notice of opposition · men's, women's and children's clothing,namely, sweaters,...

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

ESTTA Tracking number: ESTTA1077128

Filing date: 08/24/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Notice of Opposition

Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information

Name Vans, Inc.

Entity Corporation Citizenship Delaware

Address 1588 SOUTH COAST DRIVECOSTA MESA, CA 92626UNITED STATES

Attorney informa-tion

AARON Y. SILVERSTEINSAUNDERS & SILVERSTEIN LLP14 CEDAR STREET, SUITE 224AMESBURY, MA 01913-1831UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected]+1.978.463.9100

Docket Number 990.856.11

Applicant Information

Application No. 88868351 Publication date 08/04/2020

Opposition FilingDate

08/24/2020 Opposition Peri-od Ends

09/03/2020

Applicants Smith, Jon-Horace3001 LANDING EAGLE COURTWOODBRIDGE, VA 22191UNITED STATES

Smith, Allison3001 LANDING EAGLE COURTWOODBRIDGE, VA 22191UNITED STATES

Goods/Services Affected by Opposition

Class 025. First Use: 0 First Use In Commerce: 0All goods and services in the class are opposed, namely: Athletic apparel, namely, shirts, pants, jack-ets, footwear, hats and caps, athletic uniforms; Athletic shoes

Grounds for Opposition

Priority and likelihood of confusion Trademark Act Section 2(d)

Marks Cited by Opposer as Basis for Opposition

http://estta.uspto.gov

U.S. RegistrationNo.

4442122 Application Date 07/01/2011

Registration Date 12/03/2013 Foreign PriorityDate

NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a wave line.

Goods/Services Class 025. First use: First Use: 1997/00/00 First Use In Commerce: 1997/00/00

Clothing, namely, T-shirts, shirts, sweatshirts, pants, shorts, denims, sweater,jackets, [ belts, boxers, ] socks [, scarves, underwear and swimwear ];Headgear, namely, hats, caps and beanies




NONE

Word Mark NONE

Design Mark

Description ofMark

The matter shown by the dotted line is not part of the mark and serves only toshow the position of the mark.


footwear




NONE

Word Mark NONE

Design Mark

Description ofMark

NONE


footwear




NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of the design on the side of the shoe. The matter shown bythe dotted line is not part of the mark and serves only to show the position of themark.


footwear



Registration Date 12/01/1998 Foreign Priority NONE

Date

Word Mark NONE

Design Mark

Description ofMark

NONE


[ men's, women's and children's clothing, namely, shirts, T-shirts, shorts, under-wear, swim trunks, trousers, sweaters,jackets, coats, caps, hats, bandannas,vests, socks, ] footwear and snowboard boots




NONE

Word Mark NONE

Design Mark

Description ofMark

NONE


men's, women's and children's clothing,namely, sweaters, jackets, pants, T-shirts, turtlenecks, gloves, hats, beanies,vests, parkas, footwear, and snow-board boots

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a wavy line intersecting and joining an oval.

Goods/Services Class 025. First use: First Use: 0 First Use In Commerce: 0

Belts; Boardshorts; Bottoms as clothing; Capris; Coats; Dresses; Footwear;Gloves; Headwear; Insoles; Jackets; Jeans; Jeggings; Leggings; Mittens; Over-alls; Pants; Rain wear; Scarves; Shirts; Shorts;Skirts; Socks; Sweat jackets;Sweat pants; Sweat shirts; Sweaters; Tops as clothing; Undergarments; Vests

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a wavy stripe filled with a checkerboard pattern.


Footwear

Attachments 20200824 vans smith unbroken sole noo final.pdf(3973132 bytes )

Signature /Aaron Y. Silverstein/

Name Aaron Y. Silverstein

Date 08/24/2020

1

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

VANS, INC.,

Opposer,

v.

ALLISON SMITH AND JON-HORACE SMITH,

Applicants.

Opposition No. ___________ Serial No.: 88868351

Mark: Filing Date: April 11, 2020

NOTICE OF OPPOSITION Opposer Vans, Inc. (“Vans”), a Delaware corporation with its principal place of business at 1588 South

Coast Drive, Costa Mesa, California 92626, believes that it will be damaged by the registration of the mark

(“Applicants’ Design”) that is the subject of Application Ser. No. 88868351, filed

by Allison Smith and Jon-Horace Smith (“Applicants”).

As grounds for its opposition, Vans alleges the following upon actual knowledge with respect to itself

and its own acts, and upon information and belief as to other matters:

Vans, Its Goods and Services, and Its Side Stripe Trademark

1. Founded in 1966 in Anaheim, California, by Van Doren brothers Paul and Jim, along with

partners Gordon Lee and Serge Delia, Vans has grown from humble beginnings to become one of the most

well-known and groundbreaking footwear, apparel, and accessory companies in the world.

