PTO Form 1960 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Entered
`
`Input Field
`
`SERIAL
`NUMBER
`
`LAW OFFICE
`ASSIGNED
`
`86228291
`
`LAW OFFICE 119
`
`MARK SECTION (no change)
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL
`PDF FILE
`
`       CONVERTED
`PDF FILE(S)
`       (4 pages)
`
`       ORIGINAL
`PDF FILE
`
`       CONVERTED
`PDF FILE(S)
`       (6 pages)
`
`       ORIGINAL
`PDF FILE
`
`       CONVERTED
`PDF FILE(S)
`
`evi_9820634245-
`20150318162315297686_._pecialty_Animal____Companion_Animal____Treats____Renew_Gold_.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0005.JPG
`
`evi_9820634245-20150318162315297686_._919-v3-
`Legion_Settlement_Agreement_and_Consent_Decree-signed.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0011.JPG
`
`evi_9820634245-20150318162315297686_._Phoenix_Office_Action_Response_FINAL.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0012.JPG
`
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`       (5 pages)
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0013.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0014.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0015.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\282\86228291\xml7\RFR0016.JPG
`
`DESCRIPTION
`OF EVIDENCE
`FILE
`
`Website of cited mark showing use in commerce is solely aimed at horses and not generally nutritional
`supplements; master consent agreement with cited mark with relevant provisions aimed at similar mark
`co-existing with cited mark and Applicant's mark; Applicant's written Office Action Response.
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL
`CLASS
`
`005
`
`DESCRIPTION
`
`nutritional and dietary supplements for weight management and the treatment of obesity, the suppression of appetite, the
`enhancement of metabolism, and slimming purposes; vitamin and mineral supplements for weight management and the
`treatment of obesity, the suppression of appetite, the enhancement of metabolism, and slimming purposes; pharmaceutical
`preparations, namely a fat burner preparation
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL
`CLASS
`
`005
`
`TRACKED TEXT DESCRIPTION
`
`nutritional and dietary supplements for weight management and the treatment of obesity, the suppression of appetite, the
`enhancement of metabolism, and slimming purposes; dietary supplements, for human consumption, for weight management
`and the treatment of obesity, the suppression of appetite, the enhancement of metabolism, and slimming purposes; vitamin
`and mineral supplements for weight management and the treatment of obesity, the suppression of appetite, the enhancement
`of metabolism, and slimming purposes; vitamin and mineral supplements, for human consumption, for weight management
`and the treatment of obesity, the suppression of appetite, the enhancement of metabolism, and slimming purposes;
`pharmaceutical preparations, namely a fat burner preparation; pharmaceutical preparations, for human consumption,
`namely a fat burner preparation
`
`FINAL DESCRIPTION
`
`dietary supplements, for human consumption, for weight management and the treatment of obesity, the suppression of
`appetite, the enhancement of metabolism, and slimming purposes; vitamin and mineral supplements, for human
`consumption, for weight management and the treatment of obesity, the suppression of appetite, the enhancement of
`metabolism, and slimming purposes; pharmaceutical preparations, for human consumption, namely a fat burner preparation
`
`FILING BASIS
`
`Section 1(b)
`
`SIGNATURE SECTION
`
`RESPONSE
`SIGNATURE
`
`/Rishi Nair/
`
`       
`       
`       
`       
`

`

`SIGNATORY'S
`NAME
`
`SIGNATORY'S
`POSITION
`
`Rishi Nair, Esq.
`
`Attorney of record, Keener & Associates, P.C., IL bar member
`
`SIGNATORY'S
`PHONE NUMBER (312) 375-1573
`
`DATE SIGNED
`
`03/18/2015
`
`AUTHORIZED
`SIGNATORY
`
`CONCURRENT
`APPEAL NOTICE
`FILED
`
`YES
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Wed Mar 18 16:39:58 EDT 2015
`
`TEAS STAMP
`
`USPTO/RFR-98.206.34.245-2
`0150318163958165024-86228
`291-5307d2e3893461136b535
`ff013c525abb85247e6bfa77e
`f3141742c4b41a5b44d7-N/A-
`N/A-20150318162315297686
`
`PTO Form 1960 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 86228291 has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of Website of cited mark showing use in commerce is solely aimed at horses and
`not generally nutritional supplements; master consent agreement with cited mark with relevant provisions
`aimed at similar mark co-existing with cited mark and Applicant's mark; Applicant's written Office Action
`Response. has been attached.
`Original PDF file:
`evi_9820634245-
`20150318162315297686_._pecialty_Animal____Companion_Animal____Treats____Renew_Gold_.pdf
`Converted PDF file(s) ( 4 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`
`

