Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1136370
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`Filing date:
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`05/26/2021
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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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`91267629
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`Party
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`Correspondence
`Address
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`Defendant
`Critical Role LLC
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`MARK A WATKINS
`VORYS SATER SEYMOUR AND PEASE LLP
`PO BOX 2255
`COLUMBUS, OH 43216-2255
`UNITED STATES
`Primary Email: iplaw@vorys.com
`Secondary Email(s): bjjustice@vorys.com
`No phone number provided.
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`Submission
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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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`Other Motions/Submissions
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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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`05/26/2021
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`Attachments
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`Motion to Amend Application.pdf(174370 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Leaf Trading, LLC
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`Critical Role LLC
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`Opposer,
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`Applicant.
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`Opposition No. 91267629
`Application Serial No. 88/924,610
`Mark: MOLLYMAUK TEALEAF
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`JOINT MOTION TO AMEND RECITATION OF GOODS
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`Applicant, Critical Role LLC, and Opposer, Leaf Trading, LLC, hereby move to amend the
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`recitation of goods in the opposed Application Serial No. 88/924,610 for the mark MOLLYMAUK
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`TEALEAF in International Classes 16 and 28 as follows:
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`Class 16: Printed publications, namely, books in the fields of fantasy, fiction, animated cartoons
`and role playing games; printed publications, namely, magazines and printed periodicals in the
`field of role playing, fantasy, and animation; posters; stickers; decals; bumper stickers; post cards;
`trading cards other than for games provided that such trading cards are only in the fields of
`fantasy, role playing and fictional characters and excluding all sports trading cards and any
`trading cards depicting non-fictional persons or personalities; note cards; sketch books; comic
`books; greeting cards; lithographs; newsletters about fantasy, role playing, games, animation and
`fiction; journals in the field of fantasy, role playing, games, animation and fiction; manuals in the
`field of fantasy, role playing, games, animation and fiction; book covers; folders; loose-leaf and
`ring binders; notebooks; art and craft clay, paint and paper kits; pens; pencils; paperweights;
`pictures; wrapping paper.
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`SGR/24927544.1
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`Class 28: Toys, namely, action figures and accessories therefore, dolls, modeled plastic toy
`figurines, puppets, board games, decorative ornaments, namely, Christmas tree ornaments, plush
`toys, playing cards depicting non-sports fictional persons and personalities, toy balloons, toy
`and scale model vehicles, scale model toy kits, theatrical masks, trading cards for games provided
`that such trading cards are only in the fields of fantasy, role playing and fictional characters,
`and excluding all sports trading cards and any trading cards depicting non-fictional persons
`or personalities, dice, cups for dice.
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`Applicant and Opposer have reached a settlement of this dispute, and have entered into a
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`Trademark Coexistence and Consent Agreement dated as of May 25, 2021 (the “Agreement”)
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`and, as a result, the parties are hereby requesting that the Opposition be suspended pending (i) the
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`PTO’s acceptance of the Agreement and removal by the PTO of Application Serial No. 88/924,610
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`for the mark “MOLLYMAUK TEALEAF” as a bar to the registration of Application Serial No.
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`90/030,433 for the mark “LEAF” Application and (ii) the Trademark Trial and Appeal Board’s
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`acceptance of the foregoing amendments to Application Serial No. 88/924,610 for the mark
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`“MOLLYMAUK TEALEAF”.
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`The parties believe that entry of this amendment will alleviate Opposer’s concerns
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`regarding likelihood of confusion and will resolve this dispute. Accordingly, the parties
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`respectfully request that the amendment be entered and that the Opposition be suspended pending
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`the PTO’s acceptance of the Agreement and removal by the PTO of Application Serial No.
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`88/924,610 for the mark “MOLLYMAUK TEALEAF” as a bar to the registration of Application
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`Serial No. 90/030,433 for the mark “LEAF” Application.
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`SGR/24927544.1
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`This 26 day of May, 2021.
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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 44308
`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 Critical Role LLC
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`SMITH, GAMBRELL & RUSSELL, LLP
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`s/ Danielle Comanducci
`Danielle Comanducci
`1301 Avenue of the Americas,
`21st Floor
`New York, NY 10019
`Tel: 646-887-9522
`Fax: 646-887-8154
`Email: dcomanducci@sgrlaw.com
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`Attorney for Leaf Trading, LLC
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`SGR/24927544.1
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on May 26, 2021, a true and correct copy of the
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`foregoing JOINT MOTION TO AMEND RECITATION OF GOODS was served upon counsel
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`for Opposer by email to dcomanducci@sgrlaw.com
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`/William E. Ryan/
`William E. Ryan
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`106 S. Main Street #1100
`Akron, Ohio 44308
`Phone: (330) 208-1000
`Fax: (330) 208-1001
`E-mail: weryan@vorys.com
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`SGR/24927544.1
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