2. Vans’ products are widely recognized and extremely popular. The company has achieved

recognition as ranking among the world’s greatest and most recognizable brands. For decades, Vans has

consistently used its iconic trademarks and trade dress in connection with footwear, apparel, accessories, and

related services. These trademarks and trade dress are known throughout the world as source indicators of

2

Vans’ high-quality products and services. Over the years, Vans has used its distinctive trademarks and trade

dress to sell tens of millions of pairs of shoes and millions of units of apparel and accessories in the United

States.

3. Much of Vans’ success is owed to its enduring reputation for creating lasting and durable

products without sacrificing comfort or style, and perhaps just as important, its longstanding and consistent

use of its trademarks and trade dress. The consistent use of its distinctive brand combined with Vans’ peerless

reputation for lifestyle and active shoes, apparel, and accessories has been instrumental in Vans’ lasting

popularity.

4. For more than 50 years – long prior to Applicant’s filing dates and dates of first use – Vans

has consistently used its trademarks in connection with its products and services and has invested many millions

of dollars marketing and promoting its trademarks.

5. Among Vans’ many famous trademarks is its iconic side stripe trademark (the “Side Stripe

Trademark”) and associated trade dress the (“Side Stripe Trade Dress”) (together, the “Side Stripe”), first used

to identify Vans’ products at least as early as 1971.

6. Reflecting its significant growth and expansion, Vans now owns several federal registrations

for both its iconic Side Stripe Trademark and Side Stripe Trade Dress in relation to footwear and apparel

products.

7. In addition, Vans has offered and achieved considerable sales on a variety of footwear, apparel,

and related products prominently featuring Vans’ Side Stripe, e.g.:

3

Footwear

4

Apparel

5

Sporting Goods

8. Vans has sold billions of dollars’ worth of products in connection with its Side Stripe. These

products are promoted, offered, and sold nationwide through a variety of retail means, including in thousands

of retail stores. These retail stores include national, regional, independent, and even specialty retailers such as

Zumiez, Dick’s Sporting Goods, Kohls, Foot Locker, Journeys, PacSun, DSW, WalMart, and JCPenney. Vans

also maintains a global network of proprietary retail stores, including flagship locations in major metropolitan

areas throughout the world.

9. Vans products are also offered and sold in connection with its Side Stripe through websites of

many of its retailers, as well as through Vans’ own proprietary e-commerce websites.

10. For years, Vans has spent tens of millions of dollars annually advertising and promoting its

Side Stripe to the general public in connection with its products and services through virtually every available

type of media, including print publications, out-of-home signage, and the internet.

11. Vans has run extensive nationwide advertising campaigns that reinforce the Side Stripe as a

powerful source indicator for Vans and its products.

12. With respect to print publications, Vans has also advertised and promoted the Side Stripe in a

wide variety of nationally circulated magazines.

6

13. Vans additionally promotes and markets the Side Stripe on its own website, authorized

websites, and social media sites, including vans.com, facebook.com/VANS, twitter.com/VANS_66, and

instagram.com/vans, among others.

14. Further, Vans’ products sold in connection with the Side Stripe are advertised and promoted

through many of its retail partners’ websites, including sites used by Nordstrom, WalMart, Barneys, ASOS, and

Famous Footwear, among others.

15. Sponsorships and individual athlete and celebrity agreements represent another significant

form of advertising and promotion by Vans. Vans’ Side Stripe has been promoted through high-profile athletes,

musicians, and artists. Indeed, Vans has collaborated with numerous world-famous musicians and rock groups

with millions of fans in the United States and across the globe, including Metallica, Pearl Jam, Iron Maiden,

Motorhead, Bad Brains, Bad Religion, The Beatles, Kiss, Ramones, AC/DC, DEVO, Mastodon, Dinosaur Jr.,

Descendents, UNKLE, Deftones, Gorillaz, Tyler, The Creator, and Slayer.

16. In addition to its own substantial advertising and promotional activities, Vans and its Side

Stripe have received and continue to receive widespread unsolicited media coverage. Vans and its Side Stripe

have garnered extensive unsolicited public exposure through frequent media coverage of celebrities wearing

Vans’ footwear, apparel, and sporting goods.

17. Vans has received significant praise and recognition within relevant industries. Vans has been

recognized as the “Brand of the Year” by Footwear News (2014); the “Apparel Brand of the Year” by the Surf

Industry Manufacturers Association (2015); the “Brand of the Year” by Footwear Plus (2019); and “Brand of the

Moment” by Drapers (2018), amongst others, and is the only brand to be included in all four categories of

Transworld Snowvboarding’s 2017–2018 “Tested & Approved” snowboard gear guide.

18. Vans products have also earned high critical praise: Vans’ Authentic; Slip On; Van Doren

Series; and Surf Sider products have each separately been awarded the coveted title of “Footwear Product of

the Year” by the Surf Industry Manufacturers Association since the turn of the century. Vans’ Old Skool and

UltraRange footwear products have also been recognized: the Old Skool was named in a selection of the best

“Casual Shoes” by Men’s Health in 2018, while Vans’ UltraRange Pro Cushioning was judged “Best Cushioning”

7

by WearTested Awards in 2017. Vans exceptional customer care has also received praise. In 2017, Vans was

honored with the American Advertising Federation/Orange County Addy award for the “Best

Online/Interactive Consumer Website.”