`

`Original PDF file:
`evi_9820634245-20150318162315297686_._919-v3-
`Legion_Settlement_Agreement_and_Consent_Decree-signed.pdf
`Converted PDF file(s) ( 6 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Original PDF file:
`evi_9820634245-20150318162315297686_._Phoenix_Office_Action_Response_FINAL.pdf
`Converted PDF file(s) ( 5 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 005 for nutritional and dietary supplements for weight management and the treatment of
`obesity, the suppression of appetite, the enhancement of metabolism, and slimming purposes; vitamin and
`mineral supplements for weight management and the treatment of obesity, the suppression of appetite, the
`enhancement of metabolism, and slimming purposes; pharmaceutical preparations, namely a fat burner
`preparation
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use
`through the applicant's related company or licensee the mark in commerce on or in connection with the
`identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).
`
`Proposed:
`Tracked Text Description: nutritional and dietary supplements for weight management and the treatment
`of obesity, the suppression of appetite, the enhancement of metabolism, and slimming purposes; dietary
`supplements, for human consumption, for weight management and the treatment of obesity, the
`suppression of appetite, the enhancement of metabolism, and slimming purposes; vitamin and mineral
`supplements for weight management and the treatment of obesity, the suppression of appetite, the
`enhancement of metabolism, and slimming purposes; vitamin and mineral supplements, for human
`consumption, for weight management and the treatment of obesity, the suppression of appetite, the
`enhancement of metabolism, and slimming purposes; pharmaceutical preparations, namely a fat burner
`preparation; pharmaceutical preparations, for human consumption, namely a fat burner preparation
`
`Class 005 for dietary supplements, for human consumption, for weight management and the treatment of
`obesity, the suppression of appetite, the enhancement of metabolism, and slimming purposes; vitamin and
`mineral supplements, for human consumption, for weight management and the treatment of obesity, the
`suppression of appetite, the enhancement of metabolism, and slimming purposes; pharmaceutical
`preparations, for human consumption, namely a fat burner preparation
`Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through
`the applicant's related company or licensee the mark in commerce on or in connection with the identified
`
`

`

`goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Rishi Nair/     Date: 03/18/2015
`Signatory's Name: Rishi Nair, Esq.
`Signatory's Position: Attorney of record, Keener & Associates, P.C., IL bar member
`
`Signatory's Phone Number: (312) 375-1573
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
`highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
`territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
`the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
`attorney/agent not currently associated with his/her company/firm previously represented the applicant in
`this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
`of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
`applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
`him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 86228291
`Internet Transmission Date: Wed Mar 18 16:39:58 EDT 2015
`TEAS Stamp: USPTO/RFR-98.206.34.245-2015031816395816
`5024-86228291-5307d2e3893461136b535ff013
`c525abb85247e6bfa77ef3141742c4b41a5b44d7
`-N/A-N/A-20150318162315297686
`
`        
`

`

`Call Toll-Free: 855.377.3639 for a DEALER near you
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`TEAM RENEW GOLD
`
`KNOWLEDGE CENTER
`
`Home
`
`Wednesday 18 March 2015
`
`"Since feeding Renew Gold, lhave noticed
`better utilization of feed, more consistent
`temperament, and better hoofand hair coat
`condition."
`, Sherry Cervi
`
`>Learn more about Sherry Cervi >Watch Up Close and Personal
`
`RENEW OOLOT'“: EXPERIENCE
`
`THE NEXT GENERATION |N
`
`NUTRITION
`
`Renew GoldTM advances the concept of concentrated nutritional supportfor your
`horses feeding program with the use ofthree sources of natural vegetable oils, a
`unique profile ofhigh quality protein, and healthy digestible fiber. The combination
`of High Fat Stabilized Rice Bran, CoolStance® Coconut Meal and Flax provides a
`uniquely efficient formulation thatis lower in starch than grains or sweet feed.
`Renew GoldT'“ allows you to minimize the amount offeed concentrate needed in
`
`your
`
`,
`,
`.
`The
`Ill equine DUTI'ITIOI‘L
`
`.
`-
`
`
`
`I m mm MM
`
`a I!
`>Find the dealer nearest you
`
`feeding
`program,
`while our
`fermented
`yeast
`
`culture helps your
`
`horse
`maximize the nutrition naturally found
`in its hay or pasture.
`
`Try the nextgeneration in equine
`nutrition today.
`>Contact us “In“ nutrltlon questions
`
`BOOONUTS
`
`
`
`|N HORSES?
`It seems that every few months
`a new nutritional fad appears
`with wild claims ofthe benefits
`to be realized from the latest
`new thing. A good friend in the
`cutting horse industry once told
`e , "if the big futurity was won
`by a horse eating only carrots, there would be nothing but orange manure in the
`cutting pens for the next year.
`While I believe thattollowing fads is all too common, every once in a while,
`something that has the potential to change the game does come along. This
`
`

