throbber
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1140018
`
`Filing date:
`
`06/14/2021
`
`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
`
`Advance Magazine Publishers, Inc.
`
`Corporation
`
`Citizenship
`
`New York
`
`ONE WORLD TRADE CENTER
`NEW YORK, NY 10007
`UNITED STATES
`
`JORDAN A LAVINE
`FLASTER GREENBERG PC
`100 FRONT STREET, SUITE 100
`CONSHOHOCKEN, PA 19428
`UNITED STATES
`Primary Email: jordan.lavine@flastergreenberg.com
`Secondary Email(s): eric.clendening@flastergreenberg.com,
`linda.ladzenski@flastergreenberg.com, krishna.jani@flastergreenberg.com
`215.279.9389
`
`Docket Number
`
`Registrations Subject to Cancellation
`
`Registration No.
`
`5968154
`
`Registration date
`
`01/21/2020
`
`Registrant
`
`CHDID, ROY
`SAMA TOWER, TRADE CENTER 1, 2309
`DUBAI, 50779
`ARAB EMIRATES
`
`Goods/Services Subject to Cancellation
`
`Class 035. First Use: 2019/02/01 First Use In Commerce: 2019/02/01
`All goods and services in the class are subject to cancellation, namely: On-line retail consignment
`stores featuring handbags
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 14(1) and 43(c)
`
`Registration No.
`
`6085415
`
`Registration date
`
`06/23/2020
`
`Registrant
`
`CHDID, ROY
`SAMA TOWER, TRADE CENTER 1, 2309
`DUBAI, 50779
`ARAB EMIRATES
`
`

`

`Goods/Services Subject to Cancellation
`
`Class 035. First Use: 2019/02/01 First Use In Commerce: 2019/02/01
`All goods and services in the class are subject to cancellation, namely: On-line retail consignment
`stores featuring handbags
`
`Grounds for Cancellation
`
`Priority and likelihood of confusion
`
`Trademark Act Sections 14(1) and 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 14(1) and 43(c)
`
`Marks Cited by Petitioner as Basis for Cancellation
`
`U.S. Registration
`No.
`
`1659761
`
`Registration Date
`
`10/08/1991
`
`Application Date
`
`09/21/1990
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VOGUE
`
`NONE
`
`Class 018. First use: First Use: 1990/01/00 First Use In Commerce: 1990/01/00
`tote bags
`
`U.S. Registration
`No.
`
`2701928
`
`Registration Date
`
`04/01/2003
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Application Date
`
`09/24/2001
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 1998/01/01 First Use In Commerce: 1998/01/01
`clothing, namely, T-shirts [ and sweatshirts ]
`
`U.S. Registration
`No.
`
`5655921
`
`Registration Date
`
`01/15/2019
`
`Word Mark
`
`VOGUE
`
`Application Date
`
`12/18/2012
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "VOGUE" in a stylized form.
`
`Class 018. First use: First Use: 2018/09/24 First Use In Commerce: 2018/09/24
`hand bags, totebags, luggage
`
`U.S. Registration
`No.
`
`5428664
`
`Registration Date
`
`03/20/2018
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Application Date
`
`07/24/2014
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "VOGUE" in uppercase letters in a stylized form.
`
`Class 018. First use: First Use: 2016/06/30 First Use In Commerce: 2016/06/30
`Handbags and wristlets
`
`U.S. Registration
`No.
`
`5520058
`
`Registration Date
`
`07/17/2018
`
`Word Mark
`
`Design Mark
`
`TEEN VOGUE
`
`Application Date
`
`05/05/2015
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 018. First use: First Use: 2018/01/01 First Use In Commerce: 2018/01/01
`tote bags
`
`U.S. Registration
`No.
`
`5413137
`
`Application Date
`
`07/24/2014
`
`

