ESTTA Tracking number:
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`ESTTA1364711
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`Filing date:
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`06/12/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Petition for Cancellation
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`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
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`Petitioner information
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`Name
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`Entity
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`Address
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`C. R. Bard, Inc.
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`Corporation
`
`1 BECTON DRIVE
`FRANKLIN LAKES, NJ 07417
`UNITED STATES
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`Incorporated or
`registered in
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`New Jersey
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`Attorney informa-
`tion
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`REBECCAH GAN
`MUNCY, GEISSLER, OLDS & LOWE, P.C.
`125 S. ROYAL ST.
`ALEXANDRIA, VA 22314
`UNITED STATES
`Primary email: rgan@mg-ip.com
`Secondary email(s): rsb@mg-ip.com, nmd@mg-ip.com, mailroom@mg-ip.com
`703-621-7140 ext 170
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`Docket no.
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`Registration subject to cancellation
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`Registration no.
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`5754223
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`Registration date
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`05/21/2019
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`Register
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`Registrant
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`Principal
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`WANG WEI
`PING LE YUAN CUN 100, CHAOYANG DISTRICT
`BEIJING, 100124
`CHINA
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`Goods/services subject to cancellation
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`Class 010. First Use: May 4, 2014 First Use In Commerce: May 4, 2014
`All goods and services in the class are subject to cancellation, namely: Atomizers sold empty for
`medical use; Blood testing apparatus; Cases fitted for medical instruments; Cupping glasses; Electric
`acupuncture instruments; Hearing aids for the deaf; Heart rate monitoring apparatus; Masks for use
`by medical personnel; Massage apparatus and instruments; Orthodontic appliances; Orthopedic ap-
`paratus and instruments for diagnostic and therapeutic use; Respirators for artificial respiration; Sop-
`orific pillows for insomnia; Sphygmomanometers; Stethoscopes; Thermometers for medical pur-
`poses; Ultraviolet lamps for medical purposes; Vibromassage apparatus; Electronic stimulation ap-
`paratus for nerves, muscles, skin for physical therapy purposes; Manually-operated exercise equip-
`ment for physical therapy purposes; Oxygen masks for medical use; Surgical apparatus and instru-
`ments for medical, dental or veterinary use; Surgical masks; Surgical and medical apparatus and in-
`struments for use in general surgery; Surgical and medical apparatus and instruments for use in or-
`thopedic surgery; Surgical and medical apparatus and instruments for use in orthopedic surgery
`
`Grounds for cancellation
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`

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`Abandonment
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`Mark never used in commerce
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`Fraud on the USPTO
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`Trademark Act Section 14(3)
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`Trademark Act Section 14(6)
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`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
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`Attachments
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`Petition for Cancellation-ELERA-5754223.pdf(316900 bytes )
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`Signature
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`/rgan/
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`Name
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`Date
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`Rebeccah Gan
`
`06/12/2024
`
`

`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`C. R. BARD, INC.,
`
`
`Petitioner,
`
`
`
`v.
`
`
`WANG WEI,
`
`
`Respondent.
`
`
`
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`Cancellation No. _________
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`Registration No. 5,754,223
`
`
`Mark:
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`
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`PETITION FOR CANCELLATION
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`C. R. Bard, Inc. (hereinafter referred to as the “Petitioner”) is a corporation duly
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`organized in the State of New Jersey, with its principal place of business located at: 1 Becton
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`Drive, Franklin Lakes, New Jersey 07417, United States.
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`Wang Wei (hereinafter also referred to as the “Respondent”) is an individual and citizen
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`of China, with their record-identified address as: Ping Le Yuan Cun 100, Chaoyang District,
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`Beijing, 100124, China.
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`Petitioner believes that it is and will continue to be damaged by the continued registration
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`of U.S. Trademark Registration No. 5,754,223 for the
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` mark, which is currently
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`registered for goods in International Class 10 (hereinafter also referred to as the “Petitioned
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`Mark”); and hereby petitions the Trademark Trial and Appeal Board to cancel the same.
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`In support of this Petition, Petitioner, through counsel, alleges as follows:
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`
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`Petition for Cancellation - U.S. Registration No. 5,754,223
`Page 1 of 7
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`FACTUAL BACKGROUND
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`1.
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`Petitioner is the owner of U.S. Trademark Application Serial No. 98/053,404 for the
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`“ELYRA” mark, in standard characters, filed in the USPTO on June 21, 2023, for the following
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`goods (as currently in the record): “Surgical and medical devices and instruments; surgical and
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`medical devices and instruments, namely, medical and surgical lasers; surgical and medical
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`devices and instruments, namely, pulse generators; surgical and medical devices and instruments
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`with embedded operating system software; laser fibers for medical and surgical purposes, none
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`of the foregoing for laboratory use, and parts and fittings therefor,” in International Class 10
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`(hereinafter referred to as the “Petitioner’s Mark”). Petitioner’s Mark was filed under the intent
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`to use filing basis, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
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`2.
