Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA957955
`03/04/2019
`
`ESTTA Tracking number:
`
`Filing date:
`
`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
`
`Caldera International, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Correspondence
`information
`
`03/03/2019
`
`7236 SW Durham Rd.Suite 800
`Portland, OR 97224
`UNITED STATES
`
`Caldera International, Inc.
`7236 SW Durham Rd.Suite 800
`Portland, OR 97224
`UNITED STATES
`dgodfrey@calderaintl.com
`no phone number provided
`
`Applicant Information
`
`Application No
`
`87842002
`
`Publication date
`
`09/04/2018
`
`Opposition Filing
`Date
`
`Applicant
`
`03/04/2019
`
`Opposition Peri-
`od Ends
`
`03/03/2019
`
`CALDERA + LAB, LLC
`3465 N PINES WAY, STE 104, #196
`WILSON, WY 83014
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Bath soaps; Body oils; Deodorants for body
`care; Hair oils; Hair shampoos and conditioners; Lip balm; Perfumes and colognes; Skin cleansers;
`Sunscreen preparations; Non-medicated serums for use on face and eyes; Non-medicated skin care
`preparations; hands, face and body moisturizers
`
`Class 005. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Acne treatment preparations
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: On-line retail store services featuringface,
`body and hair products, dietary supplements, vitamins and protein bars
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Fraud on the USPTO
`
`In re Bose Corp., 580 F.3d 1240, 91 USPQ2d
`
`

`

`Marks Cited by Opposer as Basis for Opposition
`
`1938 (Fed. Cir. 2009)
`
`U.S. Registration
`No.
`
`2548515
`
`Registration Date
`
`03/12/2002
`
`Word Mark
`
`Design Mark
`
`CALDERA
`
`Application Date
`
`08/15/2000
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2001/04/01 First Use In Commerce: 2001/04/01
`Thermal hot and cold therapy wraps [ and magnetic supportive bandages ] for
`first aid, sports related injuries, home health care, * and * pain relief [ and veter-
`inary purposes ]
`
`U.S. Registration
`No.
`
`3590252
`
`Registration Date
`
`03/17/2009
`
`Word Mark
`
`Design Mark
`
`CALDERA
`
`Application Date
`
`04/11/2008
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2001/04/01 First Use In Commerce: 2001/04/01
`Thermal hot and cold therapy wraps and magnetic supportive bandages; medic-
`al compression and support garments in the nature of surgical bras, bra sup-
`ports, garters, girdles, abdominal binders, back binders, rib belts, shorts, stock-
`ings, tights, and leggings
`
`U.S. Registration
`No.
`
`4310746
`
`Application Date
`
`11/10/2011
`
`

