throbber
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1286628
`
`Filing date:
`
`05/22/2023
`
`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
`
`Correspondence
`information
`
`1 Group, LLC dba StoveGuard
`
`LLC
`
`Citizenship
`
`Ohio
`
`6377 WEST 29TH STREET
`PARMA, OH 44134
`UNITED STATES
`
`NATHAN GUGLIOTTA, ESQ.
`ATTORNEY OF RECORD
`GUGLIOTTA & GUGLIOTTA, LPA
`P.O. BOX 506
`RICHFIELD, OH 44286
`UNITED STATES
`Primary email: trademarks@inventorshelp.com
`Secondary email(s): add-to-things-dqwmajglsqmyhtm2m59@things.email
`3302532225
`
`Registration subject to cancellation
`
`Registration no.
`
`4038130
`
`Registration date
`
`10/11/2011
`
`Register
`
`Registrant
`
`Principal
`
`JAZ Innovations, L.L.C.
`6555 CONVENT BLVD.
`SYLVANIA, OH 43560
`UNITED STATES
`
`Goods/services subject to cancellation
`
`Class 017. First Use: Jul 31, 2003 First Use In Commerce: Jul 31, 2003
`All goods and services in the class are subject to cancellation, namely: Sleeve made of low thermal
`mass, low rate of thermal conduction, fire resistant material that is secured around a front rail of a
`metal oven rack to inhibit burns by giving people time to pull their hands or arms away from the hot
`metal rail before a burn occurs
`
`Grounds for cancellation
`
`The mark is or has become generic
`
`Trademark Act Section 14(3)
`
`False suggestion of a connection with persons,
`living or dead, institutions, beliefs, or national
`symbols
`
`The registration is being used by, or with the per-
`mission of, the registrant so as to misrepresent
`the source of the goods or services on or in con-
`nection with which the mark is used
`
`Trademark Act Sections 14(3) and 2(a)
`
`Trademark Act Section 14(3)
`
`

`

`Marks cited by petitioner as basis for cancellation
`
`U.S. application
`no.
`
`97452742
`
`Application date
`
`06/10/2022
`
`Register
`
`Principal
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OVENGUARD
`
`NONE
`
`Class 011. First use: First Use: None First Use In Commerce: None
`Oven covers, namely, fitted liners for ovens; Oven liners, namely, fitted liners for
`ovens; Fabric covers for electric toasters; Fabric covers for electric toaster
`ovens; fitted covers for refrigerators; Cooking products, namely, toaster oven in-
`serts, namely, liners for electric toaster ovens in the nature of heat-transmitting
`containers for providing uniform heat and humidity during cooking; fitted covers
`for faucets; faucet covers, namely, child safe protective covers for bathtub
`spouts; fitted bath tub cover; fitted covers for showers; fitted liners for baths and
`showers; fixture covers, namely, light fixture covers, namely, lampshades; Cov-
`ers for household appliances, namely, fitted covers for refrigerators; liners and
`inserts for household appliances, namely, fitted liners for ovens; Splatter liners,
`namely, non-stick oven liners for catching spills; Splash liners for household ap-
`pliances, namely, non-stick oven liners for catching spills
`
`U.S. registration
`no.
`
`5444953
`
`Register
`
`Principal
`
`Registration date
`
`04/10/2018
`
`Application date
`
`06/04/2017
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STOVEGUARD
`
`The mark consists of The words "Stove" and "Guard" in a frame with rounded
`corners. the top part to the frame is red and the bottom part of the frame is
`black. The word "stove" uses a round stove great for the letter "O" and "O" is
`red. All the other letters are black.
`
`Class 021. First use: First Use: Dec 4, 2017 First Use In Commerce: Dec 4,
`2017
`Stove burner covers
`
`U.S. registration
`no.
`
`6254561
`
`Register
`
`Principal
`
`Registration date
`
`01/26/2021
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`STOVE GUARD
`
`NONE
`
`Application date
`
`12/17/2019
`
`Foreign priority
`date
`
`NONE
`
`Goods/services
`
`Class 011. First use: First Use: Dec 2, 2019 First Use In Commerce: Dec 2,
`
`

