Petition for Cancellation

[Pages:32]Trademark Trial and Appeal Board Electronic Filing System.

ESTTA Tracking number: ESTTA1052791

Filing date:

05/01/2020

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

The Coryn Group II, LLC

Corporation

7 Campus Boulevard Newtown Square, PA 19073 UNITED STATES

Citizenship

Delaware

Attorney information

James M. McCarthy Norvell IP llc P.O. Box 2461 Chicago, IL 60690 UNITED STATES officeactions@, jmccarthy@, jnorvell@, kyoches@ 8883150732

Registration Subject to Cancellation

Registration No. Registrant

5472671

Registration date

Chengdu Impression Restaurant Co.,Ltd. Building 1, Zi Jing Chun Tian. No. 6, Yuan Hua Yi Xiang. Gaoxin Distric Chengdu City, Sichuan CHINA

05/22/2018

Goods/Services Subject to Cancellation

Class 043. First Use: 2004/09/27 First Use In Commerce: 2016/06/01 Goods and services in the class that are subject to cancellation: holiday camp services; Providing temporary accommodation at pensions; rental of meeting rooms; providing campground facilities; Retirement home services; Creche services; rental of chairs, tables, table linen, glassware

Grounds for Cancellation

Abandonment Fraud on the USPTO

Trademark Act Section 14(3)

Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009)

Attachments

200501 Petition to Cancel - CHENGDU IMPRESSION.pdf(181938 bytes ) Exhibit A.pdf(417788 bytes )

Signature Name Date

Exhibit B.pdf(321409 bytes ) Exhibit C.pdf(266138 bytes )

/Kathryn S. Yoches/ Kathryn S. Yoches 05/01/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Registration Nos. 5,472,671 Registered: May 22, 2018

Mark: CHENGDU IMPRESSION (and Design)

THE CORYN GROUP II, LLC, Petitioner,

v. CHENGDU IMPRESSION RESTAURANT CO., LTD.,

Respondent.

Cancellation No.

PETITION TO CANCEL REGISTRATION NO. 5,472,671 The Coryn Group II, LLC together with its affiliates, parents and subsidiaries (collectively, "Petitioner" or "Coryn Group") hereby petitions the Trademark Trial and Appeal Board (the "Board") to cancel the trademark CHENGDU IMPRESSION (and

Design)

(U.S. Reg. No. 5,472,671) (the "CHENGDU IMPRESSION Registration"

or "CHENGDU IMPRESSION Trademark") owned by Chengdu Impression Restaurant

Co., Ltd. ("Respondent") because: (1) Respondent has abandoned the trademark

pursuant to 15 U.S.C. ? 1064 and (2) Respondent knowingly and intentionally made false

statements in violation of the standard set forth by In re Bose Corp., 580 F.3d 1240, 1246

(Fed. Cir. 2009). For the reasons stated herein, continued registration of the CHENGDU

IMPRESSION Registration is currently damaging and will continue to damage Coryn

Group. Thus, Coryn Group asks the Board to cancel the CHENGDU IMPRESSION

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Registration pursuant to 37 C.F.R ? 2.111, TBMP ? 309.03 and Lanham Act ? 14, 15

U.S.C. ? 1064. In support of its Petition, Coryn Group states as follows:

THE PARTIES

1.

Coryn Group is a Delaware limited liability company with its principal

place of business at 7 Campus Boulevard, Newtown Square, Pennsylvania 19073.

2.

Coryn Group is the intellectual property owner for the collection of

entities known as Apple Leisure Group ("ALG"), one of North America's premier travel,

hospitality and leisure management groups. Coryn Group owns numerous trademarks

globally that are used in connection with a wide range of travel-related services, including

all-inclusive offerings, vacation services, entertainment services, and a network of luxury

resorts. For example, Coryn Group owns registrations for the marks APPLE LEISURE

GROUP?, AMRESORTS?, ZOETRY WELLNESS & SPA RESORTS?, BREATHLESS

RESORTS & SPAS?, APPLEVACATIONS?, and UNLIMITED VACATION CLUB?.

3.

Coryn Group is also the owner of the following valid and subsisting U.S.

Trademark Registrations for the mark TRAVEL IMPRESSIONS:

Mark TRAVEL IMPRESSIONS

Services Arranging and providing travel vacation packages, namely, making reservations and bookings for transportation; travel guide and travel information services; travel and excursion arrangement in Class 39

Reg. Date July 26, 2016

Arranging and providing travel vacation packages, namely, making reservations and bookings for temporary lodging and resort lodging services in Class 43

Reg. No. 5,006,031

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Arranging and providing travel vacation packages, namely, making reservations and bookings for transportation; travel guide and travel information services; travel and excursion arrangement in Class 39

Aug. 16, 2016

5,021,072

Arranging and providing travel vacation packages, namely, making reservations and bookings for temporary lodging and resort lodging services in Class 43

(See Exhibit A, Copies of the Certificates of Registration and printouts from the USPTO's

Trademark Status and Document Retrieval System ("TSDR") for the aforementioned U.S.

registrations).

