petitioner information - ttabvue.uspto.gov

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

ESTTA Tracking number: ESTTA1075232

Filing date: 08/15/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Petition for Cancellation

Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.

Petitioner Information

Name 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 990.855.11

Registration Subject to Cancellation

Registration No. 4588406 Registration date 08/19/2014

Registrant G-Fry Designs, LLC541 SUSAN CONSTANT DRIVEVIRGINIA BEACH, VA 23451UNITED STATES

Goods/Services Subject to Cancellation

Class 035. First Use: 2009/08/01 First Use In Commerce: 2009/08/01All goods and services in the class are subject to cancellation, namely: Marketing and promotion ser-vices

Grounds for Cancellation

False suggestion of a connection with persons,living or dead, institutions, beliefs, or nationalsymbols, or bring them into contempt, or disrep-ute

Trademark Act Sections 14(3) and 2(a)

Marks Cited by Petitioner as Basis for Cancellation

U.S. RegistrationNo.

1583727 Application Date 09/30/1982

http://estta.uspto.gov

Registration Date 02/20/1990 Foreign PriorityDate

NONE

Word Mark NONE

Design Mark

Description ofMark

NONE

Goods/Services Class 025. First use: First Use: 1981/08/00 First Use In Commerce: 1982/06/00

Shoes




NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a three-dimensional configuration of a checkerboard pat-tern on the toe and heel of a shoe. The broken lines depicting the outline of theshoe indicates placement of the mark on the goods and are not part of the mark.


Footwear, namely, twin-gore slip-on shoes




NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a three-dimensional configuration of a checkerboard pat-tern on the entire upper portion of a shoe.The broken lines depicting the outlineof the shoe indicates placement of the mark on the goods and are not part ofthemark.


Footwear, namely, twin-gore slip-on shoes




NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a stylized checkerboard design positioned around the side-wall on the sole of a shoe. The design ofa shoe represented by dotted lines isnot part of the mark and only serves to show placement of the mark on thegoods.


footwear, namely, twin-gore slip-on shoes



Registration Date 08/18/2015 Foreign Priority NONE

Date

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a stylized checkerboard design positioned on the heel andtoe of a sock. The design of the sock represented by dotted lines is not part of-the mark and only serves to show placement of the mark on the goods.


Socks

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a checkerboard pattern applied to the side panels of a low-top sneaker. The matter shown in brokenor dotted lines is not claimed as part ofthe mark and serves only to indicate placement of the mark on the goods.


footwear

U.S. ApplicationNo.



NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a checkerboard pattern applied to the side panels of a hightop sneaker. The matter shown in broken or dotted lines is not claimed as partofthe mark and serves only to indicateplacement of the mark on the goods.


footwear

U.S. ApplicationNo.



NONE

Word Mark NONE

Design Mark

Description ofMark

The mark consists of a checkerboard pattern applied to a slide sandal upper.The matter shown in broken or dotted linesis not claimed as part of the mark andserves only to indicate placement of themark on the goods.


footwear

Attachments 20200815 vans g-fry designs pfc.pdf(1301288 bytes )

Signature /Aaron Y. Silverstein/

Name Aaron Y. Silverstein

Date 08/15/2020

1

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

VANS, INC.,

Petitioner,

v.

G-FRY DESIGNS, LLC,

Registrant.

Cancellation No. ___________

Reg. No.: 4588406

Mark:

PETITION FOR CANCELLATION

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 is, and will continue to be, damaged by the

registration of the mark that is the subject of Registration No. 4588406.

As grounds for its petition, 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 Checkerboard Trademarks and Trade Dress

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 checkerboard trademarks and trade dress in connection with footwear. The

checkerboard trademarks and trade dress are known throughout the world to indicate the source of Vans’ high-

2

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

dress to sell tens of millions of pairs of shoes and millions of units of apparel 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 the checkerboard trademarks and trade dress. The consistent use of its checkerboard trademarks and

trade dress combined with Vans’ peerless reputation for lifestyle and active footwear, apparel, and accessories,

has been instrumental in Vans’ lasting popularity.

4. Long prior to Applicant’s filing date or any alleged date of first use Applicant may claim –

Vans has consistently used its checkerboard trademarks and trade dress on footwear and invested considerable

resources marketing and promoting the checkerboard trademarks and trade dress.

5. Reflecting its significant growth and expansion, Vans owns a number of federal registrations

and applications for its checkerboard trademarks and trade dress which cover footwear.

