Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1042041 Filing date: 03/13/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92068175 Party Defendant Land's End Direct Merchants, Inc. Correspondence NATHAN T HARRIS Address LANDO & ANASTASI LLP 60 STATE STREET, 23RD FLOOR BOSTON, MA 02109 UNITED STATES [email protected], [email protected], emailser- [email protected] 617-395-7013
Submission Defendant's Notice of Reliance Filer's Name Nathan T. Harris Filer's email [email protected] Signature /Nathan T. Harris/ Date 03/13/2020 Attachments L2089-5001 - Lands Ends First Notice of Reliance.pdf(4508248 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Retrobrands USA LLC,
Petitioner, Cancellation No. 92068175 v. Registration Nos. 1,394,814 Lands’ End Direct Merchants, Inc., 1,492,716
Registrant.
LANDS’ END’S FIRST NOTICE OF RELIANCE
Pursuant to 37 C.F.R. § 2.122, Registrant Lands’ End Direct Merchants, Inc. (“Lands’
End”) makes of record and will rely upon the following documents, copies of which are attached hereto.
1a. Lands’ End’s First Set of Requests for Admission (with Exhibits 1-7).
1b. Petitioner Retrobrands USA LLC’s (“Retrobrands”) Amended Responses Nos. 1-
16, and 24-27 to Lands’ End’s First Set of Requests for Admission. These responses are relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in interstate commerce.
2. Petitioner’s Answers No. 1-5 and 9 to Registrant’s First Set of Interrogatories.
These responses are relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in interstate commerce
(Nos. 1-5) and to Lands’ End’s non-abandonment of its WILLIS & GEIGER mark (No. 9).
3. Printouts from the USPTO’s Trademark Status & Document Retrieval (TSDR) database showing the details and status of 25 trademark applications filed on an intent-to-use basis by Retrobrands. These applications are relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported WILLIS &
GEIGER mark in interstate commerce.
4. Printout from the USPTO’s TSDR database of U.S. Trademark Application No.
78/100,421, which eventually issued as U.S. Trademark Registration No. 2,761,675 (the “’675
Registration”). This application is relevant to Retrobrands’ standing in this proceeding, and in
particular its lack of a bona fide intent to use its purported WILLIS & GEIGER mark in
interstate commerce.
5. A true and correct copy of the Board’s decision in Warner Bros. Ent. Inc. v. The
Kaplan Trust, Cancellation No. 92043813, 2007 WL 8304081 at *4-5 (TTAB Nov. 26, 2007), cancelling the ’675 Registration on the ground of fraud. This decision is relevant to Retrobrands’ standing in this proceeding, and in particular its lack of a bona fide intent to use its purported
WILLIS & GEIGER mark in interstate commerce.
6. A Consent Decree entered by the court in in Lands’ End, Inc. et al. v. Connecticut
Shotgun Manufacturing Co., Civ. No. 3:09-cv-00278-BBC (W.D. Wisc.) (the “2009 Litigation”), accessed at https://www.pacer.gov. The Consent Decree is relevant to Lands’ End’s non-
abandonment of its WILLIS & GEIGER mark.
7. Lands’ End’s Responses Nos. 7-9 and 12-18 to Petitioner’s First Set of Requests
for Admissions to Registrant. These responses are relevant to Lands’ End’s non-abandonment of
its WILLIS & GEIGER mark, and should in fairness be considered pursuant to 37 C.F.R. §
2.120(k)(5) so as to make not misleading the evidence offered by the inquiring party
(Retrobrands), namely, Lands’ End’s Response No. 20 to Petitioner’s First Set of Requests for
Admissions to Registrant and Lands’ End’s Response No. 10 to Petitioner’s First Set of Written
Interrogatories to Registrant. See Petitioner’s Notice of Reliance on Registrant’s Discovery
Responses at Paras. (a), (b).
- 2 - Dated: March 13, 2020 Respectfully submitted,
Nathan T. Harris John N. Anastasi Ann Lamport Hammitte LANDO & ANASTASI, LLP 60 State Street, 23rd Floor Boston, MA 02109 Tel: (617) 395-7013 Email: [email protected] Attorneys for Registrant
- 3 - CERTIFICATE OF SERVICE
I certify that the foregoing document was served upon Petitioner Retrobrands USA
LLC on March 13, 2020, by emailing a copy thereof to the following correspondence address of record for Petitioner:
/Nathan T. Harris/ Nathan T. Harris
- 4 -
Exhibit 1a
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Retrobrands USA LLC,
Petitioner, Cancellation No. 92068175 v. Registrations No. 1,394,814 Lands’ End Direct Merchants, Inc., 1,492,716
Registrant.
LANDS’ END’S FIRST SET OF REQUESTS FOR ADMISSION
Pursuant to Rule 32 of the Federal Rules of Civil Procedure and 37 C.F.R. §2.120(d),
Lands’ End Direct Merchants, Inc. (“Lands’ End”) propounds the following Requests for
Admission (“Requests”) to Retrobrands USA LLC (“Retrobrands”), to be answered fully and separately, in writing, within thirty (30) days after service of these requests, with all documents and things to be produced at the offices of Lando & Anastasi, LLP, Riverfront Office Park, One
Main Street, Eleventh Floor, Cambridge, MA 02142, or at such other place as agreed by counsel.
Definitions
The Requests are subject to the definitions set forth below:
A. The term “WILLIS & GEIGER Registrations” collectively refers to U.S. Trademark
Registrations No. 1,394,814 and 1,492,716.
B. The term “WILLIS & GEIGER Registered Marks” collectively refers to Lands’ End’s
WILLIS & GEIGER (and design) marks identified in the WILLIS & GEIGER
Registrations.
C. The term “Retrobrands Application” refers to U.S. Trademark Appl. No.
87/574,744.
D. The term “Retrobrands WILLIS & GEIGER Mark” refers to Retrobrand’s
asserted WILLIS & GEIGER trademark that is the subject of the Retrobrands
Application.
E. The term “document” is synonymous in meaning and equal in scope to its usage
in Federal Rule of Civil Procedure 34(a). A draft or non-identical copy is a
separate document within the meaning of this term. Any document bearing any
marks, including, without limitation, initials, stamped information, comments or
notations not a part of the original text is also a separate document within the
meaning of this term.
F. The term “person” means any natural person or any business, legal, or
governmental entity or association.
G. When referring to a person, to “identify” means to give the person’s full name,
present or last known address, and, when referring to a natural person, the present
or last known place of employment.
H. When referring to documents, to “identify” means to give, to the extent known,
the (i) type of document; (ii) general subject matter; (iii) date of the document;
and (iv) author(s), addressee(s), and recipient(s).
I. The term “Lands’ End” as well as the party’s full or abbreviated name or a
pronoun referring to a party, means Lands’ End Direct Merchants, Inc. and, where
applicable, the company’s officers, directors, employees, agents, affiliates, and
predecessors in interest.
J. The terms “you,” “your,” and “Retrobrands” as well as the party’s full or
abbreviated name or a pronoun referring to a party, means Retrobrands USA
- 2 - LLC, and, where applicable, the company’s officers, directors, employees, agents,
affiliates, and predecessors in interest.
K. The term “concerning” means referring to, describing, evidencing, or constituting.
L. The singular shall include the plural and vice versa; the terms “and” and “or” are
both conjunctive and disjunctive.
Instructions
1. Where a claim of privilege is asserted in objecting to any disclosure, and any information is withheld on the basis of such assertion, specify in log form the nature of the document or disclosure, identify by name, address, title and business affiliation the writer, the addressee, and all recipients thereof, and set forth the general subject matter to which the information relates, and its date.
2. A reason should be stated for any objection. The response to each Request should either specifically admit or deny the matter, or set forth in detail the reason(s) why the matter be be truthfully admitted or denied. A denial should fairly meet the substance of the Request, and when good faith requires, an answer should specify as much of the matter as true and qualify or deny the remainder.
3. A lack of information or knowledge cannot be given as a reason for failure to admit or deny unless the response indicates that reasonable inquiry has been made and that information known or readily obtainable is insufficient to enable admission or denial of the matter.
4. To the extent that any Request is objected to as vague or ambiguous, please identify the particular words, terms, or phrases that are asserted to make such Request vague or
- 3 - ambiguous, specify the meaning actually attributed by you to such words, terms, or phrases for purposes of your response, and respond to the Request accordingly.
5. These Interrogatories are continuing and may require supplemental response and production. If any information responsive to any Request is not presently known, identifiable or available, include a statement to that effect and furnish the information when known, identifiable, or available.
- 4 - DOCUMENT REQUESTS
Request No. 1
Admit that Retrobrands has no documents in its possession, custody, or control evidencing its intent to use the Retrobrands WILLIS & GEIGER Mark on or before August 18, 2017.
Request No. 2 Admit that as of August 18, 2017, Retrobrands had prepared no business or marketing plans or style guides concerning its intended use of the Retrobrands WILLIS & GEIGER Mark.
Request No. 3 Admit that the document attached hereto as Exhibit 1 is a “style guide” created by Retrobrands for the Retrobrands WILLIS & GEIGER Mark.
Request No. 4 Admit that the earliest draft of the style guide attached hereto as Exhibit 1 was created after August 18, 2017.
Request No. 5 Admit that the style guide attached hereto as Exhibit 1 does not include any definite or concrete plans or actions previously taken or intended to be taken by Retrobrands to obtain, manufacture, market, or sell any products under the Retrobrands WILLIS & GEIGER Mark.
Request No. 6 Admit that the style guide attached hereto as Exhibit 1 does not include any definite or concrete plans or actions previously taken or intended to be taken by Retrobrands to license the Retrobrands WILLIS & GEIGER Mark.
Request No. 7 Admit that Retrobrands had no communications on or before August 18, 2017 with any potential manufacturer of goods to be sold under the WILLIS & GEIGER Mark.
Request No. 8 Admit that Retrobrands had no communications on or before August 18, 2017 with any potential licensee concerning the Retrobrands WILLIS & GEIGER Mark.
Request No. 9 Admit that Retrobrands had no communications on or before August 18, 2017 with Lisa Marks Associates, Inc. or any other actual or potential licensing agents concerning the Retrobrands WILLIS & GEIGER Mark.
- 5 -
Request No. 10 Admit that the document attached hereto as Exhibit 2 is a true and correct copy of a February 28, 2019 email from Mickey Marks of Lisa Marks Associates, Inc. (“LMA”) to counsel for Lands’ End, copying Jeffrey Kaplan of Retrobrands.
Request No. 11 Admit that Mr. Marks asserts, in the February 28, 2019 email, that a July 18, 2018 email exchange with Mr. Kaplan “has been LMA’s only discussion about this with Jeff/RetroBrands – as ownership of this brand has not been confirmed, LMA has taken no action whatsoever regarding Willis & Geiger other than to take a look at the attached Style Guide that Jeff shared with us and send Jeff the email above – that is all.”
Request No. 12 Admit that the statements made in Mr. Marks’ February 28, 2019 email attached hereto as Exhibit 2 are true and accurate, to the best of Retrobrands’ knowledge.
Request No. 13 Admit that Retrobrands had no communications prior to January 1, 2018 with Lisa Marks Associates, Inc. concerning the Retrobrands WILLIS & GEIGER Mark.
Request No. 14 Admit that Lisa Marks Asssociates, Inc. has never taken any action regarding the Retrobrands WILLIS & GEIGER Mark.
Request No. 15 Admit that Retrobrands is the owner of U.S. Trademark Registration. No. 4,414,932 (the “’932 Registration”) for a design mark incorporating the wording KEN-L RATION for “Hooded sweat shirts” in class 25 (the “KEN-L RATION Mark”).
Request No. 16 Admit that the image attached as Exhibit 3 hereto is a true and correct copy of a specimen of use submitted with the application for the ’932 Registration on April 12, 2013 by Applicant Jeffrey Kaplan.
Request No. 17 Admit that the apparel shown in the specimen of use for the ’932 Registration did not actually bear the KEN-L RATION Mark, but was digitally altered or manipulated to apply the mark to a photograph of apparel that did not bear the KEN-L RATION Mark.
Request No. 18 Admit that the photograph of the model and sweatshirt (without the KEN-L RATION Mark) used to create the specimen of use for the ’932 Registration is widely available on the Internet, as seen in the printouts attached hereto as Exhibit 4.
Request No. 19 Admit that Retrobrands and/or Mr. Kaplan created the specimen of use for the ’932 Registration using
- 6 - Request No. 20 Admit that, to the best of Retrobrands’ knowledge, the apparel shown in the specimen of use for the ’932 Registration did not physically exist as of April 12, 2013, the filing date of the application for the ’932 Registration.
Request No. 21 Admit that the apparel shown in the specimen of use for the ’932 Registration was not being offered for sale by Retrobrands and/or Mr. Kaplan as of April 12, 2013, the filing date of the application for the ’932 Registration.
Request No. 22 Admit that Retrobrands and/or Mr. Kaplan has never used the KEN-L RATION Mark of the ’932 Registration in commerce.
Request No. 23 Admit that the ’932 Registration is invalid on the grounds of non-use and/or fraud.
Request No. 24 Admit that the document attached hereto as Exhibit 5 is a true and correct copy of a page on Lisa Marks Associates, Inc.’s website, accessible at
Request No. 25 Admit that, to the best of Retrobrands’ knowledge, Lisa Marks Associates, Inc. is aware that the specimen of use for the ’932 Registration is not authentic and/or that the ’932 Registration is invalid on the grounds of non-use and/or fraud.
Request No. 26 Admit that Retrobrands is the owner of U.S. Trademark Registration. No. 4,138,855 (the “’855 Registration”) for a design mark incorporating the wording TENDER VITTLES for “T- Shirts” in class 25 (the “TENDER VITTLES Mark”).
Request No. 27 Admit that the image attached as Exhibit 6 hereto is a true and correct copy of a specimen of use submitted with the application for the ’855 Registration on September 13, 2011 by Applicant Jeffrey Kaplan, and again with a Section 8 & 15 Declaration on May 1, 2018.
Request No. 28 Admit that the apparel shown in the specimen of use for the ’855 Registration did not actually bear the TENDER VITTLES Mark, but was digitally altered or manipulated to apply the mark to a photograph of apparel that did not bear the TENDER VITTLES Mark.
Request No. 29 Admit that the photograph of the model and sweatshirt (without the TENDER VITTLES Mark) used to create the specimen of use for the ’855 Registration is widely available on the Internet, as seen in the printouts attached hereto as Exhibit 7.
- 7 -
Request No. 30 Admit that Retrobrands and/or Mr. Kaplan created the specimen of use for the ’855 Registration using an online tool for designing apparel.
Request No. 31 Admit that, to the best of Retrobrands’ knowledge, the apparel shown in the specimen of use for the ’855 Registration did not physically exist as of September 13, 2011, the filing date of the application for the ’855 Registration.
Request No. 32 Admit that the apparel shown in the specimen of use for the ’855 Registration was not being offered for sale by Retrobrands and/or Mr. Kaplan as of May 1, 2018, the filing date of the Section 8 & 15 Declaration for the ’855 Registration.
Request No. 33 Admit that Retrobrands and/or Mr. Kaplan has never used the TENDER VITTLES Mark of the ’855 Registration in commerce.
Request No. 34 Admit that the ’855 Registration is invalid on the grounds of non-use and/or fraud.
Request No. 35 Admit that, as seen in Exhibit 5 hereto, Lisa Marks Associates, Inc.’s website lists the Retrobrands TENDER VITTLES Mark as one of its “consumer brands.”
Request No. 36 Admit that, to the best of Retrobrands’ knowledge, Lisa Marks Associates, Inc. is aware that the specimen of use for the ’855 Registration is not authentic and/or that the ’855 Registration is invalid on the grounds of non-use and/or fraud.