19. As a result of Vans’ longstanding use of the Side Stripe, along with Vans extensive advertising,

publicity, promotion, and sales on a wide variety of products, including but not limited to footwear, apparel,

and sporting goods, the Side Stripe has become an iconic indicator of Vans’ brand.

20. Vans owns the following U.S. federal trademark registrations for its Side Stripe Trademark

and Side Stripe Trade Dress covering relevant goods (the “Side Stripe Registrations”) (extracts from the

USPTO TSDR database, including assignment information, are attached as Exhibit A). These registrations are

valid, subsisting, and in full force and effect.

Mark Goods/Services

(Class) Reg. No. (Ser. No.)

Reg. Date (Filing Date)

Date of First Use

Clothing, namely, T-shirts, shirts, sweatshirts, pants, shorts, denims, sweater, jackets, socks; Headgear, namely, hats, caps and beanies (Class 25)

4442122 (85361562)

Dec. 03, 2013 (Jul. 01, 2011)

1997

Footwear (Class 25)

2170961 (75229182)

Jul. 07, 1998 (Jan. 22, 1997)

1977

Footwear (Class 25)

2177772 (75091541)

Aug. 04, 1998 (Apr. 19, 1996)

1971

8

Footwear (Class 25)

2172482 (75229184)

Jul. 14, 1998 (Jan. 22, 1997)

1977

footwear and snowboard boots (Class 25)

2206796 (75326652)

Dec. 01, 1998 (Jul. 18, 1997)

May 17, 1997

men's, women's and children's clothing, namely, sweaters, jackets, pants, T-shirts, turtlenecks, gloves, hats, beanies, vests, parkas, footwear, and snowboard boots (Class 25)

2276077 (75526869)

Sep. 07, 1999 (Jul. 28, 1998)

Dec. 31, 1997

21. Vans filed Declarations of Use and Incontestability under Sections 8 and 15 of the Lanham

Act for each of the above registrations, and the United States Patent and Trademark Office acknowledged and

accepted each of these Declarations. As a result, these Registrations are incontestable under Section 15 of the

Lanham Act.

22. Vans also owns the following pending U.S. federal trademark applications for its Side Stripe

Trademark covering relevant goods (the “Side Stripe Applications”) (an extract from the USPTO TSDR

database, including assignment information, is attached as Exhibit B).

9

Mark Goods/Services

(Class) Ser. No. Filing Date

Date of First Use

Belts; Boardshorts; Bottoms as clothing; Capris; Coats; Dresses; Footwear; Gloves; Headwear; Insoles; Jackets; Jeans; Jeggings; Leggings; Mittens; Overalls; Pants; Rain wear; Scarves; Shirts; Shorts; Skirts; Socks; Sweat jackets; Sweat pants; Sweat shirts; Sweaters; Tops as clothing; Undergarments; Vests (Class 25)

88426945 May 13, 2019 N/A

Footwear (25) 88835296 March 16, 2020

April 18, 2016

23. The goods claimed in the Side Stripe Registrations and the Side Stripe Applications are not

limited as to their nature, type, channels of trade, or class of purchasers. Accordingly, it is presumed that these

registrations and applications encompass all goods of the type described, that they move in all normal channels

of trade, and that they are available to all classes of purchasers.

24. As a result of Vans’ continuous and longstanding use of its Side Stripe, the public recognizes

that Vans is the source of the variety of goods offered in connection with the Side Stripe.

25. Vans has also expended considerable time, money, and effort advertising and promoting its

trademarks and trade dress—including the Side Stripe—throughout the United States for many years.

26. As a result of these efforts, Vans has received prodigious recognition for and acquired vast

goodwill in the Side Stripe.

Applicants and Their Design

27. Applicants, Allison Smith and Jon-Horace Smith, are individuals with an address of 3001

Landing Eagle Court, Woodbridge, Virginia 22191.

28. On April 11, 2020, Applicants filed an application under § 1(b) of the Lanham Act to register

Applicants’ Design in connection with “Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,

10

athletic uniforms; Athletic shoes” in International Class 25, which was assigned Application Serial No.

88868351 (the “Application”).

29. Applicants have yet to file an Allegation of Use in connection with the Application.

Count One Likelihood of Confusion, 15 U.S.C. § 1052(d)

32. Vans repeats and realleges each and every allegation set forth in each of the preceding

paragraphs.

33. Vans has used in commerce, registered, and/or applied to register its Side Stripe Trademark

and Side Stripe Trade Dress long before Applicants’ filing date, or any dates of first use Applicants may allege.

34. Applicants’ Design is so similar to Vans’ prior-used, filed, and/or registered Side Stripe

Trademark and Side Stripe Trade Dress, and the goods identified in the Side Stripe Registrations and Side Stripe

Applications and in the Application are so similar, related, or even overlapping that it is likely that a potential

consumer would be confused, mistaken, or deceived as to the source of the parties’ respective goods under

Section 2(d) of the Lanham Act, as amended, 15 U.S.C. § 1052(d).