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`To the best of Petitioner’s knowledge, Respondent is the record owner of U.S. Trademark
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`Registration No. 5,754,223 for the
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` mark, which is currently registered for the
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`following goods: “Atomizers sold empty for medical use; Blood testing apparatus; Cases fitted
`
`for medical instruments; Cupping glasses; Electric acupuncture instruments; Hearing aids for the
`
`deaf; Heart rate monitoring apparatus; Masks for use by medical personnel; Massage apparatus
`
`and instruments; Orthodontic appliances; Orthopedic apparatus and instruments for diagnostic
`
`and therapeutic use; Respirators for artificial respiration; Soporific pillows for insomnia;
`
`Sphygmomanometers; Stethoscopes; Thermometers for medical purposes; Ultraviolet lamps for
`
`medical purposes; Vibromassage apparatus; Electronic stimulation apparatus for nerves,
`
`muscles, skin for physical therapy purposes; Manually-operated exercise equipment for physical
`
`therapy purposes; Oxygen masks for medical use; Surgical apparatus and instruments for
`
`medical, dental or veterinary use; Surgical masks; Surgical and medical apparatus and
`
`instruments for use in general surgery; Surgical and medical apparatus and instruments for use
`
`Petition for Cancellation - U.S. Registration No. 5,754,223
`Page 2 of 7
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`in orthopedic surgery; Surgical and medical apparatus and instruments for use in orthopedic
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`surgery,” in International Class 10. This mark registered in the USPTO on May 21, 2019, with
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`a constructive first use date of October 26, 2016, and with an alleged first use in U.S. commerce
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`date of at least as early as May 4, 2014; under Section 1(a) of the Trademark Act, 15 U.S.C. §
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`1051(a).
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`3.
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`On March 9, 2024, Petitioner was emailed a Non-Final Office Action refusing registration
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`of Petitioner’s Mark due to, inter alia, a likelihood of confusion with the mark identified in U.S.
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`Trademark Registration No. 5,754,223.
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`COUNT ONE: ABANDONMENT
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`4.
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`Petitioner re-alleges and incorporates herein by reference the allegations in paragraphs 1-
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`3 above, as if fully set forth herein.
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`5.
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`As grounds for cancellation of the Petitioned Mark, Petitioner alleges, upon information
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`and belief, that Respondent has abandoned the Petitioned Mark for all of the registered goods in
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`International Class 10.
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`6.
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`Upon information and belief, Respondent has abandoned the Petitioned Mark, by
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`discontinuing and not having bona fide use of the Petitioned Mark in U.S. interstate commerce
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`for a period of at least three consecutive years since registration, with no objective indicia of
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`intent to resume bona fide use, in connection with any of the registered goods; and the Petitioned
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`Mark has lost all capacity as a source indicator for Respondent’s registered goods.
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`7.
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`Upon information and belief, Respondent does not currently have any bona fide use of
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`the Petitioned Mark in U.S. commerce to support its original registration, in connection with any
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`of the currently registered goods.
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`Petition for Cancellation - U.S. Registration No. 5,754,223
`Page 3 of 7
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`8.
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`Petitioner’s research has uncovered the following factual basis for its claims. All
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`allegations made upon information and belief may be proven with information solely within
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`control of Respondent:
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`a. Petitioner’s search of the relevant marketplace did not show the registered goods
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`being used in U.S. interstate commerce by Respondent under the Petitioned Mark.
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`b. Petitioner’s search of the relevant social media and websites did not yield advertising
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`for the Petitioned Mark in connection with the registered goods.
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`9.
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`Accordingly, the Petitioned Mark should be cancelled, pursuant to TBMP §§ 307.01 and
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`309.03(c)(1)(13) (2023), and 15 U.S.C. § 1064(3).
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`COUNT TWO: LACK OF BONA FIDE USE IN COMMERCE
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`10.
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`Petitioner re-alleges and incorporates herein by reference the allegations in paragraphs 1-
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`9 above, as if fully set forth herein.
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`11.
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`Upon information and belief, Respondent has never had any bona fide use of the
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`Petitioned Mark in U.S. interstate commerce as of the application filing date for its original 15
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`U.S.C. § 1051(a) application, on or in connection with any of the goods listed in International
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`Class 10 of Respondent’s original application for the Petitioned Mark.
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`12.
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`The three-year period following the date of registration having now passed, upon
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`information and belief, Respondent has never had any bona fide use of the Petitioned Mark in
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`U.S. interstate commerce to support its original registration, on or in connection with any of the
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`goods recited in International Class 10 of the Petitioned Mark.
