Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA Tracking number:
`ESTTA1292516
`06/21/2023
`
`Filing date:
`
`Proceeding no.
`Party
`
`Correspondence
`address
`
`Submission
`Filer's name
`Filer's email
`Signature
`Date
`Attachments
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91275573
`Defendant
`MNS USA, LLC
`WENDY PETERSON
`NOT JUST PATENTS LLC
`1248 VICTORIA ST N
`ST. PAUL, MN 55117
`UNITED STATES
`Primary email: wsp@njpls.com
`Secondary email(s): wspnjpls@gmail.com
`651-500-7590
`Testimony For Defendant
`Wendy Peterson
`wsp@njpls.com
`/Wendy Peterson/
`06/21/2023
`Defendant Trial Testimony Declaration 91275573.pdf(73713 bytes )
`All exhibits for declaration_Optimized.pdf(2401259 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposition No. 91275573
`Serial No. 90563164 Mr. Nice
` Published: Dec. 14, 2021
`
`
`Equinox International Holdings Limited
`v.
`MNS USA LLC
`
`
`
`DEFENDANT’S TRIAL TESTIMONY DECLARATION 91275573-EVAN MATSUMOTO
`
`
`
`1. I, Evan Matsumoto, declare that I am the CEO for MNS USA LLC (hereinafter “MNS
`
`USA”), the defendant and counterclaimant in this proceeding, and am authorized to make this
`
`declaration on behalf of said defendant. I declare further that these statements were made with the
`
`knowledge that willful false statements and the like are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code, and that such willful false statements may
`
`jeopardize the validity of this registration.
`
`2. I certify that the attached exhibit webpages were downloaded from the internet on the dates
`
`and from the URLs on the pages as self-authenticated by the browser.
`
`3. I certify that the attached USPTO TSDR webpages are authentic and were downloaded from
`
`the uspto.gov on the dates indicated in the TSDR record.
`
`4. The following declaration is in support of applicant’s defenses, applicant’s affirmative
`
`defenses, and applicant’s counterclaims to cancel the two pleaded registrations by opposer in several
`
`classifications.
`
`5. MNS USA currently owns an expanding list of different Mr. Nice registrations and
`
`applications literally working up from the ground (plant seeds and plant growth nutrients) into
`
`products and services related to plants. See Exhibit 1 for all of the TSDR for all USPTO applications
`
`and registrations.
`
`

`

`
`
`6. See the chart below at the end of this declaration for a complete list of applicant’s Mr. Nice
`
`goods and services pleaded into the record with the counterclaims 05/20/2022 at 4 TTABVUE. The
`
`subject application is highlighted in the chart.
`
`7. The registrations were also previously pleaded into the record at 4 TTABVUE 15-18, 20-23
`
`and already became part of the record pursuant to Trademark Rule 2.122(d)(1).
`
`8. MNS USA has used Mr. Nice as a trademark on clothing on the tag at the back of the neck of
`
`the shirts since as early as July 21, 2013 at trade shows and events including Hightimes
`
`Cup’s (Seattle, WA, Oakland, CA, Los Angeles, CA); Hempstock (Portland OR); and Hempfest
`
`(Seattle, WA). See Exhibit 2 for emails and invoices regarding the first few orders of Mr. Nice t-shirts
`
`and a picture of one of the shirts.
`
`9. Each MNS USA application with goods derived with hemp was filed after the 2018 Farm
`
`Bill1 was signed into law December 20, 2018 and identifies hemp in the goods and services
`
`description according to the statute (with a delta-9 tetrahydrocannabinol (THC) content of no more
`
`than 0.3 percent on a dry weight basis).
`
`10. The 2018 Farm Bill definition of HEMP is cited in the Federal Register Implementation of
`
`the Agriculture Improvement Act of 2018 on August 21, 2020: “The term ‘hemp’ means the plant
`
`Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts,
`
`cannabinoids, isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9
`
`tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis”2.
`
`11. Attached as Exhibit 5 is the current status foreign registration EU 017962120 used by
`
`Opposer to secure its pleaded registration Section 44(e) filing date. The goods and services
`
`identifications are identical to the foreign registration certificate for Opposer’s pleaded RN 6311629
`
`(SN 88230696) at September 13, 2019, Response to Office Action, TSDR 31-32. Some notable
`
`aspects from this registration and EU 017962121 are highlighted here:
`
`
`1 See USPTO Examination Guide 1-19 attached as Exhibit 3.
`2 See Exhibit 4 from https://www.govinfo.gov/content/pkg/FR-2020-08-21/pdf/2020-17356.pdf
`
`Equinox International Holdings Limited v. MNS USA LLC, Proceeding 91275573
`
`
`Page 2
`
`