WHEREFORE, Vans believes that it will be damaged by the registration of the mark shown in

Application Serial No. 88868351 and respectfully requests that this opposition be sustained and that registration

to Applicants be refused.

Respectfully submitted,

Dated: August 24, 2020 By:/s/Aaron Y. Silverstein Aaron Y. Silverstein Michael R. Rizzo Saunders & Silverstein LLP 14 Cedar Street, Suite 224 Amesbury, Massachusetts 01913-1831 +1.978.463.9100 [email protected]

[email protected] [email protected] Attorneys for Opposer VANS, INC.

EXHIBIT A

8/24/2020 Status Search SN 4442122

https://tsdr.uspto.gov/#caseNumber=4442122&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch 1/6

STATUS DOCUMENTS MAINTENANCE Back to Search Print

For assistance with TSDR, email [email protected] and include your serial number, the document you are looking for, and a screenshot of any error messagesyou have received.

Generated on: This page was generated by TSDR on 2020-08-24 09:47:06 EDT

Mark:

US Serial Number: 85361562 Application Filing Date: Jul. 01, 2011

US Registration Number: 4442122 Registration Date: Dec. 03, 2013

Register: Principal

Mark Type: Trademark

TM5 Common StatusDescriptor:

LIVE/REGISTRATION/Issued and Active

The trademark application has been registered with the Office.

Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.

Status Date: Mar. 08, 2019

Publication Date: Sep. 17, 2013

Mark Information

Mark Literal Elements: None

Standard Character Claim: No

Mark Drawing Type: 2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S) Privacy - Terms

mailto:[email protected]

https://www.google.com/intl/en/policies/privacy/

https://www.google.com/intl/en/policies/terms/



Related Properties Information

Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

Description of Mark: The mark consists of a wave line.

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

Design Search Code(s): 26.17.09 - Lines, curved; Bands, curved; Bars, curved; Curved line(s), band(s) or bar(s)

Claimed Ownership of USRegistrations:

2170961, 2172482, 3906529

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; andAsterisks *..* identify additional (new) wording in the goods/services.

For: Clothing, namely, T-shirts, shirts, sweatshirts, pants, shorts, denims, sweater, jackets, [ belts, boxers, ] socks [, scarves, underwear and swimwear ];Headgear, namely, hats, caps and beanies

International Class(es): 025 - Primary Class U.S Class(es): 022, 039

Class Status: ACTIVE

Basis: 1(a)

First Use: 1997 Use in Commerce: 1997

Filed Use: Yes Currently Use: Yes

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

Privacy - Terms





Attorney/Correspondence Information

Prosecution History

Owner Name: Vans, Inc.

Owner Address: 1588 South Coast DriveCosta Mesa, CALIFORNIA UNITED STATES 92626

Legal Entity Type: CORPORATION State or Country WhereOrganized:

DELAWARE

Attorney of Record

Attorney Name: Kia H. Wimmer

Attorney Primary EmailAddress:

[email protected] Attorney Email Authorized: Yes

Correspondent

CorrespondentName/Address:

Kia H. WimmerVF Intellectual Property Services, Inc.3411 Silverside Road200 Hanby BuildingWilmington, DELAWARE UNITED STATES 19810

Phone: 302-529-3256

Correspondent e-mail: [email protected] [email protected][email protected]

Correspondent e-mailAuthorized:

Yes

Domestic Representative - Not Found

Date Description Proceeding Number

May 11, 2020 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888

May 11, 2020 TEAS CHANGE OF CORRESPONDENCE RECEIVED

May 11, 2020 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

May 11, 2020 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

May 11, 2020 TEAS CHANGE OF OWNER ADDRESS RECEIVED

Feb. 14, 2020 NOTICE OF SUIT

Jul. 08, 2019 NOTICE OF SUIT Privacy - Terms










Mar. 08, 2019 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED

Mar. 08, 2019 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 76293

Mar. 08, 2019 CORRECTION UNDER SECTION 7 – PROCESSED 76293

Mar. 08, 2019 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76293

Jan. 30, 2019 TEAS CHANGE OF CORRESPONDENCE RECEIVED

Jan. 30, 2019 TEAS SECTION 8 & 15 RECEIVED


Jan. 24, 2019 TEAS SECTION 7 REQUEST RECEIVED

Dec. 03, 2018 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED

Jun. 21, 2017 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888

Jun. 21, 2017 TEAS CHANGE OF OWNER ADDRESS RECEIVED

Dec. 03, 2013 REGISTERED-PRINCIPAL REGISTER

Sep. 17, 2013 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Sep. 17, 2013 PUBLISHED FOR OPPOSITION

Aug. 28, 2013 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Aug. 15, 2013 LAW OFFICE PUBLICATION REVIEW COMPLETED 70138