`

`>Download the Renew Gold“I brochure.
`
`>Check out our winners on TEAM PHOENIX.
`
`WHY CHOOSE PHOENIX?
`
`HOW DOES SRB WORK?
`
`awakening happened to me four years ago when I received a call from a
`nutritionist in Australia wanting to know if I was interested in consulting on the
`development of coconut meal into the US equine feed market. My initial response
`was what you might expect. Not really interested.
`
`Luckily, he did not give up on me. In the end, it required thathe make a tripto the
`US. This trip resulted in him walking into my office in Northern California with a
`two foot high stack of clinical work that extended back years in Australia. I had
`before me, the most tested equine feed ingredientthatl had never heard of.
`Coconut meal.
`ADVANTAGES OF
`
`WHY USE FLAX?
`
`As the people
`
`who introduced
`
`
`IPhn-r- 4.1.". m H» mam Stabilized Rice
`Bran to the
`equine nutrition market more than 20
`years ago, we have proven it's
`effectiveness in providing usable energy
`from natural vegetable fatwithout the
`behavioral issues omen associated with
`high starch grain based feeds. Renew
`products are the next generation in the
`evolution ofthis well proven concept.
`
`
`
`Our food grade
`. 1'. Stabilized Rice
`. Bran is high in
`natural
`vegetable fat
`(18% to 20%), is
`a good source
`oftermentable fiber and provides
`quality protein. It is also a source of
`over 100 identified anti-oxidants and
`the most commonly recognized
`natural source ofGamma Oryzanol.
`
`Flax is best known
`$9?)ng ww'ézfore you quit reading, give me a few more
`as a significant
`Not all coconut
`source of Omega 3
`meal is created
`fatty acids and can
`equal .....the
`help to optimize
`processing
`methods and
`
` the balance of
`
`Omega 3 and
`Omega 6 in a formulation. Flax is also
`an excellent source ofvegetable fat and
`quality proteins. This third source of low
`starch digestible energy rounds out the
`Renew Gold formulation.
`
`
`
`quality 0f
`coconut meal can vary considerably.
`For over 20 years highest quality
`Coconut meal, like thatfound
`exclusively in CoolStance®.
`
`"I have moved all of my horses over to Renew Gold“, and taken them off all grains. The difference in their coats, mane, tails and hooves is amazing!! Better yet,
`they are extremely consistent in their work, the hotter ones cool down, and the ones that need more energy have picked up. Renew Gold” has been the perfect
`addition to our feed progrm, for performance and health, I don't think there is anything better!!!"
`Stefien and Shannon Peters
`
`Feed Renew GoldTM
`for six weeks. If you
`are notsatisfied with
`the product, mail the
`barcode oftthe bag
`and proof otpurohase
`to The Phoenix
`Company LLC, PO.
`Box 12. Willows CA
`95988. for a refund of
`the purchase price.
`One bag refund per
`family
`
`MANAGING THE HEALTH OF
`
`YOUR HORSE AND WALLET!
`ll SHFIRE
`III-m
`
`Managing the health of your horse for a
`healthier wallet
`ByWinWolcott
`Part1
`
`Many years ago, when lwas a kid, my Uncle Bob took an ailing barn cat to the
`vet. Several days later afler receiving a call that the cat was well and readyto go
`home, he drove back to town to pick the cat up. When Uncle Bob saw the bill, he
`said to the vet “mister you just boughtyourselfa cat” and turned to leave. A
`compromise was quickly reached, and Uncle Bob took the cat home after all. In
`his mind all was good.
`
`As horse owners, none ofus are likely to take this stance with our horses. The
`bestway to be able to meet the financial burden ofa horse that is not well, is not
`to let him get unwell to begin with. This is where a management plan for your
`horse’s overall heaith comes into play. While some horse owners are fairly
`diligentabout this, many fail to understand how interrelated management
`practices can be and how a few simple things can afiect the cost of owning that
`horse in the long term.
`
`As a person who has been in the equine nutrition industry for three decades, I
`guess it should be expected that I am always focusing on the horses dietas it
`relates to overall wellbeing and the horses ability to thrive. Nutrition for today’s
`equine athlete has evolved greatly overthe past twenty five years. The move
`toward lower starch, higher tat concentrates, efficient digestive support, ulcer and
`
`

