Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

`ESTTA990077

`07/24/2019

`

`ESTTA Tracking number:

`

`Filing date:

`

`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

`

`Essential Products, Inc.

`

`Corporation

`

`Citizenship

`

`USA

`

`380 Portage Avenue

`Palo Alto, CA 94306

`UNITED STATES

`

`Lynne E. Graybeal

`Perkins Coie LLP

`1201 Third Avenue Suite 4900

`Seattle, WA 98101

`UNITED STATES

`pctrademarks@perkinscoie.com, LGraybeal@perkinscoie.com,

`THolt@perkinscoie.com, AIChang@perkinscoie.com,

`KThompson@perkinscoie.com

`2063598000

`

`Registration Subject to Cancellation

`

`Registration No.

`

`5147290

`

`Registration date

`

`02/21/2017

`

`Registrant

`

`SPIGEN, INC.

`9975 Toledo Way #100

`Irvine, CA 92618

`UNITED STATES

`

`Goods/Services Subject to Cancellation

`

`Class 009. First Use: 2016/11/23 First Use In Commerce: 2016/11/23

`All goods and services in the class are subject to cancellation, namely: Adjustable smartphone and

`PC tablet stabilizers and mounts; Audio cables; Audiospeakers; Batteries; Batteries and battery char-

`gers; Battery chargers; Battery chargers for use with telephones; Battery packs; Carrying cases for

`cell phones;Carrying cases for mobile computers; Carrying cases specially adapted for electronic

`equipment, namely, cell phones, tablet computers, mp3 players, smart phones, digital cameras, port-

`able media players and navigation apparatus for vehicles; Cases for mobile phones; Cell phone bat-

`tery chargers; Cell phone battery chargers for use in vehicles; Cell phone cases; Clear protective

`covers specially adapted for personal electronic devices, namely, cell phones, tablet computers,

`mp3players, smart phones, digital cameras,portable media players and navigation apparatus for

`vehicles; Computer mouse; Computer mouse, namely, touchpads; Data cables; Ear phones;

`Earphones; Earphones and headphones; External computer hard drives; Fitted plastic films known as

`skins for covering and protecting electronic apparatus, namely, cell phones, tabletcomputers, mp3

`players, smart phones, digital cameras, portable media players and navigation apparatus for

`vehicles; Headphones; Keyboards; Keyboards for mobile phones; Mobile telephone batteries; PCtab-

`let mounts; Power adapters; Protective cases for smartphones; Protective covers and cases for cell

`phones, laptops and portable media players; Protective covers and cases for tablet computers; Pro-

`

`



`



`tective glasses; Radio transmitters; Smartphone mounts; Speaker microphones; Stands for handheld

`digital electronic devices, namely, cell phones, tablet computers, mp3 players, smart phones, digital

`cameras, portable media players and navigation apparatus for vehicles; Straps formobile phones; Tri-

`pods for cameras; USBcables; USB cables for cellphones; Wireless indoor and outdoor speakers

`

`Grounds for Cancellation

`

`No use of mark in commerce before application,

`amendment to allege use, or statement of use

`was filed

`

`Fraud on the USPTO

`

`Trademark Act Sections 14(1) and 1(a), (c), and

`(d)

`

`Trademark Act Section 14(3); In re Bose Corp.,

`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.

`2009)

`

`Related Proceed-

`ings

`

`Attachments

`

`Opposition Nos. 91247400 and 91247399

`

`Petition to Cancel - SPIGEN ESSENTIAL 2019-07-24.pdf(129538 bytes )

`Exhibit A.pdf(56474 bytes )

`Exhibit B.pdf(43649 bytes )

`Exhibit C.pdf(562200 bytes )

`

`Signature

`

`Name

`

`Date

`

`/Ai-Tang Chang/

`

`Ai-Tang Chang

`

`07/24/2019

`

`



`



`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

`

`

`In the Matter of Trademark Registration No.: 5,147,290

`For the mark: SPIGEN ESSENTIAL

`Registered on: February 21, 2017

`

`

`Petitioner,

`

`v.

`

`

`Essential Products, Inc.,

`

`

`

`

`

`Spigen, Inc.,

`

`

`

`

`Respondent.

`

`

`

`Cancellation No.: ____________

`

`PETITION TO CANCEL

`

`)

`)

`)

`)

`)

`)

`)

`)

`)

`)

`)

`

`

`

`

`

`

`

`

`1.

