Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1107248
`01/12/2021
`
`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 parties oppose registration of the indicated application.
`
`Opposers Information
`
`Name
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Name
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Nandorf LLC
`
`01/13/2021
`
`11400 SE 6TH STREET
`SUITE 220
`BELLEVUE, WA 98004
`UNITED STATES
`
`TVI, Inc.
`
`01/13/2021
`
`11400 SE 6TH STREET
`SUITE 200
`BELLEVUE, WA 98004
`UNITED STATES
`
`GRACE HAN STANTON
`PERKINS COIE LLP
`1201 THIRD AVENUE
`SUITE 4900
`SEATTLE, WA 98101
`UNITED STATES
`Primary Email: GStanton@perkinscoie.com
`Secondary Email(s): KLarson@perkinscoie.com, PCTrade-
`marks@perkinscoie.com, TBrandon@perkinscoie.com
`206.359.8000
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`88654251
`
`Publication date
`
`09/15/2020
`
`Opposition Filing
`Date
`
`Applicant
`
`01/12/2021
`
`Opposition Peri-
`od Ends
`
`01/13/2021
`
`Martinez, Jessie D.
`300 W HILL CT
`FORT LUPTON, CO 80621
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`

`

`Class 025. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Clothing, namely, crop tops, dresses, hats,
`hoodies, jackets, long-sleeved shirts, moisture-wicking sports pants, moisture-wicking sports shirts,
`pants, shirts, shoes, short-sleeve shirts, shorts, skirts, sweats, sweaters, sweatshirts, tank tops, tee
`shirts
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`3942864
`
`Registration Date
`
`04/12/2011
`
`Application Date
`
`02/23/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`UNIQUE
`
`NONE
`
`Class 035. First use: First Use: 1969/00/00 First Use In Commerce: 1978/00/00
`Thrift stores featuring used clothing and household goods originating from char-
`ities and donors
`
`U.S. Registration
`No.
`
`3918819
`
`Registration Date
`
`02/15/2011
`
`Application Date
`
`02/23/2010
`
`Foreign Priority
`Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`UNIQUE THRIFT STORE
`
`NONE
`
`Class 035. First use: First Use: 1969/00/00 First Use In Commerce: 1978/00/00
`thrift stores featuring used clothing and household goods originating from charit-
`ies and donors
`
`Attachments
`
`2021-01-12 Notice of Opposition.pdf(23006 bytes )
`2021-01-12 Exhibits.pdf(1028494 bytes )
`
`Signature
`
`/Grace Han Stanton/
`
`Name
`
`Date
`
`GRACE HAN STANTON
`
`01/12/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TVI, Inc., a Washington corporation, and
`NANDORF, LLC, a Washington limited liability
`company,
`
`
`
`
`
`Opposers,
`
`v.
`
`Jessie D. Martinez,
`
`
`
`
`
`Applicant.
`
`Opposition No.: _______________
`
`NOTICE OF OPPOSITION
`
`Application Serial No.: 88654251
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION
`
`Opposers TVI, Inc. and Nandorf, LLC (collectively “TVI”) believe they will be damaged
`
`by registration of the mark UN1QUE (“Applicant’s Mark”) as shown in United States Trademark
`
`Application Serial No. 88654251 filed by Jessie D. Martinez (“Mr. Martinez” or “Applicant”) and
`
`published for opposition in the Official Gazette on September 15, 2020. On October 12, 2020, TVI
`
`filed and was granted a 30-Day Extension of Time to oppose until November 14, 2020. On
`
`November 12, 2020, TVI filed and was granted an additional 60-Day Extension of Time to oppose
`
`until January 13, 2021.
`
`As grounds for this Opposition, TVI alleges as follows:
`
`I.
`
`PARTIES
`
`1.
`
`TVI, Inc. is a corporation organized under the laws of the State of Washington,
`
`having its principal office at 11400 SE 6th Street, Suite 220, Bellevue, Washington 98004.
`
`2.
`
`Nandorf, LLC is a limited liability company organized under the laws of the State
`
`of Washington, having its principal office at 11400 SE 6th Street, Suite, 220, Bellevue,
`
`Washington 98004, and is a wholly owned subsidiary of TVI, Inc.
`
`3.
`
`Upon information and belief, Applicant is an individual residing at 300 W Hill Ct.
`
`Fort Lupton, Colorado 80621.
`
`150931938.1
`
`