6. For many years, Vans has offered and achieved considerable sales on a variety of footwear

products prominently bearing the checkerboard trademarks and trade dress, and, with particular relevance to

this petition, its iconic checkerboard slip-on shoe depicted below.

7. Vans has sold billions of dollars’ worth of products under its checkerboard trademarks and

trade dress. Vans’ products bearing its checkerboard trademarks and trade dress are promoted, offered, and

sold nationwide through a wide variety of retail means, including thousands of retails stores. These retail stores

include national, regional, independent, and 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, include flagship locations in major metropolitan areas through the world.

3

8. Vans products are also offered and sold in connection with its checkerboard trademarks and

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

websites.

9. For years, Vans has spent considerable amounts of money annually advertising and promoting

its checkerboard trademarks and trade dress and products bearing the same. Vans has widely and extensively

promoted its checkerboard trademarks and trade dress and products through virtually every available type of

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

10. Vans has run extensive nationwide advertising campaigns that reinforce the checkerboard

trademarks and trade dress as a powerful shorthand for Vans and its footwear products.

11. With respect to print publications, Vans has advertised and promoted its checkerboard

trademarks and trade dress in a wide variety of nationally circulated magazines.

12. The checkerboard trademarks and trade dress have also been featured on billboards and

signage across the United States in high visibility locations.

13. Vans also promotes and markets its checkerboard trademarks and trade dress on its own and

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’ checkerboard trademarks and trade dress and products are advertised and

promoted through many of its retail partners’ websites, including the 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’ checkerboard trademarks and trade dress are 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.

4

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

checkerboard trademarks and trade dress have received and continue to receive widespread unsolicited media

coverage through frequent media coverage of celebrities wearing Vans’ footwear.

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”

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. Vans owns the following valid and subsisting U.S. federal trademark registrations for its

checkerboard trademarks and trade dress covering relevant goods (the “Checkerboard 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

Shoes (Class 25)

1583727 (73396324)

Feb. 20, 1990

(Sep. 30,

1982)

Aug. 1981

5

Footwear, namely, twin-gore slip-on shoes (Class 25)

5070470 (77944126)

Nov. 1, 2016

(Feb. 24, 2010)

Aug. 1981


5070471 (77944127)

Nov. 1, 2016

(Feb. 24,

2010)

Aug. 1981


5034002 (85585065)

Sep. 6, 2016

(Mar. 30, 2012)

Apr. 6, 1981

Socks (Class 25) 4792837 (86164397)

Aug. 18, 2015

(Jan. 13, 2014)

Oct. 11, 2010

20. Vans also owns the following pending U.S. federal trademark applications for its checkerboard

trademarks and trade dress covering relevant goods (the “Checkerboard Applications”) (extracts from the

USPTO TSDR database, including assignment information, are attached as Exhibit B).

Mark Goods/Services (Class) Ser. No. Filing

Date Date of First

Use

Footwear (Class 25) 88590328 Aug. 23, 2019 1980

Footwear (Class 25) 88590279 Aug. 23, 2019 1980

Footwear (Class 25) 88580372 Aug. 15, 2019 Dec. 29, 2015

6

21. As a result of Vans’ continuous and longstanding use of its checkerboard trademarks and trade

dress, the public recognizes that Vans is the source of the goods offered under the marks.

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

checkerboard trademarks and trade dress throughout the United States for many years.

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

goodwill in its checkerboard trademarks and trade dress.

Registrant and Its Registration

24. Registrant, G-Fry Designs, LLC (“Registrant”), is a Virginia limited liability company with an

address of 541 Susan Constant Drive, Virginia Beach, Virginia 23451.

25. Registrant is the owner of U.S. Registration No. 4588406 for the mark

covering “Marketing and promotion services,” in Class 35.

Count One False Suggestion of a Connection, 15 U.S.C. § 1052(a)

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

paragraphs.

27. The mark is the same, or a close approximation of, the famous

checkerboard trademarks and trade dress used by Vans.

28. The mark would be recognized as belonging to Vans, in that it uniquely

and unmistakably points to Vans.

7

29. Vans is not connected with the activities performed by the Registrant under the

mark.

30. The fame and reputation of Vans and its checkerboard trademarks and trade dress is such that

when the mark is used with the Registrant’s services, a connection to Vans would be

presumed.

31. The mark pointed uniquely to Vans as of August 19, 2014, the date

Registration No. 4588404 issued.

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

Registration No. 4588406 and respectfully requests that this cancellation be sustained and that Registration No.

4588406 be cancelled.