`

`2019
`Cooking products, namely, liners for conventional ovens in the nature of heat-
`transmitting containers for providing uniform heat and humidity during cooking;
`Disposable aluminum oven liners for catching spills
`Class 021. First use: First Use: Dec 4, 2017 First Use In Commerce: Dec 4,
`2017
`Stove burner covers
`
`U.S. registration
`no.
`
`6868017
`
`Register
`
`Principal
`
`Registration date
`
`10/04/2022
`
`Application date
`
`09/02/2021
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STOVE GUARD PREMIUM
`
`NONE
`
`Class 021. First use: First Use: Aug 15, 2022 First Use In Commerce: Aug 15,
`2022
`Stove burner covers
`
`U.S. registration
`no.
`
`6918440
`
`Register
`
`Principal
`
`Registration date
`
`12/06/2022
`
`Application date
`
`06/01/2022
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STOVEGUARD
`
`NONE
`
`Class 011. First use: First Use: Dec 2, 2019 First Use In Commerce: Dec 2,
`2019
`Cooking products, namely, liners for conventional ovens in the nature of heat-
`transmitting containers for providing uniform heat and humidity during cooking;
`Disposable aluminum oven liners for catching spills
`Class 021. First use: First Use: Dec 4, 2017 First Use In Commerce: Dec 4,
`2017
`Stove burner covers
`
`U.S. registration
`no.
`
`6936717
`
`Register
`
`Principal
`
`Registration date
`
`12/27/2022
`
`Application date
`
`03/16/2022
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STOVEGUARD LITE
`
`NONE
`
`Class 021. First use: First Use: Sep 1, 2021 First Use In Commerce: Sep 1,
`2021
`
`

`

`Stove burner covers
`
`Attachments
`
`OvenGuard Petition to Cancel Oven Rack Guard.pdf(98232 bytes )
`Exhibit A Oven Rack Guard.pdf(860857 bytes )
`Exhibit B Guard Definition Meaning Dictionary.pdf(220490 bytes )
`
`Signature
`
`/NJG/
`
`Name
`
`Date
`
`Nathan Gugliotta, Esq.
`
`05/22/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK
`
`TRIAL AND APPEAL BOARD
`
`1 Group, LLC
`
`Dba StoveGuard
`
`
`
`Petitioner,
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JAZ Innovations, L.L.C.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No.
`
`Registration No. 4,038,130
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respondent.
`
`Petition for Cancellation
`
`Petitioner 1 Group, LLC dba StoveGuard (“StoveGuard”) hereby submits its petition
`
`for cancellation against Respondent JAZ Innovations, L.L.C. (“JAZ”) as follows:
`
`Factual Allegations
`
`1. Petitioner owns its “StoveGuard” and related brands, including but not limited to the
`
`marks set forth in U.S. Registrations Nos. 5,444,953, 6,254,561, 6,868,017,
`
`6,918,440, 6,936,717 (the “StoveGuard Registrations”).
`
`2. Petitioner continually invests and expands its product offerings. As a result,
`
`Petitioner is the owner of U.S. Trademark Application Serial No. 97/452,742 for
`
`“OvenGuard” (the “OvenGuard Mark”) in International Class 11 for “Oven covers,
`
`namely, fitted liners for ovens; Oven liners, namely, fitted liners for ovens; Fabric
`
`covers for electric toasters; Fabric covers for electric toaster ovens; fitted covers for
`
`“Oven Rack Guard” Petition for Cancellation
`
`1
`
`