`

`
`
`
`3 Terpenes (essential oils) • terpenes (aromatic oils) • cosmetics (none for the
`hair) containing cannabinoids • non-medicated toilet preparations (none for the
`hair) containing cannabinoids • non-medicated body care products containing
`cannabinoids • flavourings for beverages (essential oils)
`
`. . .
`
`-35 Retail services connected with the sale of terpenes (essential oils), terpenes
`(aromatic oils), cosmetics (none for the hair) containing cannabinoids, non-
`medicated toilet preparations (none for the hair) containing cannabinoids, non-
`medicated body care products containing cannabinoids, flavourings for
`beverages (essential oils), tobacco free cigarettes for medical purposes, nutritional
`supplements, analgesics, sedatives, psychotropics, pharmaceuticals, liquid herbal
`supplements, medicinal herbal preparations, tinctures for medical purposes, . . .
`business advice relating to franchising • information, consultancy and advisory
`services relating to all the aforesaid services
`
`
`
`12. Attached as Exhibit 6 is the current status foreign registration EU 017962121 used by
`
`Opposer to secure its Section 44(e) filing date. The goods and services identifications are
`
`identical to the foreign registration certificate for Opposer’s pleaded RN 6121742 (SN
`
`88230699) at September 13, 2019, Response to Office Action, TSDR 32-33.
`
`13. Cannabinoids, in the US, is a very broad term for a group of substances (not just CBD). The
`
`US Department of Health and Human Services3 answers a few FAQ on cannabinoids on one
`
`of their websites:
`
`a. What are cannabinoids? Cannabinoids are a group of substances found in the
`
`cannabis plant.
`
`b. What are the main cannabinoids? The main cannabinoids are THC and cannabidiol
`
`(CBD).
`
`c. How many cannabinoids are there? Besides THC and CBD, more than 100 other
`
`cannabinoids have been identified.
`
`d. Is it legal for dietary supplements or foods to contain THC or CBD? The FDA has
`
`determined that products containing THC or CBD cannot be sold legally as
`
`
`3 https://www.nccih.nih.gov/health/cannabis-marijuana-and-cannabinoids-what-you-need-to-know.
`Attached as Exhibit 7.
`
`Equinox International Holdings Limited v. MNS USA LLC, Proceeding 91275573
`
`
`Page 3
`
`

`

`
`
`
`dietary supplements. Foods to which THC or CBD has been added cannot be sold
`
`legally in interstate commerce. Whether they can be sold legally within a state
`
`depends on that state’s laws and regulations.
`
`14. The FDA “defines the term “food” to mean “articles used for food or drink for man or other
`
`animals,” chewing gum, and articles used for components of any such article.4
`
`15. The FDA defines the term “dietary supplement”5
`
`(1) means a product (other than tobacco) intended to supplement the diet that bears or
`contains one or more of the following dietary ingredients:
`
`(A) a vitamin;
`
`(B) a mineral;
`
`(C) an herb or other botanical;
`
`(D) an amino acid;
`
`(E) a dietary substance for use by man to supplement the diet by increasing the total
`dietary intake; or
`
`(F) a concentrate, metabolite, constituent, extract, or combination of any
`ingredient described in clause (A), (B), (C), (D), or (E);
`
`(2) means a product that
`
`(A) (i) is intended for ingestion in a form described in section 411(c)(1)(B)(i); or
`
`(ii) complies with section 411(c)(1)(B)(ii);
`
`(B) is not represented for use as a conventional food or as a sole item of a meal or the
`diet; and
`
`(C) is labeled as a dietary supplement; and
`
`(3) does--
`
`(A) include an article that is approved as a new drug under section 505 or licensed as
`a biologic under section 351 of the Public Health Service Act (42 U.S.C. 262) and
`was, prior to such approval, certification, or license, marketed as a dietary
`supplement or as a food unless the Secretary has issued a regulation, after notice and
`comment, finding that the article, when used as or in a dietary supplement under the
`
`
`4 Exhibit 8 Page 12 of https://www.fda.gov/media/76323/download
`5 Exhibit 8 Page 13-15 of https://www.fda.gov/media/76323/download
`
`Equinox International Holdings Limited v. MNS USA LLC, Proceeding 91275573
`
`
`Page 4
`
`