`

`Registration Date
`
`03/26/2013
`
`Word Mark
`
`Design Mark
`
`CALDERA
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 010. First use: First Use: 2001/04/01 First Use In Commerce: 2001/04/01
`Therapeutic hot and cold compression wraps; therapeutic hot compression
`wraps; therapeutic cold compression wraps; chemically activated hot and cold
`disposablegel packs and patches for medical purposes; viscous gel polymer
`sold as a component of finished custom cushioned medical and therapeutic
`devices and equipment,namely, therapeutic braces; viscous gelpolymer sold as
`a component of finishedcustom cushioned wheel chair seats and back cushions;
`therapeutic and orthopedic neck warming support wraps; face masksfor use by
`health care providers; medical apparatus, namely, non- or low-compression
`devices for holding thermal packs to the breasts; therapeutic apparatus, namely,
`body limb thermal compression undergarments for relief of muscular and joint
`pain through targeted thermal application and compression; custom designed
`therapeutic wraps fitted for use with a prosthesis; medical apparatus, namely,
`post-surgical non- or low-compression devices for holding thermal wraps to the
`pelvic area for purposes of comfort and support; therapeutic neck supports for
`reducing tension and relieving discomfort
`Class 025. First use: First Use: 2012/10/01 First Use In Commerce: 2012/10/01
`Clothing, namely, knit face masks and neck warmers
`
`Attachments
`
`78021285#TMSN.png( bytes )
`77446585#TMSN.png( bytes )
`85978582#TMSN.png( bytes )
`Caldera - Opposition.pdf(332389 bytes )
`
`Signature
`
`/Jesse L London/
`
`Name
`
`Date
`
`Caldera International, Inc.
`
`03/04/2019
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opp. No.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`
`In the Matter of Trademark Applicant:
`
`Caldera + Lab, LLC.
`
`Serial No.: 87/842002
`
`Mark: CALDERA LAB
`
`
`
`Caldera International Inc.,
`
`
`
`v.
`
`Caldera + Lab, LLC.,
`
`
`
`
`ATTN: Trademark Trial and Appeal Board
`Commissioner for Trademarks
`Box 1451
`Alexandria, VA 22313-1451
`
`
`Applicant.
`
`Opposer,
`
`)
`
`NOTICE OF OPPOSITION
`
`Caldera International Inc. (“Caldera”), an Oregon corporation, believes that it will be
`
`damaged by registration of the mark CALDERA LAB (“Applicant’s Alleged Mark”) in
`
`International Class 003 for “Bath soaps; Body oils; Deodorants for body care; Hair oils; Hair
`
`shampoos and conditioners; Lip balm; Perfumes and colognes; Skin cleansers; Sunscreen
`
`preparations; Non-medicated serums for use on face and eyes; Non-medicated skin care
`
`preparations; hands, face and body moisturizers”; in International Class 005 for “Acne treatment
`
`preparations“; and in International Class 035 for “On-line retail store services featuring face,
`
`
`
`1
`
`

`

`
`
`body and hair products, dietary supplements, vitamins and protein bars” (the “Opposed Goods”)
`
`applied for by Caldera + Lab, LLC (“Applicant”) on March 20, 2018 (“Opposed Application
`
`Filing Date”) and assigned Serial No. 87/842002 (the “Opposed Application”). Caldera hereby
`
`opposes the registration of the Opposed Application.
`
`As grounds of opposition, Caldera alleges:
`
`1.
`
`Opposer Caldera is an Oregon corporation engaged in the business of providing a
`
`wide variety of products including wraps, gels, garments, bandages, and other devices with
`
`therapeutic and non-therapeutic properties including heating, cooling, and compression to its
`
`customers throughout the world.
`
`2.
`
`Applicant is Caldera + Lab, LLC, a Wyoming limited liability company with an
`
`address of 3465 N Pines Way, Ste 104, #196, Wilson, Wyoming 83014.
`
`On March 20, 2018, Applicant filed the Opposed Application on the Principal Register on an
`
`intent-to-use basis.
`
`3.
`
`The Opposed Application was published for opposition on September 4, 2018. On
`
`October 4, 2018, Caldera timely filed and was granted extensions of time before the Trademark
`
`Trial and Appeal Board (“TTAB”). Caldera timely filed this Notice of Opposition.
`
`4.
`
`For many years, and long before the Opposed Application Filing Date, and before
`
`Applicant’s intent to use Applicant’s Alleged Mark, Opposer has continuously used, and
`
`presently uses, its marks in commerce, at least, in connection with the various services and goods
`
`described in its applications for trademark registration (“Caldera Registrations”) and is the owner
`
`of the following marks with all right, title, and goodwill pertaining thereto (“Caldera Marks”):
`
`A. Serial No. 78/021285 filed Aug. 15, 2000 and registered on March 12, 2002 with
`
`a first use anywhere and in commerce of April 1, 2001 in International Class 010 for the standard
`
`character mark CALDERA in connection with “thermal hot and cold therapy wraps [ and
`
`
`
`2
`
`