`

`Find us on Facebouk
`
`,r
`
`Renew Gold
`
`r
`
`Renew Gold added a
`' new photo.
`Yesterday at 7:55am
`
`HfiPPY
`ems/w
`
`
`Share -
`4
`
`Renew Gold shared a
`photo,
`24,799 people like Renew Gold.
`
`
`
`Face-book SOElBI plugln
`
`parasite control, and a better understanding of how each can contribute to a
`healthier horse has resulted in diets that are far improved over typical diets ofthe
`past. We know today, that the answer to a proper diet for your horse is one that
`safely and properly fits the entire digestive system. To accomplish this, the diet
`should provide roughage as the base source ofenergy, and supplementany
`additional needs in a way that allows and encourages efficient roughage
`digestion withoutinterference or disruption. Additional nutritional needs, beyond
`that provided by the roughage, should be metwith concentrates that have the
`least amount ofimpact on the normal function of the digestive system. This allows
`the entire digestive system to remain fully functional and eliminates road blocks
`to the more complete digestion ofthe dietthatthe horse consumes. Lower starch,
`higher fat feed concentrates can provide additional digestible energy at
`inclusions of less than two pounds per day. These energy dense concentrates fit
`better in the digestive system and are less disruptive than the typical higher
`feeding rates oftheir "traditional" higher starch counterparts. Keeping excess
`undigested starches and sugars from concentrate feeds out of the hind gut allows
`a more consistentenvironment for digestion and efficienthind gutfunction. The
`result is more complete digestion of the roughage, a better balanced hind gut
`environment and, as a result, a better functioning immune system. This more
`holistic approach reduces colic risk and behavioral issues and their
`corresponding vet bills.
`
`Let’s assume that you are feeding a diet thatfits the digestive system properly.
`There are still several important considerations needed to achieve a positive
`result.
`
`First, we have to start atthe start. That is atyour horses teeth. A horse needs to be
`able to properly chew for any component in the diet to be digested efficiently.
`Horses that have teeth issues that prevent itfrom comfortably chewing any of its
`diet completely will be at a great disadvantage when it comes to making the
`nutrition from that part ofthe diet available. Property chewed food, ofwhatever
`type, has more surface area for the digestive process to work on, thereby
`increasing digestive etficiency by releasing more nutrition to be absorbed. In
`working with horse owners every day, | find poor teeth condition to be the single
`most otten neglected road block to utilizing an otherwise efiective diet.
`
`Having a proper diet that fits the horse along with properly cared forteeth to
`chew that diet is an important start to the overall management of your horses
`health. Next month part II of our series will cover parasite control, vaccinations
`and sand colic prevention as we continue outlining a management program fora
`healthier horse, and a healthier wallet.
`
`INCORPORATING RENEW
`
`GULDT'“ INTI] YOUR FEEDING
`
`PROGRAM
`0 SHFtRE
`I} I
`
`To get the most outof Renew Gold, and the rest ofyour horses’ diet, you need to
`consider the entire feeding program, and what you are trying to accomplish.
`Basic diet:
`
`Most horse owners do not have the luxury of permanent year-round pasture with
`a mixed roughage source for their horses to graze at their own pace. Instead,
`most horses live a somewhat confined life with food available in large quantities
`once or twice per day. An average performance horse diet commonly starts with
`several flakes of hay of some sort in the morning and evening. Most horse
`owners feel that additional energy, beyond that provided by the hay will be
`needed. Therefore, some sort ofgrain based concentrate gets added to each
`feeding. Most feed manufacturers recommend between four and ten pounds of
`theirgrain concentrate. lfthe concentrate is palatable most horses will eat that
`first. This creates a most unnatural situation that greatly lowers efficiency of the
`entire digestive system.
`In many cases horse owners feel that they now need
`additional support for horses thatfor some reason are not thriving. This is where
`the supplements start. Hoof conditioners, pro-biotics. ulcer treatments, coat
`conditioners, herbs, magic powders and enough bags, tubs and bottles in the
`
`