`

`
`
`
`conditions of use and dosages set forth in the labeling for such dietary supplement, is
`unlawful under section 402(f); and
`
`(B) does not include—
`
`(i) an article that is approved as a new drug under section 505, certified as an
`antibiotic under section 507, or licensed as a biologic under section 351 of
`the Public Health Service Act (42 U.S.C. 262),
`
`or
`
` (ii) an article authorized for investigation as a new drug, antibiotic, or
`biological for which substantial clinical investigations have been instituted
`and for which the existence of such investigations has been made public,
`which was not before such approval, certification, licensing, or authorization
`marketed as a dietary supplement or as a food unless the Secretary, in the
`Secretary’s discretion, has issued a regulation, under notice and comment,
`finding that the article would be lawful under this Act.
`
`Except for purposes of section 201(g) [of the Act], a dietary supplement shall
`be deemed to be a food within the meaning of this Act.
`
`16. Exhibit 9 contains webpages showing FEDCO SEED webpages showing fertilizers, seeds,
`
`essential oils, and clothing sold under the same mark.
`
`17. Exhibit 10 contains webpages with SNAKEROOT webpages showing fertilizers, seeds,
`
`essential oils, and clothing sold under the same mark.
`
`18. Exhibit 11, from ScienceDirect.com, has fact excerpts from scientific publications regarding
`
`essential oils, such as the fact essential oils as food additives are regulated by the FDA; that
`
`essential oils are plant derivatives; and essential oils are found mainly in the flowers, buds,
`
`leaves, twigs, bark, wood, roots, rhizones, bulbs, fruits, peels, seeds and resin of plants.
`
`Applicant’s list of registrations and applications, MR NICE
`
`TM/AN/RN
`
`MR. NICE
`RN: 4564012
`SN: 86131548
`
`Filed Nov. 27, 2013
`MR. NICE and
`Design
`RN: 4564013
`SN: 86131555
`
`Filed Nov. 27, 2013
`
`Status/Status
`Date
`
`Registered,
`February 19, 2021
`Office Status:
`Section 8-
`Accepted
`Registered,
`February 19, 2021
`Office Status:
`Section 8-
`Accepted
`
`Full Goods/Services
`
`Int'l Class: 01
`(Int'l Class: 01)
`Plant growth nutrients
`
`Int'l Class: 01
`(Int'l Class: 01)
`Plant growth nutrients
`
`Equinox International Holdings Limited v. MNS USA LLC, Proceeding 91275573
`
`
`Page 5
`
`