`

`II.
`
`TVI’s MARKS AND REGISTRATIONS AND RIGHTS THEREIN
`
`4.
`
`TVI realleges and incorporates by reference the preceding allegations of this Notice
`
`of Opposition.
`
`5.
`
`For many years, and at least as early as 1969, TVI, itself and through its affiliate
`
`and subsidiary companies (reference to TVI includes reference to its affiliate and subsidiary
`
`companies as appropriate, including, without limitation, Nandorf, LLC), has continuously engaged
`
`in the business of providing retail store services through its retail store chain known as “Unique.”
`
`TVI retail stores sell, among other things, clothing, including crop tops, dresses, hats, hoodies,
`
`jackets, long-sleeved shirts, moisture-wicking sports pants, moisture-wicking sports shirts, pants,
`
`shirts, shoes, short-sleeve shirts, shorts, skirts, sweats, sweaters, sweatshirts, tank tops, and tee
`
`shirts. TVI retail stores, including its Unique brand, sell both new and used clothing.
`
`6.
`
`Since as early as 1978, TVI has used the marks UNIQUE and UNIQUE THRIFT
`
`STORE continuously in interstate commerce in the United States as service marks in connection
`
`with “thrift stores featuring used clothing and household goods originating from charities and
`
`donors.”
`
`7.
`
`TVI applied for, received, maintained, and continues to own incontestable United
`
`States Trademark Registration No. 3,942,864 for the mark UNIQUE in International Class 35, a
`
`copy of which registration and electronic database records of the USPTO showing the current
`
`status and title of the registration are submitted herewith as Exhibit A. This mark has not been
`
`cancelled, is valid, and is now in full force and effect.
`
`8.
`
`TVI applied for, received, maintained, and continues to own incontestable United
`
`States Trademark Registration No. 3,918,819 for the mark UNIQUE THRIFT STORE in
`
`International Class 35, a copy of which registration and electronic database records of the USPTO
`
`showing the current status and title of the registration are submitted herewith as Exhibit B. This
`
`mark has not been cancelled, is valid, and is now in full force and effect.
`
`9.
`
`To the extent that TVI’s registered marks do not extend to goods described in Mr.
`
`Martinez’s application, for a number of years, including before the date of Mr. Martinez’s
`
`150931938.1
`
`- 2 -
`
`

`

`application, TVI has used the marks UNIQUE and UNIQUE THRIFT STORES to sell a wide
`
`variety of goods, including new and used clothing and crop tops, dresses, hats, hoodies, jackets,
`
`long-sleeved shirts, moisture-wicking sports pants, moisture-wicking sports shirts, pants, shirts,
`
`shoes, short-sleeve shirts, shorts, skirts, sweats, sweaters, sweatshirts, tank tops, and tee shirts. TVI
`
`retail stores, including its Unique brand, sell both new and used clothing, and TVI has utilized its
`
`stores and websites to advance its efforts. To the extent this activity does not fall within the scope
`
`of TVI’s registered Marks, TVI has significant common law interest and rights in and to the terms
`
`UNIQUE and UNIQUE THRIFT STORES as trademark/service marks in relation to its sale of
`
`new and used goods, including, without limitation, new and used clothing and crop tops, dresses,
`
`hats, hoodies, jackets, long-sleeved shirts, moisture-wicking sports pants, moisture-wicking sports
`
`shirts, pants, shirts, shoes, short-sleeve shirts, shorts, skirts, sweats, sweaters, sweatshirts, tank
`
`tops, and tee shirts. TVI’s common law rights predate Mr. Martinez’s application.
`
`10.
`
`Since its initial use of the UNIQUE Marks (all of TVI’s marks referenced above,
`
`registered and common law, are referred to herein as the “UNIQUE Marks” or “Marks”), TVI has
`
`expended substantial amounts of money, time and effort in advertising, promoting, and
`
`popularizing said Marks extensively in the United States. As a result of TVI’s use and advertising
`
`of its Marks, the Marks are well known in the United States and recognized as well established
`
`retail stores where consumers can purchase a large number of items, including goods listed in Mr.
`
`Martinez’s application. Therefore, the Marks and the goodwill associated therewith are valuable
`
`assets of TVI.
`
`III. APPLICANT’S MARK AND APPLICATION
`
`11.
`
`TVI realleges and incorporates by reference the preceding allegations of this Notice
`
`of Opposition.
`
`12. Mr. Martinez’s proposed mark is in Class 25 for “Clothing, namely, crop tops,
`
`dresses, hats, hoodies, jackets, long-sleeved shirts, moisture-wicking sports pants, moisture-
`
`wicking sports shirts, pants, shirts, shoes, short-sleeve shirts, shorts, skirts, sweats, sweaters,
`
`sweatshirts, tank tops, tee shirts ” and will be used in relation to similar goods as TVI’s Marks, in
`
`150931938.1
`
`- 3 -
`
`