Date: March 29, 2019 Nathan T. Harris John N. Anastasi Ann Lamport Hammitte LANDO & ANASTASI, LLP One Main Street – 11th Floor Cambridge, MA 02142 Tel: (617) 395-7013 Email: [email protected] Attorneys for Registrant
- 8 -
CERTIFICATE OF SERVICE
I certify that the foregoing document was served upon Petitioner Retrobrands USA LLC on March 29, 2019, by emailing a copy thereof to the following correspondence address of record for Registrant:
/Nathan T. Harris/ Nathan T. Harris
- 9 - RFA Exhibit 1
RFA Exhibit 2 Nathan T. Harris
From: Mickey Marks
Hi Natha … This is Mi ke Marks a d I a the Ma agi g Dire tor a d Part er at LMA … O er the ears, our fir has a ted as Li e si g Age t for so e of the RetroBra ds USA trade arks – it is i porta t to ote that LMA does ot represe t a d has e er represe ted Willis & Geiger o ehalf of RetroBra ds as it is our u dersta di g that o ership of this trade ark has ot ee o fir ed … O / / , Jeff Kapla shared a St le Guide atta hed that he had put together for the Willis & Geiger ra d a d asked our opi io of it … He also e plai ed that this ra d as ot et i the RetroBra ds portfolio, ut that he as orki g o fi alizi g that.
I a a fa of this ra d a d as a good usto er i its he da he I as a ou g a orki g i the ad ertisi g usi ess a d respo ded to Jeff ith the follo i g e ail o / / after seei g the St le Guide Jeff had shared:
Hi Jeff – es, e spoke a out this … e LOVE this ra d – i fa t I ha e a ite s pur hased fro their atalogues dati g a k ultiple de ades ago … I used to e a ig usto er of their utto ‐do dress shirts hi h ere arti ulated i the el o s for greater o fort/ o e e t , I also still ha e a d use a great Willis & Geiger leather rief ase hi h I a take to a eeti gs e ha e … We ha e stro g relatio ships ith the ajor apparel o pa ies a d are happ to dis uss this opportu it ith the he RetroBra ds USA lears o ership of this trade ark … please keep us posted o ti i g!
Co grats, Mi ke
That has ee LMA’s o l dis ussio a out this ith Jeff/RetroBra ds – as o ership of this ra d has ot ee o fir ed, LMA has take o a tio hatsoe er regardi g Willis & Geiger other tha to take a look at the atta hed St le Guide that Jeff shared ith us a d se d Jeff the e ail a o e – that is all. O er the ourse of the o ths et ee / / a d o e o asio all asked Jeff at RetroBra ds USA a out the status of Willis & Geiger i RetroBra ds portfolio a d ha e u derstood that this o ti ues to e a ork i progress … We ha e o dis o era le i for atio a d appre iate our o fir atio that this has ee helpful a d full respo si e to our su poe a.
We are happ to s hedule a all ith ou if ou thi k that ould e helpful.
All the est, Mi ke
Mickey Marks Managing Director Lisa Marks Associates, Inc. (LMA) A Licensing and Marketing Agency
181 Westchester Avenue Suite 304-H Port Chester,NY10573
1 Ph: 914.933.3900 Fax: 914.933.3901
[email protected] www.lma-inc.com
Please c o nside r the e nvironme nt be fo re printing this e mail∙
This e-mail and any files transmitted with it may contain confidential information and is intended solely for use by the individual to whom it is addressed. If you received this e-mail in error, please notify the sender, do not disclose its contents to others and delete it from your system
Fro : Natha T. Harris
Mr. Kapla :
Retro ra ds' I itial Dis losures, sig ed ou a d dated August , , represe t that Lisa Marks Asso iates a d/or its orporate offi ers " ould e Petitio er's li e si g age t a d is e pe ted to ha e dis o era le i for atio regardi g Petitio er's i te ded us of the registered ark." A ordi gl , e are seeki g dis o era le i for atio fro the .
Natha T. Harris Part er LANDO & ANASTASI, LLP Pro e IP Stre gth. Creati e Solutio s.
T + ‐ ‐ / F + ‐ ‐ E ail: harris@lala . o We : WWW.LALAW.COM Li kedi : Natha Harris
This e ail essage a d a atta h e ts a o tai o fide tial or pri ileged i for atio . If ou are ot the i te ded re ipie t, please otif us i ediatel — repl i g to this essage—a d destro all opies of this essage a d a atta h e ts. Tha k ou.
‐‐‐‐‐Origi al Message‐‐‐‐‐ Fro : Jeff
Dear Mr. Harris:
You are harassi g li e si g age t ho does ot represe t e for the ark WILLIS & GEIGER.
M dis o er a s ers stated I just se t Lisa Marks & Asso iates a op of ra d guide a d all rele a t do s ha e ee se t to ou. 2 A further harass e t of Lisa Marks a d Asso iates ill result i fili g a prote tio order for Lisa Marks a d Asso aites ith the TTAB agai st ou a d our lie t.
Tha k ou
Jeff Kapla Retro ra ds USA LLC
3 RFA Exhibit 3 3/28/2019 webcontent (512×512)
https://tsdrsec.uspto.gov/ts/cd/casedoc/sn85903397/FTK20130416074727/3/webcontent?scale=1 1/1 RFA Exhibit 4 3/28/2019 (44) Pinterest
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https://www.pinterest.com/baltimoremarry/hoodies/?lp=true 4/4 RFA Exhibit 5 3/28/2019 Consumer Brands — Lisa Marks Associates, Inc.
Home (/) About Clients Our Work (/our-work) Press (/press) Contact (/contact) (/)
CONSUMER BRANDS
(http://www.pez.com/) (http://www.warheads.com) (http://www.moonpie.com) (https://flavorice.com)
(http://www.boscoworld.com) (http://www.chupachupsuniverse.com/)(http://www.dumdumpops.com)(http://www.retrobrands.net)
(http://www.lionel.com) (http://www.mentoslicensing.com)(http://www.retrobrands.net) (http://www.smarties.com)
(http://www.retrobrands.net) (https://wylerslight.com) (https://otterpops.com) (http://retrobrands.net/)
ART & ENTERTAINMENT
(https://www.petermarsauthentic.com)(http://www.avantipress.com) (http://www.inconceivablestudios.com)(http://www.inconceivablestud
https://www.lma-inc.com/consumer-brands 1/2 3/28/2019 Consumer Brands — Lisa Marks Associates, Inc.
“Working with LMA has been a great experience. LMA always goes the extra mile to ensure the success of the program from product development to marketing and retail sell-through.”
— BILL BAUM, CEO BAUM BROTHERS, INC
Lisa Marks Associates, Inc. | 181 Westchester Avenue, Suite 304-H. Port Chester, NY 10573 | 914.933.3900 (tel:9149333900) | [email protected] (mailto:[email protected]) © 2018 Lisa Marks Associates, Inc. All Rights Reserved.
https://www.lma-inc.com/consumer-brands 2/2 RFA Exhibit 6 3/28/2019 webcontent (400×400)
https://tsdrsec.uspto.gov/ts/cd/casedoc/sn85421351/SPE20180502165825/1/webcontent?scale=1 1/1 RFA Exhibit 7 3/28/2019 Positive T-Shirts and Inspirational T-Shirts
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https://www.google.com/search?hl=en&q=dream+shirts&tbm=isch&tbs=simg:CAQSlgEJrCY43OOj3TMaigELEKjU2AQaBAgVCAoMCxCwjKcIGmEKX… 1/1 Exhibit 1b IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Retrobrands USA LLC,
Petitioner, v.
Lands’ End Direct Merchants, Inc.,
Respondent ______/ Cancellation No. 92068175
Registrations No. 1,394,814 1,492,716
PETITIONER’S AMENDED RESPONSES TO RESPONDENT’S FIRST REQUEST FOR ADMISSIONS
Petitioner RETROBRANDS USA, LLC (hereinafter “Petitioner”), hereby responds to
Respondent Land’s End Direct Merchants, Inc. (hereinafter “Respondent”) First Set of Requests for Admissions to Petitioner as follows:
AMENDED RESPONSES TO REQUEST FOR ADMISSIONS
Request No. 1:
Admit that Retrobrands has no documents in its possession, custody, or control evidencing its intent to use the Retrobrands WILLIS & GEIGER Mark on or before August 18, 2017.
Response: Denied, Respondent already has a copy of Petitioner’s Brand Style Guide.
Request No. 2:
Admit that as of August 18, 2017, Retrobrands had prepared no business or marketing plans or style guides concerning its intended use of the Retrobrands WILLIS & GEIGER Mark.
Response: Admitted,
Page 1 of 9 Request No. 3:
Admit that the document attached hereto as Exhibit 1 is a “style guide” created by Retrobrands for the Retrobrands WILLIS & GEIGER Mark.
Response: Admitted.
Request No. 4:
Admit that the earliest draft of the style guide attached hereto as Exhibit 1 was created after August 18, 2017.
Response: Denied.
Request No. 5:
Admit that the style guide attached hereto as Exhibit 1 does not include any definite or concrete plans or actions previously taken or intended to be taken by Retrobrands to obtain, manufacture, market, or sell any products under the Retrobrands WILLIS & GEIGER Mark.
Response: Denied
Request No. 6:
Admit that the style guide attached hereto as Exhibit 1 does not include any definite or concrete plans or actions previously taken or intended to be taken by Retrobrands to license the Retrobrands WILLIS & GEIGER Mark.
Response: Denied.
Request No. 7:
Admit that Retrobrands had no communications on or before August 18, 2017 with any potential manufacturer of goods to be sold under the WILLIS & GEIGER Mark.
Response: Admitted.
Request No. 8:
Admit that Retrobrands had no communications on or before August 18, 2017 with any potential licensee concerning the Retrobrands WILLIS & GEIGER Mark.
Response: Admitted.
Page 2 of 9 Request No. 9:
Admit that Retrobrands had no communications on or before August 18, 2017 with Lisa Marks Associates, Inc. or any other actual or potential licensing agents concerning the Retrobrands WILLIS & GEIGER Mark.
Response: Admitted.
Request No. 10:
Admit that the document attached hereto as Exhibit 2 is a true and correct copy of a February 28, 2019 email from Mickey Marks of Lisa Marks Associates, Inc. (“LMA”) to counsel for Lands’ End, copying Jeffrey Kaplan of Retrobrands.
Response: Admitted.
Request No. 11:
Admit that Mr. Marks asserts, in the February 28, 2019 email, that a July 18, 2018 email exchange with Mr. Kaplan “has been LMA’s only discussion about this with Jeff/ RetroBrands – as ownership of this brand has not been confirmed, LMA has taken no action whatsoever regarding Willis & Geiger other than to take a look at the attached Style Guide that Jeff shared with us and send Jeff the email above – that is all.”
Response: Denied that the email was the only communication with LMA. Retrobrands admits that it did have a brief verbal discussion with LMA.
Request No. 12:
Admit that the statements made in Mr. Marks’ February 28, 2019 email attached hereto as Exhibit 2 are true and accurate, to the best of Retrobrands’ knowledge.
Response: Admitted.
Request No. 13:
Admit that Retrobrands had no communications prior to January 1, 2018 with Lisa Marks Associates, Inc. concerning the Retrobrands WILLIS & GEIGER Mark.
Response: Admitted.
Request No. 14:
Admit that Retrobrands is the owner of U.S. Trademark Registration. No. 4,414,932 (the “’932 Registration”) for a design mark incorporating the wording KEN-L RATION for “Hooded sweat shirts” in class 25 (the “KEN-L RATION Mark”).
Page 3 of 9 Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff admits it owns the trademark for KEN-L RATION for hooded sweat shirts and also for dog food.
Request No. 15:
Admit that the image attached as Exhibit 3 hereto is a true and correct copy of a specimen of use submitted with the application for the ’932 Registration on April 12, 2013 by Applicant Jeffrey Kaplan.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff admits that the image attached as Exhibit 3 hereto is a true and correct copy of a specimen of use submitted with the application for the ’932 Registration on April 12, 2013 by Applicant Jeffrey Kaplan.
Request No. 16:
Admit that the image attached as Exhibit 3 hereto is a true and correct copy of a specimen of use submitted with the application for the ’932 Registration on April 12, 2013 by Applicant Jeffrey Kaplan.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff admits that the image attached as Exhibit 3 hereto is a true and correct copy of a specimen of use submitted with the application for the ’932 Registration on April 12, 2013 by Applicant Jeffrey Kaplan.
Request No. 17:
Admit that the apparel shown in the specimen of use for the ’932 Registration did not actually bear the KEN-L RATION Mark, but was digitally altered or manipulated to apply the mark to a photograph of apparel that did not bear the KEN-L RATION Mark.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the apparel shown in the specimen of use for the ’932 Registration did not actually bear the KEN-L RATION Mark, but was digitally altered or manipulated to apply the mark to a photograph of apparel that did not bear the KEN-L RATION Mark.
Page 4 of 9 Request No. 18:
Admit that the photograph of the model and sweatshirt (without the KEN-L RATION Mark) used to create the specimen of use for the ’932 Registration is widely available on the Internet, as seen in the printouts attached hereto as Exhibit 4.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the photograph of the model and sweatshirt (without the KEN-L RATION Mark) used to create the specimen of use for the ’932 Registration is widely available on the Internet, as seen in the printouts attached hereto as Exhibit 4.
Request No. 19:
Admit that Retrobrands and/or Mr. Kaplan created the specimen of use for the ’932 Registration using
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that Retrobrands and/or Mr. Kaplan created the specimen of use for the ’932 Registration using
Request No. 20:
Admit that, to the best of Retrobrands’ knowledge, the apparel shown in the specimen of use for the ’932 Registration did not physically exist as of April 12, 2013, the filing date of the application for the ’932 Registration.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies the apparel shown in the specimen of use for the ’932 Registration did not physically exist as of April 12, 2013, the filing date of the application for the ’932 Registration.
Request No. 21:
Admit that the apparel shown in the specimen of use for the ’932 Registration was not being offered for sale by Retrobrands and/or Mr. Kaplan as of April 12, 2013, the filing date of the application for the ’932 Registration.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the apparel shown in the specimen of use for the ’932 Registration was not being offered for sale by Retrobrands and/or Mr. Kaplan as of April 12, 2013, the filing date of the application for the ’932 Registration.
Page 5 of 9 Request No. 22:
Admit that Retrobrands and/or Mr. Kaplan has never used the KEN-L RATION Mark of the ’932 Registration in commerce.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that Retrobrands and/or Mr. Kaplan has never used the KEN-L RATION Mark of the ’932 Registration in commerce.
Request No. 23:
Admit that the ’932 Registration is invalid on the grounds of non-use and/or fraud.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the ’932 Registration is invalid on the grounds of non-use and/or fraud.
Request No. 24:
Admit that the document attached hereto as Exhibit 5 is a true and correct copy of a page on Lisa Marks Associates, Inc.’s website, accessible at
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff admits Lisa Marks and Associates is the licensing agent for KEN-L RATION and TREVCO is an active licensee for KEN-L RATION apparel including hooded sweatshirts.
Request No. 25:
Admit that, to the best of Retrobrands’ knowledge, Lisa Marks Associates, Inc. is aware that the specimen of use for the ’932 Registration is not authentic and/or that the ’932 Registration is invalid on the grounds of non-use and/or fraud.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark KEN-L RATION is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies Lisa Marks Associates, Inc. is aware that the specimen of use for the ’932 Registration is not authentic and/or that the ’932 Registration is invalid on the grounds of non-use and/or fraud.
Page 6 of 9 Request No. 26:
Admit that Retrobrands is the owner of U.S. Trademark Registration. No. 4,138,855 (the “’855 Registration”) for a design mark incorporating the wording TENDER VITTLES for “T Shirts ”in class 25 (the “TENDER VITTLES Mark”).
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff admits it owns the trademark for TENDER VITTLES for T- Shirts and also for cat food.
