Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA798170
`
`Filing date:
`
`01/30/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`92064206
`
`Plaintiff
`AFCO Inc.
`
`EKUNDAYO SETON
`WYATT TARRANT & COMBS LLP
`500 WEST JEFFERSON STREET SUITE 2800
`LOUISVILLE, KY 40202-2898
`UNITED STATES
`dseton@wyattfirm.com, trademarks@wyattfirm.com
`
`Motion to Amend Pleading/Amended Pleading
`
`Ekundayo Seton
`
`dseton@wyattfirm.com, trademarks@wyattfirm.com
`
`/Ekundayo Seton/
`
`01/30/2017
`
`Exhibit A JDA Technology Statement of Use for SONIC VORTEX.PDF(62843
`bytes )
`Exhibit B CBP seizure notice and information.PDF(2659849 bytes )
`Second Amended Petition to Cancel SONIC VORTEX Registration.pdf(89009
`bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Mark:
`
`SONIC VORTEX & Design
`
`Serial No.
`
`86/207,512
`
`lnternational Class?
`
`9
`
`Applicant:
`
`JDA Technology, LLC
`
`Notice of Allowance Mailing Date:
`
`SEPTEMBER 30, 2014
`
`STATEMENT OF USE UNDER 37 C.F.R. §2.88
`
`JDA Technology, LLC, having an address of 7805 Captain Morgan Dr., Orlando, FL
`
`32822,
`
`is using or is using through a related company or licensee the mark in commerce on or
`
`in connection with all goods and/or services listed in the application or Notice of Allowance as
`
`follows:
`
`International Class 9: Audio speaker enclosures, Audio speakers.
`
`The mark was first used by the applicant, or the applicant’s related company, licensee,
`
`or predecessor in interest at least as early as September 1, 2014 , and first used in commerce
`
`at least as early as September 1, 2014, and is now in use in such commerce. The applicant is
`
`submitting one specimen for the class showing the mark as used in commerce on or in
`
`connection with any item in the class. A fee payment in the amount of $100 has been submitted
`
`with the form, representing payment for one class.
`
`

`

`The undersigned, being hereby warned that willful false statements and the like so made
`
`are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful
`
`false statements may jeopardize the validity of the form or any resulting registration, declares
`
`that he/she is properly authorized to execute this form on behalf of the applicant; he/she
`
`believes the applicant to be the owner ofthe trademark/service mark sought to be registered, or,
`
`ifthe form is being filed under 15 U.S.C. §1126(d) or (e), he/she 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; and that all statements made of his/her own knowledge are true; and
`
`that all statements made on information and belief are believed to be true.
`
`WHEREFORE, applicant prays that the trademark registration be granted to it for the
`
`mark described, and I hereby subscribe my name to the foregoing.
`
` Lee Murray, President
`
`
`
`JDA Technology, LLC
`
`3-20-15
`
`Date
`
`

