existed on April 26, 2013 is attached hereto as Exhibit E, a screenshot from
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`http://www.archive.org showing the UCSF Webpage as it existed on May 17, 2013 is attached
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`hereto as Exhibit F, and a screenshot from the UCSF Webpage taken on September 15, 2015 is
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`attached hereto as Exhibit G. Exhibits E-G show that the Registered Mark was used on the
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`UCSF Webpage until at least April 26, 2013 but no later than May 17, 2013, that the Registered
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`Mark was removed from the UCSF Webpage and replaced with the Alternative Mark no later
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`than May 17, 2013, and that the use of only the Alternative Mark on the UCSF Webpage has
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`continued until the present.
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`10. Petitioner has used the mark “RUNSAFE” in commerce since at least October 2014 in
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`connection with downloadable software in the nature of a mobile application for tracking fitness
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`activities, social networking, and alerting a third party to an emergency situation.
`
`11. Petitioner is the owner of pending U.S. Trademark Serial No. 86659653 for the word
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`mark RUNSAFE for various goods and services, including the goods noted in paragraph 10.
`
`III.
`
`GROUND FOR CANCELLATION: ABANDONMENT OF THE REGISTERED
`MARK – 15 U.S.C. § 1064(3)
`
`12. Petitioner realleges and incorporates herein paragraphs 1-11 as if set forth in full.
`
`13. Petitioner believes that it will be damaged by the continued registration of the ‘274
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`Registration for the following reasons: (1) if the ‘274 Registration is allowed to remain in force,
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` 
`
`3 
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`

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`based on the contents of its letter identified in paragraph 4 (see Exhibit B), UCSF will likely
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`attempt to assert the ‘274 Registration against Petitioner based on an argument of likelihood of
`
`confusion; (2) the USPTO may refuse to register Petitioner’s pending U.S. Trademark Serial No.
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`86659653 on the basis of a likelihood of confusion with the ‘274 Registration due to the
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`similarities between the literal elements of the two marks; and/or (3) even if Petitioner’s pending
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`U.S. Trademark Serial No. 86659653 is allowed, UCSF may attempt to oppose the registration of
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`Petitioner’s mark based on the ‘274 Registration and its previous assertion of rights in the
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`Registered Mark.
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`14. The Lanham Act provides that a mark shall be deemed to be abandoned: “When its use
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`has been discontinued with intent not to resume such use. Intent not to resume may be inferred
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`from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of
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`abandonment.” 15 U.S.C. § 1127.
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`15. On information and belief, Sportzpeak, the exclusive licensee of the Registered Mark, has
`
`been using only the Alternative Mark—but not the Registered Mark—in connection with the
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`services listed in the ‘274 Registration for more than the past three years. Accordingly, it can be
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`inferred from these circumstances that Registrant has intentionally abandoned the Registered
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`Mark. 15 U.S.C. § 1127.
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`16. On information and belief, UCSF has been using the Alternative Mark—but not the
`
`Registered Mark—in connection with the services listed in the ‘274 Registration since at least
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`May 17, 2013. Accordingly, it can be inferred from the circumstances that the Registered Mark
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`has been abandoned without intent to resume such use within the reasonably foreseeable future.
`
`See Silverman v. CBS Inc., 870 F.2d 40, 46 (2d Cir. 1989).
`
`17. Therefore, the ‘274 Registration should be cancelled pursuant to 15 U.S.C. § 1064(3).
`
` 
`
`4 
`
`

`
`IV.
`
`PRAYER FOR RELIEF
`
`For the reasons set forth above, cancellation of U.S. Trademark Registration No.
`
`3,834,274 pursuant to 15 U.S.C. § 1064(3) based on abandonment of the mark without intent to
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`resume use thereof within the reasonably foreseeable future 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: September 15, 2015
`
`
`
` 
`
`5 
`
`

`
`CERTIFICATE OF TRANSMISSION
`
`
`
`I hereby certify that a true and correct copy of the attached Amended Petition to Cancel
`
`Trademark Registration, dated September 15, 2015 (Reg. No. 3,834,274), is being electronically
`
`transmitted to the Trademark Trial and Appeal Board of the United States Patent and Trademark
`
`Office on September 15, 2015.
`
`
`
`Dated: September 15, 2015
`
`
`
` 
`
`
`
`
`
`
`
`
`
`6 
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on September 16, 2015, a true and correct copy of the attached
`
`Amended Petition to Cancel Trademark Registration 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:
`
`Raffi V. Zerounian, Esq.
`Hanson Bridgett LLP
`425 Market Street, 26th Floor
`San Francisco, CA 94105
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`7 
`
`
`
`
`
`
`
`
`
`
`
`
` 
`
`