Request No. 27:
Admit that the image attached as Exhibit 6 hereto is a true and correct copy of a specimen of use submitted with the application for the ’855 Registration on September 13, 2011 by Applicant Jeffrey Kaplan, and again with a Section 8 & 15 Declaration on May 1, 2018.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff admits that the image attached as Exhibit 6 hereto is a true and correct copy of a specimen of use submitted with the application for the ’855 Registration on September 13, 2011 by Applicant Jeffrey Kaplan, and again with a Section 8 & 15 Declaration on May 1, 2018.
Request No. 28:
Admit that the apparel shown in the specimen of use for the ’855 Registration did not actually bear the TENDER VITTLES Mark, but was digitally altered or manipulated to apply the mark to a photograph of apparel that did not bear the TENDER VITTLES Mark.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the apparel shown in the specimen of use for the ’855 Registration did not actually bear the TENDER VITTLES Mark, but was digitally altered or manipulated to apply the mark to a photograph of apparel that did not bear the TENDER VITTLES Mark.
Request No. 29:
Admit that the photograph of the model and sweatshirt (without the TENDER VITTLES Mark) used to create the specimen of use for the ’855 Registration is widely available on the Internet, as seen in the printouts attached hereto as Exhibit 7.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the photograph of the model and sweatshirt (without
Page 7 of 9 the TENDER VITTLES Mark) used to create the specimen of use for the ’855 Registration is widely available on the Internet, as seen in the printouts attached hereto as Exhibit 7.
Request No. 30:
Admit that Retrobrands and/or Mr. Kaplan created the specimen of use for the ’855 Registration using an online tool for designing apparel.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that Retrobrands and/or Mr. Kaplan created the specimen of use for the ’85 Registration using an online tool for designing apparel.
Request No. 31:
Admit that, to the best of Retrobrands’ knowledge, the apparel shown in the specimen of use for the ’855 Registration did not physically exist as of September 13, 2011, the filing date of the application for the ’855 Registration.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the apparel shown in the specimen of use for the ’855 Registration did not physically exist as of September 13, 2011, the filing date of the application for the ’855 Registration.
Request No. 32:
Admit that the apparel shown in the specimen of use for the ’855 Registration was not being offered for sale by Retrobrands and/or Mr. Kaplan as of May 1, 2018, the filing date of the Section 8 & 15 Declaration for the ’855 Registration.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the apparel shown in the specimen of use for the ’855 Registration was not being offered for sale by Retrobrands and/or Mr. Kaplan as of May 1, 2018, the filing date of the Section 8 & 15 Declaration for the ’855 Registration.
Request No. 33:
Admit that Retrobrands and/or Mr. Kaplan has never used the TENDER VITTLES Mark of the ’855 Registration in commerce.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that Retrobrands and/or Mr. Kaplan has never used the TENDER VITTLES Mark of the ’855 Registration in commerce.
Page 8 of 9 Request No. 34:
Admit that the ’855 Registration is invalid on the grounds of non-use and/or fraud.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that the ’855 Registration is invalid on the grounds of non-use and/or fraud.
Request No. 35:
Admit that, as seen in Exhibit 5 hereto, Lisa Marks Associates, Inc.’s website lists the Retrobrands TENDER VITTLES Mark as one of its “consumer brands.”
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff admits that, as seen in Exhibit 5 hereto, Lisa Marks Associates, Inc.’s website lists the Retrobrands TENDER VITTLES Mark as one of its “consumer brands.”
Request No. 36:
Admit that, to the best of Retrobrands’ knowledge, Lisa Marks Associates, Inc. is aware that the specimen of use for the ’855 Registration is not authentic and/or that the ’855 Registration is invalid on the grounds of non-use and/or fraud.
Response: Plaintiff objects to this Request on the ground that the Request is Irrelevant because the trademark TENDER VITTLES is not part of these proceedings. Subject to and without waiving this Objection, Plaintiff denies that, to the best of Retrobrands’ knowledge, Lisa Marks Associates, Inc. is aware that the specimen of use for the ’855 Registration is not authentic and/or that the ’855 Registration is invalid on the grounds of non-use and/or fraud. Dated: May 9th 2019
Respectfully submitted, /Jeffrey Kaplan/, Pro Se
CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing was served via electronic mail on this 9th Day of May 2019 on the following email address:
[email protected] Att: Nathan T. Harris, Atty for Respondent
BY: /s/ Jeffrey Kaplan, Pro Se
Page 9 of 9
Exhibit 2
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Retrobrands USA LLC,
Petitioner, v.
Lands’ End Direct Merchants, Inc.,
Registrant. ______/ Cancellation No. 92068175
Registrations No. 1,394,814 1,492,716
PETITIONER’S ANSWERS TO REGISRANT’S FIRST SET OF INTERROGATORIES Petitioner RETROBRANDS USA, LLC (hereinafter “Petitioner”), hereby serves its answers to Registrant LAND’S END DIRECT MERCHANTS INC. (hereinafter “Registrant”)
First Set of Interrogatories to Petitioner as follows:
ANSWERS TO INTERROGATORIES
Interrogatory No. 1 Set forth the complete factual and legal basis for your contention that you had a bona fide intention to use the Retrobrands Mark in commerce as of August 17, 2017, and that you have standing in this proceeding. Answer: Petitioner is in the business of reviving and relaunching abandoned brands. Petitioner has filed a USPTO application under Serial No. 87574744 for the Willis & Geiger trademark which was denied based on a 2(d) likelihood of confusion argument by the Examiner. The Board has already ruled that Petitioner has standing. Interrogatory No. 2 Identify any agreements between you and anyone else concerning the Retrobrands Mark, the Retrobrands Application, or this proceeding.
1
Answer: Petitioner has no agreements.
Interrogatory No. 3
Identify anyone with a financial or other real interest in the Retrobrands Mark, the Retrobrands Application, or this proceeding, including but not limited to any actual or prospective licensee, assignee, purchaser, or investor.
Answer: Petitioner has received interest from Lisa Marks & Associates to become Petitioner’s licensing agency once Petitioner is successful in obtaining the ownership of the Willis & Geiger trademark.
Interrogatory No. 4
Identify any past, current, or planned future uses of the Retrobrands Mark in commerce, including the date(s) and nature of such uses.
Answer: Petitioner has prepared a brand style guide which denotes the future planned uses of the Willis & Geiger trademark.
Interrogatory No. 5
Identify and quantify any payments you have received in connection with the Retrobrands Mark, the Retrobrands Application, or this proceeding, including but not limited to any sales revenue, licensing revenue, advance payments, investment payments, or payments or reimbursements for legal fees or other costs.
Answer: None
Interrogatory No. 6
Identify, by beginning and ending month and year, any range(s) of time during which you assert that Lands’ End failed to make a bona fide use of the WILLIS & GEIGER Registered Marks in commerce, and identify all documents in support thereof.
Answer: Registrant has received Petitioner’s proposed ACR 1st and 2nd stipulation documents which outline all evidence and documents requested in Interrogatory No. 6.
2
Interrogatory No. 7
Set forth the complete factual and legal basis for your contention, in Paragraph 8 of the Consolidated Petition for Cancellation filed in this proceeding on March 20, 2018 (the “Petition”), that “Registrant has abandoned Registration Nos. 1394814 and 1492716 by discontinuing use of the marks for a period of three (3) years or more in the United States with no intent to resume use.”
Answer: Registrant has received Petitioner’s proposed ACR 1st and 2nd stipulation documents which outline all evidence and documents requested in Interrogatory No. 7.
Interrogatory No. 8
Set forth the complete factual and legal basis for any contention by you that any sales by Lands’ End of goods or services under or in connection with the WILLIS & GEIGER Registered Marks were residual sales from old clothing inventories, token sales, de minimis sales, or otherwise not bona fide sales, including (i) the dates of such sales, (ii) the nature of such sales, and (iii) any factual or legal basis for why such sales are not bona fide use of a mark in the ordinary course of trade.
Answer: Registrant has received Petitioner’s proposed ACR 1st and 2nd stipulation documents which outline all evidence and documents requested in Interrogatory No. 8.
Interrogatory No. 9
For the period between 1984 and 1999, state the complete factual and legal basis for any contention by you that:
(i) Lands’ End abandoned the WILLIS & GEIGER Registered Marks at any time during that period;
(ii) Lands’ End failed to make a bona fide use of the WILLIS & GEIGER Registered Marks in commerce at any time during that period;
(iii) Lands’ End lacked common law rights in the WILLIS & GEIGER Registered Marks at any time during that period; and/or
(iv) Lands’ End had no intent to resume use of the WILLIS & GEIGER Registered Marks at any time during that period.
Answer: Petitioner does not believe Registrant abandoned their marks between the years 1984 and 1999.
3
Interrogatory No. 10
For each year from 1999 until 2017, state the complete factual and legal basis for any contention by you that:
(i) Lands’ End abandoned the WILLIS & GEIGER Registered Marks during that year;
(ii) Lands’ End failed to make a bona fide use of the WILLIS & GEIGER Registered Marks in commerce during that year;
(iii) any sales by Lands’ End that year of goods bearing the WILLIS & GEIGER Registered Marks were not bona fide uses of the marks in commerce;
(iv) Lands’ End lacked common law rights in the WILLIS & GEIGER Registered Marks during that year; and/or
(v) Lands’ End had no intent to resume use of the WILLIS & GEIGER Registered Marks during that year.
Answer: Registrant has received Petitioner’s proposed ACR 1st and 2nd stipulation documents which outline all evidence and documents requested in Interrogatory No. 10.
Interrogatory No. 11
Identify each person who supplied documents or information for, or participated in responding to, any discovery requests served on you by Lands’ End in this proceeding.
Answer: 1. Jeffrey Kaplan 2. Land’s End Customer Care representative named Judith S. 3. Mickey Marks, Partner, Lisa Marks & Associates Licensing Agency
RETROBRANDS USA, LLC
By: /Jeffrey Kaplan/ Managing Member
4
CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the foregoing was served via U.S. Priority Mail and email on the following date of August 10th 2018 Nathan T. Harris John N. Anastasi Ann Lamport Hammitte LANDO & ANASTASI, LLP One Main Street – 11th Floor Cambridge, MA 02142 Tel: (617) 395-7013 Email: [email protected] Attorneys for Registrant Signed /Jeffrey Kaplan/, Petitioner
5
Exhibit 3
Generated on: This page was generated by TSDR on 2020-03-12 09:04:55 EDT Mark: CHIPWICH CHOCOLATE CHIP COOKIE MARSHMALLOW SANDWICH
US Serial Number: 86428997 Application Filing Oct. 20, 2014 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Dec. 18, 2017 Publication Date: Sep. 20, 2016 Notice of Nov. 15, 2016 Allowance Date: Date Abandoned: Dec. 18, 2017
Mark Information
Mark Literal CHIPWICH CHOCOLATE CHIP COOKIE MARSHMALLOW SANDWICH Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Disclaimer: "CHOCOLATE CHIP COOKIE MARSHMALLOW SANDWICH" Related Properties Information
Claimed Ownership 4062133, 4153293 of US Registrations: 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: Cookies International 030 - Primary Class U.S Class(es): 046 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Fax: 954-486-9558 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Dec. 18, 2017 ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED Dec. 18, 2017 ABANDONMENT - NO USE STATEMENT FILED 99999 May 16, 2017 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED May 12, 2017 EXTENSION 1 GRANTED 98765 May 12, 2017 EXTENSION 1 FILED 98765 May 12, 2017 TEAS EXTENSION RECEIVED Nov. 15, 2016 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Sep. 20, 2016 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Sep. 20, 2016 PUBLISHED FOR OPPOSITION Aug. 31, 2016 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Aug. 10, 2016 APPROVED FOR PUB - PRINCIPAL REGISTER Feb. 10, 2016 REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED Aug. 10, 2015 REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED Feb. 09, 2015 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Feb. 09, 2015 LETTER OF SUSPENSION E-MAILED 6332 Feb. 09, 2015 SUSPENSION LETTER WRITTEN 82438 Feb. 06, 2015 ASSIGNED TO EXAMINER 82438 Oct. 28, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Oct. 23, 2014 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: RAPPAPORT, SETH A Law Office LAW OFFICE 104 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: Nov. 15, 2016 Generated on: This page was generated by TSDR on 2020-03-12 09:04:34 EDT Mark: FEEN-A-MINT
US Serial Number: 86591685 Application Filing Apr. 09, 2015 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Apr. 06, 2018 Publication Date: Jun. 16, 2015 Notice of Aug. 11, 2015 Allowance Date: Date Abandoned: Mar. 05, 2018
Mark Information
Mark Literal FEEN-A-MINT Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Laxatives International 005 - Primary Class U.S Class(es): 006, 018, 044, 046, 051, 052 Class(es): Class Status: ACTIVE Basis: 1(b) First Use: Aug. 01, 2017 Use in Commerce: Aug. 01, 2017 Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: PO Box 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: Retrobrands USA Llc PO Box 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339-1106 Phone: 954 203 3097 Fax: 954 486 9558 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Apr. 06, 2018 ABANDONMENT NOTICE MAILED - FAILURE TO RESPOND Apr. 06, 2018 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Sep. 02, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED Sep. 02, 2017 NON-FINAL ACTION E-MAILED Sep. 02, 2017 SU - NON-FINAL ACTION - WRITTEN 81095 Aug. 29, 2017 STATEMENT OF USE PROCESSING COMPLETE 66530 Aug. 01, 2017 USE AMENDMENT FILED 66530 Aug. 22, 2017 CASE ASSIGNED TO INTENT TO USE PARALEGAL 66530 Aug. 01, 2017 TEAS STATEMENT OF USE RECEIVED Feb. 03, 2017 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Feb. 01, 2017 EXTENSION 3 GRANTED 98765 Feb. 01, 2017 EXTENSION 3 FILED 98765 Feb. 01, 2017 TEAS EXTENSION RECEIVED Sep. 09, 2016 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Sep. 08, 2016 EXTENSION 2 GRANTED 61813 Aug. 02, 2016 EXTENSION 2 FILED 61813 Aug. 25, 2016 CASE ASSIGNED TO INTENT TO USE PARALEGAL 61813 Aug. 02, 2016 TEAS EXTENSION RECEIVED Feb. 05, 2016 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Feb. 03, 2016 EXTENSION 1 GRANTED 98765 Feb. 03, 2016 EXTENSION 1 FILED 98765 Feb. 03, 2016 TEAS EXTENSION RECEIVED Aug. 11, 2015 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Jun. 16, 2015 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Jun. 16, 2015 PUBLISHED FOR OPPOSITION May 27, 2015 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED May 05, 2015 APPROVED FOR PUB - PRINCIPAL REGISTER May 04, 2015 ASSIGNED TO EXAMINER 81095 Apr. 16, 2015 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Apr. 13, 2015 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: LAPTER, ALAIN J Law Office LAW OFFICE 105 Assigned: File Location Current Location: TMEG LAW OFFICE 105 - EXAMINING Date in Location: Apr. 06, 2018 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:04:46 EDT Mark: CALO
US Serial Number: 86823151 Application Filing Nov. 17, 2015 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jan. 01, 2018 Publication Date: Apr. 05, 2016 Notice of May 31, 2016 Allowance Date: Date Abandoned: Jan. 01, 2018
Mark Information
Mark Literal CALO Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Food for animals International 031 - Primary Class U.S Class(es): 001, 046 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954 203 3097 Fax: 954 486 9558 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jan. 02, 2018 ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED Jan. 01, 2018 ABANDONMENT - NO USE STATEMENT FILED 99999 May 23, 2017 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED May 19, 2017 EXTENSION 2 GRANTED 98765 May 19, 2017 EXTENSION 2 FILED 98765 May 19, 2017 TEAS EXTENSION RECEIVED Nov. 25, 2016 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Nov. 23, 2016 EXTENSION 1 GRANTED 98765 Nov. 23, 2016 EXTENSION 1 FILED 98765 Nov. 23, 2016 TEAS EXTENSION RECEIVED May 31, 2016 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Apr. 05, 2016 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Apr. 05, 2016 PUBLISHED FOR OPPOSITION Mar. 16, 2016 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Feb. 22, 2016 APPROVED FOR PUB - PRINCIPAL REGISTER Feb. 19, 2016 ASSIGNED TO EXAMINER 92826 Nov. 20, 2015 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Nov. 20, 2015 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: CALLERY, TIMOTHY JOHN Law Office LAW OFFICE 121 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: May 31, 2016 Generated on: This page was generated by TSDR on 2020-03-12 09:05:12 EDT Mark: SUNSILK
US Serial Number: 86834945 Application Filing Dec. 01, 2015 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page. Status Date: Oct. 18, 2017 Publication Date: Apr. 05, 2016 Date Abandoned: Oct. 18, 2017
Mark Information