`

`3150 Tchulahoina Road, Suite 1
`
`Memphis, TN 381 18
`
`
`
`U. S. Customs and
`Border Protection
`
`NOTICE OF SEIZURE AND INFORIVIATION TO CLAIMANTS
`
`NON-CAFRA FORM
`
`CERTIFIED — RETURN RECEIPT REQUESTED 7014 2120 0002 6740 5135
`
`August 4, 2016
`
`AFCO Inc.
`
`122 Gayoso Ave.
`Memphis, TN 38103
`
`Re: Case Number 2016-2006-100002-01
`
`Dear Sir or Madam:
`
`This is to notify you that U.S. Customs and Border Protection (CBP) seized the property
`described below, Entry Number 600-65184677, at the Port of Memphis, Tennessee, on
`July 5, 2016:
`
`DES CRJPTION
`
`APPRAISED
`
`DOMESTIC VALUE
`
`(410) Counterfeit (Ct_) Sonic Vortex Class D 100 Watt Amplifiers (A100)
`(164) Ct.
`Sonic Vortex 4 Channel X 40 Watt Amplifiers (A4X40)
`(208) Ct.
`Sonic Vortex in Ceiling 6.5" 2-Way Speakers (BS650)
`Sonic Vortex in Ceiling 6.5” 2-Way Speakers (BXC650)
`(68) Ct.
`(136) Ct.
`Sonic Vortex in Ceiling 6.5” 2-Way Tweeters (BXC650D)
`(172) Ct.
`Sonic Vortex in Ceiling 6.5” 2-Way Speakers (BXC65l)
`Sonic Vortex in Ceiling 8” 2-Way Speakers (BXC800)
`(96) Ct.
`Sonic Vortex in Ceiling 8” 2-Way Speakers (BXC801)
`(120) Ct.
`(152) Ct.
`Sonic Vortex in Ceiling 6.5” 2-Way Speakers (BXCA650)
`Sonic Vortex in Ceiling 6.5” 2-Way Speakers (BXCA651)
`(130) Ct.
`(128) Ct.
`Sonic Vortex in Ceiling 6.5” 2-Way Subwoofers (BXCS650)
`(154) Ct.
`Sonic Vortex in Ceiling 8” Subwoofers (BXCS800)
`Sonic Vortex 4” in Ceiling/in Wall Speakers (BXCW401)
`(192) Ct.
`Sonic Vortex 6.5” in Ceiling/in Wall Speakers (BXCW651)
`(124) Ct.
`(56) Ct.
`Sonic Vortex Pancake Speaker ALU Domes (BXP401)
`Sonic Vortex Dual 4” in Wall ALU Tweeters (BXPLCR401)
`(60) Ct.
`(153) Ct.
`Sonic Vortex Digital Integrated 2 Channel Amplifiers (D2.1)
`Sonic Vortex Bluetooth Streaming Taylor Modules (DBT-Taylor)
`(114) Ct.
`Sonic Vortex in Ceiling 6.5” Silk Dome Speakers (IC6—B)
`(28) Ct.
`Sonic Vortex in Ceiling 6.5” Titanium Dome Speakers (IC6-BB)
`(66) Ct.
`
`$18,081.00 total
`$68,81 1.75 total
`$3,744.00 total
`$2,274.60 total
`$5,222.40 total
`$6,656.40 total
`$4,449.60 total
`$6,192.00 total
`$5,221.20 total
`$5,148.00 total
`$4,896.00 total
`$8,061.90 total
`$6,192.00 total
`$5,728.80 total
`$2,049.60 total
`$4,797.00 total
`$26,244.00 total
`$4,873.50 total
`$936.60 total
`$2,851.20 total
`
`Page 1 of 6
`
`(ATT 9-B: Revised November 2014)
`
`