`

`
`
`magnetic supportive bandages ] for first aid, sports related injuries, home health care, * and *
`
`pain relief [ and veterinary purposes ]”
`
`B. Serial No. 77/446585 in International Class 010 filed on April 11, 2008 and
`
`registered on March 17, 2009 with a first use anywhere and in commerce of April 1, 2001 for the
`
`mark CALDERA in connection with “thermal hot and cold therapy wraps and magnetic
`
`supportive bandages; medical compression and support garments in the nature of surgical bras,
`
`bra supports, garters, girdles, abdominal binders, back binders, rib belts, shorts, stockings, tights,
`
`and leggings.”
`
`C. Serial Number 85/978582 in International Class 010 filed on
`
`November 10, 2011and registered on March 26, 2013 with a first use anywhere and in commerce
`
`of April 1, 2001 for the mark CALDERA in connection with
`
`“therapeutic hot and cold compression wraps; therapeutic hot compression wraps;
`therapeutic cold compression wraps; chemically activated hot and cold disposable gel
`packs and patches for medical purposes; viscous gel polymer sold as a component of
`finished custom cushioned medical and therapeutic devices and equipment, namely,
`therapeutic braces; viscous gel polymer sold as a component of finished custom
`cushioned wheel chair seats and back cushions; therapeutic and orthopedic neck
`warming support wraps; face masks for use by health care providers; medical
`apparatus, namely, non- or low-compression devices for holding thermal packs to the
`breasts; therapeutic apparatus, namely, body limb thermal compression
`undergarments for relief of muscular and joint pain through targeted thermal
`application and compression; custom designed therapeutic wraps fitted for use with a
`prosthesis; medical apparatus, namely, post-surgical non- or low-compression devices
`for holding thermal wraps to the pelvic area for purposes of comfort and support;
`therapeutic neck supports for reducing tension and relieving discomfort.”; and
`
`in International Class 025 with a first use anywhere and in commerce of October 1,
`
`2012 for “Clothing, namely, knit face masks and neck warmers.”
`
`5.
`
`In Serial No. 87/832479, Opposer has applied for registration of the mark
`
`CALDERA under Section 1(a) on March 13, 2018 with a first use anywhere and in commerce of
`
`April 1, 2001 in International Class 005 for "Thermal hot and cold therapy for medical and
`
`veterinary purposes; topical analgesic creams, lotions, plant extracts, bath salts, mineral salts,
`
`
`
`3
`
`

`

`
`
`shower gels for medical and veterinary purposes, anti-inflammatory gels; herbal topical gels for
`
`the relief of aches and pain; topical gel for medical, veterinary, and therapeutic treatment for
`
`muscle and joint pain”; and in International Class 011 for “Heating units, namely, heating packs
`
`and heating wraps for heating animals and pets, not for veterinary purposes; Cooling units,
`
`namely, cold packs and cold wraps for cooling animals and pets, not for veterinary purposes;
`
`heating inserts and cooling inserts for pet beds; heating units and cooling units for pet beds.”
`
`6.
`
`A copy of information from the USPTO’s Trademark Status and Document
`
`Retrieval (TSDR) system showing the current status and title of these registrations is attached as
`
`Exhibit A.
`
`7.
`
`Opposer has priority over Applicant based on use of the Caldera Marks by
`
`Opposer previous to Applicant’s use of the Alleged Marks.
`
`8.
`
`Opposer has priority rights in the Caldera Marks with respect to the type of goods
`
`and services claimed in the Caldera Registrations.
`
`9.
`
`Opposer has used the common law word mark, CALDERA in intrastate and
`
`interstate commerce with respect to goods to the type of goods and services claimed in the
`
`Caldera Registrations at least as early as April 2001.
`
`10.
`
`Opposer made trademark use of the common law word mark, CALDERA as to
`
`the type of goods and services claimed in the Caldera Registrations prior to Applicant’s
`
`constructive use date of March 20, 2018 for the Opposed Application.
`
`11.
`
`Opposer made analogous use of CALDERA as to the type of goods and services
`
`claimed in the Caldera Registrations prior to Applicant’s constructive use date of March 20,
`
`2018 for the Opposed Application.
`
`12.
`
`Opposer has used the trade name, CALDERA as early as April 2001.
`
`
`
`4
`
`