`

`refrigerators; Cooking products, namely, toaster oven inserts, namely, liners for
`
`electric toaster ovens in the nature of heat-transmitting containers for providing
`
`uniform heat and humidity during cooking; fitted covers for faucets; faucet covers,
`
`namely, child safe protective covers for bathtub spouts; fitted bath tub cover; fitted
`
`covers for showers; fitted liners for baths and showers; fixture covers, namely, light
`
`fixture covers, namely, lampshades; Covers for household appliances, namely, fitted
`
`covers for refrigerators; liners and inserts for household appliances, namely, fitted
`
`liners for ovens; Splatter liners, namely, non-stick oven liners for catching spills;
`
`Splash liners for household appliances, namely, non-stick oven liners for catching
`
`spills”.
`
`3. Within this Petition to Cancel, the StoveGuard Registrations together with the
`
`OvenGuard Mark may be referred to individually as a “StoveGuard Mark” and
`
`collectively as the “StoveGuard Marks”.
`
`4. Under its “StoveGuard”, “OvenGuard”, and related brands, Petitioner offers for sale
`
`—or plans to offer for sale—Stove burner covers, Cooking products, namely, liners
`
`for conventional ovens in the nature of heat-transmitting containers for providing
`
`uniform heat and humidity during cooking; Disposable aluminum oven liners for
`
`catching spills; Oven covers, namely, fitted liners for ovens; Oven liners, namely,
`
`fitted liners for ovens; Fabric covers for electric toasters; Fabric covers for electric
`
`toaster ovens; fitted covers for refrigerators; Cooking products, namely, toaster
`
`oven inserts, namely, liners for electric toaster ovens in the nature of heat-
`
`transmitting containers for providing uniform heat and humidity during cooking;
`
`“Oven Rack Guard” Petition for Cancellation
`
`2
`
`

`

`fitted covers for faucets; faucet covers, namely, child safe protective covers for
`
`bathtub spouts; fitted bath tub cover; fitted covers for showers; fitted liners for
`
`baths and showers; fixture covers, namely, light fixture covers, namely, lampshades;
`
`Covers for household appliances, namely, fitted covers for refrigerators; liners and
`
`inserts for household appliances, namely, fitted liners for ovens; Splatter liners,
`
`namely, non-stick oven liners for catching spills; Splash liners for household
`
`appliances, namely, non-stick oven liners for catching spills (collectively, the
`
`“Goods”).
`
`5. Petitioner has had exclusive right, title, and interest in the “StoveGuard” brand since
`
`its registration on April 10, 2018, and has used the same in commerce continually
`
`since at least as early as December 04, 2017.
`
`6. The StoveGuard Marks have acquired distinctiveness in the relevant industry, with
`
`consumers and professionals alike. The “StoveGuard” brand has become extremely
`
`well known and renown within its specific industry and with its customers, and has
`
`come to represent high quality stove and oven accessories emanating from
`
`Petitioner.
`
`7. Respondent owns U.S. Trademark Registration No. 4,038,130 for
`
`“OvenRackGuard” (the “Adverse Mark”) covering “Sleeve[s] made of low thermal
`
`mass, low rate of thermal conduction, fire resistant material that is secured around a
`
`front rail of a metal oven rack to inhibit burns by giving people time to pull their
`
`hands or arms away from the hot metal rail before a burn occurs” in class 017 (the
`
`“Adverse Goods”).
`
`“Oven Rack Guard” Petition for Cancellation
`
`3
`
`

`

`8. Petitioner was unaware of the Adverse Mark until it was cited against the
`
`OvenGuard Mark’s application with the USPTO, approximately August 17, 2022.
`
`9. The Adverse Mark and its use in commerce is likely to cause confusion with the
`
`StoveGuard Marks.
`
`10. Upon information and belief, the Adverse Mark represents a commonly used phrase
`
`to depict a genus or type of the Adverse Goods, rather than a particular product
`
`itself.
`
`11. Additionally and/or alternatively, and upon information and belief, the Adverse Mark
`
`is merely descriptive of the Adverse Goods.
`
`12. Upon information and belief, Respondent’s does not use the Adverse Mark as a
`
`brand name of any particular product, but rather as a generic and/or descriptive
`
`term for the Adverse Goods.
`
`13. Petitioner uses “StoveGuard” as a trade name for its corporate entity.
`
`14. Upon information and belief, Respondent’s use and continued registration of the
`
`Adverse Mark is likely to misrepresent the source of its goods as coming from
`
`Petitioner itself.
`
`15. Upon information and belief, Respondent’s use and continued registration of the
`
`Adverse Mark is likely to create a false association and/or a false suggestion of a
`
`connection with Petitioner itself.
`
`“Oven Rack Guard” Petition for Cancellation
`
`4
`
`

