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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA800371
`
`Filing date:
`
`02/09/2017
`
`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
`
`Plaza Izalco, Inc.
`
`Corporation
`
`417 Clifford Avenue
`Alexandria, VA 22305
`UNITED STATES
`
`Citizenship
`
`Virginia
`
`Attorney informa-
`tion
`
`Oliver A. Ruiz
`Malloy & Malloy, P.L.
`2800 SW 3rd Ave
`Miami, FL 33129
`UNITED STATES
`jcmalloy@malloylaw.com, oruiz@malloylaw.com, jnmcdonald@malloylaw.com,
`litigation@malloylaw.com Phone:3058588000
`
`Registration Subject to Cancellation
`
`Registration No
`
`4581604
`
`Registration date
`
`08/05/2014
`
`Registrant
`
`Pharmadel Llc
`178 Venture Dr.
`Seaford, DE 19973
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 005. First Use: 2013/06/21 First Use In Commerce: 2013/06/21
`All goods and services in the class are cancelled, namely: Adhesive bandages; Adhesive bands for
`medical purposes; Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm; Anti-
`inflammatory gels; Anti-inflammatory salves; Anti-inflammatory sprays; Balms for medical purposes;
`Balms for pharmaceutical purposes; Curare for use as a muscle relaxant; Herbal topical creams,
`gels, salves, sprays, powder,balms, liniment and ointments for the relief of aches and pain; Medica-
`ments forpromoting recovery from tendon and muscle injuries and disorders and sports related injur-
`ies; Multipurpose medicated antibiotic cream, analgesic balm and mentholated salve; Muscle relax-
`ants; Sports cream for relief of pain; Therapeutic spray to sooth and relax the muscles
`
`Class 010. First Use: 2013/06/21 First Use In Commerce: 2013/06/21
`All goods and services in the class are cancelled, namely: Drug delivery patches sold without medic-
`ation; Elastic bandages
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`The mark is primarily merely a surname
`
`Trademark Act Sections 14(1) and 2(e)(4)
`
`

`

`Mark Cited by Petitioner as Basis for Cancellation
`
`U.S. Application
`No.
`
`86029611
`
`Application Date
`
`08/06/2013
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`COFAL
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 005. First use: First Use: 2006/02/00 First Use In Commerce: 2006/02/00
`Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm;
`Analgesic preparations; Curare for use as a muscle relaxant; Medicaments for
`promoting recovery from tendon and muscle injuries and disorders and sports
`related injuries; Multipurpose medicated antibioticcream, analgesic balm and
`mentholated salve; Muscle relaxants
`
`Attachments
`
`86029611#TMSN.png( bytes )
`2017 02 09 Petition to Cancel FINAL.pdf(121518 bytes )
`
`Signature
`
`Name
`
`Date
`
`/Oliver A. Ruiz/
`
`Oliver A. Ruiz
`
`02/09/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`In the matter of Registration No. 4,581,604
`For the mark “KOFAL”
`
`___________________________________
`
`PLAZA IZALCO, INC.,
`
`Petitioner,
`
`
`
`
`
`
`vs.
`
`
`
`
`PHARMADEL, LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Registrant.
`___________________________________
`
`
`
`)
`)
`)
`)
`)
`) Cancellation No.
`)
`)
`)
`)
`)
`
`PETITION TO CANCEL
`
`
`
`COMES NOW the Petitioner, Plaza Izalco, Inc. (“Petitioner”), a Virginia corporation
`
`having its principal place of business at 417 Clifford Avenue, Alexandria, Virginia 22315, and
`
`hereby petitions to cancel U.S. Registration No. 4,581,604 for “KOFAL” owned by Pharmadel
`
`LLC (“Registrant”), a Delaware company having an address of 178 Venture Drive, Seaford,
`
`Delaware 19973. As set forth below, Petitioner is damaged by Registration No. 4,581,604 and
`
`alleges the following for cancellation of same:
`
`CLAIM UNDER SECTION 2(d)
`
`1.
`
`The trademark registration sought to be cancelled is Registration No. 4,581,604
`
`for the alleged mark “KOFAL” for use on “Adhesive bandages; Adhesive bands for medical
`
`purposes; Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm; Anti-
`
`inflammatory gels; Anti-inflammatory salves; Anti-inflammatory sprays; Balms for medical
`
`purposes; Balms for pharmaceutical purposes; Curare for use as a muscle relaxant; Herbal
`
`