4.

Coryn Group is also the owner of the following U.S. Trademark

Applications for the mark IMPRESSION:

Mark IMPRESSION

IMPRESSION

Services

Resort hotels; hotel services; hotel reservation services; providing personalized information about hotels and temporary accommodations for travel via the Internet and phone in Class 43 Administration of a consumer loyalty program to promote hotel services of others; management of hotel incentive programs of others; developing and administering a membership program for lodging guests; promoting the goods and services of others by means of customer club services, for commercial, promotional and/or advertising purposes in Class 35

Filing Date Nov. 20, 2017

Aug.14, 2019

Ser. No. 87/691,632

88/578,074

Arranging hotel accommodations; making hotel reservations for others; providing personalized information about hotels and temporary accommodations for travel via the internet and phone; providing a website featuring information in the field of hotels and temporary accommodations for travelers in Class 43

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(See Exhibit B, TSDR printouts for the aforementioned U.S. applications).

5.

Respondent is a China corporation with its principal place of business at

Building 1, Zi Jing Chun Tian, No. 6, Yuan Hua Yi Xiang. Gaoxin District, Chengdu City,

Sichuan China. Respondent owns the CHENGDU IMPRESSION Registration.

BACKGROUND

6.

On November 20, 2017, Coryn Group applied to register the mark

IMPRESSION (U.S. App. Serial No. 87/691,632) (the "'632 Application") in International

Class 43 for "Resort hotels; hotel services; hotel reservation services; providing

personalized information about hotels and temporary accommodations for travel via the

Internet and phone."

7.

On August 14, 2019, Coryn Group applied to register the mark

IMPRESSION (U.S. App. Serial No. 88/578,074) (the "'074 Application") in International

Classes 35 (for Administration of a consumer loyalty program to promote hotel services

of others; management of hotel incentive programs of others; developing and

administering a membership program for lodging guests; promoting the goods and

services of others by means of customer club services, for commercial, promotional

and/or advertising purposes) and 43 (for Arranging hotel accommodations; making hotel

reservations for others; providing personalized information about hotels and temporary

accommodations for travel via the internet and phone; providing a website featuring

information in the field of hotels and temporary accommodations for travelers).

8.

Both of Coryn Group's applications to register the mark IMPRESSION

were refused pursuant to Trademark Act Section 2(d), 15 U.S.C. ? 1052(d), based on

Respondent's prior CHENGDU IMPRESSION Registration.

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9.

The CHENGDU IMPRESSION Registration claims use of CHENGDU

IMPRESSION (and Design) in International Class 43 for "holiday camp services; cafe

services; Providing temporary accommodation at pensions; tea bars; Canteen services;

rental of meeting rooms; providing campground facilities; Retirement home services;

Creche services; rental of chairs, tables, table linen, glassware." (See Exhibit C,

Trademark Status and Document Retrieval pages and Certificate of Registration).

10.

The CHENGDU IMPRESSION Registration is the product of the

application filed pursuant to Section 1(a) on January 9, 2017, and the specimen of use

displayed the following signs and described the signs as "providing temporary

accommodation at pensions."

The CHENGDU IMPRESSION Registration issued on the Principal Register on May

22, 2018.

11.

The specimen of use that Respondent submitted to the United States

Patent and Trademark Office on January 9, 2017 in order to obtain the CHENGDU

IMPRESSION Registration is a photograph of a single location in Arcadia, California that

provides restaurant services.

12.

On information and belief, Respondent does not provide and has never

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provided holiday camp services; temporary accommodation at pensions; rental of

meeting rooms; providing campground facilities; retirement home services; creche

services; rental of chairs, tables, table linen, glassware in the United States under the

CHENGDU IMPRESSION Trademark.

13.

Petitioner has been and continues to be damaged by the CHENGDU

IMPRESSION Registration, which has been cited against Petitioner's applications to

register the mark IMPRESSION.

COUNT I: CANCELLATION BASED ON ABANDONMENT, 15 U.S.C. ? 1064

14.

Coryn Group fully repeats and incorporates each of the foregoing

paragraphs Nos. 1?13.

15.

On information and belief, Respondent has never made actual bona fide

use of the CHENGDU IMPRESSION trademark in connection with "holiday camp

services; providing temporary accommodation at pensions; rental of meeting rooms;

providing campground facilities; retirement home services; creche services; rental of

chairs, tables, table linen, glassware" in U.S. Commerce, including for at least the last

three consecutive years, thereby constituting prima facie evidence of abandonment with

no intent to resume use of the CHENGDU IMPRESSION Trademark as set forth in

Section 45 of the Lanham Act, 15 U.S.C. ? 1127.

16.

In view of Respondent's lack of use, lack of intent to resume use, and

thus, abandonment of the CHENGDU IMPRESSION Trademark, pursuant to Section

14(3) of the Lanham Act, 15 U.S.C. ? 1064(3), Respondent is not entitled to continued

registration of the mark. As such, the CHENGDU IMPRESSION Registration should be

cancelled.

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