`

`Registration Date
`
`02/27/2018
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "VOGUE" in uppercase letters in a stylized form.
`
`Class 025. First use: First Use: 2017/08/15 First Use In Commerce: 2017/08/15
`Sweatshirts, hoodies, pajamas and shirts
`
`U.S. Registration
`No.
`
`5398198
`
`Registration Date
`
`02/06/2018
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Application Date
`
`06/22/2016
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "VOGUE" in a stylized typeface.
`
`Class 025. First use: First Use: 2017/08/15 First Use In Commerce: 2017/08/15
`Lingerie, pajamas, shirts and sweatshirts
`
`U.S. Registration
`No.
`
`4545079
`
`Registration Date
`
`06/03/2014
`
`Word Mark
`
`Design Mark
`
`TEEN VOGUE
`
`Application Date
`
`04/03/2012
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 025. First use: First Use: 2013/03/01 First Use In Commerce: 2013/03/01
`Apparel namely, pants, jogging pants, coats, dresses, t-shirts, jackets, jumpsuits
`
`

`

`and rompers, leggings, loungewear, hooded sweatshirts, shorts, skirts, sweat-
`ers, and tops
`
`U.S. Registration
`No.
`
`4234567
`
`Registration Date
`
`10/30/2012
`
`Word Mark
`
`Design Mark
`
`TEENVOGUE
`
`Application Date
`
`12/08/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 009. First use: First Use: 2012/01/31 First Use In Commerce: 2012/01/31
`[ Cases for smart phones, cell phones and hand-held electronic devices,
`namely,laptop computers and tablet computers ]
`Class 018. First use: First Use: 2012/01/31 First Use In Commerce: 2012/01/31
`Tote bags, handbags, backpacks and cosmetics bags
`
`U.S. Registration
`No.
`
`4964883
`
`Registration Date
`
`05/24/2016
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Application Date
`
`04/12/2013
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`The mark consists of the word "VOGUE" in a stylized form.
`
`Class 035. First use: First Use: 2012/08/01 First Use In Commerce: 2012/08/01
`Advertising; Promotional services, namely, promoting the goods and services of
`others via digital and mobile networks; E-commerce services, namely, facilitating
`e-commerce business transactions by processing electronic orders for pur-
`chasesof goods and services via a global computer network
`
`U.S. Registration
`No.
`
`3436616
`
`Registration Date
`
`05/27/2008
`
`Word Mark
`
`TEEN VOGUE
`
`Application Date
`
`06/09/2006
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2007/08/01 First Use In Commerce: 2007/08/01
`Promoting the goods and services of others by distribution and transmission of
`advertisements in the nature of audio, video, text messages and emails via wire-
`less and mobile devices
`Class 038. First use: First Use: 2007/08/01 First Use In Commerce: 2007/08/01
`Transmission of information through video and audio via digital networks and
`electronic communications networks
`Class 045. First use: First Use: 2007/08/01 First Use In Commerce: 2007/08/01
`Providing information about fashion viawireless mobile devices, satellite, cable
`and global computer networks
`
`U.S. Registration
`No.
`
`69530
`
`Registration Date
`
`06/16/1908
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Application Date
`
`01/06/1908
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 1892/12/17 First Use In Commerce: 1892/12/17
`[ A WEEKLY MAGAZINE ] * MAGAZINES *
`
`U.S. Registration
`No.
`
`125542
`
`Registration Date
`
`05/20/1919
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Application Date
`
`07/26/1918
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`
`NONE
`
`

`

`Mark
`
`Goods/Services
`
`Class U038 (International Class 009, 016, 028). First use: First Use: 1892/12/17
`First Use In Commerce: 1892/12/17
`[ SEMI-MONTHLY PUBLICATION ] * MAGAZINES *
`
`U.S. Registration
`No.
`
`504006
`
`Registration Date
`
`11/16/1948
`
`Application Date
`
`01/31/1948
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`VOGUE
`
`NONE
`
`Class 016. First use: First Use: 1892/12/17 First Use In Commerce: 1892/12/17
`MAGAZINE [ PUBLISHED TWENTY TIMES YEARLY ]
`
`U.S. Registration
`No.
`
`2568246
`
`Registration Date
`
`05/07/2002
`
`Word Mark
`
`Design Mark
`
`TEEN VOGUE
`
`Application Date
`
`05/01/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 016. First use: First Use: 2000/09/01 First Use In Commerce: 2000/09/01
`Periodic publications, namely a fashionand entertainment magazine geared to-
`ward a teen audience
`
`U.S. Registration
`No.
`
`3069976
`
`Registration Date
`
`03/21/2006
`
`Word Mark
`
`Design Mark
`
`VOGUE
`
`Application Date
`
`03/25/2005
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`NONE
`
`Goods/Services
`
`Class 044. First use: First Use: 2000/09/18 First Use In Commerce: 2000/09/18
`
`

