Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1093722
`
`Filing date:
`
`11/06/2020
`
`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
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Academy, Ltd.
`
`Limited Partnership
`
`Citizenship
`
`Texas
`
`1800 NORTH MASON ROAD
`KATY, TX 77449
`UNITED STATES
`
`OREN GELBER
`ACADEMY, LTD.
`1800 NORTH MASON ROAD
`KATY, TX 77449
`UNITED STATES
`Primary Email: legal-intellectualproperty@academy.com
`No phone number provided.
`
`Docket Number
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5937078
`
`Registration date
`
`12/17/2019
`
`Registrant
`
`B'freely, LLC
`823B W 25TH ST
`HOUSTON, TX 77008
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 021. First Use: 2018/06/15 First Use In Commerce: 2019/03/11
`All goods and services in the class are subject to cancellation, namely: Stainless steel drinking straws
`with graphic designs
`
`Grounds for Cancellation
`
`Abandonment
`
`Other
`
`Trademark Act Section 14(3)
`
`cancellation in part in the nature of a restriction
`under Section 18 of the Lanham Act, 15 U.S.C.
`§ 1068
`
`Attachments
`
`Petition to Cancel BFREELY.pdf(1174868 bytes )
`
`Signature
`
`/Oren Gelber/
`
`
`
`ESTTA Tracking number:
`
`ESTTA1093722
`
`Filing date:
`
`11/06/2020
`
`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
`
`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Academy, Ltd.
`
`Limited Partnership
`
`Citizenship
`
`Texas
`
`1800 NORTH MASON ROAD
`KATY, TX 77449
`UNITED STATES
`
`OREN GELBER
`ACADEMY, LTD.
`1800 NORTH MASON ROAD
`KATY, TX 77449
`UNITED STATES
`Primary Email: legal-intellectualproperty@academy.com
`No phone number provided.
`
`Docket Number
`
`Registration Subject to Cancellation
`
`Registration No.
`
`5937078
`
`Registration date
`
`12/17/2019
`
`Registrant
`
`B'freely, LLC
`823B W 25TH ST
`HOUSTON, TX 77008
`UNITED STATES
`
`Goods/Services Subject to Cancellation
`
`Class 021. First Use: 2018/06/15 First Use In Commerce: 2019/03/11
`All goods and services in the class are subject to cancellation, namely: Stainless steel drinking straws
`with graphic designs
`
`Grounds for Cancellation
`
`Abandonment
`
`Other
`
`Trademark Act Section 14(3)
`
`cancellation in part in the nature of a restriction
`under Section 18 of the Lanham Act, 15 U.S.C.
`§ 1068
`
`Attachments
`
`Petition to Cancel BFREELY.pdf(1174868 bytes )
`
`Signature
`
`/Oren Gelber/
`
`
`
`Name
`
`Date
`
`Oren Gelber
`
`11/06/2020
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`: B'freely, LLC
`: 5,937,078
`: b’freely.
`: December 17, 2019
`
`
`
`Registrant
`Reg. No.
`For
`
`Registered
`
`
`
`Assistant Commissioner of Trademarks
`Box TTAB – FEE
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`
`
`
`PETITION TO CANCEL
`
`The Petitioner, Academy, Ltd. d/b/a Academy Sports + Outdoors (“Academy”), a limited
`
`partnership duly organized and existing under the laws of Texas, with a business address of 1800
`
`North Mason Road, Katy, Texas 77449, believes that it is being and will be damaged by the continued
`
`registration of the b’freely. mark and hereby petitions to cancel the same pursuant to15 U.S.C. § 1064,
`
`15 U.S.C. § 1068, 37 C.F.R. § 2.111, and 37 C.F.R. § 2.133. As grounds for its petition, Academy
`
`alleges the following, upon actual knowledge with respect to itself and its own acts, and upon
`
`information and belief as to other matters:
`
`
`
`(1)
`
`Academy has a well-known reputation as one of the nation’s largest full-line sporting goods
`
`retailers, operating over 200 stores in the United States and online through its academy.com website.