`

`Count One
`(Misrepresentation of Source)
`
`16. Petitioner restates every statement made within this document, whether above or
`
`below, as if each is fully re-written herein.
`
`17. TBMP §309.03(c)(1)(15) states that a ground for cancellation of a registered mark at
`
`any time is that the “defendant has used its mark so as to misrepresent the source
`
`of its goods or services.”
`
`18. Here, the StoveGuard Marks and Petitioner’s brand have been used in commerce
`
`continually. Throughout that time, the StoveGuard brand and the StoveGuard Marks
`
`have come to acquire distinctiveness in the relevant industry as well as having
`
`become extremely well known and renown within its specific industry and with its
`
`customers, and is associated with Petitioner, its corporate identity, and its high
`
`quality kitchen accessories, products, and supplies.
`
`19. The Adverse Mark while not identical, is clearly designed specifically to “trade on
`
`the goodwill and reputation of” Petitioner, as it is formatted confusingly similar to the
`
`StoveGuard branded goods and the products and services, while not identical,
`
`similarly fall within the kitchen products industry, and thus travel in similar channels
`
`of trade to the exact same consumer base. See McDonnell Douglas Corporation v.
`
`National Data Corporation, 228 USPQ 45, 47 (TTAB 1985); see also McCarthy, J.
`
`Thomas, 3 McCarthy on Trademarks and Unfair Competition, § 20:60 (4th ed.
`
`2007) (“A cancellation claim for misrepresentation under §14(3) requires a pleading
`
`that registrant deliberately sought to pass off its goods as those of petitioner.”).
`
`“Oven Rack Guard” Petition for Cancellation
`
`5
`
`

`

`20. As such, Petitioner has a good faith belief, as any reasonable observer certainly
`
`would, that its StoveGuard Marks’ long-time use in interstate commerce, extremely
`
`well known nature, and acquired distinctiveness of its StoveGuard brand in the
`
`relevant industry, similarities of the word marks “StoveGuard” and “Oven Rack
`
`Guard”, and highly similar industry and identical consumer base, establishes clear
`
`evidence on its face that Respondent’s continued use and registration of the
`
`Adverse Mark is intended to trade off of the goodwill of Petitioners’ highly respected
`
`and extremely well known StoveGuard Marks and associated brands.
`
`21. As such, Petitioner has a good faith belief that Respondent’s continued use and
`
`registration of the Adverse Mark is done “so as to misrepresent the source of its
`
`goods or services” as specifically coming from and/or being associated with
`
`Petitioner.
`
`22. As a result of Respondent’s clear attempts to trade off of the goodwill and
`
`reputation of Petitioner’s renowned and extremely well known StoveGuard Marks,
`
`the Board should cancel the Adverse Mark’s registration under TMEP §309.03(c)(1)
`
`(15).
`
`Count Two
`(False Association)
`
`23. Petitioner restates every statement made within this document, whether above or
`
`below, as if each is fully re-written herein.
`
`24. TBMP § 309.03(c)(1)(3) provides, as grounds for cancellation of a federal
`
`registration at any time, that “defendant’s mark false suggests a connection with
`
`“Oven Rack Guard” Petition for Cancellation
`
`6
`
`

`

`plaintiff’s name or identity”. See also, e.g., University of Notre Dame du Lac v. J.C.
`
`Gourmet Food Imports Co. Inc., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.1983);
`
`Boston Red Sox Baseball Club L.P. v. Sherman, 88 USPQ2d 1581, 1593 (TTAB
`
`2008); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d
`
`1435 (TTAB 1996); Greyhound Corp. v. Both Worlds Inc., 6 USPQ2d 1635 (TTAB
`
`1988); Buffett v. Chi Chi’s, Inc., 226 USPQ 428 (TTAB 1985); See also Nike, Inc. v.
`
`Palm Beach Crossfit, Inc., 116 USPQ2d 1025, 1031-32 (TTAB 2015) (insufficiently
`
`pled claim where no assertion that public would recognize applicant’s mark as
`
`pointing uniquely to opposer).
`
`25. As has been previously established, Respondent’s continued use and registration of
`
`the Adverse Mark has been purposefully done with the intent to trade off of the
`
`goodwill and reputation that Petitioner has enjoyed with respect to its long-held
`
`StoveGuard Marks and associated brands.
`
`26. Similarly, the continued use and registration of the Adverse Mark within the same
`
`industry falsely suggests a connotation or connection with Petitioner’s brand
`
`identity, which is substantially similar to the corporate name itself, and therefore with
`
`Petitioner itself.
`
`27. Additionally, Respondent’s continued use and registration of the Adverse Mark
`
`within the same industry and to the same consumer base of pet owners and animal
`
`lovers falsely suggests a connotation or connection with Petitioner.
`
`28. Therefore, the Adverse Mark falsely suggests to consumers, competitors, and
`
`otherwise, a connection or association with Petitioner, the StoveGuard Marks, and/
`
`“Oven Rack Guard” Petition for Cancellation
`
`7
`
`