`

`
`
`13.
`
`A copy of information from the USPTO’s Trademark Status and Document
`
`Retrieval (TSDR) system showing the current status and title of the Opposed Application is
`
`attached as Exhibit B.
`
`14.
`
`Opposer used CALDERA as trade name prior to Applicant’s constructive use date
`
`of March 20, 2018 for the Opposed Application.
`
`15.
`
`Opposer used CALDERA as trade name prior to Applicant’s actual use date of
`
`March 20, 2018 for the Opposed Application.
`
`16.
`
`The trade name usage, advertisements, and efforts of Opposer were reasonably
`
`expected to have a substantial impact on the publishing public prior to Applicant’s constructive
`
`use date, being the Opposed Application Filing Date.
`
`17.
`
`The trade name usage, advertisements, and efforts of Opposer created an
`
`association in the minds of the purchasing public of Opposer’s goods prior to Applicant’s
`
`constructive use date, being the Opposed Application Filing Date.
`
`18.
`
`Opposer has priority over Applicant through the prior use and analogous use by
`
`Opposer of the mark, CALDERA in intrastate and interstate commerce with respect to the type
`
`of goods and services claimed in the Caldera Registrations.
`
`19.
`
`Opposer has prior and superior rights over Applicant by almost 17 years.
`
`20.
`
`Opposer has continuously used the Caldera Marks, the common law word mark
`
`Caldera, and trade name Caldera, without abandonment, from, at least, the date of first use on
`
`April 1,2001 in interstate and intrastate commerce to the present day.
`
`21.
`
`On information and belief, Applicant was aware of Opposer’s priority use in
`
`commerce of Applicant’s Alleged Mark at the time it filed the Opposed Application because
`
`Opposer’s mark is widely known mark in the same channels of trade in which Applicant’s goods
`
`would be sold.
`
`
`
`5
`
`

`

`
`
`22.
`
`Prior to Applicant's filing date or any date of first use upon which Applicant can
`
`rely, and as a result of Opposer's longstanding use and promotion of the Caldera Marks for
`
`related goods and services, including expenditure of considerable amounts of time, energy and
`
`money, the public has come to recognize goods and services bearing the Caldera Marks as goods
`
`and services coming from a single source, namely, Opposer.
`
`23.
`
`The Opposed Application for CALDERA LAB, if allowed, is likely to cause
`
`confusion with Opposer's registered Caldera Marks, Opposer’s future registrations based on the
`
`natural expansion of the goods and services described in the Caldera Registrations, and Caldera’s
`
`common law word mark, CALDERA all of those aforementioned marks used in intrastate and
`
`interstate commerce under 15 U.S.C.§ 1052(d).
`
`24.
`
`The Alleged Mark, CALDERA LAB, is identical in visual, spelling, and sound
`
`value appearance to the Caldera Marks for CALDERA.
`
`25.
`
`The face, body, and hair products, including serums, moisturizers, creams, and
`
`other preparations as well as retail services regarding such products offered by Opposer under
`
`the CALDERA mark are overlapping with and/or related to Applicant's Goods.
`
`26.
`
`The Opposed Goods do not include any limitations on the channels of trade or
`
`relevant purchasers. Upon information and belief, the Parties’ services and goods would be
`
`promoted through the same channels of trade for sale to, and used by, the same category of
`
`purchasers.
`
`27.
`
`If Applicant is permitted to register and use Applicant’s Alleged Mark for the
`
`Opposed Goods, such registration and use by Applicant is likely to cause confusion, deception
`
`and mistake, and will seriously damage Opposer.
`
`28.
`
`Opposer has a real and direct commercial interest in opposing the Opposed
`
`Application because Opposer has used its registered and applied for Caldera Marks; the common
`
`
`
`6
`
`