`

`similar channels of trade in which TVI operates with its Marks, and around similar classes of
`
`purchasers as TVI targets with its Marks.
`
`13.
`
`TVI’s Marks and Mr. Martinez’s proposed mark are so closely related that if the
`
`respective goods/services are provided under the same or confusingly similar marks, a likelihood
`
`of confusion will result under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
`
`14. Mr. Martinez’s use of the term “UN1QUE” in connection with its design is
`
`confusingly and deceptively similar to TVI’s Marks such that the trade and purchasing public will
`
`be confused and deceived by believing that Mr. Martinez’s goods originate with or are otherwise
`
`authorized, sponsored, licensed, or associated with TVI under Section 2(d) of the Trademark Act,
`
`15 U.S.C. § 1052(d)
`
`15. Mr. Martinez’s use of “UN1QUE” in Class 25 for “Clothing, namely, crop tops,
`
`dresses, hats, hoodies, jackets, long-sleeved shirts, moisture-wicking sports pants, moisture-
`
`wicking sports shirts, pants, shirts, shoes, short-sleeve shirts, shorts, skirts, sweats, sweaters,
`
`sweatshirts, tank tops, tee shirts” falsely suggests a connection with TVI’s Marks under Section
`
`2(a) of the Trademark Act, 15 U.S.C. § 1052(a).
`
`IV.
`
`PRIORITY
`
`16.
`
`TVI realleges and incorporates by reference the preceding allegations of this Notice
`
`of Opposition.
`
`17.
`
`TVI’s use of the Marks precedes the application of the proposed mark “UN1QUE,”
`
`and on information and belief, any use by Mr. Martinez of the proposed mark as is particularly
`
`evidenced by the fact that Mr. Martinez’s application was filed on October 15, 2019 (and he has
`
`not claimed a date of first use), and, therefore, TVI has priority of use over Mr. Martinez.
`
`V.
`
`LIKELIHOOD OF CONFUSION
`
`18.
`
`TVI realleges and incorporates by reference the preceding allegations of this Notice
`
`of Opposition.
`
`19.
`
`TVI’s UNIQUE Marks are distinctive for TVI’s goods and services.
`
`150931938.1
`
`- 4 -
`
`

`

`20.
`
`Applicant’s Mark is highly similar in sight, sound and appearance to TVI’s
`
`UNIQUE Marks.
`
`21.
`
`Applicant’s Mark conveys an overall commercial impression that is highly similar
`
`to that conveyed by TVI’s UNIQUE Marks.
`
`22.
`
`On information and belief, Applicant’s goods overlap with, or are highly related to
`
`the goods and services offered by TVI.
`
`23.
`
`On information and belief, Applicant’s goods are competitive with the goods and
`
`services offered by TVI.
`
`24.
`
`On information and belief, Applicant’s goods and the goods and services offered
`
`by TVI are offered in the same or similar trade channels and have the same or similar potential
`
`customers.
`
`25.
`
`Applicant’s Mark, when used for Applicant’s goods, is confusingly and
`
`deceptively similar to TVI’s UNIQUE Marks when used for the goods and services as offered
`
`and provided by TVI and related entities, such that consumers are likely to be confused by,
`
`deceived by, or will be mistaken into believing that Applicant’s goods, if sold and marketed with
`
`Applicant’s Mark, originate from or are otherwise authorized, sponsored by, licensed from, or
`
`associated with TVI. Further, because TVI owns the UNIQUE Marks, the addition of the
`
`numeral one, i.e., “1” as in UN1QUE to replace the letter “I” in “UNIQUE” in the Applicant’s
`
`Mark is not sufficient to distinguish it from TVI’s UNIQUE Marks. In particular, consumers are
`
`likely to mistakenly conclude that the UN1QUE Mark is merely another mark owned by TVI as
`
`part of its UNIQUE family of marks. In turn, registration of Applicant’s Mark would greatly
`
`damage and/or injure TVI.
`
`26.
`
`The registration of Applicant’s Mark would prevent TVI from exercising
`
`exclusive control over the goodwill and reputation associated with the UNIQUE Marks.
`
`Therefore, the registration of Applicant’s Mark would damage and/or injure Opposers.
`
`150931938.1
`
`- 5 -
`
`