`

`Providing information about beauty via a global computer network
`Class 045. First use: First Use: 2000/09/18 First Use In Commerce: 2000/09/18
`Providing information about fashion viaa global computer network
`
`Attachments
`
`76316168#TMSN.png( bytes )
`85805095#TMSN.png( bytes )
`86346731#TMSN.png( bytes )
`86983835#TMSN.png( bytes )
`86346680#TMSN.png( bytes )
`87976384#TMSN.png( bytes )
`85981470#TMSN.png( bytes )
`85192881#TMSN.png( bytes )
`85902451#TMSN.png( bytes )
`76661344#TMSN.png( bytes )
`71032106#TMSN.png( bytes )
`71112351#TMSN.png( bytes )
`76037530#TMSN.png( bytes )
`76634388#TMSN.png( bytes )
`Petition to Cancel REVOGUE.pdf(441528 bytes )
`
`Signature
`
`Name
`
`Date
`
`/jordan lavine/
`
`Jordan LaVine
`
`06/14/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`ADVANCE MAGAZINE
`PUBLISHERS, INC.,
`Petitioner,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`EVERYTHING VOGUE (California
`Partnership),
`
`
`
`
`
`
`
`
`
`
`Registrant.
`
`
`
`
`Petition No. [tbd]
`Re: Registration Nos. 5,968,154 and 6,085,415
`
`
`PETITION FOR CANCELLATION
`
`In the matter of Registration Nos. 5,968,154 and 6,085,415, issued January 21, 2020, and
`
`June 23, 2020, respectively, Advance Magazine Publishers, Inc. (“Petitioner”), a New York
`
`corporation whose address is One World Trade Center, New York, New York 10007, believes
`
`that it will be damaged if the registrations are allowed to subsist and hereby petitions to cancel
`
`the registrations. The grounds for cancellation are as follows.
`
`REGISTRANT’S MARKS
`
`1.
`
`According to the records of the U.S. Patent and Trademark Office, Registrant is a
`
`Lebanese individual with an address of Sama Tower, Trade Center 1, 2309 Dubai, UAE.
`
`2.
`
`Registrant owns Registration Nos. 5,968,154 and 6,085,415 for the mark
`
`“REVOGUE” in standard character and design formats, respectively, for “online retail
`
`consignment stores featuring handbags” (International Class 35), as evidenced by the records of
`
`the U.S. Patent and Trademark Office.
`
`
`7457514 v1
`
`