`

`
`
`MR. NICE
`RN: 5880115
`SN: 88380574
`
`Filed Apr. 10, 2019
`MR. NICE and
`Design
`RN: 5880116
`SN: 88380590
`
`Filed Apr. 10, 2019
`MR. NICE
`SN: 88248935
`
`Filed Jan. 03, 2019
`
`Registered,
`October 8, 2019
`Office Status:
`Registered
`
`Registered,
`October 8, 2019
`Office Status:
`Registered
`
`Published,
`November 17,
`2021
`Office Status:
`Opposition
`Pending
`
`MR. NICE
`SN: 90563150
`
`Filed Mar. 05, 2021
`
`Pending
`Application, May
`28, 2022
`Office Status:
`Suspension Letter
`Mailed
`
`MR. NICE
`SN: 90563164
`
`Filed Mar. 05, 2021
`
`Published, April
`12, 2022
`Office Status:
`Opposition
`Pending
`
`MR. NICE
`SN: 90563170
`
`Filed Mar. 05, 2021
`
`Pending
`Application, May
`28, 2022
`Office Status:
`Suspension Letter
`Mailed
`
`Int'l Class: 31
`(Int'l Class: 31)
`Plant seeds
`
`Int'l Class: 31
`(Int'l Class: 31)
`Plant seeds
`
`Int'l Class: 03, 34
`(Int'l Class: 03)
`Electronic cigarettes sold pre-filled with flavored
`liquids comprised of essential oils derived from
`hemp with a delta-9 tetrahydrocannabinol (THC)
`content of no more than 0.3 percent on a dry
`weight basis
`(Int'l Class: 34)
`Hemp cigarettes; cigarette hemp; electronic
`cigarettes sold pre-filled with flavored liquids
`derived from hemp, not including essential oils;
`hemp flowers for smoking; each of the foregoing
`containing industrial hemp with a delta-9
`tetrahydrocannabinol (THC) content of no more
`than 0.3 percent on a dry weight basis
`Int'l Class: 29
`(Int'l Class: 29)
`Hemp seed nut butter; edible hemp seed oil
`derived from industrial hemp; all of the foregoing
`containing ingredients solely derived from hemp
`with a delta-9 tetrahydrocannabinol (THC)
`concentration of not more than 0.3 percent on a
`dry weight basis and none of the foregoing
`containing marijuana, THC, CBD or other
`marijuana-derived substances
`Int'l Class: 34
`(Int'l Class: 34)
`Hemp herbs for smoking; Dried hemp herbs for
`smoking and vaporizing; Pre-rolls being herbal
`cigarettes for smoking purposes; Hemp flower
`herbs crushed and derived directly from hemp
`for smoking purposes; Hemp papers and wraps
`for use with smoking materials, namely, hemp
`cigarette rolling papers; Filtered cylindrical
`paper tubes filled with finely cut hemp for
`smoking, not for medical purposes, namely,
`hemp cigarettes; Tobacco substitutes
`comprised of hemp; Loose hemp herbs for
`smoking purposes; Cigarettes containing
`tobacco substitutes in the nature of hemp not for
`medical use; Prepackaged hemp herbs for
`smoking and vaporizing; Loose dried hemp
`flower herbs for use in pipes, vaporizers and
`rolled cigarettes for smoking; all of the foregoing
`solely derived from hemp with a delta-9
`tetrahydrocannabinol (THC) concentration of not
`more than 0.3 percent on a dry weight basis
`Int'l Class: 35
`(Int'l Class: 35)
`Retail store services featuring vaporizers for
`smokers, smoking accessories, and smokable
`CBD products and non-medicated CBD
`skincare products, any CBD in the goods being
`featured or provided in the aforementioned
`services being solely derived from hemp with a
`delta-9 tetrahydrocannabinol (THC)
`concentration of not more than 0.3 percent on a
`dry weight basis
`
`Equinox International Holdings Limited v. MNS USA LLC, Proceeding 91275573
`
`
`Page 6
`
`