`

`27.
`
`Any defect, objection or fault with Applicant’s goods marketed or sold in
`
`connection with Applicant’s Mark will reflect upon TVI, and, in turn, will seriously injure the
`
`valuable reputation and goodwill that TVI has established in the UNIQUE Marks.
`
`28.
`
`Registration of Applicant’s Mark with Applicant’s goods will also damage TVI
`
`because such registration would grant a statutory right to Applicant in violation of the prior and
`
`superior rights of TVI and would unduly narrow the scope of protection afforded to TVI’s
`
`Marks, in contravention of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
`
`29.
`
`For all the foregoing reasons, TVI would be greatly damaged by the registration
`
`of Applicant’s Mark for Applicant’s Goods.
`
`Request for Relief
`
`WHEREFORE, Opposers respectfully request that this Opposition be sustained and the
`
`Applicant’s Application to register the UN1QUE Mark in Class 25 be denied and the mark refused
`
`registration.
`
`TVI herewith submits this Notice of Opposition along with the requisite filing fee in the
`
`amount of $600.
`
`Please direct all communications to Grace Han Stanton of Perkins Coie LLP, 1201 Third
`
`Avenue, Suite 4900, Seattle, Washington, 98101.
`
`DATED this 12th day of January, 2020
`
`
`PERKINS COIE LLP
`
`By: /Kirstin E. Larson/
`Grace Han Stanton, Washington bar member
`Kirstin E. Larson, Washington bar member
`Attorneys for Opposer, TVI, Inc.
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`Telephone: (206) 359-8000
`E-Mail: KLarson@perkincoie.com
`E-Mail: GStanton@perkinscoie.com
`E-Mail: pctrademarks@perkinscoie.com
`
`
`
`Enclosures
`
`
`
`
`Filing fee of $600 submitted electronically
`Copy of U.S. Reg. Nos.: 3,942,864; 3918819
`
`150931938.1
`
`- 6 -
`
`

`

`TVI/NANDORF
`EXHIBIT A
`
`TVI, Inc. and Nandorf, LLC
`v.
`Jessie D. Martinez
`
`Application Serial No. 88654251
`
`

`

`Md {BI}
`mutter: étatea' iBatent anti flirahemark @ffine
`
`It}?
`
`UNIQUE
`
`Reg. No. 3,942,864
`
`Registered Apr. 12, 2011
`
`Int. Cl.: 35
`
`NANDORF, INC. (WASHINGTON CORPORATION)
`4301 MIDLOTHIAN TURNP KE
`CRESTWOOD, IL 60445
`
`
`
`
`FOR: THRIFT STORES FEATURING USED CLOTHING AND HOUSEHOLD GOODS ORI-
`GINATING FROM CIIARITIES AND DONORS, IN CLASS 35 (U.S. CLS. 100, 101 AND 102).
`
`SERVICE MARK
`
`
`FIRST USE 0-0-1969; IN COMMERCE 0-0-1978.
`
`PRINCIPAL REGISTER
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT: STYLE: SIZE, OR COLOR.
`
`
`SER. NO. 77-942,278, FILED 2-23—2010.
`
`KATHERINE CONNOLLY, EXAMTNING ATTORNEY
`
`
`
`Director ofme United Shuts I’ulem and Trademark Office
`
`

`

`Generated on: This page was generated by TSDR on 2020-09-22 12:27:41 EDT
`
`Mark: UNIQUE
`
`US Serial Number: 77942278
`
`US Registration
`Number:
`
`3942864
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Feb. 23, 2010
`
`Registration Date: Apr. 12, 2011
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date: Mar. 28, 2017
`
`Publication Date: Jan. 25, 2011
`
` 
`
`Mark Literal
`Elements:
`
`UNIQUE
`
`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: Thrift stores featuring used clothing and household goods originating from charities and donors
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1969
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: 1978
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: NANDORF, LLC
`
`Owner Address: 11400 SE 6TH STREET, SUITE 200
`
`