`

`or the StoveGuard brand at large. As such, the law is clear that cancellation of the
`
`Adverse Mark is proper and prudent.
`
`Count Three
`(Likelihood of Confusion)
`
`29. Petitioner restates every statement made within this document, whether above or
`
`below, as if each is fully re-written herein.
`
`30. TBMP § 309.03(c)(1)(1) sets forth, as grounds for cancellation or opposition, that
`
`“defendant’s mark so resembles a mark registered in the Office, or a mark or trade
`
`name previously used in the United States by another and not abandoned, as to be
`
`likely, when used on or in connection with the goods or services of the defendant,
`
`to cause confusion, or to cause mistake, or to deceive.” See also Palm Bay Imports
`
`Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
`
`USPQ2d 1689, 1691 (Fed. Cir. 2005); Shen Manufacturing Co. v. Ritz Hotel Ltd.,
`
`393 F.3d 1238, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004); In re Majestic Distilling
`
`Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); In re Dixie
`
`Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997);
`
`Opryland USA Inc. v. The Great American Music Show Inc., 970 F.2d 847, 23
`
`USPQ2d 1471, 1473 (Fed. Cir. 1992); Time Warner Entertainment Co. v. Jones, 65
`
`USPQ2d 1650 (TTAB 2002); Omaha Steaks International, Inc. v. Greater Omaha
`
`Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1691-95 (Fed. Cir. 2018) (Board
`
`improperly broadened analysis of third-party use to encompass third-party marks
`
`on clearly dissimilar goods and improperly discounted certain evidence of fame);
`
`“Oven Rack Guard” Petition for Cancellation
`
`8
`
`

`

`First Niagara Insurance Brokers Inc. v. First Niagara Financial Group Inc., 476 F.3d
`
`867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (claim of prior intrastate use); Ricardo
`
`Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *8-9 (TTAB 2019)
`
`(Board declined to apply doctrine of foreign equivalents to given names and found
`
`marks dissimilar); Primrose Retirement Communities, LLC v. Edward Rose Senior
`
`Living, LLC, 122 USPQ2d 1030, 1040 (TTAB 2016) (dismissing opposition; third
`
`party evidence demonstrates weakness of mark); Wise F&I, LLC; et al. v. Allstate
`
`Insurance Co., 120 USPQ2d 1103, 1109 (TTAB 2016) (family of marks may have
`
`different owners if there is unity of control); Brown Shoe Co. v. Robbins, 90
`
`USPQ2d 1752, 1756 (TTAB 2009) (doctrine of foreign equivalents inapplicable but
`
`likelihood of confusion found); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020,
`
`1023 (TTAB 2009) (earliest date respondent may rely upon is the filing date of its
`
`underlying application in absence of evidence of earlier use; petitioner must show
`
`earlier common law use in absence of registration); Boston Red Sox Baseball Club
`
`LP v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008) (dissimilarity of marks
`
`controlling issue in likelihood of confusion analysis); Apple Computer v. TVNET.net
`
`Inc., 90 USPQ2d 1393 (TTAB 2007); Life Zone Inc. v. Middleman Group Inc., 87
`
`USPQ2d 1953, 1959 (TTAB 2008) (although opposer failed to make its registrations
`
`of record, its burden is to demonstrate that it owns a trademark, which was used
`
`prior to applicant’s mark, and not abandoned); Black & Decker Corp. v. Emerson
`
`Electric Co., 84 USPQ2d 1482, 1490 (TTAB 2007) (family of marks); Jansen
`
`Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1107 (TTAB 2007) (determination of
`
`“Oven Rack Guard” Petition for Cancellation
`
`9
`
`

