Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA683914
`ESTTA Tracking number:
`07/15/2015
`
`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
`
`Echelon Corporation
`Corporation
`550 Meridian Avenue
`San Jose, CA 95126
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney informa-
`tion
`
`Dax Alvarez
`SNELL & WILMER L.L.P.
`400 East Van Buren Street Suite 1900
`Phoenix, AZ 85004-2202
`UNITED STATES
`ipladocket@swlaw.com, dalvarez@swlaw.com, jlpeterson@swlaw.com
`Phone:213.929.2500
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`4708544
`Cavium, Inc.
`2315 N. First Street
`San Jose, CA 95131
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/24/2015
`
`Class 009. First Use: 2012/09/00 First Use In Commerce: 2012/09/00
`All goods and services in the class are cancelled, namely: Processors with search technology for use
`in network search applications for networking and communication infrastructure equipment
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`Dilution
`
`Trademark Act section 2(d)
`Trademark Act section 43(c)
`
`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`Registration Date
`
`Word Mark
`Design Mark
`Description of
`
`1540303
`
`05/23/1989
`
`NEURON
`
`NONE
`
`Application Date
`
`10/24/1988
`
`Foreign Priority
`Date
`
`NONE
`
`

`
`Mark
`Goods/Services
`
`Class 009. First use: First Use: 1988/10/24 First Use In Commerce: 1988/10/24
`INTEGRATED CIRCUITS FOR A NETWORK WHICHPROVIDES IDENTIFICA-
`TION, SENSING, COMMUNICATIONS AND CONTROL, AND ELECTRONIC
`DEVELOPMENT APPARATUS FOR SUCH NETWORK
`
`Attachments
`
`68827.09293 - Petition for Cancellation.pdf(297400 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
`
`/dax alvarez/
`Dax Alvarez
`07/15/2015
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TzuAL AND APPEAL BOARD
`
`Registration No. 4,7 08,544
`Cancellation No.
`
`) ) ) ) ) ) ) ) ) )
`
`ECHELON CORPORATION.
`
`Petitioner
`
`V
`
`CAVIUM, INC
`
`Registrant
`
`FOR CANC
`
`Echelon Corporation, a Delaware Corporation, having a principal place of business at 550
`
`Meridian Avenue, San Jose, California 95126, believes that it will be damaged by Registration
`
`No. 4,708,544, and hereby petitions to cancel same.
`
`As grounds therefor, it is alleged that:
`1.
`2015 for the NEURON mark for use in connection with "processors with search technology for
`
`The Registrant obtained U.S. Trademark Registration No. 4,708,544 onMarch24,
`
`use in network search applications for networking and communication infrastructure equipment."
`
`The first use of the mark anywhere by Registrant was allegedly September,2\IL; the first use of
`
`the mark in commerce by Registrant was also allegedly September,2012.
`2.
`early as October, 1988, to the present time, in connection with integrated circuits for a network
`
`Petitioner has adopted and continuously used the NEURON mark since at least as
`
`which provides identification, sensing, communications and control, and electronic development
`
`apparatus for such network (hereinafter referred to as the "Petitioner's Goods") in International
`
`Class 9.
`
`220'10540
`
`I
`
`

`
`3.
`throughout the world including U.S. Registration No. 1,540,303 (hereinafter referred to as the
`
`Petitioner owns numerous trademark registrations for the NEURON mark
`
`"Petitioner's Mark") and other rights associated therewith for the Petitioner's Goods offered
`
`under Petitioner's Mark. Attached hereto and incorporated by reference as Exhibit A is a true
`
`and correct copy of Petitioner's Registration for the Petitioner's Mark.
`4.
`
`Petitioner has developed extensive goodwill with respect to the Petitioner's Mark
`
`Petitioner has spent substantial sums in advertising and promotion of the
`
`over the last twenty-seven (27) years.
`5.
`Petitioner's Goods which bear the NEURON mark.
`6.
`
`By virtue of the excellent quality of its goods, expenditures of considerable sums
`
`in promoting such goods, and by advertising, the Petitioner has garnered a most valuable
`
`reputation for its NEURON mark.
`7.
`
`The goods on which Petitioner uses the NEURON mark, namely integrated
`
`circuits and processors are closely related to the goods on which the Registrant uses the
`
`NEURON mark.
`8.
`NEURON mark as emanating from Petitioner, and will believe such products to be those of
`
`Purchasers are likely to consider the processors of the Registrant bearing the
`
`Petitioner.
`9.
`cloud will be placed on Petitioner's title in and to its NEURON mark and on its right to enjoy the
`
`If the Registrant is permitted to retain the registration sought to be cancelled, a
`
`free and exclusive use thereof in connection with the sale of its goods all to the great injury of
`
`Petitioner. Persons familiar with Petitioner's mark would be likely to buy Registrant's goods as
`
`sold by, or associated with the Petitioner. Any such confusion in trade might result in a loss of
`
`sales to the Petitioner.
`10. Furthermore, any defect, objection or fault found with Registrant's goods sold
`
`under its mark would necessarily reflect upon and seriously injure the reputation which the
`
`Petitioner has established for its goods merchandised under its mark.
`
`22070540
`
`2
`
`