Aug. 13, 2013 APPROVED FOR PUB - PRINCIPAL REGISTER

Aug. 13, 2013 EXAMINER'S AMENDMENT ENTERED 88888

Aug. 13, 2013 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328

Aug. 13, 2013 EXAMINERS AMENDMENT E-MAILED 6328

Aug. 13, 2013 EXAMINERS AMENDMENT -WRITTEN 77868

Jan. 07, 2013 NOTIFICATION OF FINAL REFUSAL EMAILED

Jan. 07, 2013 FINAL REFUSAL E-MAILED

Jan. 07, 2013 FINAL REFUSAL WRITTEN 77868

Dec. 04, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Dec. 03, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Dec. 03, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Jun. 01, 2012 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Jun. 01, 2012 NON-FINAL ACTION E-MAILED 6325Privacy - Terms





TM Staff and Location Information

Jun. 01, 2012 NON-FINAL ACTION WRITTEN 77868

May 17, 2012 PREVIOUS ALLOWANCE COUNT WITHDRAWN

Apr. 13, 2012 WITHDRAWN FROM PUB - OG REVIEW QUERY 76621

Mar. 31, 2012 LAW OFFICE PUBLICATION REVIEW COMPLETED 70138

Mar. 31, 2012 ASSIGNED TO LIE 70138

Mar. 14, 2012 APPROVED FOR PUB - PRINCIPAL REGISTER

Mar. 06, 2012 PREVIOUS ALLOWANCE COUNT WITHDRAWN


Feb. 25, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Feb. 24, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Feb. 24, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Feb. 09, 2012 NOTIFICATION OF NOTICE OF UNRESPONSIVE AMENDMENT - E-MAILED

Feb. 09, 2012 NOTICE OF UNRESPONSIVE AMENDMENT - E-MAILED

Feb. 09, 2012 REPORT UNRESPONSIVE AMENDMENT - COMPLETED 77868

Jan. 18, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Jan. 17, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Jan. 17, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Aug. 09, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Aug. 09, 2011 NON-FINAL ACTION E-MAILED 6325

Aug. 09, 2011 NON-FINAL ACTION WRITTEN 77868

Aug. 09, 2011 ASSIGNED TO EXAMINER 77868

Jul. 09, 2011 NOTICE OF DESIGN SEARCH CODE MAILED

Jul. 08, 2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Jul. 05, 2011 NEW APPLICATION ENTERED IN TRAM

TM Staff Information - None

File Location

Current Location: TMO LAW OFFICE 115 Date in Location: Mar. 08, 2019 Privacy - Terms





Assignment Abstract Of Title Information - None recorded

Proceedings - Click to Load

Privacy - Terms








Mark:

US Serial Number: 75229182 Application Filing Date: Jan. 22, 1997

US Registration Number: 2170961 Registration Date: Jul. 07, 1998

Register: Principal





Status: The registration has been renewed.

Status Date: Aug. 29, 2017

Publication Date: Apr. 14, 1998

Mark Information



Mark Drawing Type: 2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S)

Description of Mark: The matter shown by the dotted line is not part of the mark and serves only to show the position of the mark.

Lining and StipplingStatement:

The stippling is for shading purposes only and does not indicate color.Privacy - Terms






Goods and Services



Acquired DistinctivenessClaim:

In whole

Design Search Code(s): 09.07.02 - Ski boots; Skates; Roller skates; Athletic shoes; Exercise shoes; Boots, ski; Gym shoes



For: footwear



Basis: 1(a)







Filed No Basis: No

Owner Name: VANS, INC.



DELAWAREPrivacy - Terms






Prosecution History

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes









Jul. 08, 2019 NOTICE OF SUIT





Jan. 23, 2019 TEAS SECTION 7 REQUEST RECEIVED Privacy - Terms









Aug. 29, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED

Aug. 29, 2017 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 69615

Aug. 29, 2017 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 69615

Aug. 28, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 69615

Jul. 18, 2017 TEAS SECTION 8 & 9 RECEIVED

Jul. 18, 2017 TEAS CHANGE OF CORRESPONDENCE RECEIVED

Jul. 07, 2017 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED

Oct. 18, 2010 REVIEW OF CORRESPONDENCE COMPLETE 73376

Oct. 14, 2010 PAPER RECEIVED

Sep. 02, 2008 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 73376

Sep. 02, 2008 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Aug. 19, 2008 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888

Aug. 19, 2008 TEAS CHANGE OF OWNER ADDRESS RECEIVED

Jul. 17, 2008 ASSIGNED TO PARALEGAL 73376

Jul. 07, 2008 TEAS SECTION 8 & 9 RECEIVED

Aug. 10, 2007 CASE FILE IN TICRS

Sep. 25, 2003 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.