`
`Academy offers a wide array of goods and services intended to make it easier for everyone to enjoy
`
`more sports and outdoors activities.
`
`
`
`(2)
`
`Academy is the owner of numerous valid United States registrations and applications,
`
`including:
`
`
`FREELY
`
`
`
`
`
`SERIAL NO.
`
`90/023,201
`
`
`
` (See Exhibit 1) (the “FREELY Mark”) and others.
`
`
`
`1
`
`
`
`
`
`
`
`(3)
`
`The U.S. Patent and Trademark Office refused registration to Academy’s Application Serial
`
`No. 90/023,201 in International Class 021 under Section 2(d) of the Lanham Act, 15 U.S.C. §
`
`1052(d), on the ground that the applied-for FREELY mark conflicts with Registrant’s U.S.
`
`Registration No. 5,937,078.
`
`
`
`(4)
`
`Academy maintains that there is no likelihood of confusion, mistake, or deception between
`
`its FREELY Mark and Registrant’s b’freely. mark
`
`
`
`(5)
`
`A review of Registrant’s website, www.befreely.com, demonstrates that Registrant is not
`
`currently selling or offering for sale any product. See Exhibit 2.
`
`
`
`(6)
`
`Upon information and belief, Registrant does not currently sell or offer for sale “Stainless
`steel drinking straws with graphic designs” in the United States under the mark b’freely.
`
`
`(7)
`
`Upon information and belief, Registrant has not used the b’freely. mark in over a year.
`
`
`(8)
`
`Upon information and belief, Registrant does not have a present intention to resume use of
`
`the b’freely mark in the United States.
`
`
`(9)
`
`Upon information and belief, Registrant has abandoned the b’freely mark shown in
`
`Registration No. 5,937,078 based on non-use of the mark in commerce in the United States with no
`
`intent to resume use in the United States, in connection with all of the goods listed in the Registration.
`
`
`(10) Accordingly, in view of Registrant’s non-use and abandonment of the b’freely. mark in
`
`Registration No. 5,937,078, Registrant is not entitled to continued registration for the mark under
`
`Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3), and as such, registration for the b’freely.
`
`mark should be cancelled in its entirety.
`
`
`
`2
`
`
`
`
`
`(11)
`
`In the alternative, and only in the event that the Board denies Academy’s claims of non-
`
`use and abandonment, Academy seeks cancellation in part of Registration No. 5,937,078 in the
`
`nature of a restriction under Section 18 of the Lanham Act, 15 U.S.C. § 1068.
`
`
`(12) Academy submits that any alleged likelihood of confusion (which Academy denies) will
`
`be avoided if Registrant’s U.S. Registration No. 5,937,078 is restricted and narrowed as set forth
`
`below.
`
`
`
`(13) Upon information and belief, the recitation of goods in Registrant’s U.S. Registration No.
`
`5,937,078 is overly broad, and Academy requests that the description of goods be restricted in a
`
`manner that is consistent with Registrant’s actual use of the mark in U.S. commerce and in a
`manner that avoids any likelihood of confusion with Academy’s FREELY Mark.
`
`
`
`(14) Accordingly, Academy requests that the description of goods in Registrant’s U.S.
`Registration No. 5,937,078 for the mark b’freely. be restricted to: “Stainless steel drinking straws
`
`with graphic designs not sold in connection with reusable water bottles offered for sale via
`
`Registrant’s dedicated website only.”
`
`
`
`(15) Such partial cancellation of Registrant’s registration to “Stainless steel drinking straws with
`graphic designs not sold in connection with reusable water bottles offered for sale via Registrant’s
`dedicated website only,” will avoid a likelihood of confusion with Academy’s applied-for
`
`FREELY Mark (Serial No. 90/023,201).