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`13.
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`Upon information and belief, Respondent does not currently have any bona fide use of
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`the Petitioned Mark in U.S. interstate commerce to support its original registration, on or in
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`connection with any of the goods recited in International Class 10 of the Petitioned Mark.
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`Petition for Cancellation - U.S. Registration No. 5,754,223
`Page 4 of 7
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`14.
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`Accordingly, the Petitioned Mark should be cancelled, pursuant to TBMP §§ 307.03 and
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`309.03(c)(1)(28) (2023), and 15 U.S.C. § 1064(6).
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`COUNT THREE: FRAUD
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`15.
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`Petitioner re-alleges and incorporates herein by reference the allegations in paragraphs 1-
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`14 above, as if fully set forth herein.
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`16.
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`As grounds for cancellation of the Petitioned Mark, Petitioner alleges, upon information
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`and belief, that Respondent committed fraud on the USPTO by misrepresenting that all of the
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`goods enumerated in the Petitioned Mark were provided in lawful U.S. interstate commerce as
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`of the October 26, 2016 application filing date of the Petitioned Mark and, therefore,
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`Respondent’s registration was obtained fraudulently.
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`17.
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`Upon information and belief, Respondent did not have bona fide use of the Petitioned
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`Mark in lawful U.S. interstate commerce prior to the October 26, 2016 application filing date for
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`its original Trademark Act Section 1(a), 15 U.S.C. § 1051(a) application, on or in connection
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`with any of the goods in International Class 10 of Respondent’s original application for the
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`Petitioned Mark.
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`18.
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`Upon information and belief, the Petitioned Mark is void ab initio in connection with all
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`applied-for goods that were not in use in U.S. interstate commerce as of the application filing
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`date, because Respondent falsely stated in its October 26, 2016 new application filing that the
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`Petitioned Mark is in use in U.S. commerce, and was in use in U.S. commerce, on or in
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`connection with all the goods listed in the application as of the application filing date, under
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`Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
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`19.
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`Upon information and belief, Respondent’s specimens of record from its original
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`application appear to consist of mock-ups of the intended depiction of the
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` mark
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`Petition for Cancellation - U.S. Registration No. 5,754,223
`Page 5 of 7
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`on the alleged goods. More particularly, the alleged images of the products appear to show the
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` mark was added to the alleged products as stickers, such as stickers that can be
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`printed from a common label machine, in an attempt to create mock-ups of how the mark may
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`be displayed on the alleged products. Additionally, in the specimen of the alleged product which
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`has no color, the sticker is not even centered, and appears to still have small air bubbles on the
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`outer edges due to sloppy application.
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`20.
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`Therefore, upon information and belief, Respondent misrepresented that its specimens of
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`record from its original application showed actual use of the
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` mark in U.S.
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`interstate commerce and, consequently, Respondent’s registration was obtained by fraud.
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`21.
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`Accordingly, the Petitioned Mark should be cancelled, pursuant to TBMP § 307.01
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`(2023), and 15 U.S.C. § 1064(3).
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`CONCLUSION
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`22.
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`Petitioner re-alleges and incorporates herein by reference the allegations in paragraphs 1-
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`21 above as if fully set forth herein.
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`23.
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`Petitioner has been damaged by the presumptions flowing from the continued registration
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`of Respondent’s Petitioned Mark, as the Petitioned Mark has been cited as a bar to registration
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`of Petitioner’s Mark.
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`24.
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`The Petitioned Mark grants Respondent statutory rights, including the prima facie right,
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`to the exclusive and continued use of the Petitioned Mark in International Class 10, all to the
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`detriment of Petitioner. Accordingly, Petitioner believes that it is and will continue to be
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`damaged by the continued registration of the Petitioned Mark.
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`Petition for Cancellation - U.S. Registration No. 5,754,223
`Page 6 of 7
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`WHEREFORE, by the undersigned attorney, Petitioner respectfully requests that this
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`Petition for Cancellation be sustained in favor of Petitioner, and that U.S. Trademark Registration
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`No. 5,754,223 be cancelled.
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`Dated: June 12, 2024
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`Respectfully submitted,
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`
`
`
`
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`Rebeccah Gan, Esq.
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`Counsel for Petitioner
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`MUNCY, GEISSLER, OLDS & LOWE, P.C.
`125 S Royal St.
`Alexandria, VA 22314
`Telephone: 703-621-7140 ext. 170
`Emails: rgan@mg-ip.com, rsb@mg-ip.com,
`nmd@mg-ip.com, mailroom@mg-ip.com
`
`Petition for Cancellation - U.S. Registration No. 5,754,223
`Page 7 of 7
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