`

`PETITION TO CANCEL

`

`Essential Products, Inc. (“Petitioner”) is a Delaware corporation having a principal

`

`place of business at 380 Portage Avenue, Palo Alto, California 94306. Petitioner believes it is

`

`being and will continue to be damaged by the above-identified U.S. Trademark Registration No.

`

`5,147,290 for the mark SPIGEN ESSENTIAL (“Registration”), filed by Spigen, Inc.

`

`(“Respondent”), and hereby petitions to cancel the same. The grounds for cancellation are as

`

`follows:

`

`RESPONDENT AND ITS MARKS

`

`2.

`

`Respondent is a California corporation having a principal place of business at 9975

`

`Toledo Way No. 100, Irvine, California 92618.

`

`3.

`

`The application that matured into Respondent’s Registration was filed on May 19,

`

`4.

`

`Respondent’s Registration is owned by Respondent.

`

`2015.

`

`

`

`



`



`5.

`

`Respondent’s Registration covers the following goods: “Adjustable smartphone

`

`and PC tablet stabilizers and mounts; Audio cables; Audio speakers; Batteries; Batteries and

`

`battery chargers; Battery chargers; Battery chargers for use with telephones; Battery packs;

`

`Carrying cases for cell phones; Carrying cases for mobile computers; Carrying cases specially

`

`adapted for electronic equipment, namely, cell phones, tablet computers, mp3 players, smart

`

`phones, digital cameras, portable media players and navigation apparatus for vehicles; Cases for

`

`mobile phones; Cell phone battery chargers; Cell phone battery chargers for use in vehicles; Cell

`

`phone cases; Clear protective covers specially adapted for personal electronic devices, namely,

`

`cell phones, tablet computers, mp3 players, smart phones, digital cameras, portable media players

`

`and navigation apparatus for vehicles; Computer mouse; Computer mouse, namely, touchpads;

`

`Data cables; Ear phones; Earphones; Earphones and headphones; External computer hard drives;

`

`Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, cell

`

`phones, tablet computers, mp3 players, smart phones, digital cameras, portable media players and

`

`navigation apparatus for vehicles; Headphones; Keyboards; Keyboards for mobile phones; Mobile

`

`telephone batteries; PC tablet mounts; Power adapters; Protective cases for smartphones;

`

`Protective covers and cases for cell phones, laptops and portable media players; Protective covers

`

`and cases for tablet computers; Protective glasses; Radio transmitters; Smartphone mounts;

`

`Speaker microphones; Stands for handheld digital electronic devices, namely, cell phones, tablet

`

`computers, mp3 players, smart phones, digital cameras, portable media players and navigation

`

`apparatus for vehicles; Straps for mobile phones; Tripods for cameras; USB cables; USB cables

`

`for cellphones; Wireless indoor and outdoor speakers” in International Class 9 (“Respondent’s

`

`Goods”). A true and correct copy of the registration certificate for Respondent’s Registration on

`

`

`

`

`- 2 -

`

`



`



`Trademark Status & Document Retrieval (“TSDR”) published by the United States Patent and

`

`Trademark Offices (“USPTO”) is attached as Exhibit A.

`

`PETITIONER AND ITS MARKS

`

`6.

`

`Petitioner is in the business of, inter alia, developing, manufacturing and selling

`

`smartphones, software for smartphones, smartphone peripherals and providing goods and services

`

`in connection with smartphones and related products and services.

`

`7.

`

`Respondent has previously asserted

`

`the Registration against Petitioner’s

`

`ESSENTIAL-formative marks, including Petitioner’s U.S. Trademark Application Serial No.

`

`87/278,834 for the mark

`

` for “Mobile phones; Smart phones; Computers and

`

`tablet computers; Replacement parts for all the aforementioned goods; Computer operating

`

`software for mobile phones, smart phones, computers and tablet computers” in International Class

`

`9. The status of U.S. Trademark Serial No. 87/278,834 from TSDR is attached hereto as Exhibit

`

`B.

`

`

`

`8.

`

`Pursuant to Section 309.03(b) of Trademark Trial and Appeal Board Manual of

`

`Procedure (“TBMP”), Petitioner believes it will be damaged by Respondent’s Registration due to

`

`Respondent’s infringement claim against Petitioner. See TBMP § 309.03(b).