`

`
`
`law mark, CALDERA; made analogous use; and used the tradename CALDERA with respect to
`
`the type of goods and services claimed in the Caldera Registrations in intrastate and interstate
`
`commerce on identical, similar, related and/or overlapping goods prior to Applicant’s
`
`constructive use date.
`
`29.
`
`Opposer believes it will be damaged by the registration of the Opposed
`
`Application in that a substantial portion of the purchasing public and/or trade is likely to be
`
`confused, or mistakenly believe, that the Opposed Goods offered under Applicant’s Alleged
`
`Mark originate from Caldera, or from the same source as the goods and services sold under the
`
`Caldera Marks, Opposer’s common law marks, or that such services are sponsored by, endorsed
`
`by, or affiliated with the source of the goods and services sold under the CALDERA Marks or
`
`the trade name CALDERA. Such likelihood of confusion would result both in lost sales to
`
`Caldera and in damage to Caldera’s goodwill among purchasers and the trade symbolized by the
`
`Caldera Marks. Furthermore, any defect, objection or fault found with the Opposed Goods
`
`marketed under Applicant’s Alleged Mark would reflect upon and could seriously injure the
`
`reputation which has been established for the goods and services sold under the Caldera Marks.
`
`30.
`
`Opposer will be damaged by the registration sought by Applicant insofar as
`
`Applicant will obtain statutory rights in Applicant’s Alleged Mark in violation and derogation of
`
`Opposer's prior and superior rights in Opposer's registered and applied for Caldera Marks, its
`
`common law wordmark CALDERA, and its trade name CALDERA.
`
`
`
`WHEREFORE, Opposer requests that this opposition be sustained and the
`
`registration sought by Applicant be refused.
`
`Dated: March 4, 2019
`
`Respectfully submitted, Caldera International Inc.
`
`
`
`
`7
`
`

`

`
`
`
`
`
`
`/Jesse L. London/
`
`By:
`
`One of its Attorneys
`
`Jesse L. London, USPTO #72185
`London & Paris, LLP
`888 W. Park St.
`Eugene, OR. 97401
`(503) 877-3107
`
`8
`
`

`

`EXHIBITA
`
`Int. CL: 10
`
`Prior U.S. Cls.: 26, 39, and 44
`
`Unlted States Patent and Trademark Office
`
`Reg-N0. 2,548,515
`Registered Mar. 12, 2002
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CALDERA
`
`SPORTAIDE, INC. (OREGON CORPORATION)
`8178 SW DURHAM ROAD
`TIGARD, OR 97224
`
`FOR: THERMAL HOT AND COLD THERAPY
`WRAPS AND MAGNETIC SUPPORTIVE BANDA—
`GES FOR FIRST AID, SPORTS RELATED INJURIES,
`HOME HEALTH CARE, PAIN RELIEF AND VETER—
`INARY PURPOSES , IN CLASS 10 (US. CLS. 26, 39
`AND 44).
`
`FIRST USE 4-1-2001; IN COMMERCE 4—1—2001.
`
`THE ENGLISH TRANSLATION OF "CALDERA"
`IS"CAULDR0N"-
`
`SN 78-021 285 FILED 8_1 54000.
`-
`’
`’
`SHARON ASAR, EXAMINING ATTORNEY
`
`
`
`

`

`Int. CL: 10
`
`Prior U.S. Cls.: 26, 39 and 44
`
`United States Patent and Trademark Office
`
`Reg. No. 3,590,252
`Registered Mar. 17, 2009
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`CALDERA
`
`CALDERA INTERNATIONAL,
`CORPORATION)
`7980 SW CIRRUS DRIVE, BUILDING 13F
`BEAVERTON, OR 97008
`
`INC.
`
`(OREGON
`
`FOR: THERMAL HOT AND COLD THERAPY
`WRAPS AND MAGNETIC SUPPORTIVE BANDA-
`GES; MEDICAL COMPRESSION AND SUPPORT
`GARMENTS IN THE NATURE OF SURGICAL
`BRAS, BRA SUPPORTS, GARTERS, GIRDLES, AB-
`DOMINAL BINDERS, BACK BINDERS, RIB BELTS,
`SHORTS, STOCKINGS, TIGHTS, AND LEGGINGS,
`IN CLASS 10 (US. CLS. 26, 39 AND 44).
`
`FIRST USE 4-1-2001; IN COMMERCE 4-1-2001.
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF US. REG. NO. 2.548.515.
`
`SER. NO. 77-446,585, FILED 4-11-2008.
`
`BARBARA RUTLAND, EXAMINING ATTORNEY
`
`