`

`likelihood of confusion based on an analysis of all facts in evidence); Christian
`
`Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1565
`
`(TTAB 2007) (several factors considered); Fort James Operating Co. v. Royal Paper
`
`Converting Inc., 83 USPQ2d 1624 (TTAB 2007)(design marks compared); Miss
`
`Universe L.P., v. Community Marketing, Inc., 82 USPQ2d 1562, 1566 (TTAB 2007)
`
`("Our likelihood of confusion determination under Section 2(d) is based on an
`
`analysis of all of the facts in evidence that are relevant to the factors bearing on the
`
`likelihood of confusion issue (the du Pont factors)"); and Kohler Co. v. Baldwin
`
`Hardware Corp., 82 USPQ2d 1100, 1113 (TTAB 2007) (doubt resolved in favor of
`
`prior user).
`
`31. The Adverse Mark is so similar to the StoveGuard Marks, the goods and services
`
`travel within the same relevant industry as Petitioner’s to the same consumer base
`
`of kitchen appliance owners and/or users, utilizing the same channels of trade.
`
`32. The relevant consumer base is likely to be confused and assume that the
`
`Respondent’s goods and services emirate from, or are otherwise endorsed by,
`
`Petitioner.
`
`33. As such, the law is clear that cancellation of the Adverse Mark is proper and
`
`prudent.
`
`Count Four
`(The Adverse Mark is Generic)
`
`34. Petitioner restates every statement made within this document, whether above or
`
`below, as if each is fully re-written herein.
`
`“Oven Rack Guard” Petition for Cancellation
`
`10
`
`

`

`35. 15 U.S.C. §1064(3) sets forth, as grounds for cancellation or opposition at any time,
`
`that “the registered mark [is or] becomes the generic mark for the goods ... for
`
`which it is registered.”
`
`36. The Federal Circuit has solidified the theory that multiple generic terms can exist for
`
`the same products, holding that "even if 'online mattress store' is a generic term,
`
`that does not prevent MATTRESS.COM from also being a generic term for the
`
`same services." See In re 1800Mattress.Com IP, LLC, 586 F.3d 1359 (Fed. Cir.
`
`2009). “Instead, any term that the relevant public understands to refer to the genus
`
`of "online retail store services in the field of mattresses, beds, and bedding" is
`
`generic.” Id.
`
`37. Generic terms are common names that the purchasing public understands primarily
`
`as describing the genus, rather than the species, of goods or services being sold.
`
`See In re Merrill Lynch, Pierce, Fenner Smith, Inc., 828 F.2d 1567, 1569-70, 4
`
`USPQ2d 1141, 1142 (Fed. Cir. 1987); H. Marvin Ginn Corp. v. Int'l Ass'n of Fire
`
`Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986).”
`
`38. When a potential mark is a "compound word”, the mark can be found generic “by
`
`producing evidence that each of the constituent words is generic, and that "the
`
`separate words joined to form a compound have a meaning identical to the
`
`meaning common usage would ascribe to those words as a compound.”” In re
`
`Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001) (citing In re Gould
`
`Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir. 1987)).
`
`“Oven Rack Guard” Petition for Cancellation
`
`11
`
`

`

`39. The present Adverse Mark is "Oven Rack Guard" for the Adverse Goods, which
`
`Respondent itself describes generically as "oven rack protectors.". See a true and
`
`accurate copy of Respondent’s website, https://www.jazinnovations.com/oven-
`
`rack-guard-burn-protection/, attached as “Exhibit A”, accessed by undersigned
`
`counsel on May 22, 2023.
`
`40. Dictionary.com defines the word “guard”, in relevant part, as meaning “a device,
`
`appliance, or attachment that prevents injury, loss, etc.” See a true and accurate
`
`copy of the dictonary.com definition for “guard”, available at https://
`
`www.dictionary.com/browse/guard and accessed by undersigned counsel on May
`
`22, 2023, attached as “Exhibit B”.
`
`41. It is clear, then that “guard”—in the context of the Adverse Mark—is a generic term
`
`meaning “a device… or attachment that prevents injury”.
`
`42. The term "guard" is substantially similar to "protector," which Respondent itself uses
`
`as a generic term to describe the genus of the Adverse Goods.
`
`43. It is therefore clear that the Adverse Mark itself, when taken in connection with the
`
`compound mark "Oven Rack Guard," is generic and has the exact same meaning
`
`as common usage would ascribe to those words as a compound. See In re Dial-A-
`
`Mattress Operating Corp.
`
`44. As such, the Adverse Mark is prima facie generic when used to describe the
`
`Adverse Goods, and thus the Board should properly cancel the Adverse Mark’s
`
`registration.
`
`“Oven Rack Guard” Petition for Cancellation
`
`12
`
`