`

`$4,454.40 total
`(1 16) Ct. Sonic Vortex in Ceiling 6.5” Dual Coil Speakers (IC6DVC-B)
`$6,359.10 total
`(164) Ct. Sonic Vortex in Ceiling 6.5” Aluminum Dome Speakers (lC6—MB)
`$1,674.00 total
`(36) Ct. Sonic Vortex in Ceiling 8” Silk Dome Speakers (IC8-B)
`$1,579.20 total
`(28) Ct. Sonic Vortex in Ceiling 8” Titanium Dome Speakers (1C8-BB)
`$16,767.00 total
`(324) Ct. Sonic Vortex 8" 2-Way Aluminum Dome Speakers (IC-8MB)
`$4,218.15 total
`(122) Ct. Sonic Vortex Angled 6.5” Silk Dome Speakers (lCA6—B)
`$5,514.90 total
`(124) Ct. Sonic Vortex Angled 6.5” Titanium Dome Speakers (ICA6-BB)
`$159.60 total
`(4) Ct. Sonic Vortex Angled 6.5” Aluminum Dome Speakers (ICA6—MB)
`$5,798.40 total
`(151) Ct. Sonic Vortex 6.5” Subwoofer Kevlar Drivers (ICS6-MB)
`$8,529.30 total
`(162) Ct. Sonic Vortex 8" Subwoofer Kevlar Drivers (1CS8-MB)
`$6,640.20 total
`(204) Ct. Sonic Vortex 4” 2-Way Aluminum Dome Speakers (ICW4—MB)
`$21,599.00 total
`(466) Ct. Sonic Vortex 6.5” Aluminum Dome Speakers (ICW6—MB)
`$2,306.70 total
`(233) Ct. Sonic Vortex 6” Output Connecting Block (IRB6)
`$2,173.13 total
`(475) Ct. Sonic Vortex IR Emitter Dual (IRED)
`$757.58 total
`(259) Ct. Sonic Vortex IR Emitter Single (IRES)
`$2,401.58 total
`(451) Ct. Sonic Vortex IR Flexible Emitter Dual (IFRED)
`$1,420.58 total
`(403) Ct. Sonic Vortex IR Flexible Emitter Single (IRES)
`$13,543.73 total
`(479) Ct. Sonic Vortex INT Micro Surface Mount IR Kit Intake (IRKNI)
`$16,936.73 total
`(599) Ct. Sonic Vortex Small Surface Mount IR Receiver (IRKSTI)
`$488.40 total
`(88) Ct. Sonic Vortex IR Nano Receiver (IRN)
`$1,994.85 total
`(341) Ct. Sonic Vortex IR Surface Tabletop Receiver (RST)
`$540.36 total
`(12) Ct. Sonic Vortex 6.5” 25/70/ 100v Speakers (T1C651)
`$10,100.70 total
`(172) Ct. Sonic Vortex 8” 25/70/100V Speakers (TIC801)
`$5,796.00 total
`(160) Ct. Sonic Vortex 4” 25/70/100V Speakers (TIC401) A
`$2,419.20 total
`(56) Ct. Sonic Vortex Ultra Shallow 4” ALU Dome 70V Speakers (TU40l)
`(744) Ct. Sonic Vortex Volume Control Rotary Impedance Matching (VCR1) $9,486.00 total
`(744) Ct. Sonic Vortex Volume Control Slider Impedance Matching (VCS1)
`$9,486.00 total
`(54) Ct. Sonic Vortex 2 Channel X 50W Amplifier (IA 1250)
`$26,244.00 total
`
`The appraised domestic value of the property is $381,820.34.
`
`The articles were seized and are subject to forfeiture under the provisions of Title 19, United
`States Code, Section (USC) 1595a(c) as they were introduced into the United States, contrary to
`law. Specifically, Title 19 USC 1526(e) which prohibits the importation of merchandise bearing
`a counterfeit trademark that is both registered with the Patent and Trademark Office (PTO) and
`recorded with Customs and Border "Protection. The property contains markings which are
`substantially indistinguishable from and, therefore, bear a counterfeit design/word/mark as
`indicated below. Customs and Border Protection Regulations provide that any article imported
`into the United States bearing a counterfeit trademark shall be seized and, in the absence of the
`written consent of the trademark owner, forfeited for violation of the Customs laws. Listed
`below is a description of the seized property, a description of the trademark and the name and
`address of the trademark owner.
`
`Page 2 of 6
`
`(ATT 9-3: Revised November 2014)
`
`

`

`Description of Property: Sonic Vortex Audio Equipment
`Domestic Value: $381,820.34 total
`Description of Trademark: Sonic Vortex and Design
`Customs and Border Protection Recordation Number: 16-00424
`
`U. S. Patent & Trademark Office Registration Number: 4823007
`Trademark Representative Name: Jim Murray
`Trademark Representative Address: 2631 Eagles Nest Ct, Orlando, FL 32837
`
`You are hereby notified that under 19, Code of Federal Regulations, Section 133.21, your
`importation of the above listed merchandise, Entry Number 600-65184677, has been seized by
`U.S. Customs and Border Protection as trafficking in illicit labels of registered U.S. Trademarks.
`Trafficking in counterfeit trademark goods is a prohibited criminal offense in accordance with
`Title 18, United States Code, Section 2320.
`In addition, this violation may be subject to the
`provisions 19 USC l526(a) and 19 USC 1526(1)).
`
`The facts available to CBP indicate that you might have an interest in the seized property. The
`purpose of this letter is to advise you of the options available to you concerning this seizure. Q
`important document — an “Election of Proceedings” form is enclosed with this letter. You must
`choose one of the options outlined below, indicate your choice on the “Election of Proceedings”
`form, and return it and any other necessary documents to CBP within the allotted time frame.
`Should you choose to abandon the property, you must still complete the “Election of
`Proceedings” form and return it to CBP.
`
`Your options are as follows:
`
`1.
`
`Petition: You may file a petition with this office within 30 days from the date of this letter
`in accordance with Title 19, United States Code (U.S.C.), Section 1618 (19 U.S.C. §l6l8)
`and Title 19, Code of Federal Regulations (C.F.R.), Sections 171.1 and 171.2 (19 C.F.R. §§
`171.1, 171.2), seeking remission of the forfeiture. The petition does not need to be in any
`specific form, but it must describe the property involved, identify the date and place of the
`seizure, include all the facts and circumstances which you believe warrant relief from
`forfeiture, and must include proof of your interest in or claim to the property. Examples of
`proof of interest include, but are not limited to a car title, loan agreement, or documentation
`of the source of funds. If you choose this option, you must check Box 1 on the “Election of
`Proceedings” form.
`
`By completing Box 1 on the “Election of Proceedings” form, you are requesting
`administrative processing of your case by CBP. You are requesting that CBP refrain from
`beginning forfeiture proceedings while your petition is pending or that CBP halt
`administrative forfeiture proceedings, if they have already commenced. However, if CBP
`has already referred the matter to the U.S. Attorney’s Office for the institution ofjudicial
`forfeiture proceedings, your petition will be forwarded to the U.S. Attorney for
`consideration.
`
`If you are dissatisfied with the petition decision (initial petition or supplemental petition),
`you will have an additional 60 days from the date of the initial petition decision, or 60 days
`
`Page 3 of 6
`
`(ATT 9-B: Revised November 2014)
`
`

