ESTTA Tracking number:
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`ESTTA1350012
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`Filing date:
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`04/03/2024
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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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`Toynami, Inc.
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`Corporation
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`1936 KELLOGG AVENUE
`CARLSBAD, CA 92008
`UNITED STATES
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`Incorporated or
`registered in
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`CA
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`Attorney informa-
`tion
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`MARC KARISH
`KARISH & BJORGUM, PC
`119 E. UNION STREET, SUITE B
`PASADENA, CA 91103
`UNITED STATES
`Primary email: marc.karish@kb-ip.com
`Secondary email(s): bruce.g.chapman@kb-ip.com, michell.rudacille@kb-ip.com,
`docketing@kb-ip.com
`213-785-8070
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`Docket no.
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`15102.27
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`Registration subject to cancellation
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`Registration no.
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`7287604
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`Registration date
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`01/23/2024
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`Register
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`Registrant
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`Principal
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`MATTEL, INC.
`333 CONTINENTAL BOULEVARD
`TWR 15-1
`EL SEGUNDO, CA 90245
`UNITED STATES
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`Goods/services subject to cancellation
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`Class 028. First Use: Nov 21, 2023 First Use In Commerce: Nov 21, 2023
`All goods and services in the class are subject to cancellation, namely: TOY FIGURES AND AC-
`CESSORIES THEREFOR, TOY ACTION FIGURES AND ACCESSORIES THEREFOR
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`Grounds for cancellation
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`Priority and likelihood of confusion
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`Trademark Act Sections 14(1) and 2(d)
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`Marks cited by petitioner as basis for cancellation
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`U.S. registration
`no.
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`3807636
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`Application date
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`05/19/2008
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`

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`Register
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`Principal
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`Registration date
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`06/22/2010
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`Word mark
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`Design mark
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`SHOGUN WARRIORS
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`Foreign priority
`date
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`NONE
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`Description of
`mark
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`Goods/services
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`U.S. application
`no.
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`NONE
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`Class 028. First use: First Use: Feb 16, 2010 First Use In Commerce: Feb 16,
`2010
`action figures, toy vehicles, and playsets for action figures and toy vehicles
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`98112386
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`Application date
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`08/01/2023
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`Register
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`Principal
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`Registration date
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`NONE
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`Word mark
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`Design mark
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`SHOGUN WARRIORS
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`Foreign priority
`date
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`NONE
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`Description of
`mark
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`Goods/services
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`NONE
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`Class 028. First use: First Use: Feb 16, 2010 First Use In Commerce: Feb 16,
`2010
`Action figures, toy vehicles, and playsets for action figures and toy vehicles
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`Attachments
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`77478519#TMSN.png( bytes )
`98112386#TMSN.png( bytes )
`240403 Cancellation Petition for 7287604.pdf(37618 bytes )
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`Signature
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`/s/ Marc Karish
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`Name
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`Date
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`Marc Karish
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`04/03/2024
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Trademark Reg. No. 7,287,604,
`For the mark SHOGUN WARRIORS
`Registered on November 19, 2019.
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`Toynami, Inc.
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`Petitioner,
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`v.
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`Mattel, Inc.,
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`Registrant.
`______________________________)
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`Cancellation No. _______________
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`PETITION TO CANCEL
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`Toynami, Inc. (“Petitioner”) hereby seeks to cancel the above-referenced registration
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`owned by Mattel, Inc. (“Registrant”). The grounds for cancellation are as follows:
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`
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`1.
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`Petitioner is a corporation organized and existing under the laws of the state of
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`The Parties
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`California with a principal place of business at 1936 Kellogg Avenue, Carlsbad, CA 92008.
`2.
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`Registrant is a corporation organized under the laws of the state of Delaware with
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`a principal place of business at 333 Continental Boulevard, TWR 15-1, El Segundo, CA 90245.
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`Petitioner and Its Use of the SHOGUN WARRIORS Mark
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`3.
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`Petitioner uses the SHOGUN WARRIORS mark to promote its high-quality
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`action figures, toy vehicles, and playsets for action figures and toy vehicles.
`4.
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`Petitioner began using the SHOGUN WARRIORS mark in connection with its
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`provision of those goods to U.S. consumers in 2010. Since that time, petitioner has actively used
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`the SHOGUN WARRIORS mark in connection with its action figures, toy vehicles, and playsets
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`for action figures and toy vehicles through the U.S.