`

`
`
`3.
`
`Registrant’s alleged first date of use in United States commerce is identified as
`
`February 1, 2019.
`
`PETITIONER AND PETIONER’S “VOGUE” TRADEMARK
`
`4.
`
`Petitioner is an American media company owned by the descendants of S.I.
`
`Newhouse, Sr., Donald Newhouse, and S.I. Newhouse, Jr. Through its subsidiary, Condé Nast,
`
`Petitioner publishes such well-known publications as Vogue, Wired, GQ, and Vanity Fair,
`
`Allure, and Glamour.
`
`5.
`
`Petitioner and its predecessors have continuously used in commerce the trademark
`
`“VOGUE” since 1892. Founded in 1892, Petitioner's VOGUE magazine has become the nation's
`
`most widely recognized and revered fashion publication.
`
`6.
`
`Petitioner’s original use of the “VOGUE” trademark commerce was with
`
`magazines and that use has continued to the present, but Petitioner’s use in commerce of the
`
`“VOGUE” has expanded to include many other products and services, as further discussed
`
`herein.
`
`7.
`
`The U.S. edition of VOGUE magazine is read by millions of people each month
`
`both in print and through Petitioner's website, www.vogue.com, and is the most well-known
`
`fashion publication in the United States and the word.
`
`8.
`
`Petitioner’s U.S. digital assets for VOGUE receive over 50 million visitors each
`
`month, creating 5 billion impressions.
`
`9.
`
`In addition to its magazine and website, Petitioner uses its “VOGUE” trademarks
`
`across social media, such as Twitter, Facebook, Instagram and Pinterest.
`
`10.
`
`Further, via wholly owned subsidiaries or licensees, Petitioner publishes
`
`magazines and websites using the “VOGUE” trademarks internationally.
`
`7457514 v1
`
`2
`
`

`

`
`
`11.
`
`12.
`
`Petitioner’s “VOGUE” trademark is an inherently distinctive trademark.
`
`As a result of its longstanding and continuous use of “VOGUE” for a wide range
`
`of goods and services, the popularity of Petitioner's goods and services offered in connection
`
`with its “VOGUE” Marks, and its extensive advertising and promotion of its “VOGUE” brand,
`
`Petitioner's mark has acquired substantial goodwill and reputation and has become famous.
`
`PETITIONER’S TRADEMARK REGISTRATIONS FOR THE “VOGUE” TRADEMARK
`
`Petitioner owns multiple trademark registrations for “VOGUE” in the U.S. Patent
`
`13.
`
`and Trademark Office, as alleged in this proceeding, and as further discussed below.
`
`14. Most specific to this proceeding, Petitioner owns valid registrations for
`
`“VOGUE” in Classes 18 and/or 25, for goods related to the services in Class 35 identified in
`
`Registrant’s registrations, including Registration Nos. 1,659,761 issued in 1991, 2,701,928
`
`(issued in 2003), 5,655,921 issued in 2019, 5,428,664 issued in 2018, 5,520,058 issued in 2018,
`
`5,413,137 (issued in 2018), and 5,398,198 (issued in 2018).
`
`15.
`
`In addition, Petitioner has used and registered marks containing its mark
`
`“VOGUE” combined with other terms, such as “TEEN VOGUE,” “VOGUE 100,” “VOGUE
`
`BUSINESS,” “VOGUE VIP,” “VOGUE PATTERNS,” “VOGUE.COM” and “TEEN VOGUE
`
`ITGIRL,” in relation to a wide range of goods and services. In Classes 18 and/or 25, Petitioner
`
`owns Reg. Nos. 5,520,058, 4,545,079 and 5,680,969, and 4,234,567.
`
`16.
`
`Finally, Petitioner owns registrations in Class 35 that identify services that are
`
`closely related to the services identified in the registrations of Registrant. In Class 35, Petitioner
`
`owns Reg. Nos. 4,964,883, 4,964,884, 3,436,616,
`
`7457514 v1
`
`3
`
`