`

`tack room to fill every available corner and shelf. lfone does notseem to work try.
`another one.
`
`The Renew Gold point of view
`
`Let’s take a look etthis from the Renew Gold pointofview. The dietdescribed
`above is inefficient because it simply does notfitin the horse‘s digestive system
`in the way that horses evolved to converttheir food into usable energy. Take a
`step back, take a deep breath, and start over.
`>Read More
`
`Download the Renew Guildw brochure.
`
`Check out our winners on TEAM RENEW GOLD.
`
`Top
`
`D EALER TOOLB OX
`
`6
`
`©2015 The Phoenix Company.
`
`CONNECT WITH US
`
`

`

`MASTER CONSENT AGREEMENT
`
`This Master Consent Agreement ("Agreement") is entered into by and between Clipper
`Distributing Company, LLC, a company organized under the laws of Missouri (“Clipper"), and
`Legion Athletics,
`Inc., a corporation incorporated under
`the laws of Florida.
`(”Legion
`Athletics");
`
`WHEREAS, Legion Athletics has filed U.S. Trademark Application Serial No. 86228291
`to register the mark PHOENIX (hereafter referred to as "Legion Athletics’s PHOENIX mark");
`
`WHEREAS, Clipper has registered U.S. Trademark Reg. No. 4,566,222 “PHOENIX“
`(hereafter referred to as "Clipper’s PHOENIX mark”);
`
`WHEREAS, Clipper’s PHOENIX mark been cited by the United States Patent and
`Trademark Office as bar to registration of Legion Athletics’s PHOENIX mark in US.
`Trademark Application Serial No. 86228291;
`
`WHEREAS, the parties wish to settle this matter outside of the administrative procedures
`of the United States Patent and Trademark Office and the litigation procedures of the United
`States courts;
`
`NOW THEREFORE, in consideration of mutual covenants set forth in this Agreement,
`and other good and valuable consideration, the receipt and sufficiency of which are hereby
`acknowledged, the parties agree as follows:
`
`it recognizes Clipper's ownership of Clipper’s
`Legion Athletics agrees that
`I.
`PHOENIX mark in connection with the goods listed in US Trademark Reg. No. 4,566,222
`(“VETERINARY PHARMACEUTICALS, NAMELY, VACCINES, ANTIBIOTICS, AND
`ANTI-INFLAMMATORIES, FOR TREATING LIVESTOCK AND PETS; ALL-PURPOSE
`DISINFECTANTS FOR VETERINARY USE; VETERINARY ANTISEPTICS”) (hereafter
`collectively referred to as "Clipper's Goods“).
`
`recognizes Legion Athletics's ownership of Legion
`it
`Clipper agrees that
`2.
`Athletics's PHOENIX mark in connection with the goods set
`forth in US. Trademark
`Application Serial No. 86228291, as amended as indicated in bold, ("nutritional and dietary
`Supplements, for human consumption, for weight management and the treatment of obesity, the
`suppression of appetite, the enhancement of metabolism, and slimming purposes; vitamin and
`mineral supplements, for human consumption, for weight management and the treatment of
`obesity, the suppression of appetite, the enhancement of metabolism, and slimming purposes;
`pharmaceutical preparations, for human consumption, namely a fat burner preparation")
`(hereafter referred to as "Legion Athletics's Goods").
`
`Legion Athletics agrees that it will not expand the use of its PHOENIX mark to
`3.
`offer goods or services directed to non—human animals,
`it being understood and agreed that
`nothing herein shall be interpreted as preventing or limiting Legion Athletics’s use of Legion
`Athletics’s PHOENIX mark in connection with Legion Athletics’s Goods.
`
`DBO4/05064760012/ll7999193 AGO!
`
`