`

`Int'l Class: 05
`(Int'l Class: 05)
`Hemp oil herbal tinctures for medical purposes;
`Balms for medical purposes; Balms for
`pharmaceutical purposes; Gels, creams and
`solutions for dermatological use; Dietary and
`nutritional supplements containing hemp seed
`oil and vitamins; Edible hemp seed oil for use as
`a dietary supplement for pets; Dietetic
`beverages adapted for medical purposes; Drug
`delivery agents consisting of compounds that
`facilitate delivery of a wide range of
`pharmaceuticals; all the foregoing derived from
`industrial hemp with a delta-
`tetrahydrocannabinol concentration of not more
`than 0.3 percent on a dry weight basis and none
`of the foregoing containing marijuana, THC,
`CBD or other marijuana-derived substances;
`Dietary and nutritional supplements in the form
`of capsules, gels and oral sprays; medicated
`topical creams, balms and ointments containing
`supplements; all of the foregoing solely derived
`from industrial hemp extract with a delta-
`tetrahydrocannabinol concentration of not more
`than 0.3 percent on a dry weight basis and not
`containing CBD and containing in whole or
`substantial part organic ingredients
`Int'l Class: 25
`(Int'l Class: 25)
`Shirts
`
`
`
`MR. NICE
`SN: 90563140
`
`Filed Mar. 05, 2021
`
`Pending
`Application, May
`28, 2022
`Office Status:
`Suspension Letter
`Mailed
`
`MR. NICE
`SN: 90891930
`
`Filed Aug. 19, 2021
`
`Pending
`Application, June
`24, 2022
`Office Status:
`Suspension Letter
`Mailed
`
`
`
`
`
`
`
`
`
`
`Date: June 21, 2023
`
`
`
`
`
`_________________________________________
`
`Evan Matsumoto
`
`
`
`
`
`
`
`
`
`
`
`Equinox International Holdings Limited v. MNS USA LLC, Proceeding 91275573
`
`
`Page 7
`
`

`

`CERTIFICATE OF SERVICE
`
` I
`
` hereby certify that on June 21, 2023, the
`foregoing was served upon Opposer’s
`attorneys by email:
`
`jhggroup@ipfirm.com,
`cmolano@ipfirm.com, jhgreger@ipfirm.com
`
`By: /Wendy Peterson/
`
`
`
`
`
`
`
`
`
`
`
`Date: June 21, 2023
`
`/Wendy Peterson/
`
`Wendy Peterson, Attorney for Applicant
`Not Just Patents LLC
`
`1248 Victoria St N
`St. Paul, MN 55117
`wsp@NJPLS.com, wspnjpls@gmail.com
`651-500-7590
`
`
`
`
`
`Equinox International Holdings Limited v. MNS USA LLC, Proceeding 91275573
`
`
`Page 8
`
`

`

`Exhibit 1
`TSDR for all MNS USA applications and registrations
`
`
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2023-04-09 13:04:35 EDT
`
`Mark: MR. NICE
`
`US Serial Number: 88380590
`
`US Registration
`Number:
`
`5880116
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Apr. 10, 2019
`
`Registration Date: Oct. 08, 2019
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
`
`Status Date: Oct. 08, 2019
`Publication Date:Jul. 23, 2019
` 
`
`Mark Literal
`Elements:
`
`MR. NICE
`
`Standard Character
`Claim:
`
`No
`
`Mark Information
`
`Mark Drawing
`Type:
`
`Description of
`Mark:
`
`3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
`
`The mark consists of "MR. NICE" in capital letters inside a slanted rectangle with a very heavy slanted line under the rectangle.
`
`Color(s) Claimed: Color is not claimed as a feature of the mark.
`
`Design Search
`Code(s):
`
`26.11.01 - Rectangles as carriers or rectangles as single or multiple line borders
`
`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: Plant seeds
`
`International
`Class(es):
`
`031 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jan. 13, 2019
`
`U.S Class(es): 001, 046
`
`Use in Commerce: Jan. 13, 2019
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Currently Use: Yes
`
`

