`
`ESTTA Tracking number:
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`ESTTA1083828
`
`Filing date:
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`09/23/2020
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`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 has filed a petition to cancel the registration indicated below.
`
`Petitioner Information
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`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
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`Biena, LLC
`
`limited liability company
`
`Citizenship
`
`Massachusetts
`
`119 BRAINTREE STREET
`SUITE 603
`BOSTON, MA 02134
`UNITED STATES
`
`AMANDA ROACH
`AMIN TALATI WASSERMAN LLP
`100 S. WACKER DRIVE
`SUITE 2000
`CHICAGO, IL 60606
`UNITED STATES
`Primary Email: trademark@amintalati.com
`Secondary Email(s): amanda@amintalati.com, gspatz@amintalati.com, jen-
`nifer.colkitt@amintalati.com, sarah@amintalati.com
`312-327-3328
`
`Docket Number
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`BNC-0008-US
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`Registration Subject to Cancellation
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`Registration No.
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`5171062
`
`Registration date
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`03/28/2017
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`Registrant
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`Texas Star Nut and Food Company, Inc.
`206 MARKET AVENUE
`BOERNE, TX 78006
`UNITED STATES
`
`Goods/Services Subject to Cancellation
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`Class 029. First Use: 2011/11/10 First Use In Commerce: 2011/11/10
`All goods and services in the class are subject to cancellation, namely: Processed nuts, namely,
`cashews
`
`Grounds for Cancellation
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`Abandonment
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`Trademark Act Section 14(3)
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`Attachments
`
`Petition to Cancel ROCKIN RANCH CASHEWS.pdf(29741 bytes )
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`Signature
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`/Amanda Roach/
`
`
`
`Name
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`Date
`
`Amanda Roach
`
`09/23/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Biena, LLC
`
`v.
`
`Petitioner,
`
`
`Texas Star Nut and Food Company, Inc.
`
`Registrant.
`
`
`
`
`
`
`
`Cancellation No.: ________________
`
`PETITION FOR CANCELLATION
`
`Trademark: ROCKIN’ RANCH
` CASHEWS
`Registration No.: 5171062
`Registration Date: March 28, 2017
`
`
`
`PETITION FOR CANCELLATION
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`Biena, LLC (hereinafter referred to as “Petitioner” or “Biena”) believes it will be damaged
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`by the continued registration of the mark ROCKIN’ RANCH CASHEWS (“Registrant’s Mark”)
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`by Texas Star Nut and Food Company, Inc. (hereinafter referred to as “Registrant” or “Texas
`
`Star”). Accordingly, Biena, by its attorneys Amin Talati Wasserman LLP, hereby petitions for
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`cancellation of Texas Star’s U.S. Registration No. 5171062 for the mark ROCKIN’ RANCH
`
`CASHEWS (the “ROCKIN’ RANCH CASHEWS Registration”). In support of its Petition for
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`Cancellation, Biena states as follows:
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`1.
`
`Biena is a Massachusetts limited liability company located at Suite 603, 119
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`Braintree Street, Boston, Massachusetts 02134, United States of America.
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`2.
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`Biena is the owner of pending U.S. Application Serial No. 88746574 for the mark
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`ROCKIN’ RANCH (the “ROCKIN’ RANCH Application”), filed with the USPTO on January 3,
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`2020. The ROCKIN’ RANCH Application covers the following goods: Chickpea-based snack
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`foods; Plant-based snack foods; Pulse-based snack foods; Chocolate-coated chickpea-based snack
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`foods; Vegetable-based snack foods; Potato-based snack foods; Tofu-based snacks, Dried fruit-
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`
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`based snacks, Fruit-based snack food, Nut-based snack foods, Soy-based snack foods, Seed-based
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`snack foods, Bean-based snack foods, Cheese-based snack foods, potato puffs, Sweet Corn-based
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`snack foods (International Class 29, as amended); Cereal-based snack food, Rice-based snack
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`food, Wheat-based snack foods, Corn-based snack foods, Granola snacks, Quinoa-based snack
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`foods, Grain-based snack foods, Multigrain-based snack foods, Chocolates, Chocolate-coated
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`nuts, chocolate covered pretzels, chocolate covered popcorn, chocolate candies, Caramels,
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`Caramel popcorn (International Class 30, as amended).
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`3.