`

`Clipper agrees to execute the Consent Agreement, attached as Exhibit A hereto
`4.
`and incorporated by reference herein.
`
`Clipper agrees not to oppose, contest, challenge the use of, oppose the registration
`5.
`or re-registration of, or seek cancellation of Legion Athletics's PHOENIX mark in plain text in
`connection with Legion Athletics's Goods, provided that such use is in accordance with the terms
`of this Agreement.
`
`Legion Athletics agrees not to oppose, contest, challenge the use of, oppose the
`6.
`registration or re-registration of, or seek cancellation of Clipper’s PHOENIX mark in connection
`with goods and services directed to non-human animals, provided that such use is in accordance
`with the terms of this Agreement.
`
`The parties agree that irreparable harm will result in the event of a breach of any
`7.
`provision herein. Should either party default in the performance of its obligations under the terms
`of this Agreement, and such default not be cured within twenty (20) days‘ notice of the breach. in
`addition to any other legal or equitable relief, damages, and remedies which may be available,
`the other party shall be entitled to an injunction to enforce the terms and conditions of this
`Agreement.
`
`The failure of any party to enforce the terms and conditions of this Agreement, or
`8.
`the waiver by any party of a breach by the other party of any provision herein, shall not in any
`way limit or waive the right of that party thereafter to enforce the compliance by the other party
`with respect to any term or condition herein.
`
`This Agreement comprises the entire understanding of the parties with respect to
`9.
`the subject matter hereof, and rescinds and replaces all prior negotiations. correspondence,
`proposals, offers, information, memoranda, and understandings between the parties. whether
`expressed, implied, written, oral, or otherwise.
`
`The parties agree to execute any further agreements, consents or other documents
`10.
`which may be necessary to carry out the terms of this Agreement.
`
`This Agreement shall be binding upon and inure to the benefit of the parties, as
`11.
`well as any parent companies, subsidiaries, divisions, affiliates, successors, and assigns.
`
`The terms of this Agreement shall remain in full force and effect for so long as
`12.
`both parties and any assignee, licensee or successor thereof retain any rights pursuant to any
`federal, state or international statute or at common law or otherwise, in and to their respective
`marks.
`
`[Signature page follows]
`
`I)B()4/0506476.00]2/| ”99919.3 AGOI
`
`

`

`WHEREFORE the parties have caused this Agreement to be duly executed and become
`effective on the last date ofexecution indicated below.
`
`Clipper Distributing Company, LLC
`
`Legion Athletics, LLC
`
`
`
`Sean Clouden
`Dale‘-ZOl5.03.17l6:0§:27704‘00'
`Signature
`
`~~~v
`:
`{Zn/44/
`Signature
`
`L/HM M In)
`Print
`
`Sean Clouden
`Print
`
`
`fl/f/ Qgc/YMQIZ/L,
`fill/[a 1/” f
`PreSIdent
`Title /
`Title
`
`
`xMa 4/ (A My 20 /§
`March 17 2015
`Date
`Date
`
`DB04/05064760012/l17999l9t3 AGO]
`
`

`

`EXHIBIT A
`
`DB04/05()6476.00l2/l17999193 AGO]
`
`

`

`CONSENT AGREEMENT
`
`This Consent Agreement (”Agreement") is entered into by and between Clipper Distributing
`Company, LLC, a company organized under the laws of Missouri (“Clipper”), and Legion
`Athletics, Inc., a corporation incorporated under the laws of Florida. ("Legion Athletics").
`
`WHEREAS, Legion Athletics has filed U.S. Trademark Application Serial No. 86228291 to
`register the mark PHOENIX (hereafter referred to as "Legion Athletics’s PHOENIX mark");
`
`WHEREAS, Clipper has registered U.S. Trademark Reg. No. 4,566,222 “PHOENIX“ (hereafter
`referred to as "Clipper’s PHOENIX mark");
`
`WHEREAS, Clipper’s PHOENIX mark been cited by the United States Patent and Trademark
`Office as bar
`to registration of Legion Athletics’s PHOENIX mark in US. Trademark
`Application Serial No. 86228291;
`
`WHEREAS, the parties wish to settle this matter outside of the administrative procedures of the
`United States Patent and Trademark Office and the litigation procedures of the United States
`courts;
`
`NOW THEREFORE, in consideration of mutual covenants set forth in this Agreement, and other
`good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged,
`the parties agree as follows:
`
`1.
`
`2.
`
`Lu
`
`Clipper consents to the registration of Legion Athletics's PHOENIX mark, as set forth in
`Application Serial No. 86228291, except modified as agreed (shown in bold) solely in
`connection with “nutritional and dietary supplements, for human consumption, for
`weight management and the treatment of obesity,
`the suppression of appetite,
`the
`enhancement of metabolism, and slimming purposes; vitamin and mineral supplements,
`for human consumption,
`for weight management and the treatment of obesity, the
`suppression of appetite,
`the enhancement of metabolism, and slimming purposes;
`pharmaceutical preparations, for human consumption, namely a fat burner preparation”
`or any slightly modified description as may be required to complete registration Legion
`Athletics's PHOENIX mark, in International Class 005.
`
`The parties agree that there is unlikely to be any consumer confusion between Legion
`Athletics's PHOENIX mark and Clipper’s PHOENIX mark in view of the differences in
`the goods, covered by the respective application and registration, namely that Clipper's
`goods are for consumption by non-human animals and Legion Athletics's goods are for
`consumption by humans.
`
`the differences between Legion
`The parties agree that, once amended as agreed,
`Athletics's goods and Clipper's goods are significant enough to eliminate any likelihood
`of consumer confusion when used in connection with the marks covered by their
`respective application and registration.
`
`DBO4/05064760012/l17999193 AGOl
`
`