`

`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: MNS USA, LLC
`
`Owner Address: 126 S.W. 148th Street, Suite C-100, #10
`Seattle, WASHINGTON UNITED STATES 98166
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`Attorney/Correspondence Information
`
`WASHINGTON
`
`Attorney Name: Wendy Peterson
`
`Attorney Primary
`Email Address:
`
`wsp@njpls.com
`
`Correspondent
`Name/Address:
`
`Wendy Peterson
`Not Just Patents LLC
`1248 Victoria St N
`St. Paul, MINNESOTA UNITED STATES 55117
`
`Phone: 6515007590
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent e-
`mail:
`
`wsp@njpls.com wspnjpls@gmail.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Nov. 19, 2019
`Nov. 19, 2019
`Oct. 08, 2019
`Jul. 23, 2019
`Jul. 23, 2019
`Jul. 03, 2019
`Jun. 18, 2019
`Jun. 17, 2019
`May 14, 2019
`May 13, 2019
`Apr. 30, 2019
`Apr. 27, 2019
`Apr. 13, 2019
`Apr. 13, 2019
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`REGISTERED-PRINCIPAL REGISTER
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`PUBLISHED FOR OPPOSITION
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`APPROVED FOR PUB - PRINCIPAL REGISTER
`ASSIGNED TO EXAMINER
`PETITION TO DIRECTOR - MAKE SPECIAL - DENIED
`ASSIGNED TO PETITION STAFF
`NOTICE OF DESIGN SEARCH CODE E-MAILED
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`TEAS PETITION TO DIRECTOR-MAKE SPECIAL-RECEIVED
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Summary
`
`Number of 1
`
`TM Staff Information - None
`
`File Location
`
`Date in Location: Oct. 08, 2019
`Proceedings
`
`Proceeding
`Number
`
`92563
`66600
`66600
`
`1111
`
`

`

`Proceedings:
`
`Proceeding
`Number:
`
`91272976
`
`Status: Suspended
`
`Interlocutory
`Attorney:
`
`JENNIFER ELGIN
`
`Name: MNS USA LLC
`
`Type of Proceeding: Opposition
`
` 
`
`Filing Date: Nov 17, 2021
`
`Status Date: Jan 09, 2023
`
`Defendant
`
`WENDY PETERSON
`NOT JUST PATENTS LLC
`1248 VICTORIA ST N
`ST PAUL MN UNITED STATES , 55117
`
`wsp@njpls.com , wspnjpls@gmail.com
`
`Correspondent
`Address:
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`MR. NICE
`
`Application Status
`
`Opposition Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`88248935
`
`Registration
`Number
`
`Name: Equinox International Holdings Limited
`
`Correspondent
`Address:
`
`JEFFREY H GREGER
`HAUPTMAN HAM LLP
`2318 MILL RD, SUITE 1400
`ALEXANDRIA VA UNITED STATES , 22314
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`MR NICE
`
`MR NICE
`
`jhggroup@ipfirm.com , cmolano@ipfirm.com , jhgreger@ipfirm.com
`
`Application Status
`
`Serial Number
`
`Registered
`
`Registered
`
`88230699
`
`88230696
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`14
`13
`12
`11
`10
`9
`8
`7
`6
`5
`4
`3
`2
`1
`
`D TESTIMONY
`D RESP TO BD ORDER/INQUIRY
`P OPP/RESP TO MOTION
`D EXHIBITS
`D MOT TO COMPEL DISCOVERY
`SUSPENDED
`D NOTICE OF TAKING TESTIMONY
`P TESTIMONY
`ANSWER TO COUNTERCLAIM
`ANSWER TO COUNTERCLAIM DUE ( DUE DATE)
`ANSWER AND COUNTERCLAIM ( FEE)
`INSTITUTED
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`FILED AND FEE
`
`Date
`
`Apr 07, 2023
`Apr 04, 2023
`Mar 27, 2023
`Mar 06, 2023
`Mar 06, 2023
`Jan 09, 2023
`Dec 21, 2022
`Nov 30, 2022
`Feb 03, 2022
`Jan 04, 2022
`Dec 27, 2021
`Nov 17, 2021
`Nov 17, 2021
`Nov 17, 2021
`
`Registration
`Number
`
`6121742
`
`6311629
`
`Due Date
`
`Feb 03, 2022
`
`Dec 27, 2021
`
`