Aug. 06, 2003 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED

Aug. 06, 2003 PAPER RECEIVED

Jul. 07, 1998 REGISTERED-PRINCIPAL REGISTER

Apr. 14, 1998 PUBLISHED FOR OPPOSITION

Mar. 13, 1998 NOTICE OF PUBLICATION

Feb. 10, 1998 APPROVED FOR PUB - PRINCIPAL REGISTER

Feb. 06, 1998 EXAMINER'S AMENDMENT MAILED

Dec. 01, 1997 CORRESPONDENCE RECEIVED IN LAW OFFICE

May 29, 1997 NON-FINAL ACTION MAILED

May 28, 1997 ASSIGNED TO EXAMINER 72517


May 15, 1997 ASSIGNED TO EXAMINER 66384Privacy - Terms








File Location

Current Location: TMEG LAW OFFICE 109 Date in Location: Mar. 07, 2019


Privacy - Terms








Mark:

US Serial Number: 75091541 Application Filing Date: Apr. 19, 1996

US Registration Number: 2177772 Registration Date: Aug. 04, 1998

Register: Principal







Publication Date: May 12, 1998

Mark Information




Lining and StipplingStatement:

The matter shown by the dotted lines is not part of the mark and serves only to show the position of the mark.Privacy - Terms






Goods and Services




In whole

Design Search Code(s): 09.07.02 - Ski boots; Skates; Roller skates; Athletic shoes; Exercise shoes; Boots, ski; Gym shoes



For: footwear



Basis: 1(a)







Filed No Basis: No




DELAWARE

Privacy - Terms






Prosecution History

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes









Nov. 22, 2019 NOTICE OF SUIT



Mar. 02, 2019 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED

Mar. 02, 2019 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 74886

Mar. 02, 2019 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 74886 Privacy - Terms
















Mar. 28, 2009 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 70131

Mar. 28, 2009 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Jan. 23, 2009 ASSIGNED TO PARALEGAL 70131


Jan. 15, 2004 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.

Nov. 12, 2003 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED

Nov. 12, 2003 TEAS SECTION 8 & 15 RECEIVED

Aug. 04, 1998 REGISTERED-PRINCIPAL REGISTER

May 12, 1998 PUBLISHED FOR OPPOSITION

May 12, 1998 PUBLISHED FOR OPPOSITION

Apr. 10, 1998 NOTICE OF PUBLICATION


Mar. 03, 1998 CORRESPONDENCE RECEIVED IN LAW OFFICE

Sep. 15, 1997 FINAL REFUSAL MAILED

Aug. 06, 1997 CORRESPONDENCE RECEIVED IN LAW OFFICE

Feb. 17, 1997 UNRESPONSIVE/DUPLICATE PAPER RECEIVED

Feb. 04, 1997 NON-FINAL ACTION MAILED


File Location

Current Location: GENERIC WEB UPDATE Date in Location: Mar. 02, 2019

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Mark:

US Serial Number: 75229184 Application Filing Date: Jan. 22, 1997

US Registration Number: 2172482 Registration Date: Jul. 14, 1998

Register: Principal






Status Date: Jan. 09, 2009

Publication Date: Apr. 21, 1998

Mark Information




Description of Mark: The mark consists of the design on the side of the shoe. The matter shown by the dotted line is not part of the mark and serves only to show theposition of the mark.

Lining and Stippling The lining is for shading purposes only and does not indicate color.Privacy - Terms






Goods and Services



Statement:


In whole

Design Search Code(s): 09.07.02 - Roller skates; Ski boots; Skates; Athletic shoes; Gym shoes; Exercise shoes; Boots, ski 29.03.06 - Green (single color used on a portion of the goods)



For: footwear



Basis: 1(a)







Filed No Basis: No


Owner Address: 1588 South Coast DriveCosta Mesa, CALIFORNIA UNITED STATES 92626 Privacy - Terms






Prosecution History


DELAWARE

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes












Mar. 05, 2019 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67723 Privacy - Terms















Jan. 09, 2009 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 76533

Jan. 09, 2009 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Jan. 09, 2009 ASSIGNED TO PARALEGAL 76533

Dec. 10, 2008 TEAS SECTION 8 & 9 RECEIVED


Sep. 25, 2003 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.

Aug. 06, 2003 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED

Aug. 06, 2003 PAPER RECEIVED

Jul. 14, 1998 REGISTERED-PRINCIPAL REGISTER

Apr. 21, 1998 PUBLISHED FOR OPPOSITION

Mar. 21, 1998 NOTICE OF PUBLICATION


Feb. 06, 1998 NON-FINAL ACTION MAILED

Dec. 01, 1997 CORRESPONDENCE RECEIVED IN LAW OFFICE

May 29, 1997 NON-FINAL ACTION MAILED





File Location

Current Location: TMEG LAW OFFICE 109 Date in Location: Mar. 07, 2019

Privacy - Terms






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https://tsdr.uspto.gov/#caseNumber=2206796+&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch 1/4




Mark:


US Registration Number: 2206796 Registration Date: Dec. 01, 1998

Register: Principal






Status Date: Jun. 24, 2019

Publication Date: Sep. 08, 1998

Mark Information




Design Search Code(s): 26.03.03 - Ovals, incomplete; Incomplete ovals 26.03.28 - Miscellaneous designs with overall oval shape, including amoeba-like shapes and irregular ovals; Oval shape (miscellaneous overallshape)

