Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1151101
`08/04/2021
`
`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 party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Admar International, Inc.
`
`Granted to Date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`08/04/2021
`
`3030 AURORA AVENUE
`MONROE, LA 71201
`UNITED STATES
`
`ROBERT M. CHIAVIELLO, JR.
`NUBYLAW
`3030 AURORA AVENUE
`MONROE, LA 71201
`UNITED STATES
`Primary Email: bobc@nuby.com
`Secondary Email(s): carleyl@nuby.com
`318-410-4012
`
`Docket Number
`
`Applicant Information
`
`Application No.
`
`90233027
`
`Publication date
`
`04/06/2021
`
`Opposition Filing
`Date
`
`Applicant
`
`08/04/2021
`
`Opposition Peri-
`od Ends
`
`08/04/2021
`
`Noobie, LLC
`6802 GARDEN TERRACE ROAD
`COLUMBUS, OH 43229
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 0 First Use In Commerce: 0
`All goods and services in the class are opposed, namely: Online marketplace for college studentsto
`buy, sell and rent items to other students; Online marketplace for transactions of goods and services
`between college students; Online marketplace where college students can buy, rent, and sell items
`such as textbooks, apparel, and furniture
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`
`2335700
`
`Application Date
`
`04/20/1999
`
`

`

`No.
`
`Registration Date
`
`03/28/2000
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`U.S. Application
`No.
`
`NONE
`
`Class 010. First use: First Use: 1998/01/01 First Use In Commerce: 1998/01/01
`Infant Pacifier(s)
`
`90677181
`
`Application Date
`
`04/28/2021
`
`Registration Date
`
`NONE
`
`Word Mark
`
`Design Mark
`
`NUBY
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 035. First use: First Use: 2008/12/05 First Use In Commerce: 2008/12/05
`On-line retail store services featuringproducts for babies, children and care
`givers; The bringing together, for the benefit of others, of products for babies,
`children and care givers, excluding the transport thereof, enabling customers to
`conveniently view and purchase those goods by means of on-line retail stores
`
`Attachments
`
`75687481#TMSN.png( bytes )
`90677181#TMSN.png( bytes )
`Noobie - US Opposition- Reg No - Petition - Final.pdf(235041 bytes )
`
`Signature
`
`/Robert M. Chiaviello, Jr./
`
`Name
`
`Date
`
`ROBERT M. CHIAVIELLO, JR.
`
`08/04/2021
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In the Matter of Application No. 5,801,066
`
`For the Mark: NOOBIE
`
`
`
`
`ADMAR INTERNATIONAL, INC.,
`
`
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`
`
`Petitioner,
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`
`
`Opposition No. _________
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`NOOBIE, LLC,
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`v.
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`Respondent.
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`Admar International, Inc., Petitioner, a corporation organized and existing under the laws
`
`of Delaware with a principal place of business at 3030 Aurora Avenue, Monroe, LA 71201,
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`believes that it will be damaged by the issuance of U.S. Trademark Application No. 90/233,027
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`for the mark NOOBIE, and hereby opposes the NOOBE application pursuant to Section 14(1) of
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`the Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. § 1064(1).
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`As grounds for cancellation, Petitioner alleges as follows:
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`1. Petitioner is in the business of owning and licensing intellectual property.
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`2. Petitioner is the owner of the twelve U.S. Trademark Registrations and four U.S.
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`Trademark Applications for the word mark NUBY in the various international classes and
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`for the various goods and services as set out in the chart attached as Exhibit A.
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`1
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`

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`3. Petitioner has licensed the NUBY word mark in interstate commerce in the United States
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`to Luv n’ care, Ltd., continuously since January 1, 1998 for use in connection with the sale
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`and distribution of products that are sold online and in traditional bricks and mortar retail
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`channels throughout the United States. All good will associated with the use of the NUBY
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`mark accrues to the benefit of Petitioner.
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`4. As a result of the widespread, continuous, and exclusive use of the NUBY mark throughout
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`the United States identifying Petitioner as their ultimate source, Petitioner owns valid and
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`subsisting federal statutory and common law rights to the NUBY mark.
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`5. Petitioner’s NUBY mark is distinctive to both the consuming public and Petitioner’s trade.
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`6. Petitioner and Petitioner’s licensee have expended substantial time, money and resources
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`marketing and promoting products sold under the NUBY mark throughout the United
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`States including the use of point of purchase materials, displays and social media.
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`7. The products Petitioner has licensed under the NUBY mark are of high quality
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`encompassing attractive and unique product designs and are constructed of high-quality
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`materials using state of the art manufacturing. Petitioner has at all times exercised control
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`over the quality of the products licensed for use under the NUBY mark to insure that they
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`are of the highest quality.
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`8. Upon information and belief, Respondent, Noobie, LLC, an Ohio limited liability
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`company with an address of 6802 Garden Terrace Road, Columbus, Ohio, 43229, is the
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`current listed owner of Application No. 90/233,027 for the mark NOOBIE in connection
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`with Online marketplace for college students to buy, sell and rent items to other students;
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`Online marketplace for transactions of goods and services between college students; Online
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`marketplace where college students can buy, rent, and sell items such as textbooks, apparel,
`
`
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`2
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`

