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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1122174
`
`Filing date:
`
`03/22/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067046
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Nationwide Auto Lease LLC
`
`MITCHELL P NOVICK
`LAW OFFICES OF MITCHELL P NOVICK
`623 EAGLE ROCK AVENUE, SUITE 407
`WEST ORANGE, NJ 07052
`UNITED STATES
`Primary Email: mnovick@mitchellnovick.com
`Secondary Email(s): nhyman@mitchellnovick.com
`973-744-5150
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Testimony For Defendant
`
`Mitchell P. Novick, Esq.
`
`mnovick@mitchellnovick.com, trademarks@mitchellnovick.com
`
`/mitchell p. novick/
`
`03/22/2021
`
`Attachments
`
`1939shmalo_dec_REDACT.pdf(41180 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`REDACTED
`
`Cancellation No. 92067046
`
`DECLARATION OF
`ELIYAHU (ELIE) SHMALO
`
`In the Matter of Registration
`Registration No. 5,005,305
`Registered: July 19, 2016
`Mark: NATIONWIDE AUTO LEASE
`
`NATIONWIDE MUTUAL INSURANCE COMPANY,
`
`Petitioner,
`
`-vs-
`
`NATIONWIDE AUTO LEASE LLC,
`
`Registrant.
`
`DECLARATION OF ELIYAHU (ELIE) SHMALO
`
`In accordance with the TTAB Rules of Procedure, I, ELIYAHU (ELIE)
`
`SHMALO, state that as a witness for Registrant in this proceeding, I declare
`
`as follows:
`
`1.
`
`My name is Elie Shmalo. I am the founder of Registrant,
`
`NATIONWIDE AUTO LEASE LLC. (“NATIONWIDE AUTO LEASE”).
`
`2.
`
`I have been employed by NATIONWIDE AUTO LEASE as its
`
`President since its founding and through today. In that capacity, I have been
`
`and remain involved in all aspects of the business of NATIONWIDE AUTO LEASE.
`
`1939shmalo.dec 032321
`
`- 1 -
`
`

`

`3.
`
`NATIONWIDE AUTO LEASE was founded in 2013.
`
`4.
`
`NATIONWIDE AUTO LEASE's business is auto leasing. Auto
`
`leasing has matured into its own separate, distinct, and substantial industry.
`
`5.
`
`Since its founding, NATIONWIDE AUTO LEASE has cumulated at
`
`least $xxxxxxxxxx in revenues from its auto leasing services.
`
`6.
`
`Since its founding, NATIONWIDE AUTO LEASE has spent at least
`
`approximately $xxxxxxxxxx in advertising its auto leasing services under its
`
`name NATIONWIDE AUTO LEASE. In addition, NATIONWIDE AUTO LEASE has utilized
`
`numerous online free advertising services throughout its existence.
`
`7.
`
`The most common medium used by NATIONWIDE AUTO LEASE for
`
`advertising is and remains online (the “Internet”).
`
`8.
`
`Due to the extensive and prominent use of the Internet for
`
`NATIONWIDE AUTO LEASE's advertising, its advertising has reached across the
`
`entire United States and beyond.
`
`9.
`
`Despite this extensive and prominent advertising, I have
`
`never received any queries or comments of any nature regarding whether
`
`NATIONWIDE AUTO LEASE was connected or affiliated in any way to Petitioner or
`
`Petitioner's business or expressing any confusion regarding the two companies.
`
`10.
`
`Further, I have never had any feedback from any NATIONWIDE
`
`AUTO LEASE employees or representatives that they received queries or comments
`
`of any nature regarding whether NATIONWIDE AUTO LEASE was connected or
`
`affiliated in any way to Petitioner or Petitioner's business or expressing any
`
`confusion regarding the two companies.
`
`11.
`
`At no time, in advertising or otherwise, has NATIONWIDE AUTO
`
`LEASE indicated or intimated that NATIONWIDE AUTO LEASE was connected in any
`
`way to Petitioner.
`
`1939shmalo.dec 032321
`
`- 2 -
`
`

`

`12.
`
`Finally, due to my extensive involvement with NATIONWIDE
`
`AUTO LEASE and the auto leasing industry, I consider myself quite
`
`knowledgeable about the auto leasing industry in the United States. I can
`
`fairly state that (excluding statements and allegations from Petitioner and
`
`its representatives prior to and during this Cancellation proceeding) at no
`
`time during the existence of NATIONWIDE AUTO LEASE have I been aware or made
`
`aware of any auto leasing actions by Petitioner.
`
`13.
`
`Similarly, at no time prior to or since NATIONWIDE AUTO
`
`LEASE's adoption of the mark “NATIONWIDE AUTO LEASE” have I been aware or made
`
`aware of any auto leasing actions by Petitioner under any trademark.
`
`14.
`
`In short, I agree that Petitioner has a large and successful
`
`business with many registered trademarks and well-known branding, but not in
`
`the auto leasing industry. NATIONWIDE AUTO LEASE is well-known and
`
`established in the auto leasing industry while Petitioner is not. There is no
`
`likelihood of confusion between NATIONWIDE AUTO LEASE's auto leasing services
`
`and Petitioner's services.
`
`I declare under penalty of perjury that the foregoing statements
`
`are true to the best of my knowledge.
`
`_______________________________
` ELIYAHU (ELIE) SHMALO
`
`Dated: March 23, 2021
`
`MPN/s
`2068-1939
`
`1939shmalo.dec 032321
`
`- 3 -
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing
`
`DECLARATION OF ELIYAHU (ELIE) SHMALO has been served upon the attorney of
`
`record for Petitioner by e-mail to the following address, on March 20, 2020:
`
`Martin Miller, Esq.
`PORTER, WRIGHT, MORRIS & ARTHUR LLP
`Counsel for Petitioner
`41 South High Street
`Suite 2900
`Columbus, OH 43215
`E-mail: mmiller@porterwright.com
`
` /mitchell p. novick/
`
` MITCHELL P. NOVICK
`
`
`
`Dated: March 23, 2021
`
`1939shmalo.dec 032321
`
`- 4 -
`
`

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