Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1123965
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`Filing date:
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`03/31/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`Applicant
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`88369653
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`Birdie Licensing, LLC
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`Applied for Mark
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`KATE HUDSON
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`Correspondence
`Address
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`Submission
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`Attachments
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`MARK A. WATKINS
`VORYS, SATER, SEYMOUR AND PEASE LLP
`P.O. BOX 2255
`IPLAW@VORYS.COM
`COLUMBUS, OH 43216-2255
`UNITED STATES
`Primary Email: iplaw@vorys.com
`Secondary Email(s): bjjustice@vorys.com
`330-208-1000
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`Applicants Request for Remand and Amendment
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`MotionToRemandKH3.2021.pdf(1692996 bytes )
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`William E. Ryan
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`weryan@vorys.com, iplaw@vorys.com
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`/William E. Ryan/
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`03/31/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Application Serial No.:
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`For the Mark
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`Filing Date:
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`Applicant:
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`Examining Attorney:
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`88369653
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`KATE HUDSON
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`April 3, 2019
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`Birdie Licensing, LLC
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`Katherine M. Foss
`Law Office 125
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`ATTN: TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`APPLICANT’S MOTION AND REQUEST TO REMAND
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`Pursuant to TBMP Section 1209.04, Applicant, Birdie Licensing, LLC
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`(“Applicant”) by and though its undersigned attorney, respectfully requests that the
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`Board suspend the appeal regarding Trademark Application Serial No. 88369653 and
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`remand jurisdiction of the application to the U.S. Patent and Trademark Office
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`Examining Attorney for consideration of a substitute specimen in connection with
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`International Class 25 and signed consent to register form. In support of this Request
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`to Remand, Applicant states as follows:
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`1.
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`On August 12, 2020 U.S. Trademark Examining Attorney Joseph Greene
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`issued a Final Office Action, refusing registration based on the following:
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`a. Sections 1, 2, 3, and 45 Refusal - Failure to Function as a Trademark
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`b. Sections 1, 2, 3, and 45 Refusal - Activity Not Registerable
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`c. Sections 1 and 45 Refusal - Specimen Refusal – Class 25
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`d. Section 2(c) Refusal - Name Identifying a Particular Individual
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`Without Her Consent of Record
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`2.
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`On February 12, 2021 Applicant filed a Notice of Appeal and a Request
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`for Reconsideration rebutting the Examining Attorney’s contentions that the mark
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`failed to function as a trademark/service mark, that the activity is registerable as a
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`service, and that the Specimen was suitable. Applicant also provided a separate
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`consent form signed with document-signing software.
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`3.
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`On March 11, 2021, another Trademark Examining Attorney (Katherine
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`Floss) withdrew the Sections 1, 2, 3, and 45 Refusal – Activity Not a Registerable,
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`but denied Applicant’s Request for Reconsideration, maintaining the remaining
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`refusals and refusing to accept the electronically signed consent form.
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`4.
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`The Board resumed this Appeal on March 15, 2021; Applicant’s Appeal
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`Brief is due on May 10, 2021.
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`5.
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`On March 16, Applicant obtained a newly signed Consent to Use of
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`Name, attached hereto as Exhibit A.
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`6.
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`Applicant respectfully requests that jurisdiction for the Application be
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`returned to the Examining Attorney to (1) consider the signed Consent to Use of
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`Name; (2) consider the attached substitute specimen supporting International Class
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`25, and (3) provide Applicant the opportunity, if necessary, to enter evidence into
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`the record regarding the sufficiency of the previously submitted specimen.
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`7.
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`Applicant respectfully requests that the Board suspend this appeal
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`pending the review by the Examining Attorney of Applicant’s new substitute
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`specimen. TBMP Section 1209.04.
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`8.
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`For consideration, and submitted herewith, and depicted below, is a
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`substitute Class 25 specimen demonstrating use of Applicant’s mark in connection
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`with clothing. The Specimen shows a hangtag on a blue shirt with the Mark KATE
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`HUDSON clearly displayed. A copy of the Substitute Specimen is also submitted as
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`Exhibit B.
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`9.
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`On March 31, 2021, the undersigned counsel for Applicant had a
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`telephone conference with the Examining Attorney. The Examining Attorney agreed
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`that remand was appropriate to allow for consideration of the substitute specimen
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`and signed consent. The Examining Attorney believed that the outstanding issues can
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`be resolved.
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`10. Good cause exists for granting this Request for Remand because
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`Applicant was not provided with an opportunity to remedy the electronically signed
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`Consent Refusal, furthermore a new substitute specimen will obviate the remaining
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`refusals, and the Examining Attorney has indicated agreement to consider a new
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`substitute specimen upon remand.
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`11. Should the Examining Attorney find the new substitute specimen
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`acceptable upon remand, Applicant’s request to enter evidence supporting the
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`sufficiency of the previously submitted specimen would be rendered moot.
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`WHEREFORE, Applicant requests that the Board grant Applicant’s Request for
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`Remand, remand the Application to the Examining Attorney for consideration of a
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`new substitute specimen, and suspend this appeal proceeding while the Application
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`is in the Examining Attorney’s jurisdiction.
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`Applicant believes that no additional fees are due with the filing of this Motion
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`and Request. However, the Board is authorized to debit the Deposit Account of Vorys,
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`Sater, Seymour & Pease LLP, Deposit Account No. 220585, in the event the Board
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`deems any fees are due.
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`Respectfully submitted,
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`Vorys, Sater, Seymour and Pease LLP
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`/William E. Ryan/
`William E. Ryan
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`Mark A. Watkins
`106 S. Main Street #1100
`Akron, Ohio 4430
`Phone: (330) 208-1000
`Fax: (330) 208-1001
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`E-mail: weryan@vorys.com
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` mawatkins@vorys.com
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`Attorneys for Applicant
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`Dated: March 31, 2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`88369653
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`KATE HUDSON
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`April 3, 2019
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`Birdie Licensing, LLC
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`Katherine M. Foss
`Law Office 125
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`Application Serial No.:
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`For the Mark
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`Filing Date:
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`Applicant:
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`Examining Attorney:
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`ATTN: TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`APPLICANT’S MOTION TO REMAND
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`CONSENT TO USE NAME
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`EXHIBIT A
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`Consent to Use of Name
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`I. Kate Garry Hudson, declare that I have authorized the use and registration of my
`name “KATE HUDSON" as a trademark and/or service mark, by the applicant. Birdie
`Licensing, LLC, with Trademark Application No. 88/369,653 in Classes 25, 35 & 41.
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`“'2
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`dayof MAEc‘il
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` Signedthis
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`.2021
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`Kate Hudson
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`88369653
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`KATE HUDSON
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`April 3, 2019
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`Birdie Licensing, LLC
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`Katherine M. Foss
`Law Office 125
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`Application Serial No.:
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`For the Mark
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`Filing Date:
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`Applicant:
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`Examining Attorney:
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`ATTN: TTAB
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`APPLICANT’S MOTION TO REMAND
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`Substitute Specimen
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`EXHIBIT B
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