`

`
`
`COUNT I – PRIORITY AND LIKELIHOOD OF CONFUSION
`
`17.
`
`Petitioner has provided the goods and services identified in Registrant’s
`
`registrations in commerce in International Classes 18, 25 and 35, since prior to Registrant’s first
`
`alleged use of the mark.
`
`18.
`
`Petitioner owned registrations for “VOGUE” in Classes 18, 25 and/or 35 prior to
`
`Registrant’s registrations and Registrant’s alleged first date of use for its marks.
`
`19.
`
`20.
`
`Registrant cannot dispute Petitioner’s priority in the “VOGUE” mark.
`
`The respective marks are similar in sight, sound and meaning. In fact, Registrant’s
`
`marks incorporate Petitioner’s mark in its entirety, and appear to refer directly to Petitioner’s
`
`“VOGUE” mark, i.e., the term “Re” is understood to mean “Regarding” such that Registrants’
`
`marks leave the commercial impression “Regarding Vogue.”
`
`21.
`
`The services identified in Registrant’s registrations are highly similar to and
`
`overlap with the goods and services that Petitioner sells and provides under its “VOGUE”
`
`trademark. The respective products and services would be targeted to an overlapping class of
`
`purchasers through the same and similar channels of trade.
`
`22.
`
`Registrant’s “REVOGUE” and “REVOGUE (and Design)” marks as used in
`
`connection with the services identified in its registrations so resemble Petitioner’s “VOGUE”
`
`mark as used in connection with the goods and services sold under the “VOGUE” mark that it is
`
`likely to cause confusion, mistake or deception.
`
`23.
`
`If Registrant is permitted to maintain ownership of its registration for the
`
`“REVOGUE” trademarks for the services identified in the registrations herein sought to be
`
`cancelled, confusion of the trade and public is likely to result, such confusion resulting in
`
`damage and injury to Petitioner.
`
`7457514 v1
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`4
`
`

`

`
`
`24.
`
`Purchasers, potential purchasers and the relevant public, upon seeing Registrant’s
`
`“REVOGUE” marks used in connection with the services identified in its registrations would be
`
`likely to believe in error that such services are provided in association or affiliation with or under
`
`the sponsorship of or license from Petitioner.
`
`25.
`
`If Registrant is permitted to maintain ownership of the registrations for the
`
`“REVOGUE” marks for the services set forth in the registrations sought to be cancelled, persons
`
`familiar with the products of Petitioner provided under its “VOGUE” mark would be likely to
`
`mistakenly purchase Registrant’s services based upon the false belief that such services were
`
`sponsored by or provided in affiliation with or under the sponsorship of Petitioner.
`
`26.
`
`Furthermore, any defect, objection to or fault found with Registrant’s services
`
`provided under its “REVOGUE” marks would necessarily reflect on and seriously injure the
`
`reputation that Petitioner has established for its goods and services under its “VOGUE” mark.
`
`27.
`
`Petitioner further believes that said registrations, if permitted to remain in force,
`
`affords to Registrant the prima facie exclusive right to use the marks for the services identified in
`
`the Certificates of Registration for the marks, which prima facie right interferes with Petitioner’s
`
`rights its “VOGUE” mark, constituting a source of damage to Petitioner.
`
`COUNT II – DILUTION BY BLURRING
`
`28. Through Petitioner’s long use, considerable investment, and based upon the success
`
`of the products and services provided by Petitioner under the “VOGUE” trademark, Petitioner’s
`
`trademark has become famous for Petitioner’s products and services.
`
`29. Petitioner’s “VOGUE” trademark became famous its publications long before
`
`Registrant filed its applications for its “REVOGUE” trademarks and long before Registrant first
`
`used its marks.
`
`7457514 v1
`
`5
`
`

`

`
`
`30. Because Registrant’s registered marks incorporates the Petitioner’s “VOGUE”
`
`trademark, their continued registration is likely to trade on the considerable goodwill associated
`
`therewith and dilute its distinctiveness of Petitioner’s “VOGUE” mark.
`
`31. For the reasons stated above, Registrant’s continued registration and use of the
`
`marks shown in Registrations Nos. 5,968,154 and 6,085,415 should be cancelled under Section
`
`43(c) of the Trademark Act.
`
`WHEREFORE, Petitioner requests that Registration Nos. 5,968,154 and 6,085,415 for
`
`the marks “REVOGUE” and “REVOGUE (and Design)” be canceled and that this Petition to
`
`Cancel be granted.
`
`
`
`
`
`
`
`
`
`
`June 14, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`FLASTER GREENBERG P.C.
`
`s/Jordan LaVine/
`Jordan LaVine
`Eric Clendening
`Krishna Jani
`100 Front Street, Suite 100
`Conshohocken, PA 19428
`215.279.9389
`
`ATTORNEYS FOR PETITIONER
`
`7457514 v1
`
`6
`
`

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