Petition for Cancellation

[Pages:9]Trademark Trial and Appeal Board Electronic Filing System.

ESTTA Tracking number: ESTTA1079033

Filing date:

09/01/2020

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 parties has filed a petition to cancel the registration indicated below.

Petitioner Information

Name Entity Address

Zuru LLC

Corporation

228 NEVADA STREET EL SEGUNDO, CA 90245 UNITED STATES

Citizenship

Oregon

Name Entity Address

Zuru Inc,

Corporation

92 GRANVILLE ROAD TSIM SHA TSUI EAST KOWLOON, 0 HONG KONG

Citizenship

Hong Kong

Attorney information

JOHN R. HORVACK, JR. CARMODY TORRANCE SANDAK & HENNESSEY LLC 195 CHURCH STREET NEW HAVEN, CT 06509 UNITED STATES Primary Email: jhorvackjr@ Secondary Email(s): flahnin@, dgunningsmith@, danposner@, michaelzeller@, eric.olavson@ 203-777-5501

Docket Number

Registrations Subject to Cancellation

Registration No. Registrant

1018875

LEGO JURIS A/S KOLDINGVEJ 2 BILLUND, DK-7190 DENMARK

Registration date

08/26/1975

Goods/Services Subject to Cancellation

Class 028. First Use: 1934/01/00 First Use In Commerce: 1953/06/04 All goods and services in the class are subject to cancellation, namely: TOY BUILDING BLOCKS AND CONNECTING LINKS FOR THE SAME, SOLD SEPARATELY AND AS KITS FOR CONSTRUCTION OF TOY HOUSES, BUILDINGS, HOUSEHOLD FURNISHINGS, ROBOTS, DOLL FIGURES AND VEHICULAR TOYS

Grounds for Cancellation

The mark is or has become generic

Registration No. Registrant

2245652

LEGO JURIS A/S KOLDINGVEJ 2 DK-7190 BILLUND DENMARK

Trademark Act Section 14(3), or Section 23 if on Supplemental Register

Registration date 05/18/1999

Goods/Services Subject to Cancellation

Class 028. First Use: 1934/00/00 First Use In Commerce: 1953/00/00 Goods and services in the class that are subject to cancellation: construction toys; toy construction blocks and connecting links therefor; toy construction kits; toy building blocks;

Grounds for Cancellation

The mark is or has become generic

Trademark Act Section 14(3), or Section 23 if on Supplemental Register

Attachments

Signature Name Date

N5709140.PDF(1350429 bytes )

/John R. Horvack, Jr./ John R. Horvack, Jr. 09/01/2020

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

Zuru LLC and Zuru Inc. Petitioners,

V.

Lego Juris A/S., R e s p onde nt.

)

)

Cancellation No.:- - -- - -

)

)

Mark: LEGO

)

)

Reg. Nos.: 1,018,8 75 and 2,245,652

)

)

Registered: August 26, 1975 and May 18, 1999

)

PETITION FOR CANCELLATION

Z uru LLC, an Oregon limited liability company, with a business office located in El

Segundo, California, and Zuru Inc., a British Virgin Islands company, with a business office

located in Kowloon, Hong Kong (collectively "Zuru"), will be damaged by the continued

registration of the "LEGO" word mark shown in U .S. Registration Nos. 1,018,875 (the '" 875

Registration") and 2,245,652 (the '" 652 Registration"). Zuru seeks to cancel the ' 875

Registration and the '652 Registration pursuant to 15 U.S.C . ? 1064(3), on the grounds that the

registered marks have become a generic name fo r at least a portion of the claimed goods of the

' 875 and '652 Registrations. The owner of record, by assignment, of the ' 875 and ' 652

Registrations is Lego Juris A/S (" Lego Juris," or " Respondent"), with an address of Koldingvej

2, DK-7190 Billund, Denmark. The statutory cancellation fee is submitted herewith. The

Commissioner is hereby authorized to charge that fee, and any underpayment of fees, to Deposit

Account No. 50-0447. In support of the grounds for cancellation, it is alleged that:

1. Z uru Inc. is a family-owned toy and consumer products company founded in

Cambridge, New Zealand in 2004.