Mark Literal SUNSILK Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Aromatic body care products, namely, shampoo International 003 - Primary Class U.S Class(es): 001, 004, 006, 050, 051, 052 Class(es): Class Status: ABANDONED Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954 203-3097 Fax: 954 486-9558 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Oct. 18, 2017 ABANDONMENT NOTICE MAILED - INTER PARTES DECISION Oct. 18, 2017 ABANDONMENT - AFTER INTER PARTES DECISION Oct. 18, 2017 OPPOSITION TERMINATED NO. 999999 229303 Oct. 18, 2017 OPPOSITION SUSTAINED NO. 999999 229303 Aug. 02, 2016 OPPOSITION INSTITUTED NO. 999999 229303 May 04, 2016 EXTENSION OF TIME TO OPPOSE RECEIVED Apr. 05, 2016 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Apr. 05, 2016 PUBLISHED FOR OPPOSITION Mar. 16, 2016 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Feb. 22, 2016 APPROVED FOR PUB - PRINCIPAL REGISTER Feb. 19, 2016 ASSIGNED TO EXAMINER 92826 Dec. 07, 2015 TEAS AMENDMENT ENTERED BEFORE ATTORNEY ASSIGNED 88889 Dec. 07, 2015 TEAS VOLUNTARY AMENDMENT RECEIVED Dec. 05, 2015 NOTICE OF PSEUDO MARK E-MAILED Dec. 04, 2015 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Dec. 04, 2015 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: CALLERY, TIMOTHY JOHN Law Office LAW OFFICE 121 Assigned: File Location Current Location: TTAB Date in Location: Oct. 18, 2017 Proceedings
Summary Number of 2 Proceedings:
Type of Proceeding: Opposition
Proceeding 91229303 Filing Date: Aug 02, 2016 Number: Status: Terminated Status Date: Oct 18, 2017 Interlocutory JENNIFER KRISP Attorney: Defendant Name: Retrobrands USA LLC Correspondent JEFFREY KAPLAN Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE FL UNITED STATES , 33339 Correspondent e- [email protected] , [email protected] , [email protected] , [email protected] , [email protected] mail: Associated marks Serial Registration Mark Application Status Number Number SUNSILK Abandoned - After Inter-Partes Decision 86834945 Plaintiff(s) Name: Conopco, Inc. Correspondent GREGORY P GULIA Address: DUANE MORRIS LLP 1540 BROADWAY NEW YORK NY UNITED STATES , 10036-4086 Correspondent e- [email protected] , [email protected] , [email protected] , [email protected] , vch070@du mail: anemorris.com Associated marks Registration Mark Application Status Serial Number Number SUNSILK Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Aug 02, 2016 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Aug 02, 2016 Sep 11, 2016 3 PENDING, INSTITUTED Aug 02, 2016 4 D MOT TO DISMISS: FRCP 12(B) Aug 04, 2016 5 SUSP PEND DISP OF OUTSTNDNG MOT Aug 09, 2016 6 P MOT TO AMEND PLEADING/AMENDED PLEADING Aug 30, 2016 7 D MOT TO STRIKE Aug 31, 2016 8 P OPP/RESP TO MOTION Sep 20, 2016 9 ANSWER TO AMENDED OPPOSITION DUE; TRIAL DATES RESET Dec 20, 2016 10 ANSWER Jan 02, 2017 11 P MOT FOR EXT W/ CONSENT Feb 01, 2017 12 EXTENSION OF TIME GRANTED Feb 07, 2017 13 P MOT FOR EXT W/ CONSENT Mar 02, 2017 14 EXTENSION OF TIME GRANTED Mar 08, 2017 15 P APPEARANCE / POWER OF ATTORNEY May 10, 2017 16 P APPEARANCE / POWER OF ATTORNEY May 10, 2017 17 P MOT TO SUSP PEND DISP CIV ACTION May 10, 2017 18 SUSP PEND DISP OF CIVIL ACTION Jun 13, 2017 19 W/DRAW OF APPLICATION Oct 12, 2017 20 D CHANGE OF CORRESP ADDRESS Oct 13, 2017 21 BD DECISION: SUSTAINED Oct 18, 2017 22 TERMINATED Oct 18, 2017 Type of Proceeding: Extension of Time
Proceeding 86834945 Filing Date: May 04, 2016 Number: Status: Terminated Status Date: Aug 03, 2016 Interlocutory Attorney: Defendant Name: Retrobrands USA LLC Correspondent RETROBRANDS USA LLC Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE FL , 33339 Associated marks Serial Registration Mark Application Status Number Number SUNSILK Abandoned - After Inter-Partes Decision 86834945 Potential Opposer(s) Name: Conopco, Inc. Correspondent Lisa W. Rosaya, Lindsey Utrata Address: Baker & McKenzie LLP 452 Fifth Avenue New York NY UNITED STATES , 10018 Correspondent e- [email protected] , [email protected] , [email protected] mail: Associated marks Registration Mark Application Status Serial Number Number
Prosecution History Entry Number History Text Date Due Date 1 INCOMING - EXT TIME TO OPPOSE FILED May 04, 2016 2 EXTENSION OF TIME GRANTED May 04, 2016 Generated on: This page was generated by TSDR on 2020-03-12 09:04:20 EDT Mark: ASPERGUM
US Serial Number: 86872747 Application Filing Jan. 12, 2016 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Feb. 25, 2019 Publication Date: May 24, 2016 Notice of Jul. 19, 2016 Allowance Date: Date Abandoned: Feb. 25, 2019
Mark Information
Mark Literal ASPERGUM Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Related Properties Information
International 1358550 Registration Number: International A0068298/1358550 Application(s) /Registration(s) Based on this Property: 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: Medicated chewing gum International 005 - Primary Class U.S Class(es): 006, 018, 044, 046, 051, 052 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC PO BOX 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339-1106 Phone: 9542033097 Fax: 9544869558 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Feb. 25, 2019 ABANDONMENT NOTICE E-MAILED - NO USE STATEMENT FILED Feb. 25, 2019 ABANDONMENT - NO USE STATEMENT FILED 99999 Jul. 18, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Jul. 16, 2018 EXTENSION 4 GRANTED 98765 Jul. 16, 2018 EXTENSION 4 FILED 98765 Jul. 16, 2018 TEAS EXTENSION RECEIVED Jan. 23, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Jan. 19, 2018 EXTENSION 3 GRANTED 98765 Jan. 19, 2018 EXTENSION 3 FILED 98765 Jan. 19, 2018 TEAS EXTENSION RECEIVED Jul. 21, 2017 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Jul. 19, 2017 EXTENSION 2 GRANTED 98765 Jul. 19, 2017 EXTENSION 2 FILED 98765 Jul. 19, 2017 TEAS EXTENSION RECEIVED Jan. 21, 2017 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Jan. 19, 2017 EXTENSION 1 GRANTED 98765 Jan. 19, 2017 EXTENSION 1 FILED 98765 Jan. 19, 2017 TEAS EXTENSION RECEIVED Jul. 19, 2016 NOA E-MAILED - SOU REQUIRED FROM APPLICANT May 24, 2016 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED May 24, 2016 PUBLISHED FOR OPPOSITION May 04, 2016 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Apr. 21, 2016 LAW OFFICE PUBLICATION REVIEW COMPLETED 74221 Apr. 05, 2016 ASSIGNED TO LIE 74221 Mar. 18, 2016 APPROVED FOR PUB - PRINCIPAL REGISTER Mar. 07, 2016 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Mar. 06, 2016 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Mar. 06, 2016 TEAS RESPONSE TO OFFICE ACTION RECEIVED Feb. 22, 2016 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Feb. 22, 2016 NON-FINAL ACTION E-MAILED 6325 Feb. 22, 2016 NON-FINAL ACTION WRITTEN 92826 Feb. 19, 2016 ASSIGNED TO EXAMINER 92826 Jan. 19, 2016 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jan. 15, 2016 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: CALLERY, TIMOTHY JOHN Law Office LAW OFFICE 121 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: Jul. 19, 2016 Generated on: This page was generated by TSDR on 2020-03-12 09:03:10 EDT Mark: LI'L MISS MAKEUP
US Serial Number: 87005434 Application Filing Apr. 19, 2016 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jun. 18, 2018 Publication Date: Mar. 21, 2017 Notice of May 16, 2017 Allowance Date: Date Abandoned: Jun. 18, 2018
Mark Information
Mark Literal LI'L MISS MAKEUP Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Dolls International 028 - Primary Class U.S Class(es): 022, 023, 038, 050 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jun. 18, 2018 ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED Jun. 18, 2018 ABANDONMENT - NO USE STATEMENT FILED 99999 Jan. 31, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Jan. 30, 2018 EXTENSION 1 GRANTED 71034 Nov. 16, 2017 EXTENSION 1 FILED 71034 Jan. 26, 2018 CASE ASSIGNED TO INTENT TO USE PARALEGAL 71034 Dec. 29, 2017 NOTICE OF REVIVAL - E-MAILED Dec. 29, 2017 EXTENSION RECEIVED WITH TEAS PETITION Dec. 29, 2017 PETITION TO REVIVE-GRANTED 88889 Dec. 29, 2017 TEAS PETITION TO REVIVE RECEIVED Dec. 18, 2017 ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED Dec. 18, 2017 ABANDONMENT - NO USE STATEMENT FILED 99999 May 16, 2017 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Mar. 21, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Mar. 21, 2017 PUBLISHED FOR OPPOSITION Mar. 01, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Feb. 14, 2017 LAW OFFICE PUBLICATION REVIEW COMPLETED 70633 Feb. 14, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER Feb. 13, 2017 LIE CHECKED SUSP - TO ATTY FOR ACTION 70633 Feb. 09, 2017 ASSIGNED TO LIE 70633 Jan. 09, 2017 ASSIGNED TO EXAMINER 69807 Jul. 29, 2016 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Jul. 29, 2016 LETTER OF SUSPENSION E-MAILED 6332 Jul. 29, 2016 SUSPENSION LETTER WRITTEN 76729 Jul. 11, 2016 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Jul. 11, 2016 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Jul. 11, 2016 TEAS RESPONSE TO OFFICE ACTION RECEIVED Jun. 27, 2016 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Jun. 27, 2016 NON-FINAL ACTION E-MAILED 6325 Jun. 27, 2016 NON-FINAL ACTION WRITTEN 76729 Jun. 24, 2016 ASSIGNED TO EXAMINER 76729 Apr. 23, 2016 NOTICE OF PSEUDO MARK E-MAILED Apr. 22, 2016 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Apr. 22, 2016 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information TM Staff Information TM Attorney: MULLEN, MARK TIMOTHY Law Office LAW OFFICE 111 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: Jan. 26, 2018 Generated on: This page was generated by TSDR on 2020-03-12 09:01:08 EDT Mark: SMASH UP DERBY
US Serial Number: 87098888 Application Filing Jul. 11, 2016 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jul. 05, 2019 Publication Date: Sep. 05, 2017 Notice of Oct. 31, 2017 Allowance Date: Date Abandoned: Jun. 10, 2019
Mark Information
Mark Literal SMASH UP DERBY Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Toy cars International 028 - Primary Class U.S Class(es): 022, 023, 038, 050 Class(es): Class Status: ACTIVE Basis: 1(b) First Use: Oct. 24, 2018 Use in Commerce: Oct. 24, 2018 Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Fax: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jul. 05, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND Jul. 05, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Dec. 07, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED Dec. 07, 2018 NON-FINAL ACTION E-MAILED Dec. 07, 2018 SU - NON-FINAL ACTION - WRITTEN 92988 Nov. 16, 2018 STATEMENT OF USE PROCESSING COMPLETE 74055 Oct. 24, 2018 USE AMENDMENT FILED 74055 Nov. 16, 2018 CASE ASSIGNED TO INTENT TO USE PARALEGAL 74055 Oct. 24, 2018 TEAS STATEMENT OF USE RECEIVED Apr. 27, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Apr. 25, 2018 EXTENSION 1 GRANTED 98765 Apr. 25, 2018 EXTENSION 1 FILED 98765 Apr. 25, 2018 TEAS EXTENSION RECEIVED Oct. 31, 2017 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Sep. 05, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Sep. 05, 2017 PUBLISHED FOR OPPOSITION Aug. 16, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Aug. 02, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER Aug. 01, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 70997 Aug. 01, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 70997 Jul. 27, 2017 ASSIGNED TO LIE 70997 Jun. 23, 2017 TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED Apr. 26, 2017 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Apr. 26, 2017 LETTER OF SUSPENSION E-MAILED 6332 Apr. 26, 2017 SUSPENSION LETTER WRITTEN 92988 Apr. 04, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Apr. 03, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Apr. 03, 2017 TEAS RESPONSE TO OFFICE ACTION RECEIVED Oct. 04, 2016 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Oct. 04, 2016 NON-FINAL ACTION E-MAILED 6325 Oct. 04, 2016 NON-FINAL ACTION WRITTEN 92988 Oct. 04, 2016 ASSIGNED TO EXAMINER 92988 Jul. 14, 2016 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jul. 14, 2016 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information TM Staff Information TM Attorney: KAPLAN, VALERIE ELIZAB Law Office LAW OFFICE 107 Assigned: File Location Current Location: TMEG LAW OFFICE 107 - EXAMINING Date in Location: Jul. 05, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:01:59 EDT Mark: BIG MOUTH CANDY
US Serial Number: 87265722 Application Filing Dec. 12, 2016 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: May 27, 2019 Publication Date: Feb. 28, 2017 Notice of Apr. 25, 2017 Allowance Date: Date Abandoned: May 27, 2019
Mark Information
Mark Literal BIG MOUTH CANDY Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Disclaimer: "CANDY" 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: Candy International 030 - Primary Class U.S Class(es): 046 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Fax: 9544869558 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number May 28, 2019 ABANDONMENT NOTICE E-MAILED - NO USE STATEMENT FILED May 27, 2019 ABANDONMENT - NO USE STATEMENT FILED 99999 Oct. 19, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Oct. 17, 2018 EXTENSION 3 GRANTED 98765 Oct. 17, 2018 EXTENSION 3 FILED 98765 Oct. 17, 2018 TEAS EXTENSION RECEIVED Apr. 24, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Apr. 20, 2018 EXTENSION 2 GRANTED 98765 Apr. 20, 2018 EXTENSION 2 FILED 98765 Apr. 20, 2018 TEAS EXTENSION RECEIVED Oct. 24, 2017 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Oct. 21, 2017 EXTENSION 1 GRANTED 98765 Oct. 21, 2017 EXTENSION 1 FILED 98765 Oct. 21, 2017 TEAS EXTENSION RECEIVED Apr. 25, 2017 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Feb. 28, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Feb. 28, 2017 PUBLISHED FOR OPPOSITION Feb. 08, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Jan. 25, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER Jan. 25, 2017 ASSIGNED TO EXAMINER 90288 Dec. 15, 2016 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Dec. 15, 2016 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: JAGANNATHAN, SIDDHARTH Law Office LAW OFFICE 114 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: Apr. 25, 2017 Generated on: This page was generated by TSDR on 2020-03-12 09:04:08 EDT Mark: BENDABLES
US Serial Number: 87305117 Application Filing Jan. 18, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Nov. 15, 2017 Date Abandoned: Oct. 18, 2017
Mark Information
Mark Literal BENDABLES Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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 International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Nov. 15, 2017 ABANDONMENT NOTICE MAILED - FAILURE TO RESPOND Nov. 15, 2017 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Apr. 17, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Apr. 17, 2017 NON-FINAL ACTION E-MAILED 6325 Apr. 17, 2017 NON-FINAL ACTION WRITTEN 89009 Apr. 13, 2017 ASSIGNED TO EXAMINER 89009 Jan. 25, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jan. 21, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: KOZAK, EVIN L Law Office LAW OFFICE 116 Assigned: File Location Current Location: TMO LAW OFFICE 116 - EXAMINING Date in Location: Nov. 15, 2017 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:03:53 EDT Mark: BENDABLES
US Serial Number: 87305180 Application Filing Jan. 18, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Nov. 15, 2017 Date Abandoned: Oct. 18, 2017
Mark Information
Mark Literal BENDABLES Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Protective covers and cases for cell phones, laptops and portable media players International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Nov. 15, 2017 ABANDONMENT NOTICE MAILED - FAILURE TO RESPOND Nov. 15, 2017 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Apr. 17, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Apr. 17, 2017 NON-FINAL ACTION E-MAILED 6325 Apr. 17, 2017 NON-FINAL ACTION WRITTEN 89009 Apr. 13, 2017 ASSIGNED TO EXAMINER 89009 Jan. 25, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jan. 21, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: KOZAK, EVIN L Law Office LAW OFFICE 116 Assigned: File Location Current Location: TMO LAW OFFICE 116 - EXAMINING Date in Location: Nov. 15, 2017 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:03:32 EDT Mark: DRIXORAL
US Serial Number: 87355679 Application Filing Mar. 02, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: May 14, 2018 Publication Date: Aug. 15, 2017 Notice of Oct. 10, 2017 Allowance Date: Date Abandoned: May 14, 2018
Mark Information
Mark Literal DRIXORAL Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Nasal dilators International 010 - Primary Class U.S Class(es): 026, 039, 044 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: 1771 Blount Road Suite 203 Pompano Beach, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Fax: 9544869558 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number May 14, 2018 ABANDONMENT NOTICE MAILED - NO USE STATEMENT FILED May 14, 2018 ABANDONMENT - NO USE STATEMENT FILED 99999 Feb. 05, 2018 ASSIGNED TO EXAMINER 76738 Oct. 10, 2017 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Aug. 15, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Aug. 15, 2017 PUBLISHED FOR OPPOSITION Jul. 26, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Jul. 10, 2017 LAW OFFICE PUBLICATION REVIEW COMPLETED 68171 Jun. 15, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER Jun. 08, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 68171 Jun. 08, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 68171 May 26, 2017 ASSIGNED TO LIE 68171 May 03, 2017 TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED Apr. 18, 2017 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Apr. 18, 2017 LETTER OF SUSPENSION E-MAILED 6332 Apr. 18, 2017 SUSPENSION LETTER WRITTEN 89009 Apr. 13, 2017 ASSIGNED TO EXAMINER 89009 Mar. 09, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Mar. 06, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: LE, KHANH M Law Office LAW OFFICE 116 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: Oct. 10, 2017 Generated on: This page was generated by TSDR on 2020-03-12 09:03:41 EDT Mark: PEARL DROPS
US Serial Number: 87436968 Application Filing May 04, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Withdrawn/Abandoned Descriptor: The owner of the trademark application withdrew (e.g. abandoned) the application and the application is no longer active.