`

`from the date of the supplemental petition decision, or such other time as specified by the
`Pines, Penalties and Forfeitures Officer to file a claim to the property, along with the
`required cost bond, requesting referral of the matter to the U.S. Attorney’s Office for
`judicial action. If you do not act within these time frames, CBP may forfeit the property to
`the United States as authorized by law.
`
`At any point prior to the forfeiture of the property, you may request a referral to the U.S.
`Attorney by filing a claim and cost bond. Please see section 4 ofthis letterfor information
`on how tofile a claim and cost bond. If you take such action after filing a petition for relief,
`your pending petition will be withdrawn from consideration.
`
`2. Offer in Compromise: At any time prior to forfeiture, you may file an offer in compromise
`in accordance with Title 19, U.S.C., Section 1617 (19 U.S.C. § 1617) and Title 19, C.F.R.,
`Sections 161.5 and 171.31 (19 C.F.R. §§ 161.5, 171.31). The offer must specifically state
`that you are making it under the provisions of 19 U.S.C. § 1617. If you are offering money
`in settlement of the case, you must include payment (bank draft, cashier’s check or certified
`check, drawn on a U.S. financial institution, and made payable to CBP) in the amount of your
`offer. CBP may only consider the amount of your offer and will return the full offer if it is
`rejected- This option may serve to delay the case. If you choose this option, you must check
`Box 2 on the “Election of Proceedings” form.
`
`If you chose to submit an offer in compromise and are dissatisfied with the offer decision,
`you will have an additional 30 days from the date of the offer decision to file a claim and
`bond requesting a referral for judicial action. If you do not act within the additional 30 days,
`the property may be forfeited to the United States.
`
`You may also request a referral for judicial action at any point prior to the issuance of the
`offer in compromise decision. (Please see section 4 ofthis letterfor information on how to
`file You may also request a referral for judicial action at any point prior to the issuance of the
`offer a claim and cost bond.) If you take such action, your petition or offer will be
`considered to have been withdrawn.
`
`If, upon receipt of your offer, the matter has already been referred to the U.S. Attorney for
`the institution ofjudicial forfeiture proceedings, your offer will be forwarded to the United
`States Attorney for consideration as an offer of settlement in the judicial case, as appropriate.
`
` -1-§n—
`I_f
`Abandon: You may abandon the property or state that you have no claim or interest in it.
`you choose this option, you should check Box 3 on the “Election of Proceedings” form. The
`Government may proceed with forfeiture proceedings or address claims from other parties
`concerning the property, without further involving you.
`
`. Court Action: You may request to have this matter referred to the U.S. Attorney for
`institution ofjudicial forfeiture proceedings by notifying the office identified in this letter, in
`writing, that you do not intend to file a petition or offer in compromise with CBP or post the
`value of the merchandise to obtain its release on payment (see below). If you choose this
`option, you should check Box 4 on the “Election of Proceedings” form.
`
`Page 4 Of 6
`
`(ATP 9-B: Revised November 2014)
`
`h1'._I‘.-'“-'
`
`4l'._ll\J\v~_I
`
`

