United States Patent and Trademark Office’s Trademark Trial and Appeal Board Grants Trademark Cancellation in favor of Lippes Mathias Client DFRobot

June 4, 2024 | Press Releases

Lippes Mathias is proud to announce that intellectual property team members Chintan A. Desai, Matthew D. Asbell, and Tony V. Pezzano, on behalf of their client, Zhiwei Robotics Corp., doing business as DFRobot, successfully secured cancellation of Atlas Scientific LLC’s trademark registration for GRAVITY for analog pH sensors in an accelerated proceeding before the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB). DFRobot’s petition for cancellation of the GRAVITY mark was based on its alleged prior use of the mark GRAVITY for analog pH sensors and other sensors under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) and a likelihood of confusion arising from Atlas Scientific LLC’s subsequent use of the GRAVITY mark that it had registered. The petition was originally brought after Atlas Scientific sent a cease-and-desist letter to one of DFRobot’s distributors, alleging infringement of its registered trademark rights. During the cancellation proceeding, the intellectual property team members successfully employed an infrequently used but effective procedure known as accelerated case resolution (ACR) to streamline the issues.  The TTAB ultimately granted DFRobot’s petition and, on June 4, 2024, ordered the cancellation of Atlas Scientific LLC’s trademark registration for GRAVITY. The TTAB decision held that priority and likelihood of confusion had been established because DFRobot had proven that its use of the GRAVITY mark in connection with analog pH sensors and other sensors preceded Atlas Scientific LLC’s use. 

Through the petition for cancellation and the ACR procedure, the attorneys, now at Lippes Mathias, were able to protect the business interests of DFRobot and its distributors from unwarranted allegations of trademark infringement while simultaneously enabling the protection of DFRobot’s own intellectual property rights. This case also highlighted the importance of companies having their attorneys conduct proper due diligence before sending renegade demand letters. 

Chintan A. Desai, Matthew D. Asbell, and Tony V. Pezzano, three attorneys whose recent addition brought a significant boost to Lippes Mathias’ intellectual property team’s litigation capabilities, successfully obtained a favorable outcome for DFRobot in the cancellation proceeding. View the full decision here.

Chintan Desai focuses his practice on all phases of patent procurement, trademark prosecution, counseling, transactions, and litigation. He represents a broad range of clients, from individual business owners to publicly traded companies, in domestic and international matters. He assists clients with the enforcement of their intellectual property rights and focuses on obtaining practical and advantageous outcomes that align with the client’s business interests. Before entering the field of law, Desai was a clinical research study coordinator at the Hospital of the University of Pennsylvania, where he facilitated interaction and collaboration between community, government, and industry stakeholders in several community health research studies. He is a graduate of Rutgers University School of Law and attended undergraduate school at the University of Pennsylvania, where he received a B.S. in bioengineering and a minor in math. In addition to being a member of the Legal Intelligencer’s Young Lawyer Editorial Board, Desai is a member of both the South Asian Bar Association of New Jersey and the Asian Pacific American Lawyers Association of New Jersey and Pennsylvania. 

With extensive knowledge and background in information technology, entertainment, medicine, and a range of other fields, Lippes Mathias partner Matthew Asbell works comfortably and efficiently with clients in diverse industries. He assists clients in clearing, obtaining, enforcing, and defending trademark, design and utility patent, and copyright rights in the United States and throughout the world. Prior to becoming a lawyer, Asbell developed a broad base of knowledge and expertise in roles he held across various industries, managing emerging singer-songwriters and recording artists, training corporate employees in software applications, and at one point, studying medicine at the Medical College of Pennsylvania and Hahnemann University School of Medicine. Asbell received his J.D. from the Benjamin N. Cardozo School of Law in 2007, and in 1993, graduated from Carnegie Mellon University with his B.S. in Psychology and a minor in music. 

In his over 30-year career as a patent litigator, Tony Pezzano has successfully tried cases involving technology innovation across a diverse range of industries—particularly consumer, recreational, and pharmaceutical products; chemical and petroleum products and processes; wireless telecommunication devices and equipment; computer software, hardware, and systems; video and audio broadcast equipment, systems, and networks; and printing engines and systems. He has appeared in numerous federal district court trials, including both bench and jury trials, and International Trade Commission (ITC) Section 337 Hearings. One of Pezzano’s major areas of focus has been his representation of brand pharmaceutical companies in suits against generic drug companies under the Hatch-Waxman Act. He has served as lead counsel for brand pharmaceutical companies in over two dozen filed Hatch-Waxman cases involving antibiotic, antifungal, treatment of asthma, treatment of male pattern baldness, anti-organ transplant rejection, and antiviral and anti-coagulant drug products. Another major focus has been his practice in ITC Section 337 investigations, where he has successfully represented both Complainants and Respondents in investigations involving biologics, SeaDoos/WaveRunners, wireless communication devices, including mobile phones and tablets, computer routers, and Segway/hoverboards. Few attorneys, if any, can match Pezzano’s record of obtaining numerous temporary restraining orders, preliminary and permanent injunctions in federal district court cases, as well as exclusion, cease and desist, and consent orders and default judgments in ITC Section 337 investigations. Pezzano is the Past President (2009) of the ITC Trial Lawyers Association and graduated from the Hofstra University School of Law with his J.D. and received his B.S. from Columbia University. 

About Lippes Mathias LLP 
Lippes Mathias is a full-service law firm with nearly 200 attorneys serving clients regionally, nationally, and internationally. With offices in Buffalo, Clarence, Albany, Long Island, New York, Rochester, Syracuse and Saratoga Springs, N.Y.; Greater Toronto Area; Chicago, Ill.; Jacksonville, Fla.; Cleveland, Ohio; San Antonio, Texas; Oklahoma City, Okla. and Washington, D.C., the firm represents publicly and privately-owned companies, private equity and venture capital firms, independent sponsors, real estate developers, financial institutions, municipalities, governmental entities, and individuals. 
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