Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1271671
`03/13/2023
`
`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
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Emerald X, LLC
`
`03/12/2023
`
`100 BROADWAY, 14TH FLOOR
`NEW YORK, NY 10005
`UNITED STATES
`
`LOUIS T. PERRY
`FAEGRE DRINKER BIDDLE & REATH, LLP
`300 N MERIDIAN STREET
`SUITE 2500
`INDIANAPOLIS, IN 46204
`UNITED STATES
`Primary email: trademark@faegredrinker.com
`Secondary email(s): louis.perry@faegredrinker.com,
`abe.shanehsaz@faegredrinker.com
`317-237-1029
`
`Docket no.
`
`527965.2
`
`Applicant information
`
`Application no.
`
`90538532
`
`Publication date
`
`09/13/2022
`
`Opposition period
`ends
`
`03/12/2023
`
`Opposition filing
`date
`
`Applicant
`
`03/13/2023
`
`OUTSIDE INTERACTIVE, INC.
`STE 300
`1600 PEARL ST
`BOULDER, CO 80302
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 035. First Use: Mar 10, 2022 First Use In Commerce: Mar 10, 2022
`Opposed goods and services in the class: Arranging and conducting special events for commercial,
`promotional or advertising purposes; Organization of events, exhibitions, fairs and shows for com-
`mercial, promotional and advertising purposes
`
`Class 041. First Use: Mar 10, 2022 First Use In Commerce: Mar 10, 2022
`Opposed goods and services in the class: Arranging and conducting of conventions in the field of
`sporting, fitness, athletics, health, nutrition, and the outdoors; Conducting entertainment exhibitions in
`the nature of sporting, fitness, athletics, health, nutrition, and the outdoors; Education services,
`namely, providing tutorial sessions in the field of sporting, fitness, athletics, and the outdoors; Educa-
`tion services, namely, providing tutoring in the field of sporting, fitness, athletics, and the outdoors;
`Education services, namely, providing classes and conferences in the field of sporting, fitness, athlet-
`
`

`

`ics, and the outdoors
`
`Applicant information
`
`Application no.
`
`90538524
`
`Publication date
`
`09/13/2022
`
`Opposition filing
`date
`
`Applicant
`
`03/13/2023
`
`Opposition period
`ends
`
`OUTSIDE INTERACTIVE, INC.
`STE 300
`1600 PEARL ST
`BOULDER, CO 80302
`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 035. First Use: Mar 10, 2022 First Use In Commerce: Mar 10, 2022
`Opposed goods and services in the class: Arranging and conducting special events for commercial,
`promotional or advertising purposes; Organization of events, exhibitions, fairs and shows for com-
`mercial, promotional and advertising purposes
`
`Class 041. First Use: Mar 10, 2022 First Use In Commerce: Mar 10, 2022
`Opposed goods and services in the class: Arranging and conducting of conventions in the field of
`sporting, fitness, athletics, health, nutrition, and the outdoors; Conducting entertainment exhibitions in
`the nature of sporting, fitness, athletics, health, nutrition, and the outdoors; Education services,
`namely, providing tutorial sessions in the field of sporting, fitness, athletics, and the outdoors; Educa-
`tion services, namely, providing tutoring in the field of sporting, fitness, athletics, and the outdoors;
`Education services, namely, providing classes and conferences in the field of sporting, fitness, athlet-
`ics, and the outdoors
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`The mark is merely descriptive
`
`Trademark Act Section 2(e)(1)
`
`No use of mark in commerce before application,
`amendment to allege use, or statement of use
`was due
`
`Trademark Act Section 1(a) and (c)
`
`Mark cited by opposer as basis for opposition
`
`U.S. application
`no.
`
`90453211
`
`Application date
`
`01/07/2021
`
`Registration date
`
`NONE
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`OUTSIDE ADVENTURE EXPO 2***
`
`The mark consists of an image of mountains and trees superimposed over a
`compass design appearing above the stylized word OUTSIDE which appears
`above the stylized words ADVENTURE EXPO which appears above a rectangle
`which contains the number 2 followed by three asterisks which represent the
`phantom element that will, in use, be represented by the numerals of the applic-
`able calendar year.
`
`Class 035. First use: First Use: None First Use In Commerce: None
`Arranging and conducting trade shows and business expositions in the field out-
`door activities and sports
`
`Related proceed-
`
`91282710
`
`

`

`ings
`
`Attachments
`
`NOTICE OF OPPOSITION EMERALD X V OUTSIDE INTERACTIVE OUTSIDE
`AND OUTS IDE STYLIZED reduced size.pdf(2312847 bytes )
`
`Signature
`
`/Abe J. Shanehsaz/
`
`Name
`
`Date
`
`Abe Jentry Shanehsaz
`
`03/13/2023
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`EMERALD X, LLC,
`
`
`Opposer,
`
`
`
`vs.
`
`
`OUTSIDE INTERACTIVE, INC.
`
`
`
`Applicant.
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`
`Opposition No. _________
`
`Application Ser. No. 90538532
`
`
`
`Mark:
`
`Application Ser. No. 90538524
`Mark: OUTSIDE
`
`
`
`
`Opposer Emerald X, LLC (“Opposer”) is a Delaware limited liability company having its
`
`NOTICE OF OPPOSITION
`
`principal place of business at 100 Broadway, 14th Floor, New York, New York, 10005. Opposer
`
`believes that it will be harmed and damaged by the registration of the marks shown in Application
`
`Ser. Nos. 90/538,532 (the “’532 Application”) and 90/538,524 (the “’524 Application”, and together
`
`with the ‘532 Application, the “Subject Applications”) applied for by applicant Outside Interactive,
`
`Inc. (“Applicant”) and hereby opposes registration of the same (this “Opposition”). Opposer alleges
`
`as follows:
`
`
`
`1.
`
`Opposer arranges and conducts engaging event experiences catering to niche
`
`communities of enthusiasts. Relevant here, Opposer has—since at least as early as June 25, 2021—
`
`arranged and conducted trade shows and exposition in the field of outdoor activities and sports
`
`known as OUTDOOR ADVENTURE EXPO.
`
`
`
`2.
`
`On January 7, 2021, Opposer filed pending intent-to-use application 90/453, 211 (the
`
`“’211 Application”) for the mark OUTSIDE ADVENTURE EXPO 2*** (and Design) (“Opposer’s
`
`Mark”) identified for use in connection with [a]rranging and conducting trade shows and
`
`US.356266917.01
`
`
`
`