`

`Ifl upon receipt of your offer, the matter has already been referred to the U.S. Attorney’s Office
`for the institution ofjudicial forfeiture proceedings, your offer will be forwarded to the U.S.
`Attorney for consideration.
`
`Holder of a Lien or Security Interest: If you are a holder of a lien or security interest and you
`do not file a request for court action (option 4 above), you may avail yourself of any of the other
`options listed. No relief will be granted to you until after forfeiture, unless your petition, offer or
`request is accompanied by an agreement to hold the United States, its officers and employees
`harmless, and a release from the registered owner and/or person from whom the property was
`seized.
`
`No matter which box you check on the enclosed “Election of Proceedings" form, you should
`sign, date and return the form, along with any petition, offer in compromise, or request for
`judicial forfeiture proceedings if those documents are necessary to support the option you
`choose. ifyou did not receive thisform, please call the telephone number below.
`
`All accompanying documents, including supporting documents, must be in the English language
`or accompanied by an English language translation and submitted in duplicate.
`
`In addition to the seizure and forfeiture liability, you may be liable for a civil penalty in this
`matter. If you are liable for a civil penalty, details on the civil penalty are in the attached letter;
`or, if not attached, are being prepared and will be mailed shortly.
`
`All correspondence should be addressed to:
`
`U.S. Customs and Border Protection
`
`Fines, Penalties and Forfeiture Office
`3150 Tchulahoma Suite 1
`
`Memphis, TN 38118
`
`Should further information be required, Contact Regina Sharp at Fines, Penalties and Forfeitures
`Office at (901) 544-0612. Inquiries should reference the case number.
`
`Sincerely, .._..—-"""'-
`_»/laverrwlw
`Monte K. Fulton
`
`Fines, Penalties and Forfeiture Officer
`
`Enclosures: Election of Proceedings — Non-CAFRA Form
`
`A FALSE STATEMENT OR CLAIM MAY SUBJECT A PERSON TO PROSECUTION
`
`UNDER TITLE 18, U.S.C., SECTION 1001 AND/OR 1621, AND MAY BE PUNISHABLE
`BY A FINE AND IMPRISONMENT
`
`Page 6 Of 6
`
`(A'l"l‘ 9-B: Revised November 2014)
`
`