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`and furniture in International Class 35. That trademark application was filed on August
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`31, 2017, was issued on October 2, 2020. The application was filed as an Intent-to-Use
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`application.
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`9. Petitioner’s NUBY mark has priority over Respondent’s application because Petitioner’s
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`first-use date of the NUBY mark predates the filing date of Respondent’s application or
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`any other date on which the Respondent may rely for purposes of priority.
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`10. Respondent’s mark when spoken or used verbally is so like Petitioner’s NUBY mark as to
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`be likely to cause confusion, mistake, or deceive consumers into believing that
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`Respondent’s goods and services originate from, are sponsored or endorsed by or are
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`somehow associated with Petitioner.
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`11. The goods and services covered by Respondent’s Application are used in connection with
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`products identical to the products Petitioner offers under its NUBY mark and covered by
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`Petitioner’s trademark registrations and applications. The products Petitioner offers under
`
`its NUBY mark are sold within the same channels of trade as those covered by
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`Respondent’s Application.
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`12. Respondent’s Trademark Application No. 90/233,027 is unrestricted as to consumers or
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`trade channels. As such, it is presumed that Respondent’s goods and services identified in
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`the challenged application are sold to ordinary consumers of products identical to goods
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`and services sold under Petitioner’s mark and travel in all ordinary trade channels through
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`which Petitioner’s licensee sells its products under the NUBY mark.
`
`GROUND FOR OPPOSITION –
`PRIORITY AND LIKELIHOOD OF CONFUSION
`
`
`13. Respondent’s Application should be refused because Petitioner’s dates of first use and first
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`use in commerce are long before any date upon which Respondent can rely and it consists
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`3
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`

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`of a mark which is verbally identical to Petitioner’s previously used NUBY mark as to be
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`likely, when used in connection with Respondent’s goods and services, to cause confusion,
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`mistake, or deception, and to cause damage to Petitioner thereby.
`
`WHEREFORE, Petitioner respectfully requests that
`
`Respondent’s Trademark Application No. 90/233,027 be cancelled.
`
`Respectfully submitted this 6th day of August 2021,
`
`_/s/Robert M. Chiaviello Jr._____
`Robert M. Chiaviello, Jr.
`NubyLaw
`New York Bar No. 2148687
`Texas Bar No. 04190720
`3030 Aurora Avenue
`Monroe, LA 71201
`(318) 410-4012
`bobc@nuby.com
`
`Attorney for Petitioner Admar International, Inc.
`
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`4
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`EXHIBIT A
`EXHIBIT A
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`
`
`5
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`