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`-1-
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`5.
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`As a result of this use of the SHOGUN WARRIORS mark, Petitioner has
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`established valuable trademark rights and goodwill in the SHOGUN WARRIORS mark.
`6.
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`To further solidify its rights in the SHOGUN WARRIORS mark, Petitioner
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`obtained U.S. Trademark Reg. No. 3807636 which registered on June 22, 2010. Petitioner
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`inadvertently allowed this registration to lapse as of December 22, 2020, but never intended to
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`abandon use of the SHOGUN WARRIORS mark.
`7.
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`Petitioner applied to re-register its SHOGUN WARRIORS mark on August 1,
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`2023 with U.S. Trademark App. Ser. No. 98/112,386. On April 2, 2024, Petitioner received an
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`Office action rejecting that application over U.S. Trademark Reg. No. 7,287,604
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`8.
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`Grounds for Cancelling the Registration
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`Trademark App. Ser. No. 90/022,384 was filed by Registrant for a standard
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`character version of the mark SHOGUN WARRIORS on June 26, 2020. That application
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`proceeded to registration as Reg. No. 7,287,604 on January 23, 2024.
`9.
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`According to the registration, Registrant uses the SHOGUN WARRIORS mark in
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`connection with the following goods:
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`Class 28: Toy figures and accessories therefor, toy action figures
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`and accessories therefor.
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`10.
`11.
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`In the registration, Registrant claimed a date of first use of November 21, 2023.
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`Petitioner’s actual, continuous, and continuing use of the SHOGUN WARRIORS
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`mark in commerce began before Registrant filed the application for the SHOGUN WARRIORS
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`mark and/or began using the SHOGUN WARRIORS mark in commerce.
`12.
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`Registrant’s use and registration of the SHOGUN WARRIORS mark for the
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`goods listed in its registrations is likely to cause confusion, mistake, and/or lead to deception as
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`to the origin of Registrant’s goods in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
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`1125(a).
`13.
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`The likelihood of confusion is apparent in this instance because Petition and
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`Registrant use the same SHOGUN WARRIORS mark, as well as the fact that both parties’
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`marks are used in connection with action figures and accessories therefor.
`14.
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`Registrant’s use and registration of the SHOGUN WARRIORS mark is likely to
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`result in confusion and substantial damage and injury to Petitioner. Persons familiar with
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`-2-
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`Registrant’s SHOGUN WARRIORS mark are likely to believe that Registrant’s goods originate
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`with, or are licensed, sponsored or approved by Petitioner. Any such confusion would inevitably
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`result in loss of sales to Petitioner, and/or damage the goodwill and reputation that Petitioner has
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`established in the SHOGUN WARRIORS mark.
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`WHEREFORE, Toynami, Inc. requests the following relief:
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`PRAYER FOR RELIEF
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`(1)
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`That Registration No. 7,287,604 be cancelled and stricken from the Register.
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`Toynami, Inc. appoints the following attorneys for Toynami, Inc in this proceeding, as to
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`whom all matters in this proceeding should be addressed:
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`
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`Marc Karish, and Bruce Chapman, members of the State Bar of California and the firm
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`Karish & Bjorgum, PC, 119 E. Union Street, Ste. B, Pasadena, California 91103, telephone 213-
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`785-8070, facsimile 213-995-5010.
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`The U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board hereby
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`are authorized to charge Karish & Bjorgum, PC Deposit Account No. 50-5115 any deficiencies
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`or additional amounts due for this Petition for Cancellation.
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`Date: April 3, 2024
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`Respectfully Submitted,
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`KARISH & BJORGUM, PC
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`By: ___/Marc Karish/________________
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`Marc Karish
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`Eric A. Bjorgum
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`119 E. Union Street, Ste. B,
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`Pasadena, California 91103
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`Tel. 213-785-8070
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`Fax. 213-995-5010
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`Attorneys for Petitioner
`Toynami, Inc.
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`-3-
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing Petition for Cancellation has been served
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`upon the Attorney of Record for Registrant and Registrant, directly:
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`
`Michael Moore
`MATTEL, INC.
`333 Continental Boulevard
`TWR 15-1
`El Segundo, CA 90245
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`By United States first class mail, postage prepaid, this 3rd day of April, 2024.
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`___
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`/Marc Karish/___________
`Marc Karish
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`-4-
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