`

`Prayer for Relief
`
`
`
`For the foregoing reasons, Petitioner respectfully requests that the Board cancel
`
`Respondent’s registration for the Adverse Mark, as is appropriate and prudent under
`
`relevant law.
`
`Respectfully submitted,
`
`Nathan Gugliotta, Esq.
`John Gugliotta, P.E., Esq.
`Gugliotta & Gugliotta, LPA
`P.O. Box 506
`Richfield, OH 44286
`Phone: (330) 331-9455, ext. 1004
`trademarks@inventorshelp.com
`
`Counsel for Petitioner
`
`“Oven Rack Guard” Petition for Cancellation
`
`13
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`
`
`HOMEHOME
`
`
`
`ABOUTABOUT
`
`
`
`PRODUCTSPRODUCTS
`
`
`
`RECIPESRECIPES
`
`
`
`CONTACTCONTACT
`
`Oven Rack Guard® |Oven Rack Guard® |
`
`
`Serious Burn ProtectionSerious Burn Protection
`
`The Best Oven Rack Oven RackThe Best Oven Rack Oven Rack
`
`
`GuardsGuards
`
` How many times have you reached into your
`oven and accidentally brushed your arm against
`a hot oven rack? Of course, it makes sense to
`slide the rack out of the oven but it’s easy to get
`distracted and forget.
`
`
`
`Prevent Oven-Related AccidentsPrevent Oven-Related Accidents
`
`Cooking at home can be a fun and rewarding
`
`experience, but it’s important to stay safe in
`
`the kitchen. One common safety hazard is an
`
`accidental burn from touching hot oven racks.
`
`
`
`
`
`
`
`What Are Oven Rack Guards?What Are Oven Rack Guards?
`
`Buy on Amazon
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 1 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`Oven Rack Guards are heat-resistant ovenoven
`
`
`
`rack protectorsrack protectors that fit over the front edge
`
`of your oven rack to protect you or anyone in
`
`your home from accidentally touching or
`
`brushing against a hot oven rack.
`
`
`
`Safety Forever When You CookSafety Forever When You Cook
`
`If you have elderly or handicapped people in
`
`your home, oven safety must be a priority.
`
`And kids curious about what’s for dinner may
`
`sneak a peek inside the oven while it’s still on
`
`and accidentally touch a hot oven rack! There
`
`are many di"erent things to watch for to
`
`ensure safety in your kitchen, especially in a
`
`busy home. Why take a chance on burns from
`
`your oven or oven broiler?
`
`
`
`Protects Against Oven BurnsProtects Against Oven Burns
`
`The Oven Rack Guard® provides serious burn
`
`protection, so you can focus on cooking,
`
`baking and preparing your meals without
`
`worrying about oven accidents.
`
`
`
`Easy To Use Oven ProtectionEasy To Use Oven Protection
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 2 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`Oven Rack Guards are easy to use and fit over
`
`the front edge of oven racks of most standard
`
`ovens.
`
`Our oven rack protectors are a great gift for
`
`new homeowners, young cooks or anyone
`
`else who wants to protect themselves from
`
`accidental burns while using the oven for
`
`cooking or baking at home.
`
`
`
`Our oven rack protectorsoven rack protectors are made from
`
`Nomex fabric, originally developed to protect
`
`firefighters from the heat of flames and
`
`designed to withstand extreme temperatures.
`
`This unique material protects by slowing the
`
`transfer of heat.
`
`
`
`18 Inches In Length18 Inches In Length
`
`Unlike other oven rack products, the original
`
`Oven Rack Guard® by JAZ Innovations is a full
`
`18 inches long so that more of the edge of
`
`each oven rack shelf is covered. Installation is
`
`easy, just use the secure snaps. And Oven
`
`Rack Guards are safe for you to leave them in
`
`the oven on your oven racks. And when you
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 3 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`want to clean them, just unsnap and toss
`
`them in the wash. Safe, convenient, easy to
`
`use and they’re a"ordable, too! Protect your
`