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`Nuby Word Mark Registrations and Applications
`
`Class
`
`Reg./Ser.
`Number
`88634179 3
`
`6,097,906 5
`
`Goods
`
`Baby bubble bath; Baby hair conditioner; Baby hand soap; Baby lotion;
`Baby oil; Baby oils; Baby powder; Baby powders; Baby shampoo; Baby
`sun creams; Baby wipes impregnated with cleaning preparations; Body
`cream; Body cream soap; Body creams; Body lotion; Body lotions; Body
`oil; Body oils; Body powder; Body scrub; Body scrubs; Body sprays; Body
`wash; Dish detergents; Face creams; Laundry detergent; Laundry
`detergents; Laundry fabric conditioner; Laundry soap; Lip balm; Lip balm;
`Lip cream; Moisturizing creams; Moisturizing creams; Moisturizing
`preparations for the skin; Shampoo-conditioners; Shampoos; Cases for baby
`wipes impregnated with cleaning preparations; Deodorants for body care;
`Disposable wipes impregnated with cleaning chemicals or compounds for
`industrial and commercial use; Face and body beauty creams; Face and
`body creams; Face and body lotions; Facial moisturizers; Hair shampoo;
`Hair shampoos and conditioners; Hand cleaning gels; Hand cleaners; Liquid
`laundry detergents; Liquid soaps for laundry; Lotions for face and body
`care; Moisturizing body lotions; Nasal cleaning preparations for personal
`sanitary purposes; Non-medicated lip balm that does not contain beeswax;
`Non-medicated lip balms; Non-medicated lip care preparations; Non-
`medicated balms for use on lips; Non-medicated herbal body care products,
`namely, body oils, salves, and lip balms; Non-medicated lotions for body;
`Non-medicated skin care preparation, namely, body mist; Non-medicated
`soaps for babies; Non-medicated soaps for babies; Powder laundry
`detergents; Pre-moistened towelettes impregnated with a detergent for
`cleaning; Scented body lotions and creams; Shampoos for babies; Skin
`moisturizer; Skin moisturizing gel; Skin care preparations, namely, body
`balm; Skin cleanser in liquid spray form for use as a baby wipe alternative;
`Tooth cleaning preparations
`Aloe Vera gel for therapeutic purposes; Aloe Vera preparations for
`therapeutic purposes; Anti-bacterial soap; Anti-cough drops; Anti-
`inflammatories; Anti-inflammatory and antipyretic preparations; Anti-
`inflammatory gels; Anti-inflammatory ointments; Anti-inflammatory
`salves; Anti-inflammatory sprays; Anti-itch cream; Anti-itch ointment;
`Antibacterial hand
`lotions; Antibacterial hand soaps; Antibacterial
`handwash; Antibacterial handwashes; Antibacterial
`liquid
`soap;
`Antibacterial liquid soaps; Antibacterial skin soaps; Antibacterial soap;
`Antibacterial spray; Antibacterial wipes; Babies' diaper-pants; Babies'
`diapers; Babies' diapers of paper; Babies' napkin-pants; Babies' napkins;
`Babies' swim diapers; Baby diapers; Baby food; Baby foods; Breast pads;
`Calamine lotion; Disposable sanitizing wipes; Disposable training pants;
`Hemorrhoid preparations; Hemorrhoid preparations; Hemorrhoid treatment
`preparations; Hemorrhoidal ointments; Herbal supplements; Homeopathic
`supplements; Hydrocortisone cream; Infant cloth diapers; Infant diaper
`
`
`
`6
`
`

`

`covers; Infant formula; Insect repellents; Insect repellents in pre-moistened
`towelette form; Insect-repellents; Kits comprised primarily of sanitizer gel
`and disinfecting wipes and also including sanitary masks, plastic gloves and
`hand cream used for germ prevention; Mentholated ointment for medical
`use; Mercurial ointments for medical use; Nail fungus treatment
`preparations; Non-medicated topical gel for the prevention and treatment of
`allergies; Non-medicated topical gel for the prevention and treatment of
`cold and flu; Nursing pads; Nutritional supplements; Nutritional
`supplements, namely, probiotic compositions; Pharmaceutical skin lotions;
`Preparations for repelling animals, birds and insects; Teething gels; Topical
`dermatological preparations that treat insect bites and stings; Topical first
`aid gel; Topical gel for medical and therapeutic treatment of diaper rash;
`Wearable insect repelling devices for attachment to clothing sold pre-filled
`with insect repelling preparations; Anti-insect spray; Bracelets impregnated
`with insect repellent; Breast-nursing pads; Dietary and nutritional
`supplements; Disposable baby diapers; Disposable swim diapers for
`children and infants; First aid kits; First aid kits for domestic or other non-
`professional use; Food for babies; Food for infants; Food for infants,
`namely, human breast milk; Gels, creams and solutions for dermatological
`use; Homeopathic anti-inflammatory ointment; In vitro gender prediction
`test kit; In-vitro ovulation prediction test kit for home use; Liquid herbal
`supplements; Liquid nutritional supplement; Medicated baby oils;
`Medicated baby powders; Medicated cream soap; Medicated creams for
`treating dermatological conditions; Medicated shampoos for babies;
`Medicated skin care preparations, namely, creams, lotions, gels, toners,
`cleaners and peels; Medicated soaps for babies; Medicated supplements for
`foodstuffs for babies; Medicinal creams for skin care; Mineral nutritional
`supplements; Mosquito-repellent patches
`for babies; Multipurpose
`medicated antibiotic cream, analgesic balm and mentholated salve; Nappies
`as baby diapers; Natural herbal supplements; Ovulation test kits; Powdered
`milk for babies; Pregnancy test kits for home use; Preparations to prevent
`nail-biting and thumb-sucking; Tissues impregnated with antibacterial
`preparations; Topical analgesic creams
`Electric food blenders; Electric food blenders; Electric food choppers;
`Electric food grinders; Electric food processors; Electric food slicers;
`Electric fruit peelers; Electric fruit presses; Electric fruit squeezers ; Electric
`juice extractors; Electric juicers; Electric mixers; Electric mixers ; Electrical
`juice extractors for fruit; Electrical squeezers for fruit and vegetable; Food
`processors, electric; Fruit presses, electric; Hand-held electric-powered
`food processors; Juice extractors, electric; all of the foregoing for household
`use
`Emery boards; Fingernail clippers; Flatware, namely, forks, knives, and
`spoons; Manicure sets; Nail clippers; Nail scissors; Tableware, namely,
`knives, forks and spoons; Disposable tableware, namely, knives, forks and
`spoons; Disposable tableware, namely, spoons; Forks and spoons being
`tableware; Forks being tableware; Knives being tableware; Knives, forks,
`
`88634601 7
`
`6,103,677 8
`
`
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`7
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`