`
`
`
`(16)
`
`If Registrant’s registration’s is not cancelled, such registration may continue to block the
`registration of Academy’s FREELY application, Serial No. 90/023,201. Such registration would
`
`be a source of damage and injury to Academy and the purchasing public.
`
`
`
`3
`
`
`
`
`
`WHEREFORE, Academy prays that this Petition be sustained and that Registration No.
`
`5,937,078, be cancelled for non-use and abandonment, or alternatively partially cancelled and
`
`restricted to “Stainless steel drinking straws with graphic designs not sold in connection with
`reusable water bottles offered for sale via Registrant’s dedicated website only.”
`
`
`
`Pursuant to 37 C.F.R. § 2.6(a)(17), the statutory filing fee of $400 is being charged
`
`electronically to Petitioner’s counsel’s credit card.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted for Academy,
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`
`Oren Gelber
`Academy, Ltd.
`1800 N. Mason Road
`Katy, TX 77449
`ogelber@academy.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`November 6, 2020
`
`Date:
`Enclosures: Exhibits 1-2
`
`
`Filing Fee ($400)
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`11/6/2020
`
`Trademark Electronic Search System (TESS)
`
`United States Patent and Trademark Office
`
`Home|Site Index|Search|FAQ|Glossary|Contacts|eBusiness|eBiz alerts|News
` Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Fri Nov 6 03:17:22 EST 2020
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`Record 1 out of 1
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` ( Use the "Back" button of the Internet Browser to return to TESS)
`
`Word Mark
`B'FREELY.
`Goods and Services IC 021. US 002 013 023 029 030 033 040 050. G & S: Stainless steel drinking straws with graphic designs. FIRST USE:
`20180615. FIRST USE IN COMMERCE: 20190311
`
`Standard Characters
`Claimed
`Mark Drawing Code
`(4) STANDARD CHARACTER MARK
`Serial Number
`88451178
`Filing Date
`May 29, 2019
`Current Basis
`1A
`Original Filing Basis 1A
`Published for
`October 1, 2019
`Opposition
`Registration Number 5937078
`Registration Date
`December 17, 2019
`Owner
`(REGISTRANT) B'freely, LLC LIMITED LIABILITY COMPANY TEXAS 823B W 25th St Houston TEXAS 77008
`Type of Mark
`TRADEMARK
`Register
`PRINCIPAL
`Live/Dead Indicator
`LIVE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`|.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY
`
`tmsearch.uspto.gov/bin/showfield?f=doc&state=4810:m749o.2.1
`
`1/1
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 2
`EXHIBIT 2
`
`
`
`11/6/2020
`
`stainless steel straw | b'freely | online eco friendly product store
`
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`© 2023 b'freely, LLC | info@bfreely.com | Houston, TX
`
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`
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`We are Around Town
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`Map data ©2020 Google
`Report a map error
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`11/6/2020
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`Shop | b'freely
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`C o l l e c t i o n s
`
`Ou(cid:568) p(cid:568)emie(cid:568)e (cid:428)olle(cid:428)tion has o(cid:468)fi(cid:428)ially laun(cid:428)hed.
`Ne(cid:623) desi(cid:469)ns & sizes a(cid:568)e a(cid:622)aila(cid:427)le. vimited (cid:567)uantity
`a(cid:622)aila(cid:427)le (cid:468)o(cid:568) this desi(cid:469)n. Che(cid:428)k it out.
`
`(cid:427)'(cid:427)old. Stand out & stand up.
`
`
`b' freely | b'you
`
`We don’t have any products to
`show here right now.
`
`Home
`About
`Hit Us Up
`Order Status
`Shipping
`Returns & Exchanges
`© 2023 b'freely, LLC | info@bfreely.com | Houston, TX
`
`https://www.bfreely.com/shop
`
`1/1
`
`We are Around Town
`
`500 m
`
`Map data ©2020 Google
`Report a map error
`
`We are Around Town
`
`500 m
`
`Map data ©2020 Google
`Report a map error
`
`
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