`

`BELLEVUE, WASHINGTON UNITED STATES 98044
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Attorney/Correspondence Information
`
`Attorney Name: Grace Han Stanton
`
`Docket Number: 125177-4007
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`pctrademarks@perkinscoie.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Grace Han Stanton
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WASHINGTON UNITED STATES 98101
`
`Phone:
`
`(206) 359-8000
`
`Fax:
`
`(206) 359-9000
`
`Correspondent e-
`mail:
`
`pctrademarks@perkinscoie.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Apr. 12, 2020
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Aug. 19, 2019
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Aug. 19, 2019
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Apr. 10, 2019
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Mar. 29, 2019
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Mar. 29, 2019
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Mar. 28, 2017
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`
`Mar. 28, 2017
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Mar. 28, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jan. 26, 2017
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Apr. 12, 2016
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Dec. 08, 2015
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Dec. 08, 2015
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Apr. 12, 2011
`
`REGISTERED-PRINCIPAL REGISTER
`
`Jan. 25, 2011
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Jan. 25, 2011
`
`PUBLISHED FOR OPPOSITION
`
`Dec. 23, 2010
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Dec. 23, 2010
`
`ASSIGNED TO LIE
`
`Dec. 02, 2010
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Nov. 29, 2010
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Nov. 29, 2010
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Nov. 29, 2010
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`May 27, 2010
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`May 27, 2010
`
`NON-FINAL ACTION E-MAILED
`
`May 27, 2010
`
`NON-FINAL ACTION WRITTEN
`
`May 27, 2010
`
`ASSIGNED TO EXAMINER
`
`Mar. 01, 2010
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`
`Feb. 26, 2010
`
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`Current Location: TMEG LAW OFFICE 101
`
`Date in Location: Mar. 28, 2017
`
`TM Staff Information - None
`
`File Location
`
`Proceeding
`Number
`
`76293
`
`76293
`
`68552
`
`68552
`
`88889
`
`88889
`
`6325
`
`6325
`
`82416
`
`82416
`
`

`

`Assignment Abstract Of Title Information
`
`Registrant: Nandorf, Inc.
`
`Assignment 1 of 5
`
` 
`
`Summary
`
`Total Assignments: 5
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 4896/0903
`
`Date Recorded: Nov. 09, 2012
`
`Supporting
`Documents:
`
`assignment-tm-4896-0903.pdf
`
`Name: NANDORF, INC.
`
`Legal Entity Type: CORPORATION
`
`Pages: 8
`
`Assignor
`
`Execution Date: Nov. 08, 2012
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Name: GOLDMAN SACHS LENDING PARTNERS LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 30 HUDSON STREET
`JERSEY CITY, NEW JERSEY 07302
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`MILBANK, TWEED, HADLEY & MCCLOY LLP
`
`Correspondent
`
`ONE CHASE MANHATTAN PLAZA
`ATTN: NATHANIEL T. BROWAND
`NEW YORK, NY 10005
`
`Domestic Representative - Not Found
`
`Assignment 2 of 5
`
`Pages: 11
`
`Assignor
`
`Execution Date: Mar. 26, 2019
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Assignee
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Correspondent
`
`Conveyance: ENTITY CONVERSION
`
`Reel/Frame: 6609/0938
`
`Date Recorded: Apr. 04, 2019
`
`Supporting
`Documents:
`
`assignment-tm-6609-0938.pdf
`
`Name: NANDORF, INC.
`
`Legal Entity Type: CORPORATION
`
`Name: NANDORF, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 11400 SE 6TH STREET, SUITE 200
`BELLEVUE, WASHINGTON 98044
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`JAVIER J. RAMOS
`
`1850 K STREET, NW, SUITE 1100
`MILBANK, LLP
`WASHINGTON, DC 20006
`
`Domestic Representative - Not Found
`
`Assignment 3 of 5
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 6602/0937
`
`Pages: 7
`
`