2 . Zuru LLC is a subsidiary of Zuru Inc.

{N5709 102)

3. Zuru is one of the fastest growing toy companies in the world and a competitor of the Lego Group.

4. One of Zuru 's product lines is the MAX Build M ore. The MAX Build More products consist of building bl ocks (i.e., Iegos) that are used to construct toy houses, buildings, vehicles and other objects and are currently sold by Zuru LLC in the United States.

5. Zuru's MAX Build More products lawfully practice U.S. Patent No. 3,005,282, entitled "Toy Building Brick" (the "'282 Patent").

6. Since the expiration of the ' 282 Patent on October 24, 1978, any person (including the Petitioners) has had the right to make, use, offer for sale, sell and/or import !egos that practice the ' 282 Patent in the United States.

7. The ' 282 Patent was owned by Interlego A.G., and upon information and belief, Interlego AG and Lego Juris are affi liates of The Lego Group.

8. The Lego Group is a privately owned company based in Billund, Denmark, and since at least the l 950's, the Lego Group and/or its affi liates have made, imported and sold )egos and kits comprising )egos in the United States.

9. On September 17, 1974, Interlego A.G. fil ed an Application for Trademark Registration for the mark LEGO, in C lass 28, for the following goods: "Toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, househo ld furnishings, robots, do ll figures and vehicular toys. "

10. T he claimed first use of the LEGO mark was January 1934, and the claimed first use in commerce in the United States was June 4, 1953.

11 . T he '875 Registration issued August 26, 1975, and is now owned by Lego Juris A/S as a result of certain ass ignments.

{N 5709102)

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12. On November 2 1, 1997, Kirkbi AG fi led an Application for Trademark

Registration, fo r the mark LEGO, in Class 28, for the following goods:

construction toys; toy construction blocks and connecting links therefor; toy construction kits; toy fi gures; toy vehicles; toy animals; toy foliage; toy cranes; toy road plates; kits for assembling toy Christmas tree decorations; children's multiple activity toys; baby multiple activity toys; toy building blocks; [infant's rattles;] dolls; doll house furni shings; accessories for dolls; playsets for dolls; playset buildings; educational games; toy model train sets; toy railroad tracks; bath toys; [ride-on toys;] push toys; pull toys; infant's stacking toys; toy furniture; toy friction motors for toy vehicles; toy electric motors; board games; [jigsaw puzzles;] educational construction toys sets comprising gears, pulleys, beams, wheels, connectors, electric motors, sensors and/or pneumatic cylinders, with or without computer software for assembling and controlling the construction toys; construction toy sets and carrying cases or storage cases sold as a unit; motorized toy model construction kits with or without remote controllers.

13. The claimed first use of the LEGO mark was 193 4, and the claimed first use in

commerce in the United States was 1953.

14. The '652 Registration issued May 18, 1999, and is now owned by Lego Juris A/S

as a result of certain assignments.

15. Over time, toy building blocks and/or toy construction blocks and connecting

links for the same, which are associated with the ' 875 and '652 Registrations, have acquired such

market dominance and mind share that the primary meaning of the tem1 "Lego" and its plural

fo rm "Legos" is no longer the source of the product, but instead the product itself.

16. Zuru has standing to file this Petition because it competes with Respondent by

making and selling the same type of products in the United States.

17. Zuru, as a result, has a real interest in using the terms " Lego" and "Legos" (or

"!ego" and "!egos") to generically describe the product it is selling, and it thus has a direct and

personal stake in the outcome of thi s proceeding.

{N5709 102}

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18. T he terms " Lego" and "Legos" are no longer capable of distinguishing

Respondent' s goods pursuant to 15 U. S.C. ? 1091 , because they are generic terms for a portion

of the claimed goods of the ' 875 and ' 652 Registrations.