Respectfully submitted,

Dated: August 15, 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 Petitioner VANS, INC.

EXHIBIT A

8/15/2020 Status Search SN 1583727

https://tsdr.uspto.gov/#caseNumber=1583727&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch 1/9

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 2020-08-15 16:11:25 EDT

Mark:

US Serial Number: 73396324 Application Filing Date: Sep. 30, 1982

US Registration Number: 1583727 Registration Date: Feb. 20, 1990

Register: Principal

Mark Type: Trademark

TM5 Common StatusDescriptor:

LIVE/REGISTRATION/Issued and Active

The trademark application has been registered with the Office.

Status: The registration has been renewed.

Status Date: Oct. 22, 2019

Publication Date: Sep. 11, 1984

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)

Acquired DistinctivenessClaim:

In whole

Design Search Code(s): 09.07.02 - Gym shoes; Ski boots; Skates; Roller skates; Athletic shoes; Boots, ski; Exercise shoes 09.07.05 - Other men's shoes Privacy - Terms

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Goods and Services

Basis Information (Case Level)

Current Owner(s) Information

09.07.06 - Other women's shoes 25.03.01 - Checkerboard patterns; Checker board pattern

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: Shoes

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

Class Status: ACTIVE

Basis: 1(a)

First Use: Aug. 1981 Use in Commerce: Jun. 1982

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

Owner Name: VANS, INC.

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

Legal Entity Type: CORPORATION State or Country WhereOrganized:

DELAWARE

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Attorney/Correspondence Information

Prosecution History

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

Oct. 22, 2019 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED

Oct. 22, 2019 REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS) 67723

Oct. 22, 2019 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 67723

Oct. 22, 2019 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67723

Sep. 16, 2019 TEAS SECTION 8 & 9 RECEIVED


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

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TM Staff and Location Information

Assignment Abstract Of Title Information

Apr. 04, 2019 TEAS CHANGE OF OWNER ADDRESS RECEIVED

Oct. 23, 2009 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 69934

Oct. 23, 2009 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Oct. 21, 2009 TEAS SECTION 8 & 9 RECEIVED

Dec. 09, 2008 CASE FILE IN TICRS

Sep. 03, 2008 NOTICE OF SUIT

Sep. 28, 2000 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)

Sep. 28, 2000 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED

Feb. 14, 2000 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED

Sep. 16, 1996 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.

Jun. 21, 1996 CORRECTION UNDER SECTION 7 – PROCESSED

Feb. 07, 1996 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED

Nov. 10, 1995 SEC 7 REQUEST FILED

Feb. 20, 1990 REGISTERED-PRINCIPAL REGISTER

Nov. 02, 1989 OPPOSITION TERMINATED NO. 999999 71100

Oct. 23, 1989 OPPOSITION DISMISSED NO. 999999 71100

May 02, 1985 OPPOSITION INSTITUTED NO. 999999 71100

Sep. 11, 1984 PUBLISHED FOR OPPOSITION

Jul. 09, 1984 NOTICE OF PUBLICATION

Apr. 16, 1984 APPROVED FOR PUB - PRINCIPAL REGISTER

Mar. 16, 1984 CORRESPONDENCE RECEIVED IN LAW OFFICE

Sep. 13, 1983 NON-FINAL ACTION MAILED

Aug. 15, 1983 ASSIGNED TO EXAMINER

TM Staff Information - None

File Location

Current Location: GENERIC WEB UPDATE Date in Location: Oct. 22, 2019

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Summary

Total Assignments: 5 Registrant: Van Doren Rubber Company, INC.

Assignment 1 of 5

Conveyance: SECURITY INTEREST

Reel/Frame: 0770/0395 Pages: 9

Date Recorded: Jan. 25, 1991

Supporting Documents: No Supporting Documents Available

Assignor

Name: VAN DOREN RUBBER COMPANY, INC. Execution Date: Jan. 17, 1991


CALIFORNIA

Assignee

Name: SECURITY PACIFIC NATIONAL BANK

Legal Entity Type: A NATIONAL BANKING ASSOCIATION State or Country WhereOrganized:

No Place Where Organized Found

Address: 555 ANTON BOULEVARDCOSTA MESA, CALIFORNIA 92626

Correspondent

Correspondent Name: GIBSON, DUNN & CRUTCHER

Correspondent Address: 800 NEWPORT CENTER DRIVEP O BOX 2490NEWPORT BEACH, CA 92660-6395


Assignment 2 of 5

Conveyance: MERGER 19910822DE


Date Recorded: Oct. 28, 1991


Assignor

Conveyance Filter

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Name: VAN DOREN RUBBER COMPANY, INC. Execution Date: Aug. 19, 1991


CALIFORNIA

Assignee

Name: VANS, INC.