`

`FIRST GROUND FOR CANCELLATION

`FRAUD AS TO RESPONDENT’S IDENTIFICATION OF GOODS

`

`On November 23, 2016, Respondent, through signature by its attorney of record,

`

`9.

`

`Heedong Chae, declared in its Statement of Use that the “mark is in use in commerce on or in

`

`connection with all of the goods/services” at least as early as November 23, 2016 (“First Use

`

`Date”), and signed a declaration stating that, “willful false statements and the like may jeopardize

`

`the validity of the application or submission or any registration resulting therefrom.” See Exhibit

`

`C.

`

`

`

`

`- 3 -

`

`



`



`10.

`

`On information and belief, Respondent was not using the SPIGEN ESSENTIAL

`

`mark on all of Respondent’s Goods as the time it filed its Statement of Use on November 23, 2016.

`

`11.

`

`Petitioner has investigated Respondent’s use of Respondent’s Registration by

`

`reviewing Respondent’s website www.spigen.com, among other resources. Based upon this

`

`investigation, Petitioner has formed a reasonable belief that Respondent was using the SPIGEN

`

`ESSENTIAL mark only in connection with headphone straps at the time it filed its Statement of

`

`Use on November 23, 2016. Based on this information, Petitioner has formed a reasonable belief

`

`that Respondent was not using the SPIGEN ESSENTIAL mark in connection with any of

`

`Respondent’s Goods.

`

`12.

`

`On information and belief, Respondent knew that it was making a false

`

`representation regarding its use of the Registration on “all” of Respondent’s Goods when

`

`Respondent, through its attorney of record, signed the declaration of use on November 23, 2016.

`

`13. Misrepresentations as to the goods and services on which a mark is used, which

`

`defined the full scope of trademark rights, are material to the USPTO.

`

`14.

`

`On information and belief, by making such knowingly false misrepresentation to

`

`the USPTO in the application for the Registration, Respondent intended to deceive the USPTO

`

`and secure a registration granting it rights Respondent was not entitled.

`

`15.

`

`Petitioner hereby seeks that the Registration be cancelled on the grounds that

`

`Respondent knowingly made a false, material representation in the process of procuring the

`

`Registration with the intent to deceive the USPTO.

`

`//

`

`//

`

`//

`

`

`

`

`- 4 -

`

`



`



`WHEREFORE, Petitioner prays that this cancellation action be sustained and

`

`Respondent’s Registration be cancelled.

`

`

`

`

`

`

`

`

`

`

`DATED: July 24, 2019

`

`

`

`

`

`

`

`Respectfully submitted,

`

`

`PERKINS COIE LLP

`

`By: /Thomas Holt/

`Thomas Holt

`Lynne E. Graybeal

`Ai-Tang I. Chang

`1201 Third Avenue Suite 4900

`Seattle, WA 98101-3099

`Attorneys for Petitioner

`

`

`

`

`

`- 5 -

`

`



`



`

`

`

`

`Exhibit A

`Exhibit A

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`



`



`Reg. No. 5,147,290

`

`Registered Feb. 21, 2017

`

`SPIGEN, INC. (CALIFORNIA CORPORATION)

`9975 Toledo Way #100

`Irvine, CA 92618

`

`Int. Cl.: 9

`

`Trademark

`

`Principal Register

`

`CLASS 9: Adjustable smartphone and PC tablet stabilizers and mounts; Audio cables; Audio

`speakers; Batteries; Batteries and battery chargers; Battery chargers; Battery chargers for use

`with telephones; Battery packs; Carrying cases for cell phones; Carrying cases for mobile

`computers; Carrying cases specially adapted for electronic equipment, namely, cell phones,

`tablet computers, mp3 players, smart phones, digital cameras, portable media players and

`navigation apparatus for vehicles; Cases for mobile phones; Cell phone battery chargers; Cell

`phone battery chargers for use in vehicles; Cell phone cases; Clear protective covers specially

`adapted for personal electronic devices, namely, cell phones, tablet computers, mp3 players,

`smart phones, digital cameras, portable media players and navigation apparatus for vehicles;

`Computer mouse; Computer mouse, namely, touchpads; Data cables; Ear phones; Earphones;

`Earphones and headphones; External computer hard drives; Fitted plastic films known as

`skins for covering and protecting electronic apparatus, namely, cell phones, tablet computers,

`mp3 players, smart phones, digital cameras, portable media players and navigation apparatus

`for vehicles; Headphones; Keyboards; Keyboards for mobile phones; Mobile telephone