`

`CALDERA
`
`Reg. No. 4,310,746
`
`Registered Mar. 26, 2013
`
`Int. Cls.: 10 and 25
`
`TRADETVIARK
`
`PRINCIPAL REGISTER
`
`CALDERA INTERNATIONAL, INC. (OREGON CORPORATION)
`7236 SW DURHAM ROAD, SUITE 800
`TIGARD, OR 97224
`
`FOR: THERAPEUTIC HOT AND COLD COMPRESSION WRAPS; THERAPEUTIC HOT
`COMPRESSION WRAPS; THERAPEUTIC COLD COMPRESSION WRAPS; CHEMICALLY
`ACTIVATED HOT AND COLD DISPOSABLE GEL PACKS AND PATCHES FOR MEDICAL
`PURPOSES; VISCOUS GEL POLYMER SOLD AS A COMPONENT OF FINISIIED CUSTOM
`CUSHIONED MEDICAL AND THERAPEUTIC DEVICES AND EQUIPMENT, NAMELY,
`THERAPEUTIC RRACES;VISCOI TS GEI. POI YMER SOLD AS A COMPONENT OF FINISHED
`CUSTOM CUSHIONED WHEEL CHAIR SEATS AND BACK CUSHIONS; THERAPEUTIC
`AND ORTHOPEDIC NECK WARMING SUPPORT WRAPS; FACE MASKS FOR USE BY
`HEALTH CARE PROVIDERS; MEDICAL APPARATUS, NAMELY, NON— OR LOW—COM—
`PRESSION DEVICES FOR HOLDING THERMAL PACKS TO THE BREASTS; THERAPEUTIC
`APPARATUS, NAMELY, BODY LIMB THERMAL COMPRESSION UNDERGARMENTS
`FOR RELIEF OF MUSCULAR AND JOINT PAIN THROUGH TARGETED THERMAL AP—
`PLICATION AND COMPRESSION; CUSTOM DESIGNED THERAPEUTIC WRAPS FIT ED
`FOR USE WITII A PROSTIIESIS; MEDICAL APPARATUS, NAMELY, POST-SURGICAL
`NON- OR LOW-COMPRESSION DEVICES FOR HOLDING THERMAL WRAPS TO THE
`PEI.VIC AREA FOR PURPOSES OF COMFORT AND SUPPORT; THERAPEUTIC NECK
`SUPPORTS FOR REDUCING TENSIONAND RELIEVING DISCOMFORT, IN CLASS 10 (US.
`CLS. 26, 39 AND 44).
`
`
`
`
`
`
`
`FIRST USE 4-1-2001; IN COMMERCE 4-1-2001.
`
`FOR: CLOTHING, NAMELY, KNIT FACE MASKS AND NECK WARMERS, IN CLASS 25
`(US. CLS. 22 AND 39).
`
`FIRST USE 10-1-2012; IN COMMERCE 10-1-2012.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`fi£fi ,2)
`
`Artiug Dilerlor ul‘llw Unilell Stale; Patent Mlll‘ TnuJL-nmlk OlTIL'e
`
`OWNER OF US. REG. NOS. 2,548,515 AND 3,590,252.
`
`SN 85-978,582, FILED 11-10-2011.
`
`