Privacy - Terms






Goods and Services



26.17.02 - Wavy line(s), band(s) or bar(s); Lines, wavy; Bands, wavy; Bars, wavy 26.17.09 - Bars, curved; Lines, curved; Curved line(s), band(s) or bar(s); Bands, curved



For: [ men's, women's and children's clothing, namely, shirts, T-shirts, shorts, underwear, swim trunks, trousers, sweaters, jackets, coats, caps, hats,bandannas, vests, socks, ] footwear and snowboard boots



Basis: 1(a)

First Use: May 17, 1997 Use in Commerce: May 17, 1997






Filed No Basis: No




DELAWARE

Privacy - Terms






Prosecution History

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes








Jun. 24, 2019 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED

Jun. 24, 2019 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 70187

Jun. 24, 2019 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 70187

Jun. 20, 2019 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 70187

May 13, 2019 TEAS SECTION 8 & 9 RECEIVED


Jan. 21, 2009 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 73376 Privacy - Terms











Jan. 21, 2009 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Dec. 04, 2008 ASSIGNED TO PARALEGAL 73376

Dec. 02, 2008 TEAS SECTION 8 & 9 RECEIVED


Mar. 05, 2004 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.

Jan. 14, 2004 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED


Dec. 01, 1998 REGISTERED-PRINCIPAL REGISTER

Sep. 08, 1998 PUBLISHED FOR OPPOSITION

Aug. 07, 1998 NOTICE OF PUBLICATION

Jul. 06, 1998 APPROVED FOR PUB - PRINCIPAL REGISTER

Jun. 03, 1998 CORRESPONDENCE RECEIVED IN LAW OFFICE

Mar. 23, 1998 NON-FINAL ACTION MAILED

Mar. 19, 1998 ASSIGNED TO EXAMINER 73359


File Location

Current Location: GENERIC WEB UPDATE Date in Location: Jun. 24, 2019


Privacy - Terms








Mark:


US Registration Number: 2276077 Registration Date: Sep. 07, 1999

Register: Principal







Publication Date: Jun. 15, 1999

Mark Information




Design Search Code(s): 06.01.04 - Mountains (landscapes); Scenery with mountains 26.05.21 - Triangles that are completely or partially shaded Privacy - Terms






Goods and Services



26.05.28 - Miscellaneous designs with overall triangular shape; Triangular shape (miscellaneous overall shape) 26.07.01 - Diamonds with plain single line border; Diamonds with plain multiple line border



For: men's, women's and children's clothing, namely, sweaters, jackets, pants, T-shirts, turtlenecks, gloves, hats, beanies, vests, parkas, footwear, andsnowboard boots



Basis: 1(a)

First Use: Dec. 31, 1997 Use in Commerce: Dec. 31, 1997






Filed No Basis: No




DELAWARE

Privacy - Terms






Prosecution History

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes









Apr. 04, 2019 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888

Apr. 04, 2019 TEAS CHANGE OF OWNER ADDRESS RECEIVED

Mar. 17, 2009 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 69471

Mar. 17, 2009 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Mar. 09, 2009 TEAS SECTION 8 & 9 RECEIVED

Aug. 31, 2006 CASE FILE IN TICRS Privacy - Terms











Jan. 14, 2005 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.

Sep. 13, 2004 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED

Sep. 13, 2004 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED

Sep. 13, 2004 TEAS SECTION 8 & 15 RECEIVED

Sep. 07, 1999 REGISTERED-PRINCIPAL REGISTER

Jun. 15, 1999 PUBLISHED FOR OPPOSITION

May 14, 1999 NOTICE OF PUBLICATION


Feb. 22, 1999 ASSIGNED TO EXAMINER 76145

Feb. 18, 1999 EXAMINER'S AMENDMENT MAILED

Feb. 08, 1999 ASSIGNED TO EXAMINER 76145


File Location

Current Location: POST REGISTRATION Date in Location: Mar. 17, 2009


Privacy - Terms



EXHIBIT B



STATUS DOCUMENTS Back to Search Print



Mark:

US Serial Number: 88426945 Application Filing Date: May 13, 2019

Filed as TEAS Plus: Yes Currently TEAS Plus: Yes

Register: Principal



LIVE/APPLICATION/Under Examination

The trademark application has been accepted by the Office (has met the minimum filingrequirements) and that this application has been assigned to an examiner.

Status: A first request for extension of time to file a Statement of Use has been granted.


Publication Date: Aug. 06, 2019 Notice of Allowance Date: Oct. 01, 2019

Mark Information




Description of Mark: The mark consists of a wavy line intersecting and joining an oval.