`

`Date Recorded: Mar. 28, 2019
`
`Supporting
`Documents:
`
`assignment-tm-6602-0937.pdf
`
`Name: NANDORF, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Assignor
`
`Execution Date: Mar. 28, 2019
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Assignee
`
`Name: CORTLAND PRODUCTS CORP., AS COLLATERAL AGENT
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Address: 225 W. WASHINGTON ST., 9TH FLOOR
`CHICAGO, ILLINOIS 60606
`
`Correspondent
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`JAVIER J. RAMOS
`
`1850 K STREET, NW, SUITE 1100
`MILBANK, LLP
`WASHINGTON, DC 20006
`
`Conveyance: SECURITY INTEREST
`
`Reel/Frame: 6603/0458
`
`Date Recorded: Mar. 28, 2019
`
`Supporting
`Documents:
`
`assignment-tm-6603-0458.pdf
`
`Name: NANDORF, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Domestic Representative - Not Found
`
`Assignment 4 of 5
`
`Pages: 7
`
`Assignor
`
`Execution Date: Mar. 28, 2019
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Assignee
`
`Name: CORTLAND PRODUCTS CORP., AS COLLATERAL AGENT
`
`Legal Entity Type: CORPORATION
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Address: 225 W. WASHINGTON ST., 9TH FLOOR
`CHICAGO, ILLINOIS 60606
`
`Correspondent
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`JAVIER J. RAMOS
`
`1850 K STREET, NW, SUITE 1100
`MILBANK, LLP
`WASHINGTON, DC 20006
`
`Conveyance: RELEASE BY SECURED PARTY
`
`Reel/Frame: 6609/0949
`
`Date Recorded: Apr. 04, 2019
`
`Supporting
`Documents:
`
`assignment-tm-6609-0949.pdf
`
`Domestic Representative - Not Found
`
`Assignment 5 of 5
`
`Pages: 8
`
`Name: GOLDMAN SACHS LENDING PARTNERS LLC,
`AS COLLATERAL AGENT
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Assignor
`
`Execution Date: Mar. 28, 2019
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Assignee
`
`

`

`Name: NANDORF, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 11400 S.E. 6TH STREET, SUITE 220
`BELLEVUE, WASHINGTON 98004
`
`Name: TVI, INC.
`
`Legal Entity Type: CORPORATION
`
`Address: 11400 S.E. 6TH STREET, SUITE 220
`BELLEVUE, WASHINGTON 98004
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`JAVIER J. RAMOS
`
`1850 K STREET, NW, SUITE 1100
`MILBANK, LLP
`WASHINGTON, DC 20006
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Correspondent
`
`Domestic Representative - Not Found
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`3
`
`Proceeding
`Number:
`
`91244628
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`GEOFFREY MCNUTT
`
`Type of Proceeding: Opposition
`
` 
`
`Filing Date: Nov 07, 2018
`
`Status Date: Jul 21, 2020
`
`Defendant
`
`Name: Deal Zone I, Inc. DBA Deal Zone I, Inc.
`
`Correspondent
`Address:
`
`AMJAD SALEM
`DEAL ZONE I INC
`720 FRELINGHUYSEN AVE
`NEWARD NJ UNITED STATES , 07114
`
`dealsforless1221@gmail.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`UNIQUE STYLES
`
`Name: TVI, Inc., and Nandorf, Inc.
`
`Correspondent
`Address:
`
`GRACE HAN STANTON
`PERKINS COIE LLP
`1201 THIRD AVE STE 4900
`SEATTLE WA UNITED STATES , 98101
`
`Application Status
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Serial
`Number
`
`87798225
`
`Registration
`Number
`
`Correspondent e-
`mail:
`
`Associated marks
`
`GStanton@perkinscoie.com , pctrademarks@perkinscoie.com , KLarson@perkinscoie.com , tbrandon@perkinscoie.com
`
`Mark
`
`UNIQUE
`
`UNIQUE THRIFT STORE
`
`RESTYLE
`
`RESTYLE STORE
`
`Application Status
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`REGISTERED AND RENEWED
`
`RECYCLE, REUSE, RESTYLE
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Prosecution History
`
`Serial
`Number
`
`Registration
`Number
`
`77942278
`
`77942265
`
`85727380
`
`78885677
`
`85618881
`
`3942864
`
`3918819
`
`4334352
`
`3293933
`
`4264176
`
`