Status: Abandoned because the applicant filed an express abandonment. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jan. 10, 2018 Date Abandoned: Jan. 09, 2018
Mark Information
Mark Literal PEARL DROPS Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Tooth whitening preparations International 003 - Primary Class U.S Class(es): 001, 004, 006, 050, 051, 052 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jan. 10, 2018 ABANDONMENT NOTICE MAILED - EXPRESS ABANDONMENT Jan. 10, 2018 ABANDONMENT - EXPRESS MAILED Jan. 09, 2018 TEAS EXPRESS ABANDONMENT RECEIVED Aug. 04, 2017 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Aug. 04, 2017 LETTER OF SUSPENSION E-MAILED 6332 Aug. 04, 2017 SUSPENSION LETTER WRITTEN 80803 Aug. 03, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Aug. 03, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Aug. 03, 2017 TEAS RESPONSE TO OFFICE ACTION RECEIVED Aug. 02, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Aug. 02, 2017 NON-FINAL ACTION E-MAILED 6325 Aug. 02, 2017 NON-FINAL ACTION WRITTEN 80803 Aug. 01, 2017 ASSIGNED TO EXAMINER 80803 May 09, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM May 08, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: AGOSTO, GISELLE MARIE Law Office LAW OFFICE 102 Assigned: File Location Current Location: TMEG LAW OFFICE 102 - EXAMINING Date in Location: Aug. 04, 2017 ATTORNEY ASSIGNED Proceedings
Summary Number of 1 Proceedings:
Type of Proceeding: Cancellation
Proceeding 92066559 Filing Date: Aug 02, 2017 Number: Status: Terminated Status Date: Jan 17, 2018 Interlocutory MARY CATHERINE FAINT Attorney: Defendant Name: Church & Dwight Co., Inc. Correspondent BROOKS R BRUNEAU Address: FISHERBROYLES LLP 100 OVERLOOK CENTER, SECOND FLOOR PRINCETON NJ UNITED STATES , 08540 Correspondent e- [email protected] , [email protected] , [email protected] mail: Associated marks Serial Registration Mark Application Status Number Number PEARL DROPS Cancellation Terminated - See TTAB Records 72308361 897981 PEARL DROPS Cancellation Terminated - See TTAB Records 75144015 2075718 Plaintiff(s) Name: Retrobrands USA LLC Correspondent ALBERTO H ORIZONDO Address: LAW OFFICE OF ALEXIS GONZALEZ PA 3162 COMMODORE PLAZA, SUITE 3E COCONUT GROVE FL UNITED STATES , 33133 Correspondent e- [email protected] , [email protected] , [email protected] , [email protected] mail: Associated marks Serial Registration Mark Application Status Number Number PEARL DROPS Abandoned - Express 87436968 Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Aug 02, 2017 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Aug 02, 2017 Sep 11, 2017 3 PENDING, INSTITUTED Aug 02, 2017 4 P APPEARANCE / POWER OF ATTORNEY Sep 01, 2017 5 ANSWER Sep 08, 2017 6 P REQ TO W/DRAW AS ATTORNEY Sep 26, 2017 7 D CHANGE OF CORRESP ADDRESS Oct 02, 2017 8 STIP FOR EXT Oct 04, 2017 9 EXTENSION OF TIME GRANTED Oct 18, 2017 10 STIP TO SUSP PEND SETTL NEGOTIATIONS Dec 06, 2017 11 SUSPENDED Dec 06, 2017 12 W/DRAW OF PET FOR CANCELLATION Jan 09, 2018 13 BD DECISION: DISMISSED W/ PREJ Jan 17, 2018 14 TERMINATED Jan 17, 2018 Generated on: This page was generated by TSDR on 2020-03-12 09:02:29 EDT Mark: POCKET ROCKET SLING SHOT
US Serial Number: 87439520 Application Filing May 06, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Feb. 12, 2019 Publication Date: Sep. 26, 2017 Notice of Nov. 21, 2017 Allowance Date: Date Abandoned: Jan. 29, 2019
Mark Information
Mark Literal POCKET ROCKET SLING SHOT Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Disclaimer: "SLING SHOT" 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: Sling shots International 028 - Primary Class U.S Class(es): 022, 023, 038, 050 Class(es): Class Status: ACTIVE Basis: 1(b) First Use: Apr. 17, 2018 Use in Commerce: Apr. 17, 2018 Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954 203 3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Feb. 13, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND Feb. 12, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Jul. 28, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED Jul. 28, 2018 NON-FINAL ACTION E-MAILED Jul. 28, 2018 SU - NON-FINAL ACTION - WRITTEN 81092 Jun. 12, 2018 ASSIGNED TO EXAMINER 81092 Jun. 06, 2018 STATEMENT OF USE PROCESSING COMPLETE 71034 May 17, 2018 USE AMENDMENT FILED 71034 Jun. 06, 2018 CASE ASSIGNED TO INTENT TO USE PARALEGAL 71034 May 17, 2018 TEAS STATEMENT OF USE RECEIVED Nov. 21, 2017 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Sep. 26, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Sep. 26, 2017 PUBLISHED FOR OPPOSITION Sep. 06, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Aug. 18, 2017 ASSIGNED TO LIE 68552 Aug. 04, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER Aug. 04, 2017 EXAMINER'S AMENDMENT ENTERED 88888 Aug. 04, 2017 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328 Aug. 04, 2017 EXAMINERS AMENDMENT E-MAILED 6328 Aug. 04, 2017 EXAMINERS AMENDMENT -WRITTEN 80803 Aug. 01, 2017 ASSIGNED TO EXAMINER 80803 May 11, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM May 10, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: HELLMAN, ELI J Law Office LAW OFFICE 102 Assigned: File Location Current Location: TMEG LAW OFFICE 102 - EXAMINING Date in Location: Feb. 12, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:01:40 EDT Mark: DREAM PHONE
US Serial Number: 87481347 Application Filing Jun. 08, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jun. 17, 2019 Publication Date: Mar. 20, 2018 Notice of May 15, 2018 Allowance Date: Date Abandoned: Jun. 17, 2019
Mark Information
Mark Literal DREAM PHONE Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Disclaimer: "PHONE" 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: Equipment sold as a unit for playing board games International 028 - Primary Class U.S Class(es): 022, 023, 038, 050 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: RETROBRANDS USA POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jun. 17, 2019 ABANDONMENT NOTICE E-MAILED - NO USE STATEMENT FILED Jun. 17, 2019 ABANDONMENT - NO USE STATEMENT FILED 99999 Nov. 13, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Nov. 09, 2018 EXTENSION 1 GRANTED 98765 Nov. 09, 2018 EXTENSION 1 FILED 98765 Nov. 09, 2018 TEAS EXTENSION RECEIVED May 15, 2018 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Mar. 20, 2018 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Mar. 20, 2018 PUBLISHED FOR OPPOSITION Feb. 28, 2018 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Feb. 13, 2018 APPROVED FOR PUB - PRINCIPAL REGISTER Feb. 13, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 70997 Feb. 13, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 70997 Feb. 11, 2018 ASSIGNED TO LIE 70997 Feb. 02, 2018 TEAS RESPONSE TO OFFICE ACTION RECEIVED Aug. 04, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Aug. 04, 2017 NON-FINAL ACTION E-MAILED 6325 Aug. 04, 2017 NON-FINAL ACTION WRITTEN 80803 Aug. 01, 2017 ASSIGNED TO EXAMINER 80803 Jun. 15, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jun. 12, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: AGOSTO, GISELLE MARIE Law Office LAW OFFICE 102 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: May 15, 2018 Generated on: This page was generated by TSDR on 2020-03-12 09:01:23 EDT Mark: HEADACHE
US Serial Number: 87481509 Application Filing Jun. 08, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jun. 21, 2019 Publication Date: Sep. 05, 2017 Notice of Oct. 31, 2017 Allowance Date: Date Abandoned: May 24, 2019
Mark Information
Mark Literal HEADACHE Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Equipment sold as a unit for playing board games International 028 - Primary Class U.S Class(es): 022, 023, 038, 050 Class(es): Class Status: ACTIVE Basis: 1(b) First Use: Oct. 25, 2018 Use in Commerce: Oct. 25, 2018 Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jun. 21, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND Jun. 21, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Nov. 23, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED Nov. 23, 2018 NON-FINAL ACTION E-MAILED Nov. 23, 2018 SU - NON-FINAL ACTION - WRITTEN 80803 Nov. 17, 2018 STATEMENT OF USE PROCESSING COMPLETE 65362 Oct. 25, 2018 USE AMENDMENT FILED 65362 Nov. 17, 2018 CASE ASSIGNED TO INTENT TO USE PARALEGAL 65362 Oct. 25, 2018 TEAS STATEMENT OF USE RECEIVED Apr. 27, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Apr. 25, 2018 EXTENSION 1 GRANTED 98765 Apr. 25, 2018 EXTENSION 1 FILED 98765 Apr. 25, 2018 TEAS EXTENSION RECEIVED Oct. 31, 2017 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Sep. 05, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Sep. 05, 2017 PUBLISHED FOR OPPOSITION Aug. 16, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Aug. 03, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER Aug. 01, 2017 ASSIGNED TO EXAMINER 80803 Jun. 15, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jun. 12, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: AGOSTO, GISELLE MARIE Law Office LAW OFFICE 102 Assigned: File Location Current Location: TMEG LAW OFFICE 102 - EXAMINING Date in Location: Jun. 21, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:01:50 EDT Mark: HI-Q
US Serial Number: 87494007 Application Filing Jun. 17, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Withdrawn/Abandoned Descriptor: The owner of the trademark application withdrew (e.g. abandoned) the application and the application is no longer active.