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`and spoons being tableware; Spoons being tableware; Spoons made of
`precious metal being tableware
`Infant Pacifiers
`Babies' bottles; Baby bottle nipples; Baby bottle that plays sounds using
`wireless technology; Baby bottles; Baby feeding dummies; Baby feeding
`pacifiers; Baby nursers; Breast milk storage bottles; Breast pumps; Breast
`shields; Breast warmer pads for medical purposes; Dropper bottles for
`administering medication, sold empty; Droppers for administering
`medication, sold empty; Feeding bottle teats; Feeding bottles; Gum
`massaging instruments; Nasal aspirators; Nursing bottles; Pacifier clips;
`Pacifier cloth for attachment to infant pacifiers; Spoons for administering
`medicine; Teething
`rings; Thermometers
`for medical purposes;
`Thermometers for medical use; Bottle holders for holding babies' bottles,
`namely, holders for holding babies' bottles during feeding in the nature of
`flexible braces for wearing around the neck of the person holding a feeding
`baby; Bottle holders for holding babies' bottles, namely, holders for holding
`babies' bottles in the nature of rigid braces for clamping to babies' seats
`during feeding; Clinical thermometers; Clips for pacifiers; Cups adapted for
`feeding babies and children; Dishes adapted for feeding babies and children;
`Disposable baby bottle liners; Disposable feeding bottle teats; Disposable
`teats being pacifiers for babies; Dummies for babies; Ear thermometers;
`Fever thermometers; Gum massagers for babies; Infrared thermometers for
`medical purposes; Nipples for baby bottles; Pacifiers for babies; Pouches
`specially adapted for holding pacifiers; Teats being pacifiers for babies;
`Teething rings incorporating baby rattles
`
`Baby bottle sterilizers; child safe protective covers for bathtub spouts;
`electric warmers for feeding bottles; toilet trainer seats, namely, smaller
`training seats for attachment to full-size toilets and toilet seats for training
`purposes; electric heaters for babies' bottles; heaters, electric, for feeding
`bottles; toilet bowls for children; toilet seat adaptors for children in the
`nature of a plastic device that is specially adapted to rest on a toilet seat;
`toilet seats for children
`Child restraints for vehicle seats; Child safety harnesses for vehicle seats;
`Children's safety belts for use in vehicles; Cup holders for use in
`automobiles; Cup holders for use in vehicles; Cup holders for vehicles; Seat
`safety harnesses for motor cars; Stroller covers; Stroller hoods; Aftermarket
`automobile accessories, namely, car interior organizer bags, nets and trays
`specially adapted for fitting in vehicles; Baby strollers; Bags adapted for
`strollers; Blankets specially adapted for baby strollers; Canopies for baby
`strollers; Car interior organizer bags specially adapted for fitting in vehicles;
`Covers for baby strollers; Fitted car seat covers; Fitted stroller mosquito
`nets; Fitted covers for children's car seats; Vehicle seat cushions; Vehicle
`seat protectors.
`Baby books, Illustrations, Prints, Art prints; Art prints on canvas, Children’s
`books; Children’s activity books; Children’s interactive educational books;
`
`8
`
`2,335,700 10
`6,103,678 10
`
`6,429,010 11
`
`6,118,908
`
`
`12
`
`6,259,435 16
`
`
`
`

