PUMA SE v. Critical Role LLC, 91266435, No. 7 (T.T.A.B. Feb. 22, 2021)

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PUMA SE v. Critical Role LLC, 91266435, No. 7 (T.T.A.B. Feb. 22, 2021)

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
`General Email: TTABInfo@uspto.gov
`
`February 22, 2021
`
`Opposition No. 91266435
`
`PUMA SE
`
`v.
`
`Critical Role LLC
`
`
`
`J. Krisp, Interlocutory Attorney:
`
`On February 19, 2021, Opposer filed the parties’ stipulation with Applicant’s
`
`proposed amendment to its involved application Serial No. 88924785, and Opposer's
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`withdrawal with prejudice of the opposition, contingent upon entry of the amendment
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`(6 TTABVUE).
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`By the proposed amendment, Applicant seeks to amend the identification of the
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`goods in the opposed International Class 25 of the subject application as follows:1
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`From:
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`
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`Clothing, namely, shirts, t-shirts, sweatshirts, hooded
`sweatshirts, underwear, one-piece garments for babies,
`camisoles, pants, shorts, bandanas, pullovers, pants,
`scarves; headwear; hats; caps being headwear; outerwear,
`namely, coats, hats, gloves; footwear; socks; shirts; shorts;
`sweatshirts; pullovers; pants; scarves; cosplay costumes;
`costumes for use in role-playing games
`
`
`1 The wording to be added is shown in bold.
`
`
`
`

`Opposition No. 91266435
`
`
`To:
`
`
`
`Clothing, namely, shirts, t-shirts, sweatshirts, hooded
`sweatshirts, underwear, one-piece garments for babies,
`camisoles, pants, shorts, bandanas, pullovers, pants,
`scarves; headwear; hats; caps being headwear; outerwear,
`namely, coats, hats, gloves; footwear; socks; shirts; shorts;
`sweatshirts; pullovers; pants; scarves; cosplay costumes;
`costumes for use in role-playing games all of the
`foregoing relating to the field of fantasy, role
`playing or fictional characters; cosplay costumes;
`costumes for use in role-playing games.
`
`The proposed amendment is unacceptable in part. Specifically, Applicant now
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`identifies the following goods twice in this class of goods:
`
`cosplay costumes; costumes for use in role-playing games
`
`
`
`The repetition of this wording renders the record and the resulting proposed
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`identification of goods unclear.
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`Therefore, the Board cannot accept the proposed amendment and will not enter
`
`the amendment.
`
`In view of these findings, the motion to amend is denied without prejudice. The
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`present identification of goods, that is, the identification prior to the filing of the
`
`motion to amend, remains operative for purposes of future amendment. See
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`Trademark Rule 2.71(a); TMEP §1402.07(d).
`
`Inasmuch as the filing of the proposed amendment indicates to the Board that the
`
`parties are making efforts to settle this matter, proceedings are suspended, and the
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`parties are allowed until thirty days from the date of this order to file a revised
`
`
`
`2
`
`

`Opposition No. 91266435
`
`
`motion to amend, failing which the Board will resume proceedings and reset dates,
`
`and the opposition will go forward on the present application.
`
`
`
`
`
`3
`
`

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