Status: Abandoned because the applicant filed an express abandonment. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jun. 12, 2019 Publication Date: Sep. 05, 2017 Notice of Oct. 31, 2017 Allowance Date: Date Abandoned: Jun. 11, 2019
Mark Information
Mark Literal HI-Q Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Equipment sold as a unit for playing puzzle games International 028 - Primary Class U.S Class(es): 022, 023, 038, 050 Class(es): Class Status: ACTIVE Basis: 1(b) First Use: Oct. 23, 2018 Use in Commerce: Oct. 23, 2018 Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jun. 12, 2019 ABANDONMENT NOTICE E-MAILED - EXPRESS ABANDONMENT Jun. 12, 2019 ABANDONMENT - EXPRESS MAILED Jun. 11, 2019 TEAS EXPRESS ABANDONMENT RECEIVED Mar. 11, 2019 NOTIFICATION OF FINAL REFUSAL EMAILED Mar. 11, 2019 FINAL REFUSAL E-MAILED Mar. 11, 2019 SU - FINAL REFUSAL - WRITTEN 80803 Feb. 11, 2019 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Feb. 11, 2019 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Feb. 11, 2019 TEAS RESPONSE TO OFFICE ACTION RECEIVED Nov. 26, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED Nov. 26, 2018 NON-FINAL ACTION E-MAILED Nov. 26, 2018 SU - NON-FINAL ACTION - WRITTEN 80803 Nov. 16, 2018 STATEMENT OF USE PROCESSING COMPLETE 69302 Oct. 23, 2018 USE AMENDMENT FILED 69302 Nov. 16, 2018 CASE ASSIGNED TO INTENT TO USE PARALEGAL 69302 Oct. 23, 2018 TEAS STATEMENT OF USE RECEIVED Apr. 27, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED Apr. 25, 2018 EXTENSION 1 GRANTED 98765 Apr. 25, 2018 EXTENSION 1 FILED 98765 Apr. 25, 2018 TEAS EXTENSION RECEIVED Oct. 31, 2017 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Sep. 05, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Sep. 05, 2017 PUBLISHED FOR OPPOSITION Aug. 16, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Aug. 03, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER Aug. 01, 2017 ASSIGNED TO EXAMINER 80803 Jun. 23, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jun. 21, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: AGOSTO, GISELLE MARIE Law Office LAW OFFICE 102 Assigned: File Location Current Location: TMEG LAW OFFICE 102 - EXAMINING Date in Location: Mar. 11, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:02:17 EDT Mark: STRIPE TOOTHPASTE
US Serial Number: 87686908 Application Filing Nov. 16, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Apr. 02, 2019 Date Abandoned: Mar. 01, 2019
Mark Information
Mark Literal STRIPE TOOTHPASTE Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: Disclaimer: "TOOTHPASTE" 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: Toothpaste International 003 - Primary Class U.S Class(es): 001, 004, 006, 050, 051, 052 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Apr. 02, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND Apr. 02, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Aug. 30, 2018 NOTIFICATION OF FINAL REFUSAL EMAILED Aug. 30, 2018 FINAL REFUSAL E-MAILED Aug. 30, 2018 FINAL REFUSAL WRITTEN 72503 Aug. 29, 2018 ASSIGNED TO EXAMINER 72503 Aug. 27, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Aug. 27, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Aug. 27, 2018 TEAS RESPONSE TO OFFICE ACTION RECEIVED Mar. 09, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Mar. 09, 2018 NON-FINAL ACTION E-MAILED 6325 Mar. 09, 2018 NON-FINAL ACTION WRITTEN 92991 Mar. 01, 2018 ASSIGNED TO EXAMINER 92991 Nov. 29, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Nov. 20, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: DALIER, JOHN DAVID Law Office LAW OFFICE 106 Assigned: File Location Current Location: TMEG LAW OFFICE 106 - EXAMINING Date in Location: Apr. 02, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:00:57 EDT Mark: MONSTER UNDER MY BED
US Serial Number: 87721428 Application Filing Dec. 14, 2017 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Feb. 03, 2020 Publication Date: May 07, 2019 Notice of Jul. 02, 2019 Allowance Date: Date Abandoned: Feb. 03, 2020
Mark Information
Mark Literal MONSTER UNDER MY BED Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Equipment sold as a unit for playing board games International 028 - Primary Class U.S Class(es): 022, 023, 038, 050 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Feb. 03, 2020 ABANDONMENT NOTICE E-MAILED - NO USE STATEMENT FILED Feb. 03, 2020 ABANDONMENT - NO USE STATEMENT FILED 99999 Jul. 02, 2019 NOA E-MAILED - SOU REQUIRED FROM APPLICANT May 07, 2019 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED May 07, 2019 PUBLISHED FOR OPPOSITION Apr. 17, 2019 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Mar. 13, 2019 APPROVED FOR PUB - PRINCIPAL REGISTER Sep. 13, 2018 REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED Mar. 02, 2018 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Mar. 02, 2018 LETTER OF SUSPENSION E-MAILED 6332 Mar. 02, 2018 SUSPENSION LETTER WRITTEN 92991 Mar. 01, 2018 ASSIGNED TO EXAMINER 92991 Dec. 28, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Dec. 18, 2017 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: PATEL, SAMIR RAMESH Law Office LAW OFFICE 106 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: Jul. 02, 2019 Generated on: This page was generated by TSDR on 2020-03-12 09:02:49 EDT Mark: BAYCOL
US Serial Number: 87765110 Application Filing Jan. 22, 2018 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jan. 07, 2019 Publication Date: Apr. 10, 2018 Notice of Jun. 05, 2018 Allowance Date: Date Abandoned: Jan. 07, 2019
Mark Information
Mark Literal BAYCOL Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Pharmaceuticals, namely, lipid lowering agents International 005 - Primary Class U.S Class(es): 006, 018, 044, 046, 051, 052 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Fax: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jan. 07, 2019 ABANDONMENT NOTICE E-MAILED - NO USE STATEMENT FILED Jan. 07, 2019 ABANDONMENT - NO USE STATEMENT FILED 99999 Jun. 05, 2018 NOA E-MAILED - SOU REQUIRED FROM APPLICANT Apr. 10, 2018 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Apr. 10, 2018 PUBLISHED FOR OPPOSITION Mar. 21, 2018 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Mar. 02, 2018 APPROVED FOR PUB - PRINCIPAL REGISTER Mar. 01, 2018 ASSIGNED TO EXAMINER 92991 Feb. 01, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jan. 25, 2018 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: PATEL, SAMIR RAMESH Law Office LAW OFFICE 106 Assigned: File Location Current Location: INTENT TO USE SECTION Date in Location: Jun. 05, 2018 Generated on: This page was generated by TSDR on 2020-03-12 09:02:59 EDT Mark: VICTROLA
US Serial Number: 87816260 Application Filing Mar. 01, 2018 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned after an inter partes decision by the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page. Status Date: Oct. 19, 2018 Publication Date: Jul. 31, 2018 Date Abandoned: Oct. 19, 2018
Mark Information
Mark Literal VICTROLA Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Non-metal storage boxes made from cardboard, vinyl and wood for storing vinyl records International 020 - Primary Class U.S Class(es): 002, 013, 022, 025, 032, 050 Class(es): Class Status: ABANDONED Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, GEORGIA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: RETROBRANDS USA LLC P O BOX 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Fax: 9542033097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Oct. 19, 2018 ABANDONMENT NOTICE MAILED - INTER PARTES DECISION Oct. 19, 2018 ABANDONMENT - AFTER INTER PARTES DECISION Oct. 19, 2018 OPPOSITION TERMINATED NO. 999999 242784 Oct. 19, 2018 OPPOSITION SUSTAINED NO. 999999 242784 Aug. 01, 2018 OPPOSITION INSTITUTED NO. 999999 242784 Aug. 01, 2018 OPPOSITION PAPERS RECEIVED AT TTAB Jul. 31, 2018 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED Jul. 31, 2018 PUBLISHED FOR OPPOSITION Jul. 11, 2018 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Jun. 26, 2018 LAW OFFICE PUBLICATION REVIEW COMPLETED 66121 Jun. 25, 2018 ASSIGNED TO LIE 66121 Jun. 14, 2018 APPROVED FOR PUB - PRINCIPAL REGISTER Jun. 14, 2018 EXAMINER'S AMENDMENT ENTERED 88888 Jun. 14, 2018 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328 Jun. 14, 2018 EXAMINERS AMENDMENT E-MAILED 6328 Jun. 14, 2018 EXAMINERS AMENDMENT -WRITTEN 92998 Jun. 13, 2018 ASSIGNED TO EXAMINER 92998 Mar. 08, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Mar. 05, 2018 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: LEE-RICHARDSON HA, BRI Law Office LAW OFFICE 116 Assigned: File Location Current Location: TTAB Date in Location: Oct. 19, 2018 Proceedings
Summary Number of 1 Proceedings:
Type of Proceeding: Opposition
Proceeding 91242784 Filing Date: Aug 01, 2018 Number: Status: Terminated Status Date: Oct 19, 2018 Interlocutory JENNIFER KRISP Attorney: Defendant Name: Retrobrands USA LLC Correspondent JEFFREY KAPLAN Address: RETROBRANDS USA LLC P O BOX 11106 FORT LAUDERDALE FL UNITED STATES , 33339 Correspondent e- [email protected] , [email protected] mail: Associated marks Serial Registration Mark Application Status Number Number VICTROLA Abandoned - After Inter-Partes Decision 87816260 Plaintiff(s) Name: Innovative Technology Electronics, LLC Correspondent JOHN D MASON Address: 7315 WISCONSIN AVE STE 400W BETHESDA MD UNITED STATES , 20814 Correspondent e- [email protected] mail: Associated marks Registration Mark Application Status Serial Number Number VICTROLA Registered 86835312 5103253 VICTROLA Registered 87088108 5343944 VICTROLA Registered 85774163 4993673 VICTROLA Registered 86835294 5225867 VICTROLA Registered 87653684 5521224 Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Aug 01, 2018 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Aug 01, 2018 Sep 10, 2018 3 PENDING, INSTITUTED Aug 01, 2018 4 ANSWER Aug 23, 2018 5 W/DRAW OF APPLICATION Oct 09, 2018 6 BD DECISION: OPP SUSTAINED Oct 19, 2018 7 TERMINATED Oct 19, 2018 Generated on: This page was generated by TSDR on 2020-03-12 09:02:38 EDT Mark: PALM
US Serial Number: 87826600 Application Filing Mar. 08, 2018 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Jan. 12, 2019 Date Abandoned: Dec. 17, 2018
Mark Information
Mark Literal PALM Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Personal digital assistants (PDA) International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Jan. 14, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND Jan. 12, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Jun. 14, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Jun. 14, 2018 NON-FINAL ACTION E-MAILED 6325 Jun. 14, 2018 NON-FINAL ACTION WRITTEN 92998 Jun. 13, 2018 ASSIGNED TO EXAMINER 92998 Mar. 15, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Mar. 12, 2018 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: LEE-RICHARDSON HA, BRI Law Office LAW OFFICE 116 Assigned: File Location Current Location: TMO LAW OFFICE 116 - EXAMINING Date in Location: Jan. 12, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:00:16 EDT Mark:
US Serial Number: 88049689 Application Filing Jul. 24, 2018 Date: Filed as TEAS RF: Yes Currently TEAS RF: Yes Register: Principal Mark Type: Service Mark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Sep. 03, 2019 Date Abandoned: Aug. 02, 2019
Mark Information
Mark Literal None Elements: Standard Character No Claim: Mark Drawing 6 - NO DRAWING-SENSORY MARK Type: Description of The mark is a sound. The mark consists of a sound consisting of a tone at 1800 Hz played at a cadence of 24 Milliseconds (ms) ON, Mark: 24 ms OFF, 24 ms ON, 24 ms OFF, 48 ms ON. 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: Telecommunication services, namely, electronic, electric and digital transmission of voice, data, pictures, music, video, and other electronic information via wireless networks; Two-way radio services; Electronic transmission of voice, text, images, data, music and information by means of two-way radios, mobile radios, cellular telephones, digital cellular telephones, mobile telephones, handheld units, namely, personal computers and digital assistants (PDAs), dispatch radios, and pagers; Paging services; Transmission of positioning, tracking, monitoring and security data via wireless communications devices; Mobile telephone communication services; Wireless Internet access services; Wireless data services for mobile devices via a wireless network for the purpose of sending and receiving electronic mail, facsimiles, data, images, music, information, text, numeric messaging and text messaging and for accessing a global communications network; Telecommunication services, namely, providing user access to telephone and Internet wired or wireless networks for the transmission of voice, data, images, music or video via a combination of persistent interconnection and instant interconnection/instant interrupt technologies; Wireless communications services International 038 - Primary Class U.S Class(es): 100, 101, 104 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Sep. 03, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND Sep. 03, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Feb. 01, 2019 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Feb. 01, 2019 NON-FINAL ACTION E-MAILED 6325 Feb. 01, 2019 NON-FINAL ACTION WRITTEN 88579 Jan. 25, 2019 ASSIGNED TO EXAMINER 88579 Aug. 04, 2018 ASSIGNED TO EXAMINER 83223 Jul. 27, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: CANTONE, KERI H Law Office LAW OFFICE 104 Assigned: File Location Current Location: TMEG LAW OFFICE 104 - EXAMINING Date in Location: Sep. 03, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 09:00:33 EDT Mark: PUSS 'N BOOTS
US Serial Number: 88087508 Application Filing Aug. 22, 2018 Date: Filed as TEAS RF: Yes Currently TEAS RF: Yes Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Refused/Dismissed or Invalidated Descriptor: This trademark application was refused, dismissed, or invalidated by the Office and this application is no longer active.
Status: Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: May 28, 2019 Date Abandoned: Apr. 30, 2019
Mark Information
Mark Literal PUSS 'N BOOTS Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Interactive game software; computer game software; video game programs and cartridges; electronic game programs; game software for use on any computerized platform, including game consoles, game terminals, hand-held electronic devices, electronic entertainment devices, gambling machines, arcade game machines, telecommunications devices, mobile phones, and electronic communication devices; downloadable interactive, computer, video and electronic game programs International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number May 28, 2019 ABANDONMENT NOTICE E-MAILED - FAILURE TO RESPOND May 28, 2019 ABANDONMENT - FAILURE TO RESPOND OR LATE RESPONSE Oct. 29, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Oct. 29, 2018 NON-FINAL ACTION E-MAILED 6325 Oct. 29, 2018 NON-FINAL ACTION WRITTEN 93643 Oct. 25, 2018 ASSIGNED TO EXAMINER 93643 Aug. 30, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Aug. 25, 2018 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: AVENT, TEAGUE A Law Office LAW OFFICE 125 Assigned: File Location Current Location: TMO LAW OFFICE 125 - EXAMINING Date in Location: May 28, 2019 ATTORNEY ASSIGNED Generated on: This page was generated by TSDR on 2020-03-12 08:59:46 EDT Mark: DUNKAROOS
US Serial Number: 88119368 Application Filing Sep. 17, 2018 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Withdrawn/Abandoned Descriptor: The owner of the trademark application withdrew (e.g. abandoned) the application and the application is no longer active.
Status: Abandoned because the applicant filed an express abandonment. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: Nov. 12, 2019 Date Abandoned: Nov. 08, 2019
Mark Information
Mark Literal DUNKAROOS Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Cereal-based snack foods International 030 - Primary Class U.S Class(es): 046 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: 1771 Blount Road Suite 203 Pompano Beach, FLORIDA UNITED STATES 33069 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent JEFFREY KAPLAN Name/Address: RETROBRANDS USA LLC 1771 BLOUNT ROAD SUITE 203 POMPANO BEACH, FLORIDA UNITED STATES 33069 Phone: 954-203-3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number Nov. 12, 2019 ABANDONMENT NOTICE E-MAILED - EXPRESS ABANDONMENT Nov. 12, 2019 ABANDONMENT - EXPRESS MAILED Nov. 08, 2019 TEAS EXPRESS ABANDONMENT RECEIVED Jul. 23, 2019 REPORT COMPLETED SUSPENSION CHECK CASE STILL SUSPENDED 68171 Jun. 14, 2019 ASSIGNED TO LIE 68171 Nov. 25, 2018 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332 Nov. 25, 2018 LETTER OF SUSPENSION E-MAILED 6332 Nov. 25, 2018 SUSPENSION LETTER WRITTEN 93643 Oct. 30, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 88889 Oct. 30, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889 Oct. 30, 2018 TEAS RESPONSE TO OFFICE ACTION RECEIVED Oct. 26, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325 Oct. 26, 2018 NON-FINAL ACTION E-MAILED 6325 Oct. 26, 2018 NON-FINAL ACTION WRITTEN 93643 Oct. 25, 2018 ASSIGNED TO EXAMINER 93643 Sep. 22, 2018 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Sep. 20, 2018 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: AVENT, TEAGUE A Law Office LAW OFFICE 125 Assigned: File Location Current Location: TMO LAW OFFICE 125 Date in Location: Jul. 23, 2019 Proceedings
Summary Number of 1 Proceedings:
Type of Proceeding: Cancellation
Proceeding 92069685 Filing Date: Sep 24, 2018 Number: Status: Terminated Status Date: Jan 07, 2020 Interlocutory REBECCA J STEMPIEN_COYLE Attorney: Defendant Name: General Mills Marketing, Inc. Correspondent CHRISTOPHER WEIMER Address: NORTON ROSE FULBRIGHT US LLP 98 SAN JACINTO BLVD , SUITE 1100 AUSTIN TX UNITED STATES , 78701-4255 Correspondent e- [email protected] , [email protected] , [email protected] , aoipdocket mail: @nortonrosefulbright.com , [email protected] , [email protected] Associated marks Serial Registration Mark Application Status Number Number DUNKAROOS Cancellation Terminated - See TTAB Records 74208749 1755584 Plaintiff(s) Name: Retrobrands USA LLC Correspondent JEFFREY KAPLAN Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE FL UNITED STATES , 33339 Correspondent e- [email protected] mail: Associated marks Serial Registration Mark Application Status Number Number DUNKAROOS Abandoned - Express 88119368 Prosecution History Entry Number History Text Date Due Date 1 FILED AND FEE Sep 24, 2018 2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Oct 10, 2018 Nov 19, 2018 3 INSTITUTED Oct 10, 2018 4 P MOT TO AMEND PLEADING/AMENDED PLEADING Nov 06, 2018 5 D APPEARANCE / POWER OF ATTORNEY Nov 08, 2018 6 ANSWER DUE DEC. 10, 2018; TRIAL DATES RESET Nov 09, 2018 7 D MOT FOR EXT W/ CONSENT Nov 28, 2018 8 EXTENSION OF TIME GRANTED Dec 04, 2018 9 ANSWER Jan 09, 2019 10 D MOT TO SUSP PEND DISP CIV ACTION Jan 18, 2019 11 D MOT TO SUSP PEND DISP CIV ACTION Feb 05, 2019 12 SUSP PEND DISP OF CIVIL ACTION Feb 12, 2019 13 W/DRAW OF PET FOR CANCELLATION Nov 08, 2019 14 RESPONSE DUE 30 DAYS (DUE DATE) Nov 12, 2019 Dec 12, 2019 15 BD DECISION: CAN DENIED W/PREJ Jan 07, 2020 16 TERMINATED Jan 07, 2020 Generated on: This page was generated by TSDR on 2020-03-12 09:00:45 EDT Mark: TOPOL
US Serial Number: 88254626 Application Filing Jan. 09, 2019 Date: Filed as TEAS Yes Currently TEAS Yes Plus: Plus: Register: Principal Mark Type: Trademark TM5 Common Status DEAD/APPLICATION/Withdrawn/Abandoned Descriptor: The owner of the trademark application withdrew (e.g. abandoned) the application and the application is no longer active.