DELAWARE

Address: No Assignee Address Found

Correspondent

Correspondent Name: LEWIN & LAYTIN, P.C.

Correspondent Address: 1776 BROADWAY - FIFTEENTH FLOORNEW YORK, NEW YORK 10019


Assignment 3 of 5

Conveyance: RELEASE BY SECURED PARTY OF THE SECURITY AGREEMENT RECORDED AT REEL 0770, FRAMES 395-403 (SEE RECORD FORDETAILS).


Date Recorded: Oct. 29, 1991


Assignor

Name: SECURITY PACIFIC NATIONAL BANK Execution Date: Aug. 29, 1991

Legal Entity Type: SEE DOCUMENT FOR DETAILS. State or Country WhereOrganized:


Assignee

Name: VAN DOREN RUBBER COMPANY, INC.


DELAWARE

Address: No Assignee Address Found

Correspondent

Correspondent Name: SUSAN KOCHPrivacy - Terms

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http://assignments.uspto.gov/assignments/q?db=tm&asned=VANS,%20INC.

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Correspondent Address: GIBSON, DUNN & CRUTCHER800 NEWPORT CENTER DRIVEPOST OFFICE BOX 2490NEWPORT BEACH, CALIFORNIA 92660-6395


Assignment 4 of 5

Conveyance: SECURITY AGREEMENT


Date Recorded: Apr. 05, 1996


Assignor

Name: VANS, INC. Execution Date: Mar. 29, 1996


DELAWARE

Assignee

Name: TEACHERS INSURANCE AND ANNUITY ASSOCIATION OF AMERICA


NEW YORK

Address: ATTN:SECURITIES DIVISION730 THIRD AVENUENEW YORK, NEW YORK 10017

Name: CONNECTICUT GENERAL LIFE INSURANCE COMPANY (ON ITS OWN BEHALF AND ON BEHALF OF ONE OR MORE SEPARATEACCOUNTS)

Legal Entity Type: INSURANCE COMPANY State or Country WhereOrganized:


Address: C/O CIGNA INVESTMENTS, INC., ATTN: SECURITIES DIVISION900 COLLEGE GROVE ROADCONNECTICUT 06002

Name: LIFE INSURANCE COMPANY OF NORTH AMERICA

Legal Entity Type: INSURANCE COMPANY State or Country WhereOrganized:

No Place Where Organized FoundPrivacy - Terms

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http://assignments.uspto.gov/assignments/q?db=tm&asned=CONNECTICUT%20GENERAL%20LIFE%20INSURANCE%20COMPANY%20(ON%20ITS%20OWN%20BEHALF%20AND%20ON%20BEHALF%20OF%20ONE%20OR%20MORE%20SEPARATE%20ACCOUNTS)

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Address: C/O CIGNA INVESTMENTS, INC., ATTN: SECURITIES DIVISION900 COLLEGE GROVE ROADCONNECTICUT 06002

Correspondent

Correspondent Name: WHITMAN BREED ABBOTT & MORGAN

Correspondent Address: DAVID E. ALPINE200 PARK AVENUE28TH FLOORNEW YORK, NY 10166


Assignment 5 of 5

Conveyance: RELEASE OF GRANT OF SECURITY INTEREST


Date Recorded: Jun. 21, 1996


Assignor

Name: TEACHERS INSURANCE AND ANNUITYASSOCIATION OF AMERICA

Execution Date: May 31, 1996


IOWA

Name: CONNECTICUT GENERAL LIFE INSURANCECOMPANY

Execution Date: May 31, 1996


IOWA

Name: LIFE INSURANCE COMPANY OF NORTH AMERICA Execution Date: May 31, 1996


IOWA

Assignee

Name: VANS, INC.


DELAWAREPrivacy - Terms

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Address: 2095 BATAVIA STREETORANGE, CALIFORNIA 92665-3101

Correspondent

Correspondent Name: LEWIN & LAYTIN, P.C.

Correspondent Address: LISA ROSENBURGH1776 BROADWAY, FIFTEENTH FL.NEW YORK, NY 10019


Proceedings - Click to Load

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Mark:

US Serial Number: 77944126 Application Filing Date: Feb. 24, 2010

US Registration Number: 5070470 Registration Date: Nov. 01, 2016

Register: Principal





Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.