`batteries; PC tablet mounts; Power adapters; Protective cases for smartphones; Protective

`covers and cases for cell phones, laptops and portable media players; Protective covers and

`cases for tablet computers; Protective glasses; Radio transmitters; Smartphone mounts;

`Speaker microphones; Stands for handheld digital electronic devices, namely, cell phones,

`tablet computers, mp3 players, smart phones, digital cameras, portable media players and

`navigation apparatus for vehicles; Straps for mobile phones; Tripods for cameras; USB

`cables; USB cables for cellphones; Wireless indoor and outdoor speakers

`

`FIRST USE 11-23-2016; IN COMMERCE 11-23-2016

`

`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY

`PARTICULAR FONT STYLE, SIZE OR COLOR

`

`SER. NO. 86-635,355, FILED 05-19-2015

`WON KYUNG WENDY JUN, EXAMINING ATTORNEY

`

`



`



`

`

`

`

`Exhibit B

`Exhibit B

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`



`



`Generated on: This page was generated by TSDR on 2019-07-23 17:41:20 EDT

`

`Mark: ESSENTIAL

`

`US Serial Number: 87278834

`

`Application Filing

`Date:

`

`Dec. 22, 2016

`

`Filed as TEAS RF: Yes

`

`Currently TEAS RF: Yes

`

`Register: Principal

`

`Mark Type: Trademark

`

`Status: Suspension check completed. Application remains suspended.

`

`Status Date: May 06, 2019

`

`

`

`Mark Literal

`Elements:

`

`ESSENTIAL

`

`Standard Character

`Claim:

`

`No

`

`Mark Information

`

`Mark Drawing

`Type:

`

`Description of

`Mark:

`

`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)

`

`The mark consists of the wording "ESSENTIAL" to the right of a shaded circle and a shaded square containing a circle.

`

`Color(s) Claimed: Color is not claimed as a feature of the mark.

`

`Design Search

`Code(s):

`

`26.01.13 - Circles, two (not concentric); Two circles

`26.01.21 - Circles that are totally or partially shaded.

`26.09.21 - Squares that are completely or partially shaded

`

`Goods and Services

`

`Note:

`The following symbols indicate that the registrant/owner has amended the goods/services:

`Brackets [..] indicate deleted goods/services;

`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and

`Asterisks *..* identify additional (new) wording in the goods/services.

`

`For: mobile phones; smart phones; computers and tablet computers; replacement parts for all the aforementioned goods; computer

`operating software for mobile phones, smart phones, computers and tablet computers

`

`International

`Class(es):

`

`009 - Primary Class

`

`Class Status: ACTIVE

`

`Basis: 1(b)

`

`U.S Class(es): 021, 023, 026, 036, 038

`

`Basis Information (Case Level)

`

`Filed Use: No

`

`Filed ITU: Yes

`

`Filed 44D: No

`

`Filed 44E: No

`

`Filed 66A: No

`

`Currently Use: No

`

`Currently ITU: Yes

`

`Currently 44D: No

`

`Currently 44E: No

`

`Currently 66A: No

`

`Amended Use: No

`

`Amended ITU: No

`

`Amended 44D: No

`

`Amended 44E: No

`

`Filed No Basis: No

`

`Currently No Basis: No

`

`Current Owner(s) Information

`

`Owner Name: Essential Products, Inc.

`

`Owner Address: 380 Portage Avenue

`Palo Alto, CALIFORNIA 94306

`UNITED STATES

`

`



`



`Legal Entity Type: CORPORATION

`

`State or Country

`Where Organized:

`

`DELAWARE

`

`Attorney/Correspondence Information

`

`Attorney Name: Lynne E. Graybeal

`

`Docket Number: 119306-4003

`

`Attorney of Record

`

`Attorney Primary

`Email Address:

`

`pctrademarks@perkinscoie.com

`

`Correspondent

`Name/Address:

`

`Lynne E. Graybeal

`Perkins Coie LLP

`1201 Third Avenue Suite 4900

`Seattle, WASHINGTON 98101

`UNITED STATES

`

`Attorney Email

`Authorized:

`

`Yes

`

`Correspondent

`

`Phone: 206-359-8000

`

`Fax: 206-359-9000

`

`Correspondent e-

`mail:

`

`pctrademarks@perkinscoie.com LGraybeal@perki

`nscoie.com aichang@perkinscoie.com kthompson

`@perkinscoie.com

`

`Correspondent e-

`mail Authorized:

`

`Yes

`

`Domestic Representative - Not Found

`Prosecution History

`

`Date

`

`Description

`

`May 06, 2019

`

`REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED

`

`Mar. 14, 2019

`

`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

`

`Mar. 14, 2019

`

`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

`

`Nov. 05, 2018

`

`REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED

`

`May 03, 2018

`

`REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED

`

`May 03, 2018

`

`ASSIGNED TO LIE

`

`Oct. 17, 2017

`

`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED

`

`Oct. 17, 2017

`

`LETTER OF SUSPENSION E-MAILED

`

`Oct. 17, 2017

`

`SUSPENSION LETTER WRITTEN

`

`Sep. 27, 2017

`

`TEAS CHANGE OF CORRESPONDENCE RECEIVED

`

`Sep. 28, 2017

`

`TEAS/EMAIL CORRESPONDENCE ENTERED

`

`Sep. 27, 2017

`

`CORRESPONDENCE RECEIVED IN LAW OFFICE

`

`Sep. 27, 2017

`

`TEAS RESPONSE TO OFFICE ACTION RECEIVED

`

`Mar. 27, 2017

`

`NOTIFICATION OF NON-FINAL ACTION E-MAILED

`

`Mar. 27, 2017

`

`NON-FINAL ACTION E-MAILED

`

`Mar. 27, 2017

`

`NON-FINAL ACTION WRITTEN

`

`Mar. 21, 2017

`

`ASSIGNED TO EXAMINER

`

`Jan. 07, 2017

`

`NOTICE OF DESIGN SEARCH CODE E-MAILED

`

`Jan. 06, 2017

`

`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

`

`Dec. 27, 2016

`

`NEW APPLICATION ENTERED IN TRAM

`TM Staff and Location Information

`

`TM Attorney: WRIGHT, MARCO JABBAR

`

`TM Staff Information

`

`Law Office

`Assigned:

`

`LAW OFFICE 120

`

`File Location

`

`Current Location: TMO LAW OFFICE 120

`

`Date in Location: May 06, 2019

`

`Proceedings

`

`Summary

`

`Number of

`Proceedings:

`

`1

`

`Proceeding

`Number

`

`66121

`

`66121

`

`66121

`

`66121

`

`6332

`

`6332

`

`92576

`

`88889

`

`88889

`

`6325

`

`6325

`

`92576

`

`92576

`

`

`

`



`



`Type of Proceeding: Opposition

`

`Proceeding

`Number:

`

`91247400

`

`Status: Suspended

`

`Interlocutory

`Attorney:

`

`MARY CATHERINE FAINT

`

`Name: Spigen, Inc.

`

`Correspondent

`Address:

`

`HEEDONG CHAE

`LUCEM PC

`660 S FIGUEROA ST, SUITE 1200

`LOS ANGELES CA , 90017

`UNITED STATES

`

`Filing Date: Apr 03, 2019

`

`Status Date: Jul 10, 2019

`

`Defendant

`

`Correspondent e-

`mail:

`

`Associated marks

`

`Mark

`

`ESSENTIAL

`

`kkim@lucemlaw.com , trademark@lucemlaw.com , iplaw.advocate@gmail.com

`

`Application Status

`

`Opposition Pending

`

`Plaintiff(s)

`

`Serial

`Number

`

`86861193

`

`Registration

`Number

`

`Name: Essential Products, Inc.

`

`Correspondent

`Address:

`

`LYNNE E GRAYBEAL

`PERKINS COIE LLP

`1201 THIRD AVENUE, SUITE 4900

`SEATTLE WA , 98101-3099

`UNITED STATES

`

`Correspondent e-

`mail:

`

`pctrademarks@perkinscoie.com , LGraybeal@perkinscoie.com , WRava@perkinscoie.com , THolt@perkinscoie.com , AiChang@perki