`

`Each party agrees not to represent that they are related to the other or that their goods
`and/or services stem from the same source.
`
`Each party will refrain from making any false or misleading representations that the
`goods and services with which it uses its respective mark, originate with or are sponsored
`by the other party.
`
`The parties do not anticipate that any confusion or mistakes will arise from their
`simultaneous use of their respective marks. However,
`in the event that any confusion
`does arise, or appears likely, the parties agree to communicate to each other all details of
`each instance of actual confusion or facts which suggest that confusion is likely, and to
`cooperate to take steps to abate the confusion, and to prevent confusion from recurring.
`
`The parties agree that the forgoing substantiates their position that there is no likelihood
`of confusion between their respective marks as covered by their respective application
`and registration.
`
`The parties agree to submit this Consent Decree to the USPTO as evidence of no
`likelihood of confusion between their respective marks as covered by their respective
`application and registration.
`
`WHEREFORE the parties have caused this Agreement to be duly executed and become
`effective on the last date of execution indicated below.
`
`Clipper Distributing Company, LLC
`.
`
`
`
`/
`- 1_____\
`
`Signature
`
`7
`
`due. #1 (/ LM/
`Print
`
`Legion Athletics, LLC
`Digitally signed by Sean (louden
`DN: cn=SeanCIOuden, a, on,
`O u e n emall:seamrloudcfigmalkcm,(=US
`Date:2015.03.l7‘l7:0l:42 mm
`
`C I
`
`S
`
`ea n
`
`Signature
`Sean Clouden
`
`Print
`
` flELZJv—Wyfls President
`
`Mfl £444
`Z0 /9/Q March 172015
`
`Date
`Date
`
`Title
`
`Title
`
`
`
`DB04/0506476DOIZ/l1799919.} AGOI
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Legion Athletics, Inc.
`
`Serial No. 86/228,291
`
`Filed: March 21. 2014
`
`Mark: PHOENIX
`
`I.
`
`Introduction
`
`John Kelly
`Law Office 119
`
`RESPONSE TO OFFICE ACTION
`
`The Examining Attomey has refused registration based on the presence of a likelihood of
`
`confusion stemming from “identical and closely related [goods]. .
`
`. and the highly similar nature
`
`of the marks and their commercial impressions” between Applicant’s mark and U.S. Registration
`
`No. No. 4.478.421.
`
`Applicant respectfully disagrees with the Examining Attorney’s refusal to register. For the
`
`reasons set forth here, Applicant’s mark does not present a likelihood of confusion with the cited
`
`registration. Therefore. Applicant respectfully requests that the Examining Attorney remove the
`
`rejection under Section 2(d) and permit the application to proceed to publication. Because the
`
`Applicant offers to amend its goods to make it clear that their goods are solely for human
`
`consumption, has obtained consent from one of the cited Marks and that consent indicates the
`
`industry participants are not confused and can coexist without a likelihood of confusion, Applicant
`
`believes the cited registrations do not present a likelihood of confusion with Applicant’s mark
`
`and therefore Applicant’s mark should be registered.
`
`II.
`
`The goods covered by the cited registration are sufficiently distinct from Applicant’s
`
`amended goods description to avoid any likelihood of confusion.
`
`Applicant has applied for PHOENIX to