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`6,441,853 20
`
`6,441,854 21
`
`6,412,058 22
`
`6,103,679 24
`6,412,059 25
`
`Color prints; Flip books; Graphic prints; Graphic prints and representations;
`Memory boxes; namely, cardboard boxes containing cardboard cards for
`displaying and storing babies and children keepsakes and mementos;
`Pictorial prints; Picture books, Printed stories in illustrated form; Story
`books.
`Baby bouncers; Baby changing mats; Baby changing platforms; Baby
`walkers; Booster seats; Bottle racks; Clothes hangers; Bath seats for babies;
`Cots for babies; Cribs for babies; Furniture primarily of metal, namely,
`mirrors, bed frames, dining tables, coffee tables, end tables, desks, display
`cases, shelving, dog gates, and baby gates; Hangers for clothes; High chairs
`for babies; Non-metal safety gates for babies, children, and pets; Plastic
`bottle caps for storing powdered nutritional supplements and for dispensing
`those supplements into the bottle; Playpens for babies; Portable baby bath
`seats for use in bath tubs
`Baby bathtubs; Combs; Electric tooth brushes; Hair brushes; Hair, nail and
`tooth brushes; Hairbrushes; Infant bathtubs; Plastic bath racks; Plastic
`bathtubs for children; Potties for children; Tooth brushes; Toothbrush cases;
`Toothbrush holders; Electric toothbrush replacement heads; Electric
`toothbrushes; Electrical
`toothbrushes; Finger
`toothbrushes; Finger
`toothbrushes for babies; Hair combs; Home dental care product for babies
`and children's gums and teeth, namely, finger brushes; Interdental brushes
`for cleaning the teeth; Manual toothbrushes; Oral care kit comprising
`toothbrushes and floss; Portable potties for children; Powder applicator sold
`empty for holding and dispensing baby powder; Tooth brushes, non-
`electric; Toothbrushes; Toothbrushes, electric
`Bath toy organizers in the nature of net bags secured by suction cups; Multi-
`strand lanyard used to attach a child's toys, bottles, books, sippy cup and
`other similar items to a stroller, car seat, high chair, store cart or other
`similar apparatus
`Children's towels
`Babies' pants; Babies' trousers; Baby bibs not of paper; Baby bodysuits;
`Baby bottoms; Baby tops; Children's and infant's apparel, namely, jumpers,
`overall sleepwear, pajamas, rompers and one-piece garments; Children's
`and infants' apparel treated with fire and heat retardants, namely, jumpers,
`overall sleepwear, pajamas, rompers and one-piece garments; Children's
`and infants' cloth bibs; Children's cloth eating bibs; Children's headwear;
`Children's underwear; Bibs for babies, sleeved, not of paper; Body suits for
`babies or children; Bottoms as clothing for babies or children; Clothing for
`babies, toddlers and children, treated with fire and heat retardants, namely,
`pajamas, jackets, shirts, pants, jumpers; Coats for babies or children;
`Dresses for babies or children; Hats for infants, babies, toddlers and
`children; Headwear for babies or children; Jackets for babies or children;
`Knitted baby shoes; One-piece garments for children; Pajamas for babies or
`children; Pants for babies or children; Plastic baby bibs; Shirts for infants,
`babies, toddlers and children; Shirts for babies or children; Shoes for babies
`or children; Shorts for babies or children
`
`
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`9
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`

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`Baby gyms; Baby multiple activity toys; Baby rattles; Baby rattles
`incorporating teething rings; Baby swings; Mobiles for children; Play balls;
`Toy animals; Toy animals and accessories therefor; Toy jewelry; Toy
`stuffed animals; Toy vehicles; Bath toys; Bathtub toys; Carry bags sold
`filled with children's toys; Children's multiple activity toys; Crib mobiles;
`Crib toys; Decorative toy mobiles and plush toys for children made of felt;
`Infant toys; Infant action crib toys; Infant development toys; Musical toys;
`Plastic character toys; Play mats containing infant toys; Plush toys; Plush
`toys with attached comfort blanket; Soft sculpture plush toys; Squeezable
`squeaking toys; Squeeze toys; Stuffed toy animals; Stuffed toy bears;
`Stuffed toys; Stuffed and plush toys; Toy mobiles; Toy musical boxes; Two
`and three dimensional positionable toy figures sold as a unit with other toys;
`Water toys; Water squirting toys; Water-squirting toys
`
`On-line retail store services featuring products for babies, children and care
`givers; The bringing together, for the benefit of others, of products for
`babies, children and care givers, excluding the transport thereof, enabling
`customers to conveniently view and purchase those goods by means of on-
`line retail stores
`
`
`88634623 28
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`90677181 35
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`10
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