`
`11. If the Registrant is permitted to maintain its registration, the same may be deemed
`
`incontestable after five (5) years from the date of the registration, and Registrant would thereby
`
`obtain an incontestable right to use of its mark in commerce. The continued existence of such
`
`registration casts a cloud upon Petitioner's right to continue to use, register, and expand the use
`
`of the NEURON mark. Such registration would thus be a source of damage and injury to the
`
`Petitioner.
`12. Registrant's use of its mark is likely to cause confusion, mistake or deception as
`to the source, origin, sponsorship or approval of Registrant's goods offered in connection under
`
`the NEURON mark or as to Registrant's affiliation, connection or association with Petitioner.
`13. The Petitioner's Mark is inherently distinctive and has also acquired secondary
`meaning by extensive continuous and substantially exclusive use by Petitioner and is associated
`
`with Petitioner. Petitioner's Mark is famous and distinctive within the meaning of the Federal
`
`Trademark Dilution Act. Registrant filed the application underlying the registration after the
`
`Petitioner's Mark had become famous and the Registrant is using the applied for mark.
`
`Registrant's mark is likely to dilute the Petitioner's Mark.
`14. As a result of all of the foregoing, the continued viability of the registration would
`cause a likelihood of confusion, mistake or deception as to the source, origin, sponsorship or
`
`approval of Registrant's goods offered under the registered mark or as to Registrant's aff,rliation,
`
`connection or association with the Petitioner's Mark or the activities of the parties and a
`
`likelihood of dilution of Petitioner's Mark.
`15. Petitioner would be damaged by the continued viability of the registration in that
`the registration gives Registrant prima facie exclusive right to use the NEURON mark despite
`
`the likelihood of confusion and dilution as described above and will allow Registrant to trade on
`
`Petitioner's existing goodwill in the Petitioner's Mark.
`
`Wherefore, Petitioner prays this Petition be sustained in favor of Petitioner and that the
`
`registration be cancelled. Please charge the requisite $300 f,rling fee and any additional amounts
`
`aJ
`
`22070540
`
`

`
`to Petitioner's Counsel's Deposit Account No. 192814. A copy of this Petition for Cancellation
`
`is submitted herewith.
`
`ECHELON CORPORATION
`
`Dated
`
`-\,¡."{ i5, L.:[ 5
`
`Bv:
`
`Snell & Wilmer L.L.P.
`Dax Alvarcz
`Marjorie Witter Norman
`Attorneys for Petitioner
`
`350 South Grand Avenue
`Q,,iro tÁnn
`uur(v ¿uvv
`Los Angeles, CA 90071
`2t3.929.2500
`
`22070540
`
`4
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that atrue and correct copy of the foregoing document entitled
`
`PETITION FOR CANCELLATION
`
`was served on counsel for Applicant by first class mail, postage prepaid, in a sealed envelope
`
`addressed as follows:
`
`Farah P. Bhatti
`Baker & Hostetler LLP
`600 Anton Boulevard
`Suite 900
`Costa Mesa, CA92626
`
`Executed on July 15,2015, at Los Angeles, California.
`
`22070540
`
`5
`
`

`
`EXHIBIT A
`
`220't0540
`
`6
`
`

`
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`lYped
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`Drawing
`
`Word Mark
`Goods and
`Services
`
`Mark Drawing
`Code
`Serial Number
`Filing Date
`Current Basis
`Original Filing
`Basis
`Published for
`Opposition
`Registration
`Number
`Registration
`Date
`Owner
`
`Assignment
`Recorded
`Attorney of
`Record
`Type of Mark
`Register
`Affidavit Text
`Renewal
`Live/Dead
`
`NEURON
`lC 009. US 021. G & S: INTEGRATED CIRCUITS FOR A NETWORK WHICH PROVIDES
`IDENTIFICATION, SENSING, COMMUNICATIONS AND CONTROL, AND ELECTRONIC
`DEVELOPMENT APPARATUS FOR SUCH NETWORK. FIRST USE: 19881024. FIRST USE IN
`COMMERCE: 19881024
`
`(1) TYPED DRAWTNG
`
`73759256
`October 24,1988
`1A
`
`1A
`
`February 28, '1989
`
`I 540303
`
`May 23, 1989
`
`(REGTSTRANT) ECHELON SYSTEMS CORPORATTON CALTFORNIA 727 UNIVERSITY AVENUE
`LOS GATOS CALIFORNIA 95030
`
`(LAST
`FROM
`
`LTSTED OWNER) ECHELON CORPORATION CORPORATION BY CHANGE OF NAME
`DELAWARE 550 Meridian Avenue San Jose CALIFORNIA 95126
`
`ASSIGNMENT RECORDED
`
`Dax Alvarez
`
`TRADEMARK
`PRINCIPAL
`SECT 15. SECT I (6-YR). SECTION 8(1o-YR) 20090708
`l ST RENEWAL 2OO9O7O8
`
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