`

`Reg. No. 4,310,746 IUDITH HELFMAN, EXAMINING ATTORNEY
`
`Page: 2 / RN # 4,310,746
`
`

`

`REQUIREMENTS TO MAINTAIN YOUR FEDERAL
`TRADElVIARK REGISTRATION
`
`DOCUlVIENTS BELOW DURING THE SPECIFIED TIlVIE PERIODS.
`
`WARNIN G: YOUR REGISTRATION WILL BE CAN CELLED IF YOU DO 1V OT FILE THE
`
`Requirements in the First Ten Years*
`What and When to File:
`
`First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
`5th and 6th years after the registration date, See 15 U.S.C, §§1058, 1141k_ If the declaration is
`accepted, the registration will continue in force for the remainder of the ten-year period, calculated
`from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
`federal court,
`
`Second Filing Deadline.- You must file a Declaration of Use (or Exeusable Nonuse) and an
`Application for Renewal between the 9th and IOth years after the registration date.*
`See 15 U_S.C. §1059,
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
`You must file a Declaration oste (or Exeusable Nonuse) and an Application for Renewal between
`every 9th and 10th—year period, calculated from the registration date.*
`
`Grace Period Filings"
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above
`with the payment of an additional fee.
`
`
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
`an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
`of Use (or Excusable Nonusc) referenced above directly with the USPTO, The time periods for filing are
`based on the US. registration date (not the international registration date). The deadlines and grace periods
`for the Declarations of Use (or Excusable Nonusc) are identical to those for nationally issued registrations
`See 15 U.S.C. §§1058, 1141k. However, owners of intemational registrations do not file renewal applications
`at the USPTO. lnstead, the holder must file a renewal of the underlying international registration at the
`International Bureau of the World Intellectual Propelty Organization, under A 1ticle 7 of the Madrid Protocol,
`before the expiration of each ten-year term of protection, calculated from the date of the international
`registration, See 15 U.S.C. §1141j. For more information and renewal forms for the international registration,
`see http://www.wipoint/madrid/en/L
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions ol'protection, you can file the registration maintenance documents referenced above online
`at http://www.usptogov.
`
`Page: 3 / RN # 4,310,746
`
`

`

`Generated on: This page was generated by TSDR on 2018-09-07 20:18:26 EDT
`
`Mark: CALDERA
`
`US Serial Number: 87832479
`
`Application Filing
`Date:
`
`Mar. 13, 2018
`
`Filed as TEAS RF: Yes
`
`Currently TEAS RF: Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`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/or making an initial refusal. The applicant must respond to this Office action. To view all documents in this file, click on
`the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Jun. 25, 2018
`
` 
`
`Mark Literal
`Elements:
`
`CALDERA
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Thermal hot and cold therapy for medical and veterinary purposes; topical analgesic creams, lotions, plant extracts, bath salts, mineral
`salts, shower gels for medical and veterinary purposes, anti-inflammatory gels; herbal topical gels for the relief of aches and pain;
`topical gel for medical, veterinary, and therapeutic treatment for muscle and joint pain
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`First Use: Apr. 01, 2001
`
`Use in Commerce: Apr. 01, 2001
`
`For: Heating units, namely, heating packs and heating wraps for heating animals and pets, not for veterinary purposes; Cooling units,
`namely, cold packs and cold wraps for cooling animals and pets, not for veterinary purposes; heating inserts and cooling inserts for pet
`beds; heating units and cooling units for pet beds
`
`International
`Class(es):
`
`011 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 013, 021, 023, 031, 034
`
`First Use: Apr. 01, 2001
`
`Use in Commerce: Apr. 01, 2001
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`

`

`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Caldera International, Inc.
`
`Owner Address: 7236 SW Durham Rd, Suite 800
`Portland, OREGON 97224
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`OREGON
`
`Attorney/Correspondence Information
`
`Attorney Name: Devin Miller
`
`Docket Number: Caldera.416
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`docketing@mohriplaw.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`DEVIN MILLER
`MOHR INTELLECTUAL PROPERTY LAW SOLUTIONS, PC
`522 SW 5TH AVENUE, SUITE 1390
`PORTLAND, OREGON 97204
`UNITED STATES
`
`Correspondent e-
`mail:
`
`docketing@mohriplaw.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Jun. 25, 2018
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Jun. 25, 2018
`
`NON-FINAL ACTION E-MAILED
`
`Jun. 25, 2018
`
`NON-FINAL ACTION WRITTEN
`
`Jun. 23, 2018
`
`ASSIGNED TO EXAMINER
`
`Mar. 20, 2018
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Mar. 16, 2018
`
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Attorney: SINGLETON, RUDY RENWIC
`
`Current Location: TMEG LAW OFFICE 102 - EXAMINING
`ATTORNEY ASSIGNED
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 102
`
`File Location
`
`Date in Location: Jun. 25, 2018
`
`Proceeding
`Number
`
`6325
`
`6325
`
`72518
`
`72518
`
`