`
`Exhibit
`Exhibit
`A
`
`

`
`flutter: étatez ifiatent ant: fltrahemark Qfiffine
`
`//’?§’““"’RunSafe
`
`Reg. No. 3,834,274
`
`UNIVERSITY OF CALIFORNIA SAN FRANCISCO (CALIFORNIA CORPORATION)
`I500 OWENS STRE ET
`Registered Aug. 17, 2010 SAN FRANCISCO, CA 94158
`
`Int. CL: 44
`
`SERVICE MARK
`
`FOR: MEDICAL TESTING SERVICES, NAMELY, FITNESS EVALUATION; PROVIDING
`ASSISTANCE, I-'I'I' ESS EVALUA ION AND CONSULIAI ON TO INDIVIDUALS TO HELP
`THEM MAKE HEALTH, WELLNESS AND NUTRITIONAL CHANGES IN THEIR DAILY
`LIVING TO IMPROVE IIEALTII, I CLASS 44 (U.S. CLS.
`OOAND 101).
`
`PRINCIPAL REGISTER
`
`FIRST USE 9-I-2007; IN COMMERCE 7-22-2008.
`
`THE MARK CONSISTS OF A STYLIZED GREEN DESIGI\ OF A RUNNING MAN FACING
`'l'HH GREEN S'l'YI.I7,Hl) W()R|)ING "RIINSAI-'H"_
`
`TIIE COLOR(S) GREEN IS/ARE CLAIMED AS A FEATUR
`
`E OF TIIE MARK.
`
`S3R_ NO. 77-889,560, FILED I2-9-2009.
`
`LYDIA BELZER, EXAMINING ATTORNEY
`
`Director ofme United Slates Pulem and I':'ademLu'I< Office
`
`

`
`Exhibit
`Exhibit
`B
`
`

`
`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
`C
`
`

`
`RunSafe | Sports Wellness for Runners
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`information on their running, they might enjoy the sport more and continue
`with the sport...Thank you!"
`
`Ready to take the next step?
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`© 2015 Sportzpeak, Inc.
`
`https://www.irunsafe.com/
`
`9/15/2015
`
`

`
`Exhibit
`Exhibit
`D
`
`

`
`RunSafe | Sports Wellness
`
`http://irunsafe.com/
`
`Go
`
`18 captures
`27 Oct 11 - 26 Dec 14
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`FEB APR JUN
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`14
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`2011 2012 2013
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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
`E
`
`

`
`Exhibit E - UCSF Webpage as of April 26, 2013
`
`

`
`Exhibit
`Exhibit
`F
`
`

`
`Exhibit F - UCSF Webpage as of May 17, 2013
`
`

`
`Exhibit
`Exhibit
`G
`
`

`
`Runsafe | Department of Orthopaedic Surgery
`
`Page 1 of 2
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`RunSafe is a sports wellness program for runners focusing on personalized health
`advice, injury prevention, and performance enhancement. Using assessment and
`monitoring tools, along with a trusted network of experts, RunSafe provides runners
`with practical advice on the best practices to help runners achieve their individual
`goals.
`
`RunSafe engages runners into a comprehensive system for practical behavior
`change and continued motivation.
`
`The program was designed for running athletes of all levels, focusing on injury
`prevention and biomechanical analysis. Knowing how to prevent running injuries
`and practicing safe training methods are the best strategies to running effectively.
`
`Signing up for a RunSafe Assessment at UCSF is simple, and can be done in
`a few steps:
`
`1. Create an account www.irunsafe.com
`
`2. Complete your basic information and verify your email address by clicking on the
`confirmation link in your email.
`
`3. Log in to your RunSafe profile and click “register for an assessment.” Enter your
`goals, and select UCSF as your RunSafe Center.
`
`http://orthosurg.ucsf.edu/patient-care/divisions/human-performance-center/services/runsafe/
`
`9/15/2015
`
`

`
`Runsafe | Department of Orthopaedic Surgery
`
`Page 2 of 2
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` | SITEMAP | HIPAA STATEMENT | COPYRIGHT 2015
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`The Orthopaedic Institute
`1500 Owens Street
`San Francisco, CA 94158
`TEL: 415-353-2808
`
`http://orthosurg.ucsf.edu/patient-care/divisions/human-performance-center/services/runsafe/
`
`9/15/2015