`

`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`NOTICE OF DEFAULT
`
`ANSWER
`
`D MOT TO SET ASIDE NOD
`
`P OPP/RESP TO MOTION
`
`P PROOF OF SERVICE FOR DOCKET # 7
`
`P AMENDED PROOF OF SERVICE
`
`P AMENDED CERTIFICATE OF SERVICE
`
`SUSP PEND DISP OF OUTSTNDNG MOT
`
`PROCEEDINGS RESUMED
`
`P MOT FOR EXT W/ CONSENT
`
`P APPEARANCE / POWER OF ATTORNEY
`
`P MOT FOR EXT W/ CONSENT
`
`EXTENSION OF TIME GRANTED
`
`P MOT TO JOIN/SUBSTITUTE PARTY
`
`P MOT TO COMPEL DISCOVERY
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`Due Date
`
`Dec 17, 2018
`
`Date
`
`Nov 07, 2018
`
`Nov 07, 2018
`
`Nov 07, 2018
`
`Dec 27, 2018
`
`Jan 03, 2019
`
`Jan 03, 2019
`
`Jan 21, 2019
`
`Jan 23, 2019
`
`Jan 23, 2019
`
`Jan 23, 2019
`
`Apr 01, 2019
`
`May 31, 2019
`
`Jun 27, 2019
`
`Jul 29, 2019
`
`Aug 29, 2019
`
`Aug 29, 2019
`
`Sep 30, 2019
`
`Oct 29, 2019
`
`Nov 11, 2019
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`D OPP/RESP TO MOTION
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`P MOT TO SUSP W/ CONSENT PEND SETTL NEGOTIATIONS
`
`STIP FOR EXT
`
`SUSPENDED
`
`D REQ TO W/DRAW AS ATTORNEY
`
`RESPONSE DUE 30 DAYS (DUE DATE)
`
`RESPONSE DUE 30 DAYS (DUE DATE)
`
`BD DECISION: OPP SUSTAINED
`
`TERMINATED
`
`Nov 25, 2019
`
`Jan 22, 2020
`
`Mar 09, 2020
`
`Mar 16, 2020
`
`Apr 13, 2020
`
`Apr 21, 2020
`
`Jun 09, 2020
`
`Jul 21, 2020
`
`Jul 21, 2020
`
`May 21, 2020
`
`Jul 09, 2020
`
`Proceeding
`Number:
`
`91243443
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`CHRISTEN M ENGLISH
`
`Type of Proceeding: Opposition
`
`Filing Date: Sep 05, 2018
`
`Status Date: Dec 13, 2018
`
`Defendant
`
`Name: Kraig Cole
`
`Correspondent
`Address:
`
`KRAIG COLE
`UNIQUED
`2068 MARSH DRIVE
`MANITOU BEACH MI UNITED STATES , 49253
`
`KraigCole73@mailovo.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`UNIQUED
`
`Application Status
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Serial
`Number
`
`87807766
`
`Registration
`Number
`
`Name: TVI, Inc.
`
`Correspondent
`Address:
`
`DON DASCENZO
`INSLEE BEST DOEZIE & RYDER PS
`10900 NE 4TH STREET, SUITE 1500
`BELLEVUE WA UNITED STATES , 98004
`
`Correspondent e-
`mail:
`
`Associated marks
`
`ddascenzo@insleebest.com , jkovalenko@insleebest.com , cchambers@insleebest.com , lantoon@insleebest.com
`
`

`

`Mark
`
`UNIQUE
`
`UNIQUE THRIFT STORE
`
`Application Status
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Prosecution History
`
`Serial
`Number
`
`77942278
`
`77942265
`
`Registration
`Number
`
`3942864
`
`3918819
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`NOTICE OF DEFAULT
`
`BD DECISION: OPP SUSTAINED
`
`TERMINATED
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`Due Date
`
`Oct 15, 2018
`
`Date
`
`Sep 05, 2018
`
`Sep 05, 2018
`
`Sep 05, 2018
`
`Oct 25, 2018
`
`Dec 13, 2018
`
`Dec 13, 2018
`
`Proceeding
`Number:
`
`91243411
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`MARY CATHERINE FAINT
`
`Type of Proceeding: Opposition
`
`Filing Date: Sep 04, 2018
`
`Status Date: Dec 13, 2018
`
`Defendant
`
`Name: Kraig Cole
`
`Correspondent
`Address:
`
`KRAIG COLE
`UNIQUED
`2068 MARSH DRIVE
`MANITOU BEACH MI UNITED STATES , 49253
`
`Correspondent e-
`mail:
`
`Associated marks
`
`KraigCole73@mailovo.com
`
`Mark
`
`UNIQUED
`
`Application Status
`
`Abandoned - After Inter-Partes Decision
`
`Plaintiff(s)
`
`Serial
`Number
`
`87807766
`
`Registration
`Number
`
`Name: TVI, Inc.
`
`Correspondent
`Address:
`
`CURTIS CHAMBERS
`INSLEE BEST DOEZIE & RYDER PS
`10900 NE 4TH STREET, SUITE 150
`BELLEVUE WA UNITED STATES , 98004
`
`Correspondent e-
`mail:
`
`Associated marks
`
`ddascenzo@insleebest.com , jkovalenko@insleebest.com , cchambers@insleebest.com , lantoon@insleebest.com
`
`Mark
`
`UNIQUE
`
`UNIQUE THRIFT STORE
`
`Application Status
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Prosecution History
`
`Serial
`Number
`
`77942278
`
`77942265
`
`Registration
`Number
`
`3942864
`
`3918819
`
`Entry Number
`
`History Text
`
`FILED AND FEE
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`PENDING, INSTITUTED
`
`NOTICE OF DEFAULT
`
`BD DECISION: OPP SUSTAINED
`
`TERMINATED
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`Due Date
`
`Oct 14, 2018
`
`Date
`
`Sep 04, 2018
`
`Sep 04, 2018
`
`Sep 04, 2018
`
`Oct 24, 2018
`
`Dec 13, 2018
`
`Dec 13, 2018
`
`