`nscoie.com , KThompson@perkinscoie.com

`

`Associated marks

`

`Mark

`

`ESSENTIAL

`

`ESSENTIAL

`

`ESSENTIAL

`

`ESSENTIAL PRODUCTS

`

`ESSENTIAL PRODUCTS

`

`ESSENTIAL PRODUCTS

`

`ESSENTIAL PRODUCTS

`

`ESSENTIAL

`

`ESSENTIAL

`

`Application Status

`

`Serial

`Number

`

`Registration

`Number

`

`Report Completed Suspension Check - Case Still Suspended 87278834

`

`Report Completed Suspension Check - Case Still Suspended 87976086

`

`Report Completed Suspension Check - Case Still Suspended 87976088

`

`Report Completed Suspension Check - Case Still Suspended 87976107

`

`Report Completed Suspension Check - Case Still Suspended 87976090

`

`Report Completed Suspension Check - Case Still Suspended 87976106

`

`Report Completed Suspension Check - Case Still Suspended 87976092

`

`Report Completed Suspension Check - Case Still Suspended 87545739

`

`Report Completed Suspension Check - Case Still Suspended 87545749

`

`Prosecution History

`

`Entry Number

`

`History Text

`

`FILED AND FEE

`

`NOTICE AND TRIAL DATES SENT; ANSWER DUE:

`

`PENDING, INSTITUTED

`

`D MOT TO DISMISS: FRCP 12(B)

`

`SUSP PEND DISP OF OUTSTNDNG MOT

`

`P MOT TO AMEND PLEADING/AMENDED PLEADING

`

`PROCEEDINGS RESUMED

`

`D MOT TO DISMISS: FRCP 12(B)

`

`1

`

`2

`

`3

`

`4

`

`5

`

`6

`

`7

`

`8

`

`Due Date

`

`May 14, 2019

`

`Date

`

`Apr 03, 2019

`

`Apr 04, 2019

`

`Apr 04, 2019

`

`May 13, 2019

`

`May 20, 2019

`

`Jun 03, 2019

`

`Jun 10, 2019

`

`Jul 10, 2019

`

`



`



`

`

`

`

`Exhibit C

`Exhibit C

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`

`



`



`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.

`PTO Form 1553 (Rev 09/2005)

`

`OMB No. 0651-0054 (Exp 10/31/2017)

`

`Trademark/Service Mark Statement of Use

`(15 U.S.C. Section 1051(d))

`

`The table below presents the data as entered.

`

`Input Field

`

`Entered

`

`SERIAL NUMBER

`

`86635355

`

`LAW OFFICE ASSIGNED

`

`LAW OFFICE 103

`

`EXTENSION OF USE

`

`NO

`

`MARK SECTION

`

`MARK

`

`LITERAL ELEMENT

`

`STANDARD CHARACTERS

`

`USPTO-GENERATED IMAGE

`

`MARK STATEMENT

`

`OWNER SECTION

`

`NAME

`

`STREET

`

`CITY

`

`STATE

`

`ZIP/POSTAL CODE

`

`COUNTRY

`

`https://tmng-al.uspto.gov/resting2/api/img/86635355/large

`

`SPIGEN ESSENTIAL

`

`YES

`

`YES

`

`The mark consists of standard characters, without claim to any particular

`font style, size or color.

`

`SPIGEN, INC.

`

`9975 Toledo Way #100

`

`Irvine

`

`California

`

`92618

`

`United States

`

`GOODS AND/OR SERVICES SECTION

`

`INTERNATIONAL CLASS

`

`009

`

`Adjustable smartphone and PC tablet stabilizers and mounts; Audio cables;

`Audio speakers; Batteries; Batteries and battery chargers; Battery chargers;