`

`Generated on: This page was generated by TSDR on 2023-04-09 13:04:55 EDT
`
`Mark: MR. NICE
`
`US Serial Number: 90563140
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Mar. 05, 2021
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: A suspension inquiry has been sent (issued) to the applicant. The applicant must respond to this suspension inquiry. To view all
`documents in this file, click on the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Feb. 23, 2023
`
` 
`
`Mark Literal
`Elements:
`
`MR. NICE
`
`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: Hemp oil herbal tinctures for medical purposes; Balms for medical purposes; Balms for pharmaceutical purposes; Gels, creams and
`solutions for dermatological use; Dietary and nutritional supplements containing hemp seed oil and vitamins; Edible hemp seed oil for
`use as a dietary supplement for pets; Dietetic beverages adapted for medical purposes; Drug delivery agents consisting of compounds
`that facilitate delivery of a wide range of pharmaceuticals; all the foregoing derived from industrial hemp with a delta-
`tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis and none of the foregoing containing marijuana,
`THC, CBD or other marijuana-derived substances; Dietary and nutritional supplements in the form of capsules, gels and oral sprays;
`medicated topical creams, balms and ointments containing supplements; all of the foregoing solely derived from industrial hemp extract
`with a delta-tetrahydrocannabinol concentration of not more than 0.3 percent on a dry weight basis and not containing CBD and
`containing in whole or substantial part organic ingredients
`
`International
`Class(es):
`
`005 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`U.S Class(es): 005, 006, 018, 044, 046, 051, 052
`
`Basis Information (Case Level)
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44E: No
`
`Currently 66A: No
`
`

`

`Filed 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: MNS USA, LLC
`
`Owner Address: 126 S.W. 148th Street, Suite C-100, #10
`Seattle, WASHINGTON UNITED STATES 98166
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`Attorney/Correspondence Information
`
`WASHINGTON
`
`Attorney Name: Wendy Peterson
`
`Attorney Primary
`Email Address:
`
`wsp@njpls.com
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Wendy Peterson
`NOT JUST PATENTS LLC
`1248 VICTORIA ST N
`ST. PAUL, MINNESOTA UNITED STATES 55117
`
`Phone: 651-500-7590
`
`Correspondent e-
`mail:
`
`wsp@njpls.com wspnjpls@gmail.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Feb. 27, 2023
`Feb. 23, 2023
`Feb. 23, 2023
`Feb. 23, 2023
`Jan. 30, 2023
`May 28, 2022
`May 28, 2022
`May 28, 2022
`Apr. 28, 2022
`Apr. 28, 2022
`Apr. 28, 2022
`Nov. 04, 2021
`Nov. 04, 2021
`Nov. 04, 2021
`Oct. 25, 2021
`Aug. 04, 2021
`Jul. 29, 2021
`Jun. 05, 2021
`Mar. 09, 2021
`
`TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED
`NOTIFICATION OF INQUIRY AS TO SUSPENSION E-MAILED
`INQUIRY TO SUSPENSION E-MAILED
`SUSPENSION INQUIRY WRITTEN
`SUSPENSION CHECKED – TO ATTORNEY FOR ACTION
`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
`LETTER OF SUSPENSION E-MAILED
`SUSPENSION LETTER WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`ASSIGNED TO EXAMINER
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: FOSTER, ALEXANDRA M.
`
`Current Location: LAW OFFICE 117 - EXAMINING ATTORNEY
`ASSIGNED
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 117
`
`File Location
`
`Date in Location: Feb. 23, 2023
`
`Proceeding
`Number
`
`94049
`88889
`6332
`6332
`94049
`88889
`88889
`
`6325
`6325
`94049
`94049
`90287
`83173
`
`

`

`Generated on: This page was generated by TSDR on 2023-04-09 13:05:13 EDT
`
`Mark: MR. NICE
`
`US Serial Number: 90563150
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Mar. 05, 2021
`
`LIVE/APPLICATION/Under Examination
`
`The trademark application has been accepted by the Office (has met the
`minimum filing requirements) and that this application has been assigned to
`an examiner.
`
`Status: A suspension inquiry has been sent (issued) to the applicant. The applicant must respond to this suspension inquiry. To view all
`documents in this file, click on the Trademark Document Retrieval link at the top of this page.
`
`Status Date: Feb. 23, 2023
`
` 
`
`Mark Literal
`Elements:
`
`MR. NICE
`
`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: Hemp seed nut butter; edible hemp seed oil derived from industrial hemp; all of the foregoing containing ingredients solely derived from
`hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis and none of the
`foregoing containing marijuana, THC, CBD or other marijuana-derived substances
`
`International
`Class(es):
`
`029 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`U.S Class(es): 046
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`