Status Date: Nov. 01, 2016

Publication Date: May 03, 2011

Mark Information




Description of Mark: The mark consists of a three-dimensional configuration of a checkerboard pattern on the toe and heel of a shoe. The broken lines depicting thePrivacy - Terms

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Related Properties Information

Goods and Services


outline of the shoe indicates placement of the mark on the goods and are not part of the mark.

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


In whole

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

Claimed Ownership of USRegistrations:

1583727



For: Footwear, namely, twin-gore slip-on shoes

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


Basis: 1(a)







Filed No Basis: No

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Prosecution History




DELAWARE

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes







May 11, 2020 TEAS CHANGE OF OWNER ADDRESS RECEIVED Privacy - Terms

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

Jun. 21, 2017 TEAS CHANGE OF OWNER ADDRESS RECEIVED

Nov. 01, 2016 REGISTERED-PRINCIPAL REGISTER

Sep. 26, 2016 TTAB RELEASE CASE TO TRADEMARKS 202361

Sep. 26, 2016 OPPOSITION TERMINATED NO. 999999 202361

Sep. 26, 2016 OPPOSITION DISMISSED NO. 999999 202361

Oct. 31, 2011 OPPOSITION INSTITUTED NO. 999999 202361

Jun. 01, 2011 EXTENSION OF TIME TO OPPOSE RECEIVED

May 03, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

May 03, 2011 PUBLISHED FOR OPPOSITION

Mar. 25, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 77976

Mar. 22, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER

Feb. 09, 2011 TEAS CHANGE OF CORRESPONDENCE RECEIVED

Feb. 09, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Feb. 09, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Feb. 09, 2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Jan. 04, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Jan. 04, 2011 NON-FINAL ACTION E-MAILED 6325

Jan. 04, 2011 NON-FINAL ACTION WRITTEN 76521

Nov. 25, 2010 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Nov. 24, 2010 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Nov. 24, 2010 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Oct. 28, 2010 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 77976

Oct. 26, 2010 ASSIGNED TO LIE 77976

Oct. 14, 2010 PAPER RECEIVED

May 25, 2010 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

May 25, 2010 NON-FINAL ACTION E-MAILED 6325

May 25, 2010 NON-FINAL ACTION WRITTEN 76521Privacy - Terms






Assignment Abstract Of Title Information - None recorded

May 13, 2010 ASSIGNED TO EXAMINER 76521

Mar. 03, 2010 NOTICE OF DESIGN SEARCH CODE MAILED

Mar. 02, 2010 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Feb. 27, 2010 NEW APPLICATION ENTERED IN TRAM


File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Nov. 01, 2016


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Mark:

US Serial Number: 77944127 Application Filing Date: Feb. 24, 2010

US Registration Number: 5070471 Registration Date: Nov. 01, 2016

Register: Principal






Status Date: Nov. 01, 2016

Publication Date: May 03, 2011

Mark Information




Description of Mark: The mark consists of a three-dimensional configuration of a checkerboard pattern on the entire upper portion of a shoe. The broken lines depictingthe outline of the shoe indicates placement of the mark on the goods and are not part of the mark.

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In whole

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


1583727



For: Footwear, namely, twin-gore slip-on shoes



Basis: 1(a)







Filed No Basis: No

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Prosecution History




DELAWARE

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes









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

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Nov. 01, 2016 REGISTERED-PRINCIPAL REGISTER

Sep. 26, 2016 TTAB RELEASE CASE TO TRADEMARKS 202361

Sep. 26, 2016 OPPOSITION TERMINATED NO. 999999 202361

Sep. 26, 2016 OPPOSITION DISMISSED NO. 999999 202361

Oct. 31, 2011 OPPOSITION INSTITUTED NO. 999999 202361

Jun. 01, 2011 EXTENSION OF TIME TO OPPOSE RECEIVED

May 03, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

May 03, 2011 PUBLISHED FOR OPPOSITION

Mar. 25, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 77976

Mar. 22, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER

Feb. 09, 2011 TEAS CHANGE OF CORRESPONDENCE RECEIVED

Feb. 09, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Feb. 09, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Feb. 09, 2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Jan. 04, 2011 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Jan. 04, 2011 NON-FINAL ACTION E-MAILED 6325

Jan. 04, 2011 NON-FINAL ACTION WRITTEN 76521



Nov. 24, 2010 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Oct. 28, 2010 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 77976