Status: Abandoned because the applicant filed an express abandonment. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page. Status Date: May 16, 2019 Date Abandoned: May 15, 2019
Mark Information
Mark Literal TOPOL Elements: Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color. Claim: Mark Drawing 4 - STANDARD CHARACTER MARK Type: 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: Medicated toothpaste International 005 - Primary Class U.S Class(es): 006, 018, 044, 046, 051, 052 Class(es): Class Status: ACTIVE Basis: 1(b) Basis Information (Case Level)
Filed Use: No Currently Use: No Filed ITU: Yes Currently ITU: Yes Filed 44D: No Currently 44E: No Filed 44E: No Currently 66A: No Filed 66A: No Currently No Basis: No Filed No Basis: No Current Owner(s) Information
Owner Name: Retrobrands USA LLC Owner Address: POB 11106 Fort Lauderdale, FLORIDA UNITED STATES 33339 Legal Entity Type: LIMITED LIABILITY COMPANY State or Country FLORIDA Where Organized: Attorney/Correspondence Information
Attorney of Record - None Correspondent Correspondent RETROBRANDS USA LLC Name/Address: RETROBRANDS USA LLC POB 11106 FORT LAUDERDALE, FLORIDA UNITED STATES 33339 Phone: 954-203-3097 Domestic Representative - Not Found Prosecution History
Proceeding Date Description Number May 16, 2019 ABANDONMENT NOTICE E-MAILED - EXPRESS ABANDONMENT May 16, 2019 ABANDONMENT - EXPRESS MAILED May 15, 2019 TEAS EXPRESS ABANDONMENT RECEIVED Feb. 15, 2019 NOTIFICATION OF PRIORITY ACTION E-MAILED 6326 Feb. 15, 2019 PRIORITY ACTION E-MAILED 6326 Feb. 15, 2019 PRIORITY ACTION WRITTEN 76638 Feb. 11, 2019 ASSIGNED TO EXAMINER 76638 Jan. 30, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM Jan. 12, 2019 NEW APPLICATION ENTERED IN TRAM TM Staff and Location Information
TM Staff Information TM Attorney: PINO, BRIAN J Law Office LAW OFFICE 114 Assigned: File Location Current Location: TMO LAW OFFICE 114 - EXAMINING Date in Location: Feb. 15, 2019 ATTORNEY ASSIGNED
Exhibit 4
3/12/2020 Trademark Status & Document Retrieval
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STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2020-03-12 08:36:03 EDT
Mark: THE BOWERY BOYS No Image exists for this case.
US Serial Number: 78100421 Application Filing Date: Dec. 31, 2001
US Registration Number: 2761675 Registration Date: Sep. 09, 2003
Register: Principal
Mark Type: Service Mark
TM5 Common Status DEAD/REGISTRATION/Cancelled/Invalidated Descriptor: The trademark application was registered, but subsequently it was cancelled or invalidated and removed from the registry.
Status: Registration cancelled under Section 18 by the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.
Status Date: May 06, 2008
Publication Date: Jun. 17, 2003
Date Cancelled: May 06, 2008
Mark Information
Mark Literal Elements: THE BOWERY BOYS
Standard Character Claim: No
Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Acquired Distinctiveness In whole Claim:
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: ENTERTAINMENT SERVICES, NAMELY PRODUCTION AND DISTRIBUTION OF MOTION PICTURES; ENTERTAINMENT SERVICES, IN THE NATURE OF AN ON-GOING TELEVISION PROGRAMS IN THE FIELD OF COMEDY; DISTRIBUTION OF TELEVISION PROGRAMS FOR OTHERS
International Class(es): 041 - Primary Class U.S Class(es): 100, 101, 107
Class Status: SECTION 18 - CANCELLED
Basis: 1(a)
First Use: Jan. 01, 1983 Use in Commerce: Jan. 01, 1983
Basis Information (Case Level)
Privacy - Terms Filed Use: Yes Currently Use: Yes tsdr.uspto.gov/#caseNumber=78100421&caseType=SERIAL_NO&searchType=statusSearch 1/3 3/12/2020 Trademark Status & Document Retrieval
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: BOWERY BOYS CORPORATION, THE
Owner Address: POB 11106 FT. LAUDERDALE, FLORIDA UNITED STATES 33339
Legal Entity Type: CORPORATION State or Country Where UNITED STATES Organized:
Attorney/Correspondence Information
Attorney of Record - None Correspondent
Correspondent PETER F. VALORI Name/Address: DAMIAN & VALORI, LLP 1000 Brickell Avenue Suite 1020 Miami, FLORIDA UNITED STATES 33131
Phone: (954) 205-6787 Fax: (954) 564-5308
Domestic Representative - Not Found
Prosecution History
Date Description Proceeding Number
May 06, 2008 CANCELLED SECTION 18-TOTAL
May 06, 2008 CANCELLATION TERMINATED NO. 999999 43813
Nov. 26, 2007 CANCELLATION GRANTED NO. 999999 43813
Jul. 03, 2007 CASE FILE IN TICRS
Oct. 30, 2004 CANCELLATION INSTITUTED NO. 999999 43813
Sep. 09, 2003 REGISTERED-PRINCIPAL REGISTER
Jun. 17, 2003 PUBLISHED FOR OPPOSITION
May 28, 2003 NOTICE OF PUBLICATION
Apr. 24, 2003 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 03, 2003 CORRESPONDENCE RECEIVED IN LAW OFFICE
Mar. 03, 2003 PAPER RECEIVED
Sep. 09, 2002 NON-FINAL ACTION E-MAILED
Jun. 13, 2002 CORRESPONDENCE RECEIVED IN LAW OFFICE
May 31, 2002 CORRESPONDENCE RECEIVED IN LAW OFFICE
Apr. 15, 2002 NON-FINAL ACTION E-MAILED
Apr. 10, 2002 ASSIGNED TO EXAMINER 76734
TM Staff and Location Information
TM Staff Information - None File Location
Current Location: TTAB Date in Location: May 06, 2008
Assignment Abstract Of Title Information - Click to Load Privacy - Terms tsdr.uspto.gov/#caseNumber=78100421&caseType=SERIAL_NO&searchType=statusSearch 2/3 3/12/2020 Trademark Status & Document Retrieval
Proceedings - Click to Load
Privacy - Terms tsdr.uspto.gov/#caseNumber=78100421&caseType=SERIAL_NO&searchType=statusSearch 3/3
Exhibit 5
UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451
Lykos Mailed: November 26, 2007
Cancellation No. 92043813
WARNER BROS. ENTERTAINMENT INC.
v.
THE KAPLAN TRUST
Before Hohein, Holtzman, and Bergsman, Administrative Trademark Judges.
By the Board:
This case now comes up for consideration of
petitioner’s motion for summary judgment on its Section 2(d)
and fraud claims. The motion is fully briefed.1
I. Background
On October 20, 2004, petitioner filed a petition to
cancel respondent’s registration for the mark THE BOWERY
BOYS for “entertainment services, namely production and
distribution of motion pictures; entertainment services, in
the nature of an on-going television program[sic] in the
field of comedy; distribution of television programs for
1 The Board has exercised its discretion to consider petitioner’s reply brief. See Trademark Rule 2.127(a). others” in International Class 41.2 Petitioner seeks to
cancel respondent’s registration on the grounds that (1)
respondent’s mark so resembles petitioner’s previously used
THE BOWERY BOYS mark for the distribution of motion pictures
and television programs, and pre-recorded videotapes, that
it is likely to cause confusion, mistake, or deception of
prospective consumers under Section 2(d) of the Lanham Act;
(2) respondent’s mark falsely suggests a connection between
petitioner and respondent under Section 2(a) of the Lanham
Act; and (3) respondent fraudulently procured its
registration.
In the petition to cancel, petitioner alleges ownership
of all rights to the mark THE BOWERY BOYS for the
distribution of motion pictures and television programs, and
pre-recorded videotapes, and that petitioner and its
predecessors have continuously used itsmark prior to
respondent’s claimed date of first use. Petitioner also
alleges that:
5. Petitioner’s mark THE BOWERY BOYS has been widely used and publicized for a period of several decades in connection with a series of movies shown in theaters and on television, and on video tapes sold and rented in a variety of retail outlets.
In its answer, respondent denied the relevant
allegations contained in the petition for cancellation, and
2 Registration No. 2761675, issued on September 9, 2003, alleging January 1, 1983 as the date of first use anywhere and in commerce. asserted various affirmative defenses, including
acquiescence.
On August 24, 2006, the Board issued an order which
admonished respondent for its destruction of documents and
entered the sanction that respondent may only prove use of
its mark by documentary evidence. The order further
provides that testimonial evidence from respondent on the
issue of use would not be considered except for
authentication purposes.
II. Petitioner’s Motion for Summary Judgment
We now turn to petitioner’s motion for summary judgment
in its favor on the pleaded Section 2(d) and fraud claims.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving for summary judgment has the burden of demonstrating the absence of any genuine issue of material fact, and that it is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548
(1986). The nonmoving party must be given the benefit of
all reasonable doubt as to whether genuine issues of
material fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the undisputed
facts, must be viewed in the light most favorable to the nonmoving party. See Opryland USA, Inc. v. Great American
Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir.
1992). When the moving party's motion is supported by
evidence sufficient to indicate that there is no genuine
issue of material fact, and that the moving party is
entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial. The
nonmoving party may not rest on the mere allegations of its
pleadings and assertions of counsel, but must designate
specific portions of the record or produce additional
evidence showing the existence of a genuine issue of
material fact for trial.
Based on the submissions of the parties, we find that
petitioner has met its burden of demonstrating that there
are no genuine issues of material fact, and that petitioner
is entitled to judgment as a matter of law on its Section
2(d) and fraud claims.
A. Petitioner’s Section 2(d) Claim
A party moving for summary judgment in its favor on a
Section 2(d) claim must establish that there is no genuine dispute that (1) it has standing to maintain the proceeding;
(2) it is the prior user of its pleaded mark or marks; and
(3) contemporaneous use of the parties' respective marks on their respective goods or services would be likely to cause confusion, mistake or to deception of consumers. See
Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733 (TTAB 2001).
(1) Standing
In its responsive brief, respondent has questioned petitioner’s standing to bring the present action on the grounds that petitioner is not using the words “The Bowery
Boys” as a mark, but rather as a means of identifying the actors appearing in certain films, and that the history of the copyright assignments in “The Bowery Boys” films contains a break in the chain of title. As discussed in more detail below, we find that the evidence of petitioner's prior use of its THE BOWERY BROTHERS mark suffices to establish petitioner's standing to bring this case. As such, no genuine issue of material fact exists on the issue of standing.
(2) Priority
To establish priority on a likelihood of confusion claim brought under Section 2(d) of the Trademark Act, a party must prove that, vis-à-vis the other party, it owns "a mark or trade name previously used in the United States ... and not abandoned...." Trademark Act Section 2, 15 U.S.C.
Section 1052. A party may establish its own prior proprietary rights in a mark through actual use or through use analogous to trademark use, such as use in advertising brochures, trade publications, catalogues, newspaper
advertisements and Internet websites which creates a public
awareness of the designation as a mark identifying the party
as a source. See Trademark Act Sections 2(d) and 45, 15
U.S.C. Sections 1052(d) and 1127; T.A.B. Systems v. PacTel
Teletrac, 77 F.3d 1372, 37 USPQ2d 1879 (Fed. Cir. 1996),
vacating Pactel Teletrac v. T.A.B. Systems, 32 USPQ2d 1668
(TTAB 1994).
We find that the declaration of Janet A. Kobrin, Vice
President, Intellectual Property for petitioner (hereinafter
referred to as the “Kobrin Declaration”), relied upon by
petitioner in support of its motion for summary judgment,
contains unequivocal statements regarding petitioner’s date
of first use in interstate commerce of its mark, and is
sufficient to establish petitioner’s date of first use as
1992.3 In particular, the declaration includes the
following statement:
In 1992, Warner released to the public six (6) of the films from the Bowery Boys Collection on videocassette,
3 Respondent has moved to strike the Kobrin Declaration on the grounds that petitioner did not disclose Ms. Kobrin’s identity as an individual with knowledge of the facts alleged in this proceeding, and that she was not made available for cross examination. Respondent’s motion is denied. Petitioner did not outright refuse to furnish her identity during discovery. In addition, the Kobrin Declaration does not contain any previously undisclosed facts. Under these circumstances, it would be unduly harsh to impose the preclusion sanction under Fed. R. Civ. P. 37(c)(1). See Vignette v. Marino, 77 USPQ2d 1408 (TTAB 2005). As a final comment, the Board notes that the fact that another individual was designated as petitioner’s Rule 30(b)(6) witness does not prevent petitioner from introducing on summary judgment the declaration of another corporate official. including the film “Ghost Chasers.” These films were released under the mark THE BOWERY BOYS and are still available in stores today. . . .
Paragraph 21, Kobrin Declaration.
Attached to the declaration are photographs of the packaging for the pre-recorded videocassettes displaying THE
BOWERY BOYS mark for the featured films. See Kobrin
Declaration, Exhibit 3. Thus, the Kobrin declaration, coupled with the documentary evidence consisting of the photographs of labels affixed to videocassette boxes submitted therewith, are sufficient to establish petitioner’s priority date as 1992.
In contrast, respondent has not produced any documentary evidence showing use of the mark THE BOWERY BOYS so as to raise a genuine issue of material fact to rebut petitioner’s date of first use. See Deposition of Jeff
Kaplan, October 13, 2006 at 12-25.
Respondent attempts to raise a genuine issue of material fact by arguing that petitioner is not using the words “The Bowery Boys” as a trademark because it appears on the labels of the videocassettes as “Leo Gorcey and The
Bowery Boys” and therefore describes a group of actors appearing in certain films. The Board disagrees with respondent’s characterization of petitioner’s mark. We find the stylization of the wording “The Bowery Boys” as displayed on the videocassette labels sufficiently distinctive to create a separate commercial impression so as
to constitute a discrete trademark.
Respondent also attempts to raise of genuine issue of
material fact by arguing that petitioner’s evidence
regarding the history of copyright assignments in the Bowery
Boys film series contains a break in the chain of title. We
find respondent’s argument unavailing. In light of
petitioner’s uncontroverted evidence of current ownership
and trademark use as provided by the Kobrin declaration and
supporting documentation, the chain of title of copyright
transfers is irrelevant to our analysis of priority in this
case.