`

`topical creams, gels, salves, sprays, powder, balms, liniment and ointments for the relief of aches
`
`and pain; Medicaments for promoting recovery from tendon and muscle injuries and disorders
`
`and sports related injuries; Multipurpose medicated antibiotic cream, analgesic balm and
`
`mentholated salve; Muscle relaxants; Sports cream for relief of pain; Therapeutic spray to sooth
`
`and relax the muscles”, in International Class 5 and “Drug delivery patches sold without
`
`medication; Elastic bandages”, in International Class 10. Registrant’s application was filed on
`
`July 10, 2013, registered on August 5, 2014, and claims June 21, 2013 as the date of first use in
`
`commerce.
`
`2.
`
`Long prior to Registrant’s filing date and claimed date of first use in commerce,
`
`Petitioner and/or Petitioner’s predecessor(s), adopted the trademark “COFAL” for use in
`
`connection with “Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm;
`
`Analgesic preparations; Curare for use as a muscle relaxant; Medicaments for promoting
`
`recovery from tendon and muscle injuries and disorders and sports related injuries;
`
`Multipurpose medicated antibiotic cream, analgesic balm and mentholated salve; Muscle
`
`relaxants”. Petitioner has since continuously used the “COFAL” Mark in interstate commerce
`
`for and in connection with its products and has not abandoned this mark.
`
`3.
`
`On August 6, 2013, Petitioner filed an application with the United States Patent
`
`and Trademark Office (“PTO”), namely, application Serial No. 86/029,611 for “COFAL” for use
`
`on “Analgesic and muscle relaxant pharmaceutical preparations; Analgesic balm; Analgesic
`
`preparations; Curare for use as a muscle relaxant; Medicaments for promoting recovery from
`
`tendon and muscle injuries and disorders and sports related injuries; Multipurpose medicated
`
`antibiotic cream, analgesic balm and mentholated salve; Muscle relaxants”, in International
`
`Class 005 (hereinafter “Petitioner’s Application”).
`
`
`
`2
`
`

`

`4.
`
`On June 29, 2015, the Examining Attorney assigned to Petitioner’s Application
`
`issued an Office Action setting forth a Section 2(d) refusal prefaced in part on Registration No.
`
`4,581,604.
`
`5.
`
`Petitioner has expended considerable time, money, and effort in promoting its
`
`goods under the “COFAL” Mark. The strength of Petitioner’s Mark has grown such that
`
`Petitioner has established exceedingly valuable goodwill in the “COFAL” Mark.
`
`6.
`
`The Petitioner has priority of use over Registrant with respect to the “COFAL”
`
`Mark.
`
`7.
`
`Based on the position taken by the Examining Attorney, if Registrant is permitted
`
`to keep Registration No. 4,581,604, there will be a continued likelihood of confusion, mistake,
`
`and deception among the consuming public and the trade, all in violation of § 2(d) of the Lanham
`
`Act, 15 U.S.C. § 1052(d).
`
`CLAIM UNDER SECTION 2(e)(4)
`
`8.
`
`Petitioner re-alleges the allegations contained in Paragraphs 1 through 7 as if fully
`
`set forth herein.
`
`9.
`
`Upon information and belief, Registrant’s alleged mark “KOFAL” is primarily
`
`merely a surname, and is not registrable under 15 U.S.C. §1052(e)(4) because its primary
`
`significance to the purchasing public is that of a surname.
`
`10.
`
`Upon information and belief, the alleged mark “KOFAL” does not have any
`
`recognized meaning other than as a surname, and has not acquired distinctiveness.
`
`WHEREFORE, Petitioner prays that this Petition to Cancel be granted and that the
`
`aforesaid Registration No. 4,581,604 for the mark “KOFAL” be cancelled.
`
`The fee required in 37 C.F.R. § 2.6(a)(16) is enclosed herewith.
`
`
`
`3
`
`

`

`Dated: February 9, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`By: /Oliver A. Ruiz/
`
`John Cyril Malloy, III
`Florida Bar No. 964,220
`jcmalloy@malloylaw.com
`Oliver A. Ruiz
`Florida Bar No. 524,786
`oruiz@malloylaw.com
`Jessica Neer McDonald
`Florida Bar No. 125,559
`jnmcdonald@malloylaw.com
`MALLOY & MALLOY, P.L.
`Attorneys for Petitioner
`2800 S.W. Third Avenue
`Miami, Florida 33129
`Telephone: (305) 858-8000
`
`CERTIFICATE OF FILING
`
`
`
`I HEREBY CERTIFY that the foregoing Petition to Cancel was filed electronically via
`
`the ESTTA, at the United States Patent and Trademark Office, Trademark Trial and Appeal
`Board’s ESTTA electronic filing system, on February 9, 2017.
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`/Oliver A. Ruiz/
`Oliver A. Ruiz
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`
`
`In connection with its Institution Order, the U.S. Trademark Trial and Appeal Board will
`serve a true and complete copy of the foregoing Petition to Cancel on the current owner of the
`registration sought to be canceled. Based on a review of TSDR, the current owner’s information
`is provided below:
`
` Pharmadel Llc
`178 Venture Dr.
`Seaford, DE 19973
`
`
`
`
`
`By:
`
`
`/Oliver A. Ruiz/
`Oliver A. Ruiz
`
`4
`
`

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