Oct. 26, 2010 ASSIGNED TO LIE 77976

Oct. 14, 2010 PAPER RECEIVED

May 25, 2010 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

May 25, 2010 NON-FINAL ACTION E-MAILED 6325

May 25, 2010 NON-FINAL ACTION WRITTEN 76521

May 13, 2010 ASSIGNED TO EXAMINER 76521

Mar. 03, 2010 NOTICE OF DESIGN SEARCH CODE MAILEDPrivacy - Terms







Mar. 02, 2010 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Feb. 27, 2010 NEW APPLICATION ENTERED IN TRAM


File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Nov. 01, 2016


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Mark:

US Serial Number: 85585065 Application Filing Date: Mar. 30, 2012

US Registration Number: 5034002 Registration Date: Sep. 06, 2016

Register: Principal






Status Date: Sep. 06, 2016

Publication Date: Mar. 19, 2013

Mark Information




Description of Mark: The mark consists of a stylized checkerboard design positioned around the sidewall on the sole of a shoe. The design of a shoe represented bydotted lines is not part of the mark and only serves to show placement of the mark on the goods.



In whole Privacy - Terms

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Goods and Services



Design Search Code(s): 09.07.02 - Exercise shoes; Skates; Athletic shoes; Boots, ski; Ski boots; Gym shoes; Roller skates 25.03.01 - Checkerboard patterns; Checker board pattern


1583727, 3906638, 3906738



For: footwear, namely, twin-gore slip-on shoes



Basis: 1(a)

First Use: Apr. 06, 1981 Use in Commerce: Apr. 06, 1981






Filed No Basis: No


Owner Address: 1588 South Coast DrivePrivacy - Terms

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Prosecution History

Costa Mesa, CALIFORNIA UNITED STATES 92626


DELAWARE

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes



Jul. 22, 2020 CORRECTION UNDER SECTION 7 – PROCESSED 64591

Jun. 24, 2020 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 64591

May 20, 2020 TEAS SECTION 7 REQUEST RECEIVED






May 03, 2019 TEAS CHANGE OF CORRESPONDENCE RECEIVED Privacy - Terms

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Sep. 06, 2016 REGISTERED-PRINCIPAL REGISTER

Aug. 01, 2016 TTAB RELEASE CASE TO TRADEMARKS 212465

Aug. 01, 2016 OPPOSITION TERMINATED NO. 999999 212465

Aug. 01, 2016 OPPOSITION DISMISSED NO. 999999 212465

Sep. 13, 2013 OPPOSITION INSTITUTED NO. 999999 212465

Apr. 15, 2013 EXTENSION OF TIME TO OPPOSE RECEIVED

Mar. 19, 2013 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Mar. 19, 2013 PUBLISHED FOR OPPOSITION

Feb. 27, 2013 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Feb. 08, 2013 LAW OFFICE PUBLICATION REVIEW COMPLETED 70633

Feb. 07, 2013 APPROVED FOR PUB - PRINCIPAL REGISTER

Jan. 14, 2013 TEAS/EMAIL CORRESPONDENCE ENTERED 70633

Jan. 14, 2013 CORRESPONDENCE RECEIVED IN LAW OFFICE 70633

Jan. 07, 2013 ASSIGNED TO LIE 70633

Dec. 31, 2012 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

Dec. 31, 2012 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED

Dec. 31, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Jul. 03, 2012 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Jul. 03, 2012 NON-FINAL ACTION E-MAILED 6325

Jul. 03, 2012 NON-FINAL ACTION WRITTEN 78179

Jun. 26, 2012 ASSIGNED TO EXAMINER 78179

Apr. 07, 2012 NOTICE OF DESIGN SEARCH CODE MAILED

Apr. 06, 2012 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Apr. 03, 2012 NEW APPLICATION ENTERED IN TRAM

TM Staff Information - NonePrivacy - Terms

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File Location

Current Location: TMEG LAW OFFICE 107 Date in Location: Jul. 22, 2020


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Mark:

US Serial Number: 86164397 Application Filing Date: Jan. 13, 2014

US Registration Number: 4792837 Registration Date: Aug. 18, 2015

Register: Principal






Status Date: Aug. 18, 2015

Publication Date: Dec. 30, 2014

Mark Information




Description of Mark: The mark consists of a stylized checkerboard design positioned on the heel and toe of a sock. The design of the sock represented by dotted lines isPrivacy - Terms

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Goods and Services


not part of the mark and only serves to show placement of the mark on the goods.