`

`TVI/NANDORF
`EXHIBIT B
`
`TVI, Inc. and Nandorf, LLC
`v.
`Jessie D. Martinez
`
`Application Serial No. 88654251
`
`

`

`Md 11211
`mutter: étatea' iBatent anti flirahemark @ffine
`
`It}?
`
`UNIQUE THRIFT STORE
`
`Reg. No. 3,918,819
`
`Registered Feb. 15, 2011
`
`Int. Cl.: 35
`
`NANDORF, INC. (WASHINGTON CORPORATION)
`4301 MIDLOTHIAN TURNF KE
`CRESTWOOD, IL 60445
`
`
`
`
`FOR: THRIFT STORES FEATURING USED CLOTHING AND HOUSEHOLD GOODS ORI-
`GINATING FROM CIIARITIES AND DONORS, IN CLASS 35 (US CLS. 100, 101 AND 102).
`
`SERVICE MARK
`
`
`FIRST USE 0-0-1969; IN COMMERCE 0-0-1978.
`
`PRINCIPAL REGISTER
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
`TICULAR FONT, STYLE SIZE, OR COLOR.
`
`
`
`
`
`
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "THRIFT SIOR1”, APART
`F {OM THE MARK AS SHOWN.
`
` SER. NO. 77-942,265, FILED 2-23-2010.
`
`KATHERINE CONNOLLY, EXAMINING ATTORNEY
`
`
`
`Director ofme United Shuts l’ulem and Trademark Office
`
`

`

`Generated on: This page was generated by TSDR on 2020-09-22 12:30:15 EDT
`
`Mark: UNIQUE THRIFT STORE
`
`US Serial Number: 77942265
`
`US Registration
`Number:
`
`3918819
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Feb. 23, 2010
`
`Registration Date: Feb. 15, 2011
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Sections 8 and 15 combined declaration has been accepted and acknowledged.
`
`Status Date: Mar. 28, 2017
`
`Publication Date: Nov. 30, 2010
`
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`UNIQUE THRIFT STORE
`
`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
`
`Disclaimer: "THRIFT STORE"
`
`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: thrift stores featuring used clothing and household goods originating from charities and donors
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: 1969
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Owner Name: NANDORF, LLC
`
`U.S Class(es): 100, 101, 102
`
`Use in Commerce: 1978
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Address: 11400 SE 6TH STREET, SUITE 200
`BELLEVUE, WASHINGTON UNITED STATES 98044
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`WASHINGTON
`
`Attorney/Correspondence Information
`
`Attorney Name: Grace Han Stanton
`
`Docket Number: 125177-4006
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`pctrademarks@perkinscoie.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Grace Han Stanton
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WASHINGTON UNITED STATES 98101
`
`Phone:
`
`(206) 359-8000
`
`Fax:
`
`(206) 359-9000
`
`Correspondent e-
`mail:
`
`pctrademarks@perkinscoie.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Feb. 15, 2020
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Aug. 19, 2019
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Aug. 19, 2019
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Apr. 10, 2019
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Mar. 29, 2019
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Mar.