`

`ELECTION OF PROCEEDINGS — NON—CAFRA FORM
`
`NOTE: PLEASE READ THE LETTER NOTICE OF SEIZURE AND INFORMATION FOR
`CLAIMANTS BEFORE YOU FILL OUT THIS FORM". THIS FORM SHOULD BE COMPLETED AND
`RETURNED TO U.S. CUSTOMS AND BORDER PROTECTION (CBP) AT 3 I50 TCHULAHOMA
`SUITE I MEMPHIS TENNESSEE 38118.
`
`I understand that property in which I have an interest has been seized by U.S. Customs and Border
`Protection (CBP) under Case Number 2016-2006—l00002—0I.
`
`Check ONLY ONE of the five following choices:
`
`I]
`
`1.
`
`I REQUEST THAT CBP CONSIDER MY PETITION ADMINISTRATIVELY BEFORE
`FORFEITURE PROCEEDINGS ARE INITIATED. My petition is attached. By making this
`request, I understand that I am giving up my right to (I) immediately begin administrative
`forfeiture proceedings, as provided by 19 U.S.C. § 1607 and 19 C.F.R. § 162.45, or (2) have the
`case immediately referred to the U.S. Attorney for court action, as provided by 19 U.S.C. § 1608
`and I9 C.F.R. § 162.47. If administrative forfeiture has begun, it will be stopped until my petition
`is considered. However, I understand that at any time I can request, in writing, that you begin
`administrative forfeiture proceedings, and you will continue to consider my petition.
`I also
`understand that at any time I can file a claim and bond with CBP and CBP’s consideration of my
`petition will stop and the case will be sent to the U.S. Attorney’s Office for court action.
`
`[I
`
`2.
`
`I REQUEST THAT CBP CONSIDER MY OFFER IN COMPROMISE
`ADM INISTRATIVELY BEFORE FORFEITURE PROCEEDINGS ARE INITIATED. My
`
`offer is attached. By making this request, I understand that I am giving up my right to (1)
`immediately begin administrative forfeiture proceedings, as provided by 19 U.S.C. § I607 and I9
`C.F.R. § 162.45, or (2) have the case immediately referred to the U.S. Attorney for court action, as
`provided by 19 U.S.C. § 1608 and I9 C.F.R. § 162.47. If administrative forfeiture has begun, it
`will be stopped until my offer is considered. However, I understand that while my offer is under
`consideration I can request, in writing, that CBP begin administrative forfeiture proceedings, and
`CBP will continue to consider my offer.
`I also understand that while my ofier is under
`consideration I can file a claim and cost bond with CBP and CBP’s consideration of my offer will
`stop and the case will be sent to the U.S. Attorney’s Office for court action.
`
`3.
`
`I ABANDON THE PROPERTY AND I REQUEST THAT CBP BEGIN ADMINISTRATIVE
`PROCEEDINGS TO FORFEIT THE PROPERTY. Please immediately begin publication of
`the notice of seizure and intent to forfeit.
`I abandon any claim or interest in the property.
`
`I1
`
`4.
`
`I REQUEST THAT CBP SEND MY CASE FOR COURT ACTION. Please immediately refer
`the case to the U.S. Attorney’s Office for the institution ofjudicial forfeiture proceedings.
`1 am
`filing/will file a claim and bond with CBP.
`
`El
`
`5.
`
`I REQUEST THAT CBP BEGIN ADMINISTRATIVE PROCEEDINGS TO FORFEIT THE
`PROPERTY. Please immediately begin publication of the notice of seizure and intent to forfeit
`the property, and consider any petition or offer in compromise which I may timely file.
`I
`understand that within thirty (30) days of the first publication of the notice, I can request that CBP
`send the case to the U.S. Attorney’s Office for institution ofjudicial forfeiture proceedings.
`
`Name (Print)
`
`Date
`
`Signature
`
`Page I Of I
`
`(ATT 8-C: Revised November 2{)l4}
`
`

`

`Certificate of Electronic Filing
`I hereby certify that this document is being electronically filed as of
`January 30, 2017, with the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board.
`
`/Ekundayo Seton/
`Ekundayo Seton
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92064206
`
`Registration No.: 4,823,007
`
`Mark: SONIC VORTEX
`Class: 9
`
`))
`
`)
`)
`
`))
`
`)
`)
`)
`)
`)
`
`AFCO INC.
`
`Petitioner
`
`v.
`
`JDA TECHNOLOGY, LLC
`
`Respondent.
`
`SECOND AMENDED PETITION FOR CANCELLATION
`
`Petitioner, AFCO Inc. (“AFCO”), a Tennessee corporation, with its principal office at
`
`122 Gayoso Avenue, Suite 100 Memphis, Tennessee 38103, for its Second Amended Petition to
`
`Cancel Registration Number 4,823,007 (the ‘007 Registration) states that Respondent JDA
`
`Technology, LLC’s (“JDA Technology”) ‘007 Registration for the SONIC VORTEX mark was
`
`falsely and fraudulently obtained from the United States Patent and Trademark Office (USPTO).
`
`As grounds supporting the petition, Petitioner alleges that:
`
`1.
`
`JDA Technology filed its application to register the SONIC VORTEX mark
`
`featured in the ‘007 Registration on an intent-to-use basis under Section 1(b) of the Trademark
`
`Act on February 28, 2014.
`
`2.
`
`On March 23, 2015, over a year after it filed its application, JDA Technology
`
`submitted a Statement of Use suggesting that it had begun using the SONIC VORTEX mark in
`
`