In whole

Design Search Code(s): 09.03.09 - Leg warmers; Stockings; Garter belts; Hosiery; Tights; Panty Hose; Socks 25.03.01 - Checkerboard patterns; Checker board pattern


1583727



For: Socks



Basis: 1(a)

First Use: Oct. 11, 2010 Use in Commerce: Oct. 11, 2010






Filed No Basis: No Privacy - Terms

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Prosecution History

Owner Name: Vans, Inc.



DELAWARE

Attorney of Record




Correspondent



Phone: 302-529-3256



Yes







May 11, 2020 TEAS CHANGE OF OWNER ADDRESS RECEIVED Privacy - Terms

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Aug. 18, 2015 REGISTERED-PRINCIPAL REGISTER

Jul. 14, 2015 EXTENSION OF TIME TO OPPOSE PROCESS - TERMINATED

Jan. 21, 2015 EXTENSION OF TIME TO OPPOSE RECEIVED

Dec. 30, 2014 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED

Dec. 30, 2014 PUBLISHED FOR OPPOSITION

Dec. 10, 2014 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

Nov. 21, 2014 LAW OFFICE PUBLICATION REVIEW COMPLETED 68123

Nov. 21, 2014 APPROVED FOR PUB - PRINCIPAL REGISTER



Nov. 20, 2014 TEAS REQUEST FOR RECONSIDERATION RECEIVED

Oct. 27, 2014 NOTIFICATION OF FINAL REFUSAL EMAILED

Oct. 27, 2014 FINAL REFUSAL E-MAILED

Oct. 27, 2014 FINAL REFUSAL WRITTEN 76720

Oct. 03, 2014 PREVIOUS ALLOWANCE COUNT WITHDRAWN

Sep. 23, 2014 WITHDRAWN FROM PUB - OG REVIEW QUERY 76621

Sep. 10, 2014 LAW OFFICE PUBLICATION REVIEW COMPLETED 68123

Sep. 10, 2014 ASSIGNED TO LIE 68123

Aug. 27, 2014 APPROVED FOR PUB - PRINCIPAL REGISTER

Aug. 05, 2014 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Aug. 04, 2014 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Aug. 04, 2014 TEAS RESPONSE TO OFFICE ACTION RECEIVED

Apr. 21, 2014 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Apr. 21, 2014 NON-FINAL ACTION E-MAILED 6325

Apr. 21, 2014 NON-FINAL ACTION WRITTEN 76720

Apr. 14, 2014 ASSIGNED TO EXAMINER 76720Privacy - Terms







Jan. 28, 2014 NOTICE OF DESIGN SEARCH CODE E-MAILED

Jan. 27, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Jan. 16, 2014 NEW APPLICATION ENTERED IN TRAM


File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Aug. 18, 2015


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EXHIBIT B



SEARCH MULTI-SEARCH

STATUS DOCUMENTS Back to Search Print


US Serial, Registration, or Reference No. 88590328


Mark:

US Serial Number: 88590328 Application Filing Date: Aug. 23, 2019

Filed as TEAS RF: Yes Currently TEAS RF: 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 final Office action refusing registration has been sent (issued) because the applicant neither satisfied nor overcame all requirements and/orrefusals previously raised. The applicant may respond by filing (1) a request for reconsideration; and/or (2) an appeal to the Trademark Trial andAppeal Board. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.

Status Date: May 18, 2020

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Goods and Services





Description of Mark: The mark consists of a checkerboard pattern applied to the side panels of a low top sneaker. The matter shown in broken or dotted lines is notclaimed as part of the mark and serves only to indicate placement of the mark on the goods.


Design Search Code(s): 09.01.13 - String; Tightropes; Shoe laces; Rope; Clotheslines; Braids 09.07.02 - Roller skates; Exercise shoes; Boots, ski; Athletic shoes; Gym shoes; Ski boots; Skates 25.03.01 - Checker board pattern; Checkerboard patterns 26.17.02 - Bands, wavy; Bars, wavy; Lines, wavy; Wavy line(s), band(s) or bar(s)



For: footwear



Basis: 1(a)

First Use: 1980 Use in Commerce: 1980






Filed No Basis: NoPrivacy - Terms

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Prosecution History




DELAWARE

Attorney of Record

Attorney Name: Michael R Rizzo Docket Number: 990.435.11



Correspondent


Michael R RizzoSAUNDERS & SILVERSTEIN LLP14 CEDAR STREETSUITE 224AMESBURY, MASSACHUSETTS UNITED STATES 01913

Correspondent e-mail: [email protected] [email protected]@sandsip.com [email protected]