(3) Likelihood of Confusion
Turning to the issue of likelihood of confusion, we are guided by the factors set forth in the case of In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Our determination of likelihood of confusion is
based on an analysis of all of the facts and evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion.4 In this particular case, the key
factors are the degree of similarity of the parties’ marks,
the relatedness of the parties’ goods and services, and the
4 Our primary reviewing Court has held that only those du Pont factors shown to be material or relevant in the particular case and which have evidence submitted thereon are to be considered. See Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). channels of trade. We thus have concentrated our discussion on the du Pont factors which the parties have discussed and/or on which we have evidence.
Considering first the marks, there is no issue that respondent’s mark is identical to petitioner’s mark. As discussed inter alia, petitioner’s mark, as displayed on the labels of its pre-recorded videocassettes, appears as the single trademark THE BOWERY BOYS. Thus, the identical nature of the marks at issue weighs heavily in favor of finding likelihood of confusion.
We next turn to a consideration of the parties’ respective goods and services. There is no genuine issue that, based on the evidence of record, petitioner’s goods consist of pre-recorded videocassettes featuring a film series, and that respondent’s services, as identified in the involved registration, include the production and distribution of motion pictures. It is well recognized that confusion is likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods on the other. See e.g. Corinthian
Broadcasting Corp. v. Nippon Electric Co. Ltd., 219 USPQ 773
(TTAB 1983) (TVS for transmitters and receivers of still television pictures held likely to be confused with TVS for television broadcasting services). The nature of petitioner’s goods (videocassettes featuring a film series) and respondent’s services (production and distribution of
motion pictures) are so closely related that if the goods
are sold and the services are rendered under the same mark,
consumers will mistakenly believe that the goods and
services emanate from a single source. This du Pont factor
therefore favors a finding of likelihood of confusion.
Regarding the channels of trade, it is undisputed that
petitioner sells its pre-recorded videocassettes through
retail outlets. Respondent’s involved registration,
however, contains no limitation regarding the channels of
trade. While the production and distribution of films are
not services that are offered at the retail level, the
ultimate consumer of such services (i.e. the ordinary
consumer who views films in movie theaters) is the same
prospective purchaser of prerecorded videotapes featuring
films. In this particular case, the films which are
recorded on the videocassettes were all previously released
in movie theaters. Indeed, the labels affixed to the
pre-recorded videocassettes explicitly notify the consumers
of this fact. Thus, prospective consumers certainly are
aware that the same company offers the service of producing
and distributing films as well as offering for sale pre-
recorded videocassettes featuring films. This du Pont factor also favors a finding of likelihood of confusion. Inasmuch as petitioner has demonstrated that there is no genuine issue of material fact, and that it is entitled to judgment as a matter of law, petitioner’s motion for summary judgment is granted on its Section 2(d) claim.5
B. Petitioner’s Fraud Claim
Petitioner has also moved for summary judgment on its claim of fraud, arguing that respondent copied petitioner’s labels as they appeared on petitioner’s videocassettes, and submitted such labels as specimens in support of its own application. Petitioner further contends that respondent falsely declared that the label specimen constitutes evidence of respondent’s use in commerce in connection with its application.
Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes false, material representations of fact in connection with an
5 In its responsive brief, respondent argues that based on e-mail correspondence between respondent and petitioner which took place prior to the institution of this case, petitioner acquiesced to respondent’s use of the words “The Bowery Boys” as a trademark. It is well settled that acquiescence requires proof of an affirmative act or misleading conduct by the party against whom the defense is asserted, with such act or conduct signaling to the adverse party that its use and/or registration of a mark would not be challenged. See DAK Indus. Inc. v. Daiichi Kosho Co. Ltd., 25 USPQ2d 1622 (TTAB 1993). The e-mail correspondence does not affirmatively state that petitioner would not assert any claims against respondent either before the Board or in federal court. We therefore find that the evidence presented by respondent is insufficient to raise a genuine issue of material fact to rebut petitioner’s motion for summary judgment on its Section 2(d) claim, and is also insufficient for respondent to meet its burden of proof on this defense. application to register. See Torres v. Cantine Torresella
S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986). As set forth below, there is no genuine issue of material fact that respondent made materially false representations in connection with the specimen submitted with its application during ex parte examination.
There is no dispute and no genuine issue of material fact that respondent filed an application based on use in commerce and signed a declaration attesting to the truth of all the statements in the application. A side-by-side comparison of respondent’s label specimen with petitioner’s videocassette label reveals that the labels are virtually identical. Kobrin Declaration, Exhibit D. Indeed, the placement and stylization of both parties’ marks is the same. While respondent claimed that it obtained the image from a lobby card, it was unable to produce documentary evidence of such a card. Deposition of Jeffrey Kaplan,
August 31, 2005, at 103-105, 107. We therefore conclude that there is no genuine issue of material fact that respondent submitted a fabricated specimen in support of its registration, namely a very slightly altered but essentially identical copy of one of petitioner’s videocassette labels.
By relying on a label obtained from petitioner’s videocassette box to support is own allegation of use, respondent knowingly made false and material misrepresentations in connection with its application.
Accordingly, we find that there are no genuine issues of material fact that respondent fraudulently obtained its registration. Accordingly, petitioner's motion for summary judgment is granted on its fraud claim.
Inasmuch as petitioner did not move for summary judgment on its Section 2(a) claim, we need not reach this remaining claim. Judgment is hereby entered against respondent, the petition to cancel is granted and the involved registration will be cancelled in due course, based on the Section 2(d) and fraud claims.
Exhibit 6
Case: 3:09-cv-00278-bbc Document #: 41 Filed: 07/20/09 Page 1 of 7 Case: 3:09-cv-00278-bbc Document #: 41 Filed: 07/20/09 Page 2 of 7 Case: 3:09-cv-00278-bbc Document #: 41 Filed: 07/20/09 Page 3 of 7 Case: 3:09-cv-00278-bbc Document #: 41 Filed: 07/20/09 Page 4 of 7 Case: 3:09-cv-00278-bbc Document #: 41 Filed: 07/20/09 Page 5 of 7 Case: 3:09-cv-00278-bbc Document #: 41 Filed: 07/20/09 Page 6 of 7 Case: 3:09-cv-00278-bbc Document #: 41 Filed: 07/20/09 Page 7 of 7
Exhibit 7
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Retrobrands USA LLC,
Petitioner, Cancellation No. 92068175 v. Registration Nos. 1,394,814 Lands’ End Direct Merchants, Inc., 1,492,716
Registrant.
LANDS’ END’S RESPONSES TO PETITIONER’S FIRST SET OF REQUESTS FOR ADMISSIONS TO REGISTRANT
Pursuant to Rules 26 and 36 of the Federal Rules of Civil Procedure and
37 C.F.R. § 2.120, Registrant Lands’ End Direct Merchants, Inc. (“Lands’ End”) submits the
following objections and responses to Petitioner’s First Set of Requests for Admissions to
Registrant (“Requests”) served by Petitioner Retrobrands USA LLC (“Retrobrands”).
Lands’ End’s responses to the Requests are not a waiver of any right or objection, or an admission of relevance, materiality or admissibility as to the existence of any documents or information. Lands’ End provides these responses and objections based on information available to Lands’ End at this time. Lands’ End’s investigation is ongoing and Lands’ End reserves the right to supplement, amend, or modify these responses if additional or different information is discovered.
General Objections
The following general objections are incorporated by reference into each Specific
Response set forth below:
Lands’ End objects to the Definitions to the extent that they purport to impose any duty beyond those specified in the Federal Rules of Civil Procedure.
Lands’ End objects to Retrobrands’ definitions of “persons”, document”, and “relate to”
to the extent they seek discovery beyond the scope permitted under the Federal Rules, or
otherwise not proportional to the needs of this case, considering the importance of the issues at stake in the action, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.
Lands’ End objects to Retrobrands’ definitions of “Lands’ End Direct Merchants, Inc.”,
“Registrant”, “You”, and “Your” to the extent they encompass any entities beyond Registrant
Lands’ End Direct Merchants, Inc. and its officers, directors, employees, corporate parents,
subsidiaries, or affiliates.
Lands’ End objects to the Instructions to the extent that they purport to impose any duty
beyond those specified in the Federal Rules of Civil Procedure. Lands’ End will comply with the
requirements of Rule 36 of the Federal Rules of Civil Procedure and the Board’s rules.
Lands’ End objects to these Requests to the extent they call for information protected
from discovery by the attorney-client privilege, work product immunity, common interest
privilege, and/or any other applicable privilege or protection, including common interest
privilege as a result of a joint defense agreement. Any objection to a specific Interrogatory based
on privilege is intended to be comprehensive and encompasses all applicable privileges and
immunities.
Lands’ End objects to these Requests to the extent they are not reasonably calculated to
lead to the discovery of admissible evidence relevant to the claims and defenses in this case.
Lands’ End objects to these Requests to the extent they call for discovery that is not
proportional to the needs of this case, considering the importance of the issues at stake in the
- 2 - action, the amount in controversy, the parties’ relative access to relevant information, the parties’
resources, the importance of the discovery in resolving the issues, and whether the burden or
expense of the proposed discovery outweighs its likely benefit.
Lands’ End objects to these Requests to the extent they are vague and ambiguous.
Lands’ End objects to these Requests to the extent they are overbroad and unduly
burdensome.
Lands’ End objects to these Requests as unnecessarily burdensome to the extent they
seek information already in Retrobrands’ possession and/or publicly available.
Lands’ End objects to these Requests to the extent they seek information not in the possession, custody or control of Lands’ End.
Lands’ End objects to these Requests to the extent they seek information that is equally accessible to both parties.
Lands’ End objects to these Requests to the extent that they seek private information about individuals or entities, the disclosure of which would violate the rights of privacy, secrecy,
and/or confidentiality of others, or that would breach existing confidentiality agreements.
Lands’ End objects to these Requests to the extent they seek highly confidential
information or trade secrets that are not material to any claim.
Lands’ End objects to these Requests to the extent they call for information that Lands’
End requires a reasonable opportunity to discover and analyze before providing a complete
response. Lands’ End’s investigation is ongoing and Lands’ End reserves the right to
supplement, amend, or modify these responses if additional or different information is
discovered.
Lands’ End objects to these Requests to the extent they are cumulative and/or duplicative.
Lands’ End objects to these Requests to the extent they exceed the limit of seventy-five
- 3 - (75) Requests, counting subparts, allowed pursuant to 37 C.F.R. § 2.120(i). Requests will be counted as multiple Requests where they request multiple, separate pieces of information that are not logically or factually subsumed within, and not necessarily related to, the primary question.
- 4 - Response to Request for Admission No. 4:
Lands’ End admits that it has not operated a dedicated “Willis & Geiger” division since
2001, with the clarification that other Lands' End divisions have continued to design WILLIS &
GEIGER products to be sold through Lands’ End channels.
Request for Admission No. 5:
Admit that as of January 1st 2010 you have had no employees, managers or any type of staff who work in a division called Willis & Geiger in your company.
Response to Request for Admission No. 5:
Admitted that as of January 1, 2010, Lands’ End did not have a division called “Willis &
Geiger.”
Request for Admission No. 6:
Admit that on August 18th 2017 at 11:11 A.M. EST a Land’s End Customer Care representative named Judith S. wrote an e-mail to Jeff Kaplan which stated the following, “ Dear Jeff, Thank you for contacting Land’s End regarding Willis & Geiger. We are sorry we did discontinue Willis & Geiger. We do not have any inventory in stock and will not have inventory in the near future”. (Hereby attached as Exhibit C)
Response to Request for Admission No. 6:
Lands’ End denies that Exhibit C contains a complete copy of the email exchange between the Lands’ End Customer Care representative and Mr. Kaplan, but otherwise admitted.
Lands' End also affirmatively alleges that Mr. Kaplan engaged with several other Customer
Service Representatives who provided information that conflicted with the information provided by Judith S.
Request for Admission No. 7:
Admit that you are the owner of the web domain address www.willisandgeiger.com
- 6 - Response to Request for Admission No. 7:
Admitted.
Request for Admission No. 8:
Admit that since 2010 you have not had a working website which can be accessed by the public at www.willisandgeiger.com
Response to Request for Admission No. 8:
Denied, customers accessing
Request for Admission No. 9:
Admit that during the year 2010 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 9:
Denied.
Request for Admission No. 10:
Admit that during the year 2011 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 10:
Admitted.
Request for Admission No. 11:
Admit that during the year 2012 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 11:
Admitted.
- 7 - Request for Admission No. 12:
Admit that during the year 2013 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 12:
Denied.
Request for Admission No. 13:
Admit that during the year 2014 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 13:
Denied.
Request for Admission No. 14:
Admit that during the year 2015 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 14:
Denied.
Request for Admission No. 15:
Admit that during the year 2016 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 15:
Denied.
Request for Admission No. 16:
Admit that during the year 2017 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 16:
Denied.
- 8 - Request for Admission No. 17:
Admit that during the year 2018 there has been no mention of the trademark Willis & Geiger on your website at www.landsend.com.
Response to Request for Admission No. 17:
Denied.
Request for Admission No. 18:
Admit that since 2010 you have not had any links to any Willis & Geiger websites located on the worldwide internet from your website at www.landsend.com.
Response to Request for Admission No. 18:
Admitted that there were no links to any external Willis & Geiger websites since 2010,
however, denied that the landsend.com website did not include webpages offering WILLIS &
GEIGER products for sale since 2010.
Request for Admission No. 19: Admit that you are the owner of the trademark and design for Willis & Geiger – Registration No. 1492716 for goods and services for “Retail Store Services in the Field of Clothing and Accessories”.
Response to Request for Admission No. 19:
Admitted.
Request for Admission No. 20: Admit that since 2010 you have not operated or licensed a retail store featuring goods and services using the trademark and design Willis & Geiger.
Response to Request for Admission No. 20:
Lands’ End admits that it has not operated or licensed a retail store under the name
“Willis & Geiger” since 2010, but denies that it has not used the WILLIS & GEIGER Mark in
connection with its online retail store services.
- 9 -
Request for Admission No. 89:
Admit that any Willis & Geiger clothing products currently sold on ecommerce sites such as Amazon and E-Bay, among others are not owned by you or affiliated with you.
Response to Request for Admission No. 89:
Lands’ End objects to this Request to the extent that it is unreasonably duplicative of
Request No. 64. Lands’ End further objects to this request to the extent that it exceeds the limit of seventy-five (75) Requests, counting subparts, allowed pursuant to 37 C.F.R. § 2.120(i).
Subject to the foregoing objections, see Response to Request for Admission No. 64.
Request for Admission No. 90:
Admit that any Willis & Geiger clothing products currently sold on ecommerce sites such as Amazon and E-Bay, among others are sold by third party sellers not contracted by you or affiliated with you.
Response to Request for Admission No. 90:
Lands’ End objects to this Request to the extent that it is unreasonably duplicative of
Request No. 65. Lands’ End further objects to this request to the extent that it exceeds the limit of seventy-five (75) Requests, counting subparts, allowed pursuant to 37 C.F.R. § 2.120(i).
Subject to the foregoing objections, see Response to Request for Admission No. 65.
Dated: February 4, 2019 Respectfully submitted,
Nathan T. Harris John N. Anastasi Ann Lamport Hammitte LANDO & ANASTASI, LLP One Main Street – 11th Floor Cambridge, MA 02142 Tel: (617) 395-7013 Email: [email protected] Attorneys for Registrant
- 29 - CERTIFICATE OF SERVICE
I certify that the foregoing document was served upon Petitioner Retrobrands USA LLC on February 4, 2019, by emailing a copy thereof to the following correspondence address of record for Petitioner:
/Nathan T. Harris/ Nathan T. Harris
- 30 -