`Battery chargers for use with telephones; Battery packs; Carrying cases for

`cell phones; Carrying cases for mobile computers; Carrying cases specially

`adapted for electronic equipment, namely, cell phones, tablet computers,

`mp3 players, smart phones, digital cameras, portable media players and

`navigation apparatus for vehicles; Cases for mobile phones; Cell phone

`battery chargers; Cell phone battery chargers for use in vehicles; Cell phone

`cases; Clear protective covers specially adapted for personal electronic

`devices, namely, cell phones, tablet computers, mp3 players, smart phones,

`digital cameras, portable media players and navigation apparatus for

`vehicles; Computer mouse; Computer mouse, namely, touchpads; Data

`cables; Ear phones; Earphones; Earphones and headphones; External

`computer hard drives; Fitted plastic films known as skins for covering and

`protecting electronic apparatus, namely, cell phones, tablet computers, mp3

`players, smart phones, digital cameras, portable media players and

`navigation apparatus for vehicles; Headphones; Keyboards; Keyboards for

`mobile phones; Mobile telephone batteries; PC tablet mounts; Power

`

`CURRENT IDENTIFICATION

`

`



`



`adapters; Protective cases for smartphones; Protective covers and cases for

`cell phones, laptops and portable media players; Protective covers and cases

`for tablet computers; Protective glasses; Radio transmitters; Smartphone

`mounts; Speaker microphones; Stands for handheld digital electronic

`devices, namely, cell phones, tablet computers, mp3 players, smart phones,

`digital cameras, portable media players and navigation apparatus for

`vehicles; Straps for mobile phones; Tripods for cameras; USB cables; USB

`cables for cellphones; Wireless indoor and outdoor speakers

`

`GOODS OR SERVICES

`

`KEEP ALL LISTED

`

`FIRST USE ANYWHERE DATE

`

`FIRST USE IN COMMERCE DATE

`

`11/23/2016

`

`11/23/2016

`

`SPECIMEN FILE NAME(S)

`

`

`

`\\TICRS\EXPORT17\IMAGEOUT 17\866\353\86635355\xml1\

`SOU0002.JPG

`

`\\TICRS\EXPORT17\IMAGEOUT 17\866\353\86635355\xml1\

`SOU0003.JPG

`

`SPECIMEN DESCRIPTION

`

`digital photos bearing the mark

`

`REQUEST TO DIVIDE

`

`PAYMENT SECTION

`

`NUMBER OF CLASSES IN USE

`

`SUBTOTAL AMOUNT [ALLEGATION OF USE FEE]

`

`TOTAL AMOUNT

`

`SIGNATURE SECTION

`

`DECLARATION SIGNATURE

`

`NO

`

`1

`

`100

`

`100

`

`/hc/

`

`SIGNATORY'S NAME

`

`Heedong Chae

`

`SIGNATORY'S POSITION

`

`Attorney of record, CA bar member

`

`DATE SIGNED

`

`SIGNATORY'S PHONE NUMBER

`

`FILING INFORMATION

`

`11/23/2016

`

`2133873630

`

`SUBMIT DATE

`

`Wed Nov 23 18:52:33 EST 2016

`

`TEAS STAMP

`

`USPTO/SOU-XXX.XXX.XX.XXX-

`20161123185233322528-8663

`5355-5706ed943132f6f7e9ce

`d27256c35ad62fe20d2ee8333

`4a2d57af95108159ae12-CC-7

`197-20161123183821205572

`

`



`



`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.

`PTO Form 1553 (Rev 09/2005)

`

`OMB No. 0651-0054 (Exp 10/31/2017)

`

`

`

`Trademark/Service Mark Statement of Use

`(15 U.S.C. Section 1051(d))

`

`To the Commissioner for Trademarks:

`MARK: SPIGEN ESSENTIAL(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/86635355/large)

`SERIAL NUMBER: 86635355

`

`The applicant, SPIGEN, INC., having an address of

` 9975 Toledo Way #100

` Irvine, California 92618

` United States

`is submitting the following allegation of use information:

`

`For International Class 009:

`Current identification: Adjustable smartphone and PC tablet stabilizers and mounts; Audio cables; Audio speakers; Batteries; Batteries and

`battery chargers; Battery chargers; Battery chargers for use with telephones; Battery packs; Carrying cases for cell phones; Carrying cases for

`mobile computers; Carrying cases specially adapted for electronic equipment, namely, cell phones, tablet computers, mp3 players, smart phones,

`digital cameras, portable media players and navigation apparatus for vehicles; Cases for mobile phones; Cell phone battery chargers; Cell phone

`battery chargers for use in vehicles; Cell phone cases; Clear protective covers specially adapted for personal electronic devices, namely, cell

`phones, tablet computers, mp3 players, smart phones, digital cameras, portable media players and navigation apparatus for vehicles; Computer

`mouse; Computer mouse, namely, touchpads; Data cables; Ear phones; Earphones; Earphones and headphones; External computer hard drives;

`Fitted plastic films known as skins for covering and protecting electronic apparatus, namely, cell phones, tablet computers, mp3 players, smart

`phones, digital cameras, portable media players and navigation apparatus for vehicles; Headphones; Keyboards; Keyboards for mobile phones;

`Mobile telephone batteries; PC tablet mounts; Power adapters; Protective cases for smartphones; Protective covers and cases for cell phones,

`laptops and portable media players; Protective covers and cases for tablet computers; Protective glasses; Radio transmitters; Smartphone mounts;

`Speaker microphones; Stands for handheld digital electronic devices, namely, cell phones, tablet computers, mp3 players, smart phones, digital

`cameras, portable media players and navigation apparatus for vehicles; Straps for mobile phones; Tripods for cameras; USB cables; USB cables

`for cellphones; Wireless indoor and outdoor speakers

`

`The mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed

`in the application or Notice of Allowance or as subsequently modified for this specific class.