Yes



May 18, 2020 NOTIFICATION OF FINAL REFUSAL EMAILED

May 18, 2020 FINAL REFUSAL E-MAILED

May 18, 2020 FINAL REFUSAL WRITTEN 86331

Apr. 29, 2020 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Apr. 29, 2020 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889

Apr. 29, 2020 TEAS RESPONSE TO OFFICE ACTION RECEIVEDPrivacy - Terms

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Oct. 29, 2019 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325

Oct. 29, 2019 NON-FINAL ACTION E-MAILED 6325

Oct. 29, 2019 NON-FINAL ACTION WRITTEN 86331

Oct. 29, 2019 ASSIGNED TO EXAMINER 86331

Sep. 10, 2019 NOTICE OF DESIGN SEARCH CODE E-MAILED

Sep. 07, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Aug. 27, 2019 NEW APPLICATION ENTERED IN TRAM

TM Staff Information

TM Attorney: LEASER, ANDREW C Law Office Assigned: LAW OFFICE 117

File Location

Current Location: LAW OFFICE 117 - EXAMINING ATTORNEYASSIGNED

Date in Location: May 18, 2020


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Mark:



Register: Principal








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Goods and Services





Description of Mark: The mark consists of a checkerboard pattern applied to the side panels of a high top sneaker. The matter shown in broken or dotted lines is notclaimed as part of the mark and serves only to indicate placement of the mark on the goods.


Design Search Code(s): 09.01.13 - String; Tightropes; Shoe laces; Rope; Clotheslines; Braids 09.07.02 - Roller skates; Exercise shoes; Boots, ski; Athletic shoes; Gym shoes; Ski boots; Skates 25.03.01 - Checker board pattern; Checkerboard patterns 26.17.02 - Bands, wavy; Bars, wavy; Lines, wavy; Wavy line(s), band(s) or bar(s)



For: footwear



Basis: 1(a)

First Use: 1980 Use in Commerce: 1980






Filed No Basis: NoPrivacy - Terms

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Prosecution History




DELAWARE

Attorney of Record

Attorney Name: Michael R Rizzo Docket Number: 990.434.11



Correspondent


Michael R RizzoSAUNDERS & SILVERSTEIN LLP14 CEDAR STREETSUITE 224AMESBURY, MASSACHUSETTS UNITED STATES 01913

Correspondent e-mail: [email protected] [email protected]@sandsip.com [email protected]


Yes








Apr. 29, 2020 TEAS RESPONSE TO OFFICE ACTION RECEIVEDPrivacy - Terms

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Oct. 29, 2019 NON-FINAL ACTION E-MAILED 6325



Sep. 10, 2019 NOTICE OF DESIGN SEARCH CODE E-MAILED

Sep. 07, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM




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Mark:



Register: Principal








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Description of Mark: The mark consists of a checkerboard pattern applied to a slide sandal upper. The matter shown in broken or dotted lines is not claimed as part of themark and serves only to indicate placement of the mark on the goods.


Design Search Code(s): 09.07.04 - Ballet slippers; Clogs (shoes); Sandals; Bedroom slippers 25.03.01 - Checkerboard patterns; Checker board pattern



For: footwear



Basis: 1(a)

First Use: Dec. 29, 2015 Use in Commerce: Dec. 31, 2015






Filed No Basis: No

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Prosecution History




DELAWARE

Attorney of Record

Attorney Name: Aaron Y. Silverstein Docket Number: 990.433.11



Correspondent


Aaron Y. SilversteinSAUNDERS & SILVERSTEIN LLP14 CEDAR ST STE 224AMESBURY, MASSACHUSETTS UNITED STATES 01913

Correspondent e-mail: [email protected]@sandsip.com [email protected]@sandsip.com


Yes








Apr. 29, 2020 TEAS RESPONSE TO OFFICE ACTION RECEIVED


Oct. 29, 2019 NON-FINAL ACTION E-MAILED 6325 Privacy - Terms

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Sep. 04, 2019 APPLICANT AMENDMENT PRIOR TO EXAMINATION - ENTERED 76568

Aug. 31, 2019 NOTICE OF DESIGN SEARCH CODE E-MAILED

Aug. 30, 2019 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM

Aug. 29, 2019 ASSIGNED TO LIE 76568

Aug. 23, 2019 TEAS VOLUNTARY AMENDMENT RECEIVED




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