Design Search Code(s): 26.03.03 - Ovals, incomplete; Incomplete ovals Privacy - Terms







Goods and Services



26.17.02 - Wavy line(s), band(s) or bar(s); Bands, wavy; Bars, wavy; Lines, wavy 26.17.05 - Lines, horizontal; Horizontal line(s), band(s) or bar(s); Bands, horizontal; Bars, horizontal


2177772, 2206796, 4442122



For: Belts; Boardshorts; Bottoms as clothing; Capris; Coats; Dresses; Footwear; Gloves; Headwear; Insoles; Jackets; Jeans; Jeggings; Leggings;Mittens; Overalls; Pants; Rain wear; Scarves; Shirts; Shorts; Skirts; Socks; Sweat jackets; Sweat pants; Sweat shirts; Sweaters; Tops as clothing;Undergarments; Vests



Basis: 1(b)

Filed Use: No Currently Use: No

Filed ITU: Yes Currently ITU: Yes




Filed No Basis: No

Owner Name: Vans, Inc.Privacy - Terms






Prosecution History



DELAWARE

Attorney of Record




Correspondent


Kia H. WimmerVF INTELLECTUAL PROPERTY SERVICES, INC.3411 SILVERSIDE ROAD200 HANBY BUILDINGWILMINGTON, DELAWARE UNITED STATES 19810

Phone: 302-529-3256



Yes



Mar. 14, 2020 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED

Mar. 12, 2020 EXTENSION 1 GRANTED 98765

Mar. 12, 2020 EXTENSION 1 FILED 98765

Mar. 12, 2020 TEAS EXTENSION RECEIVED

Oct. 01, 2019 NOA E-MAILED - SOU REQUIRED FROM APPLICANT

Aug. 06, 2019 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Aug. 06, 2019 PUBLISHED FOR OPPOSITION

Jul. 17, 2019 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED Privacy - Terms











Jun. 30, 2019 APPROVED FOR PUB - PRINCIPAL REGISTER

Jun. 30, 2019 ASSIGNED TO EXAMINER 80808

May 30, 2019 NOTICE OF DESIGN SEARCH CODE E-MAILED

May 29, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

May 16, 2019 NEW APPLICATION ENTERED IN TRAM

TM Staff Information

TM Attorney: BURNS, ELLEN FERRER Law Office Assigned: LAW OFFICE 116

File Location

Current Location: INTENT TO USE SECTION Date in Location: Oct. 01, 2019


Privacy - Terms





STATUS DOCUMENTS Back to Search Print



Mark:

US Serial Number: 88835296 Application Filing Date: Mar. 16, 2020

Filed as TEAS Plus: Yes Currently TEAS Plus: Yes

Register: Principal



LIVE/APPLICATION/Under Examination

The trademark application has been accepted by the Office (has met the minimum filingrequirements) and that this application has been assigned to an examiner.

Status: A non-final Office action has been sent (issued) to the applicant. This is a letter from the examining attorney requiring additional information and/ormaking an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on the Trademark DocumentRetrieval link at the top of this page.

Status Date: Jun. 08, 2020

Mark Information




Description of Mark: The mark consists of a wavy stripe filled with a checkerboard pattern.


Design Search Code(s): 25.03.01 - Checkerboard patterns; Checker board pattern 26.17.02 - Wavy line(s), band(s) or bar(s); Bands, wavy; Bars, wavy; Lines, wavy Privacy - Terms







Goods and Services



26.17.05 - Lines, horizontal; Horizontal line(s), band(s) or bar(s); Bands, horizontal; Bars, horizontal


2170961, 2177772, 4442122



For: Footwear



Basis: 1(a)

First Use: Apr. 18, 2016 Use in Commerce: Sep. 23, 2016






Filed No Basis: No


Owner Address: 1588 South Coast DriveCosta Mesa, CALIFORNIA UNITED STATES 92626 Privacy - Terms






Prosecution History


DELAWARE

Attorney of Record

Attorney Name: Aaron Y. Silverstein Docket Number: 990.445.11



Correspondent


Aaron Y. SilversteinSaunders & Silverstein LLP14 Cedar Street, Suite 224Amesbury, MASSACHUSETTS UNITED STATES 01913-1831

Phone: +1.978.463.9100

Correspondent e-mail: [email protected] [email protected][email protected] [email protected][email protected]


Yes



Jul. 10, 2020 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888

Jul. 10, 2020 TEAS CHANGE OF CORRESPONDENCE RECEIVED

Jul. 10, 2020 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Jul. 10, 2020 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Jul. 10, 2020 TEAS CHANGE OF OWNER ADDRESS RECEIVED

Jun. 08, 2020 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Jun. 08, 2020 NON-FINAL ACTION E-MAILED 6325

Jun. 08, 2020 NON-FINAL ACTION WRITTEN 93650

Jun. 08, 2020 ASSIGNED TO EXAMINER 93650

Mar. 21, 2020 NOTICE OF DESIGN SEARCH CODE E-MAILED Privacy - Terms













Mar. 20, 2020 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Mar. 19, 2020 NEW APPLICATION ENTERED IN TRAM

TM Staff Information

TM Attorney: CUELLO, GIDETTE Law Office Assigned: LAW OFFICE 125

File Location

Current Location: TMO LAW OFFICE 125 - EXAMINING ATTORNEYASSIGNED

Date in Location: Jun. 08, 2020


Privacy - Terms



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