`

`connection with the goods listed in its application, specifically, audio speakers and audio speaker
`
`enclosures.
`
`3.
`
`JDA Technology specifically attested in the declaration submitted under 37
`
`C.F.R. § 2.88 that it, a company related to it, or a licensee was using the SONIC VORTEX mark
`
`in commerce in connection with the goods identified in its application. See Exhibit A – Copy of
`
`JDA Technology’s Statement of Use Under 37 C.F.R. § 2.88. JDA Technology’s Statement of
`
`Use was signed by Jimmy Lee Murray (“Murray”), who listed himself as President of JDA
`
`Technology.
`
`4.
`
`JDA Technology’s declaration about the alleged use of the SONIC VORTEX
`
`mark on audio speakers and audio speaker enclosures constituted a false statement knowingly
`
`made with the intent to deceive and commit fraud upon the USPTO.
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`5.
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`Prior to and at the time of filing the declaration (See Exhibit A), an entity known
`
`to Murray as “Beale Street Audio” had used the SONIC VORTEX mark on audio speakers and
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`audio speaker enclosures.
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`6.
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`In his management capacity with Beale Street Audio, and a later company called
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`BSA Fulmer, LLC, Murray knew, both prior to and at that time of his declaration, that JDA
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`Technology was not distributing products under the SONIC VORTEX mark. For example, in or
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`around October/November 2014, i.e., several months before signing the false declaration and
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`seeing to its filing as the President of JDA Technology, Murray stated publicly that products
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`were being distributed by Beale Street Audio under the SONIC VORTEX brand, while also
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`stating that these products “are on the water now coming over from China.”
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`7.
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`Murray knew that JDA Technology was not at that time, nor has it ever been, an
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`affiliated company of Beale Street Audio or BSA Fulmer, LLC.
`
`- 2 -
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`

`

`8. Murray knew that JDA Technology was not at that time, nor has it ever been, a
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`related company of Beale Street Audio or BSA Fulmer, LLC, as JDA Technology had no control
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`over the nature and quality of the goods sold and distributed with which the SONIC VORTEX
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`mark was used. See, TMEP § 1201.03(C).
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`9.
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`The USPTO issued the ‘007 Registration for JDA Technology’s mark on
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`September 29, 2015, following the false Statement of Use tendered by JDA Technology.
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`10.
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`At the time of the false Statement of Use, JDA Technology had not used the
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`SONIC VORTEX mark in commerce in connection with any of the goods identified in the ‘007
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`Registration. JDA Technology also failed to disclose Beale Street Audio and BSA Fulmer’s prior
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`use of the mark to the USPTO.
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`11. At the time of the false Statement of Use, JDA Technology had not granted any
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`rights to any licensees or related companies to use the SONIC VORTEX mark in commerce in
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`connection with any of the goods identified in the ‘007 Registration.
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`12.
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`Cancellation of the ‘007 Registration is warranted under Lanham Act § 14(3)
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`because JDA Technology obtained the registration by committing fraud on the USPTO.
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`13.
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`AFCO believes it has been and will continue to be damaged by the ‘007
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`Registration because it has used the SONIC VORTEX mark on goods it imported into the United
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`States.
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`14.
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`In addition to the aforementioned use, AFCO’s shipment of goods bearing the
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`SONIC VORTEX mark has been seized by the United States Customs and Border Protection
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`agency, and AFCO faces possible forfeiture, fines, and/or penalties. See Exhibit B – Copy of the
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`August 4, 2016 Notice of Seizure and Information.
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`- 3 -
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`

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`15.
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`Alternatively, cancellation of the ‘007 Registration is warranted under Lanham
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`Act § 14(1) because JDA Technology did not use the SONIC VORTEX mark in commerce prior
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`to its filing of its Statement of Use.
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`WHEREFORE, Petitioner hereby prays that Registration Number 4,823,007 be canceled.
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`Respectfully submitted,
`
`
`
`/Ekundayo Seton/
`Stephen C. Hall
`Ekundayo Seton
`WYATT, TARRANT & COMBS, LLP
`500 West Jefferson Street, Suite 2800
`Louisville, Kentucky 40202-2898
`Facsimile: 502.589.0309
`Telephone: 502.589.5235
`
`Counsel for Petitioner, AFCO Inc.
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a true and complete copy of the foregoing Second
`Amended Petition to Cancel has been served upon:
`
`Charles T. Riggs Jr.
`The Law Office of Charles T. Riggs Jr.
`551 Forest Avenue
`River Forest, Illinois 60305
`(708) 828-6130
`
`and
`
`Justin R. Sauer, Esq.
`Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A.
`255 South Orange Avenue, Suite 1401
`Orlando, Florida 32801
`
`via U.S. Mail, postage prepaid, this 30th day of January, 2017.
`
`Ekundayo Seton/
`One of Counsel for Petitioner, AFCO Inc.
`
`61586717.1
`
`- 4 -
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`