`

`Owner Name: MNS USA, LLC
`
`Owner Address: 126 S.W. 148th Street, Suite C-100, #10
`Seattle, WASHINGTON UNITED STATES 98166
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`Attorney/Correspondence Information
`
`WASHINGTON
`
`Attorney Name: Wendy Peterson
`
`Attorney Primary
`Email Address:
`
`wsp@njpls.com
`
`Attorney of Record
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Wendy Peterson
`NOT JUST PATENTS LLC
`1248 VICTORIA ST N
`ST. PAUL, MINNESOTA UNITED STATES 55117
`
`Phone: 651-500-7590
`
`Correspondent e-
`mail:
`
`wsp@njpls.com wspnjpls@gmail.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Feb. 27, 2023
`Feb. 23, 2023
`Feb. 23, 2023
`Feb. 23, 2023
`Jan. 30, 2023
`May 28, 2022
`May 28, 2022
`May 28, 2022
`Apr. 28, 2022
`Apr. 28, 2022
`Apr. 28, 2022
`Nov. 04, 2021
`Nov. 04, 2021
`Nov. 04, 2021
`Oct. 25, 2021
`Aug. 04, 2021
`Jul. 29, 2021
`Jun. 05, 2021
`Mar. 09, 2021
`
`TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED
`NOTIFICATION OF INQUIRY AS TO SUSPENSION E-MAILED
`INQUIRY TO SUSPENSION E-MAILED
`SUSPENSION INQUIRY WRITTEN
`SUSPENSION CHECKED – TO ATTORNEY FOR ACTION
`NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
`LETTER OF SUSPENSION E-MAILED
`SUSPENSION LETTER WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`ASSIGNED TO EXAMINER
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`TM Attorney: FOSTER, ALEXANDRA M.
`
`Current Location: LAW OFFICE 117 - EXAMINING ATTORNEY
`ASSIGNED
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 117
`
`File Location
`
`Date in Location: Feb. 23, 2023
`
`Proceeding
`Number
`
`94049
`88889
`6332
`6332
`94049
`88889
`88889
`
`6325
`6325
`94049
`94049
`90287
`83173
`
`

`

`Generated on: This page was generated by TSDR on 2023-04-09 13:05:32 EDT
`
`Mark: MR. NICE
`
`US Serial Number: 90563164
`
`Register: Principal
`
`Mark Type: Trademark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Mar. 05, 2021
`
`LIVE/APPLICATION/Opposition Pending
`
`The pending trademark application has been examined by the Office and was
`published for opposition, at which time one or more oppositions were filed but
`they have not yet been decided.
`
`Status: An opposition after publication is pending at the Trademark Trial and Appeal Board. For further information, see TTABVUE on the
`Trademark Trial and Appeal Board web page.
`
`Status Date: Apr. 12, 2022
`Publication Date:Dec. 14, 2021
` 
`
`Mark Literal
`Elements:
`
`MR. NICE
`
`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: Hemp herbs for smoking; Dried hemp herbs for smoking and vaporizing; Pre-rolls being herbal cigarettes for smoking purposes; Hemp
`flower herbs crushed and derived directly from hemp for smoking purposes; Hemp papers and wraps for use with smoking materials,
`namely, hemp cigarette rolling papers; Filtered cylindrical paper tubes filled with finely cut hemp for smoking, not for medical purposes,
`namely, hemp cigarettes; Tobacco substitutes comprised of hemp; Loose hemp herbs for smoking purposes; Cigarettes containing
`tobacco substitutes in the nature of hemp not for medical use; Prepackaged hemp herbs for smoking and vaporizing; Loose dried
`hemp flower herbs for use in pipes, vaporizers and rolled cigarettes for smoking; al