`

`Generated on: This page was generated by TSDR on 2018-09-07 20:35:16 EDT
`
`Mark: CALDERA
`
`US Serial Number: 87841997
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`Application Filing
`Date:
`
`Mar. 20, 2018
`
`Currently TEAS
`Plus:
`
`Yes
`
`Status: A request for an extension of time to file an opposition has been filed with the Trademark Trial and Appeal Board. For further
`information, see TTABVUE on the Trademark Trial and Appeal Board web page.
`
`Status Date: Aug. 28, 2018
`
`Publication Date: Aug. 07, 2018
`
` 
`
`Mark Literal
`Elements:
`
`CALDERA
`
`Mark Information
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Bath soaps; Body oils; Deodorants for body care; Hair oils; Hair shampoos and conditioners; Lip balm; Perfumes and colognes; Skin
`cleansers; Sunscreen preparations; Non-medicated serums for use on face and eyes; Non-medicated skin care preparations; hands,
`face and body moisturizers
`
`International
`Class(es):
`
`003 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`For: Acne treatment preparations
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`U.S Class(es): 001, 004, 006, 050, 051, 052
`
`U.S Class(es): 006, 018, 044, 046, 051, 052
`
`For: On-line retail store services featuring face, body and hair products, dietary supplements, vitamins and protein bars
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`U.S Class(es): 100, 101, 102
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44D: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`

`

`Filed 44E: No
`
`Filed 66A: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Amended 44E: No
`
`Current Owner(s) Information
`
`Owner Name: Teton Organic, LLC
`
`Owner Address: 3465 N Pines Way, Ste 104, #196
`Wilson, WYOMING 83014
`UNITED STATES
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`WYOMING
`
`Attorney/Correspondence Information
`
`Attorney Name: Joseph A. Mandour
`
`Docket Number: 8153.02-005
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`jmandour@mandourlaw.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`JOSEPH A. MANDOUR
`MANDOUR & ASSOCIATES, APC
`8605 SANTA MONICA BLVD., SUITE 1500
`LOS ANGELES, CALIFORNIA 90069
`UNITED STATES
`
`Correspondent e-
`mail:
`
`jmandour@mandourlaw.com lolson@mandourlaw
`.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`
`Prosecution History
`
`Date
`
`Description
`
`Aug. 28, 2018
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`Aug. 07, 2018
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Aug. 07, 2018
`
`PUBLISHED FOR OPPOSITION
`
`Aug. 01, 2018
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Jul. 18, 2018
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Jun. 29, 2018
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jun. 29, 2018
`
`ASSIGNED TO EXAMINER
`
`Mar. 27, 2018
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Mar. 23, 2018
`
`NEW APPLICATION ENTERED IN TRAM
`
`TM Staff and Location Information
`
`TM Attorney: LINDEMYER, ANKHI MUKHE
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 123
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jul. 02, 2018
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Assignment 1 of 1
`
` 
`
`Applicant: Teton Organic, LLC
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 6389/0106
`
`Date Recorded: Jul. 24, 2018
`
`Pages: 2
`
`Proceeding
`Number
`
`93414
`
`

`

`Supporting
`Documents:
`
`assignment-tm-6389-0106.pdf
`
`Name: TETON ORGANIC, LLC
`
`Execution Date: Jul. 20, 2018
`
`Assignor
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Name: CALDERA + LAB, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 3465 N PINES WAY, STE 104, #196
`WILSON, WYOMING 83014
`
`Correspondent
`Name:
`
`JOSEPH A. MANDOUR
`
`Correspondent
`Address:
`
`8605 SANTA MONICA BLVD., SUITE 1500
`LOS ANGELES, CA 90069
`
`State or Country
`Where Organized:
`
`WYOMING
`
`Assignee
`
`State or Country
`Where Organized:
`
`WYOMING
`
`Correspondent
`
`Domestic Representative - Not Found
`
`Proceedings
`
`