`family against oven rack burns with the Oven
`
`Rack Guard® Serious Burn Protection from
`
`JAZ Innovations!
`
`
`
`Fits Standard-Sized Oven RacksFits Standard-Sized Oven Racks
`
`-Our Oven Rack Guard® oven rack protectors
`
`are made from Nomex fabric, which was
`
`originally developed to protect firefighters
`
`from the heat of flames and designed to
`
`withstand extreme temperatures. This unique
`
`material protects by slowing the transfer of
`
`heat. Maximum quality for maximum oven
`
`protection!
`
`-Unlike other kitchen products the original,
`
`the Oven Rack Guard® by JAZ Innovations is a
`
`full 18 inches long so that more of the edge of
`
`each rack is covered. Installation is easy, just
`
`use the secure snaps. And Oven Rack Guards
`
`are safe for you to leave them in the oven.
`
`And when you want to clean your oven rack
`
`guards, just unsnap and toss them in the
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 4 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`wash.
`
`– HEAT RESISTANT – SAFE UP TO 500⁰F (260⁰C).
`
`Our heat-resistant material is safe up to
`
`500⁰F/260⁰C, which means you can use them
`
`for warming food and keeping it warm, as well
`
`as baking or roasting.
`
`Oven Rack Guards – The EasyOven Rack Guards – The Easy
`
`
`AnswerAnswer
`
`– EASY TO INSTALL – They’re easy to install in
`
`your oven. Just snap them on and unsnap to
`
`remove.
`
`– CONVENIENT TO USE – You can keep them
`
`in your oven between uses.
`
`-MACHINE WASHABLE – We know that
`
`sometimes you need to clean up fast, that’s
`
`why our oven guards are machine washable,
`
`making cleaning easy! Just throw them in the
`
`washing machine and then tumble dry on low
`
`heat. No worry and no mess!
`
`
`
`Superior Safety In Your KitchenSuperior Safety In Your Kitchen
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 5 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`Fits all standard oven racks.
`
`Massive 18-inches in length so they
`
`cover more of the wire racks of your
`
`oven rack
`
`Heat Resistant – Safe up to 500⁰F (260⁰C).
`
`Easy to install on your oven rack. Snap
`
`the rack covers on and unsnap to
`
`remove them from your oven rack.
`
`Convenient to use. They’re even safe to
`
`keep in your oven between uses.
`
`Cleaning Is Easy. Oven Rack Guards are
`
`machine washable (just tumble dry on
`
`low).
`
`One Oven Rack Guard® per pack.
`
`Keep your loved ones safe while cooking with
`
`the Oven Rack Guard® from JAZ Innovations.
`
`Order your Oven Rack Guard® by clicking the
`
`banner below!
`
`
`
`Reviews For Oven Rack GuardsReviews For Oven Rack Guards
`
`Read what others have to say about Oven
`
`Rack Guards from JAZ Innovations
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 6 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`Reviews For Oven Rack Guards
`

`
`
`
`Superior Safety In Your KitchenSuperior Safety In Your Kitchen
`
`Fits all standard oven racks.
`
`Massive 18” in length so it covers more
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 7 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`of your oven rack
`
`Heat Resistant – Safe up to 500⁰F/260⁰C.
`
`Easy to install. Snap them on and
`
`unsnap to remove.
`
`Convenient to use. They’re even safe to
`
`keep in your oven between uses.
`
`Easy to clean.  Machine washable (just
`
`tumble dry on low).
`
`One oven guard per package.
`
`Watch Our Video And See The Superior Performance In Oven Safety
`By The Originators: JAZ Innovations
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 8 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Protection | JAZ Innovations
`
`5/22/23, 5:19 PM
`
`Buy On Amazon
`
`https://www.jazinnovations.com/oven-rack-guard-burn-protection/
`
`Page 9 of 10
`
`

`

`Oven Rack Guard® - Serious Burn Pro

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