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`In an Office Action issued by the USPTO on March 24, 2020, the examining
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`attorney cited the ROCKIN’ RANCH CASHEWS Registration as a bar to registration of the
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`ROCKIN’ RANCH Application under 15 U.S.C. § 1052(d).
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`4.
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`As a result, Biena is being damaged and will continue to be damaged by Texas
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`Star’s ROCKIN’ RANCH CASHEWS Registration. This harm provides Biena with sufficient
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`standing to bring its Petition for Cancellation against Texas Star’s ROCKIN’ RANCH CASHEWS
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`Registration.
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`5.
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`On information and belief and according to USPTO records, Texas Star is a Texas
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`corporation and has an address of 206 Market Avenue, Boerne, Texas 78006, United States of
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`America.
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`6.
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`The application that matured into the ROCKIN’ RANCH CASHEWS Registration
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`was filed on August 23, 2016, by Texas Star. The application achieved registration on March 28,
`
`2017. The ROCKIN’ RANCH CASHEWS Registration covers the following goods in
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`International class 29: Processed nuts, namely, cashews.
`
`
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`7.
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`On information and belief, Texas Star has ceased use of the ROCKIN’ RANCH
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`CASHEWS Registration in U.S. interstate commerce in connection with the sale of the goods
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`identified therein and does not intend to resume use of the mark.
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`8.
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`Online research and inquiries directed to Texas Star failed to reveal any evidence
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`of the ROCKIN’ RANCH CASHEWS mark being used in relation to the goods identified in the
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`ROCKIN’ RANCH CASHEWS Registration.
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`9.
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`Further research and contact with Texas Star confirmed that the ROCKIN’ RANCH
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`product was a limited edition item and has not been sold in U.S. interstate commerce for at least
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`three years.
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`10.
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`Upon information and belief, Texas Star formerly sold ROCKIN’ RANCH
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`CASHEWS under a sub brand, Nature’s Eats, https://www.texasnut.com/nut-and-fruit-brands/.
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`11.
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`Texas Star’s
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`sub brand’s website at https://www.natureseats.com/our-
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`products/snacking-section does not list the ROCKIN’ RANCH CASHEWS product as a current
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`offering.
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`12.
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`Texas Star’s main website at https://www.texasnut.com/products/ does not list the
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`ROCKIN’ RANCH CASHEWS product as a current offering.
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`13.
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`Upon information and belief, H-E-B Grocery formerly sold the ROCKIN’ RANCH
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`CASHEWS product but the item is no longer offered for sale https://www.heb.com/product-
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`detail/nature-s-eats-rocking-ranch-cashews/1766642.
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`14.
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`Based on the foregoing, Texas Star is not using the ROCKIN’ RANCH CASHEWS
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`mark in U.S. interstate commerce, nor does it intend to resume use.
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`
`
`
`
`
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`COUNT I – ABANDONMENT
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`15.
`
`Biena re-alleges each of the foregoing allegations as though set forth entirely
`
`herein.
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`16.
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`There is no evidence that Texas Star currently uses the ROCKIN’ RANCH
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`CASHEWS mark in U.S. interstate commerce.
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`17.
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`In addition, the facts alleged above provide a strong inference that Texas Star does
`
`not intend to resume bona fide use in U.S. commerce of the ROCKIN’ RANCH CASHEWS mark
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`in connection with the goods identified in the ROCKIN’ RANCH CASHEWS Registration.
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`18.
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`Accordingly,
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`the ROCKIN’ RANCH CASHEWS Registration has been
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`abandoned, within the meaning of 15 U.S.C. § 1127.
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`For the foregoing reasons, Texas Star’s ROCKIN’ RANCH CASHEWS Registration
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`should be cancelled under 15 U.S.C. § 1064(3).
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`WHEREFORE, Biena requests that this Petition for Cancellation be sustained and that U.S.
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`Trademark Registration No. 5171062 for the ROCKIN’ RANCH CASHEWS mark be cancelled
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`in its entirety.
`
`
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`September 23, 2020 Respectfully submitted,
`
` AMIN TALATI WASSERMAN, LLP
`
` /s/ Amanda Roach
`
`Amanda Roach
`George Spatz
`100 S. Wacker Dr., Suite 2000
`Chicago, IL 60606
`(312) 327-3328
`www.amintalati.com
`amanda@amintalati.com
`gspatz@amintalati.com
`
`
`
`
`
`trademark@amintalati.com
`
`ATTORNEYS FOR PETITIONER
`
`