`

`The mark was first used by the applicant, or the applicant's related company, licensee, or predecessor in interest at least as early as 11/23/2016,

`and first used in commerce at least as early as 11/23/2016, and is now in use in such commerce. The applicant is submitting one specimen for the

`class showing the mark as used in commerce on or in connection with any item in the class, consisting of a(n) digital photos bearing the mark.

`Specimen File1

`Specimen File2

`

`The applicant is not filing a Request to Divide with this Allegation of Use form.

`

`A fee payment in the amount of $100 will be submitted with the form, representing payment for the allegation of use for 1 class.

`

`Declaration

`

`STATEMENTS: The signatory believes that: if the applicant is filing the amendment to allege use under 15 U.S.C. §1051(c) or a statement of

`use under 15 U.S.C. §1051(d), the applicant is the owner of the mark sought to be registered; the mark is in use in commerce; for a trademark

`or service mark application, the applicant is using the mark in commerce on or in connection with all the goods/services in the application or

`notice of allowance, or as subsequently modified; for a collective trademark, collective service mark, collective membership mark

`application, the applicant is exercising legitimate control over the use of the mark in commerce by members on or in connection with all the

`goods/services/collective membership organization in the application or notice of allowance, or as subsequently modified; for a certification

`mark application, the applicant is exercising legitimate control over the use of the mark in commerce by authorized users on or in connection

`

`



`



`with the all goods/services in the application or notice of allowance, or as subsequently modified, and the applicant is not engaged in the

`production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification

`program or of the goods/services that meet the certification standards of the applicant; that to the best of the signatory's knowledge and belief, no

`other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the

`identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership

`organization of such other persons, to cause confusion or mistake, or to deceive; and the specimen(s) shows the mark as used on or in connection

`with the goods/services/collective membership organization in commerce.

`

`DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under

`18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any

`registration resulting therefrom, declares that all statements made of his/her own knowledge are true and that all statements made on information

`and belief are believed to be true.

`

`Signature: /hc/ Date Signed: 11/23/2016

`Signatory's Name: Heedong Chae

`Signatory's Position: Attorney of record, CA bar member

`Signatory's Phone: 2133873630

`

`RAM Sale Number: 86635355

`RAM Accounting Date: 11/25/2016

`

`Serial Number: 86635355

`Internet Transmission Date: Wed Nov 23 18:52:33 EST 2016

`TEAS Stamp: USPTO/SOU-XXX.XXX.XX.XXX-201611231852333

`22528-86635355-5706ed943132f6f7e9ced2725

`6c35ad62fe20d2ee83334a2d57af95108159ae12

`-CC-7197-20161123183821205572

`

`

`

`



`



`'C- Splqen

`

`Alfpods Strap

`

`SHOP

`

`MEDIA

`

`SUPPORT

`

`Airpods Strap

`if...

`

`

`

`Availaniuxy |

`

`In stock

`

`$ 9.99

`7

`i

`

`‘

`

`{4

`

`a;

`

`:3

`

`‘3)

`

`AUDIOCAR]

`

` Rem

`

`u

`

`



`



`(-spiqen

`

`SHOP

`

`MEDIA

`

`SUPPORT

`

`Spigen Essentialw for security.

`Ideal in keeping Airpods secure during activities.

`

`Provides a secure hold.

`

`i

`

`.

`i''

`

`Simple clip design.

`

`Ib—‘nmi .i i ('ii in

`

`

`



`



`FEE RECORD SHEET

`

`Serial Number:

`

`8663 53 55

`

`RAM Sale Number: 86635355

`

`RAM Accounting Date: 20161125

`

`

`

`

`

`

`

`

`

`Total Fees:

`

`$100

`

`Transaction

`

`Fee

`

`Code

`

`Transaction

`Date

`

`Fee per

`

`Class

`

`Number

`

`Total

`

`of Classes E

`

`Statement of Use (SOU)

`

`7003

`

`20161123

`

`$100

`

`1

`

`$100

`

`Transaction Date:

`

`20161123

`

`