19. In particular, compelli ng competent evidence demonstrates that the relevant

public primarily uses and understands the terms " Lego" and "Legos" to refer to the following

genus of the goods claimed in the '875 and '652 Registrations, namely:

a.

toy building blocks, individually, and as kits for constructing toy houses,

buildings, robots, vehicles and the like; and

b. construction toys; toy construction blocks and connecting links therefor; toy constructio n kits; and toy building blocks.

20. For example, the terms " Lego" and "Legos" have been ubiquitously used in a

generic way, as exemplified below:

a.

on Television - e.g., Desperate Housewives, Season 8 Episode 11 (Jan.

15, 20 12), The Michael J. Fox Show, Season 1, Episode 1 (Sept. 26,

2013), and American Housewife, Season 2, Episode 22 (May 2, 20 18);

b.

in Movies - e.g. , Honey, I Shrunk The Kids (1989), and Date N ight

(20 10);

C.

in Music - e.g., AJR - Don ' t throw out my Iegos, Mary-Kate and Ashley

O lsen - Bravery, LMFAO - Scream My Name, and The Roots - Ain' t

Sayin' Nothin' New;

d. by Glossaries/Dictionaries - e.g. , Brothers Brick Lego Glossary, Brick

Brains Lego G lossary, The Cambridge D ictionary, and U rban Dictionary;

e. on Etsy - e.g. , merchandise stating : "go step on a !ego" ( on a !ego);

f.

by TIME - e. g. , Here' s Why It Hm1s So Much to Step on a Lego

( 42463 85/beres-why-i t- hurts-so-much-to-step-on-a-

l e g o/ );

g. on YouT ube - e.g., When You Step on a Lego!

(htt ps://vvatch?v=SPII UwWiX-g);

{ N 5709 102}

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h. by NPR - e.g., 6 Scientists Swallowed Legos to Show Parents How Safe It

Is ( 11/30/672123857/6-scientists-swallowedlegos-to-show-paren ts-how-safe-it-is);

I.

by Science News - e.g., Legos may take hundreds of years to break down

in the ocean (bltps://article/legos-may-take-

hundreds-years-break-down-ocean); and

J.

by The Smithsonian - e.g., Why Walking on Legos Hurts More Than

Walking on Fire or Ice ( ience-

nature/why-wal king-legos-hurts-more-walking-fire-or-ice- 180970784/).

2 1. As shown in the above examples, the re levant public primarily uses and

understands the terms "Lego" and " Legos" to refer to the genus of the goods claimed in the '875

and '652 Registrations.

22. Accordingly, Zurn and others in the toy industry have a present and prospective

right to use the terms "Lego" and "Legos" to describe the products they are selling.

23. Therefore, maintenance of the '875 and '652 Registrations are and wil l continue

to be a source of damage and injury to Zurn and others in the toy industry because Zurn and

others have the right to describe what they make and sell.

WHEREFORE, for the reasons set forth above, Zurn requests that Registration No.

1,018,875 and Registration No. 2,245,652 be cancelled.

Thi s Petition for Cancellation is being fi led electronically pursuant to the ESTTA system.

Date: September 1, 2020

{N5709 102}

ith NCESANDAK& HENNESS 195 Church Street, 18th Floor New Haven, CT 06509 Tel: 203-777-5501 jhorvackjr@carmody

5

flahnin@ dgunningsmith@

Daniel C. Posner Michael T. Zeller Quinn Emanuel Urquhart & Sullivan, LLP 865 South Figueroa Street, 10th Floor Los Angeles, CA 90017 Tel: 213-443 -3000 Fax: 213-443-3100 danposner@ michae lzel le r@

Eric L. Olavson Senior Legal Counsel at Zuru 21067 Stanford Sq., Ste 403 Sterling, VA 20166 Tel: 801-560-5981 Fax: 855-581-9683 eric.olavson@

Counsel for Z URU LLC and ZUR U Inc.

{ N5709 102 }

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