`

`
`expositions in the field [of] outdoor activities and sports in International Class 35. Opposer has used
`
`Opposer’s Mark since at least as early as June 25, 2021. Exhibit A.
`
`3.
`
`4.
`
`
`
`The ‘211 Application was published for opposition on July 12, 2022.
`
`Upon information and belief, Applicant is a Delaware corporation having a principal
`
`place of business at 1600 Pearl Street, Suite 300, Boulder Colorado 80302.
`
`
`
`5.
`
`On February 22, 2021—over a month after Opposer filed the ’211 Application—
`
`Applicant filed the Applications for the mark OUTSIDE in standard characters and in a stylized
`
`format (the “Subject Marks”) in connection with a variety of goods and services, including
`
`[a]rranging and conducting special events for commercial, promotional or advertising purposes;
`
`[o]rganization of events, exhibitions, fairs and shows for commercial, promotional and advertising
`
`purposes in International Class 35, [a]rranging and conducting of conventions in the field of sporting,
`
`fitness, athletics, health, nutrition, and the outdoors; [c]onducting entertainment exhibitions in the
`
`nature of sporting, fitness, athletics, health, nutrition, and the outdoors; [e]ducation services, namely,
`
`providing tutorial sessions in the field of sporting, fitness, athletics, and the outdoors; [e]ducation
`
`services, namely, providing tutoring in the field of sporting, fitness, athletics, and the outdoors;
`
`[e]ducation services, namely, providing classes and conferences in the field of sporting, fitness,
`
`athletics, and the outdoors in International Class 41 (the “Subject Expo Services”).
`
`
`
`6.
`
`Subsequently, on January 6, 2023, Applicant opposed registration of the ‘211
`
`Application based upon, in part, the Subject Marks and an assertion that Opposer’s Mark was likely
`
`to be confused with, among other things,1 the Subject Marks.
`
`
`1 Applicant references fifteen of its registrations in addition to the Subject Applications that incorporate the word
`OUTSIDE—none of which are identified for use in connection with the Subject Expo Services or services related to the
`Subject Expo Services.
`
`US.356266917.01
`
`
`
`2
`
`

`

`
`
`
`7.
`
`Opposer seeks relief based on three grounds (1) to the extent that Applicant is correct
`
`that a likelihood of confusions exists between the Subject Marks (as used in connection with the
`
`Subject Expo Services) and the Opposer’s Mark, then the Subject Applications should be refused
`
`registration with respect to the Subject Expo Services based upon Opposer’s priority date and its
`
`earlier date of first use, (2) the word “OUTSIDE” is merely descriptive of the Subject Expo Services
`
`and Applicant’s claim of acquired descriptiveness is insufficient, and (3) the Subject Marks have not
`
`been used in interstate commerce in connection with the Subject Expo Services
`
`COUNT I
`
`LIKELIHOOD OF CONFUSION
`
`8.
`
`Upon information and belief, Applicant has not used the Subject Marks in
`
`connection with the Subject Expo Services (though Applicant appears to have organized an event
`
`held in 2019 it referred to as “The Outside Experience”—but it has not held such an event since that
`
`time). Opposer’s rights in the Opposer’s Mark are therefore senior.
`
`
`
`9.
`
`Alternatively, and to the extent the Subject Marks have ever been used in connection
`
`with the Subject Expo Services, Applicant has, upon information and belief, abandoned the Subject
`
`Marks in connection with the Subject Expo Services based upon nonuse of over three years, which is
`
`prima facie evidence of abandonment. Opposer’s rights in the Opposer’s Mark are therefore senior.
`
`
`
`10.
`
`Hypothetically, if Applicant is correct in arguing that there is a likelihood of confusion
`
`between the Subject Marks and Opposer’s Mark, the registration of the Subject Marks in connection
`
`with the Subject Expo Services would be inconsistent with Opposer’s rights under common law and
`
`the Lanham Act. As such, the Subject Applications should be rejected with respect to the Subject
`
`Expo Services and no registration should be issued therewith.
`
`US.356266917.01
`
`
`
`COUNT II
`
`3
`
`

`

`
`
`
`
`THE SUBJECT MARKS ARE MERELY DESCRIPTIVE OF THE SUBJECT EXPO
`SERVICES
`
`The Subject Marks are merely descriptive in that they describe special event,
`
`11.
`
`exhibition, fair, show, convention, and tutorial services in the field of sporting, fitness, athletics,
`
`health, nutrition, and the outdoors, i.e. the Subject Expo Services.
`
`
`
`12.
`
`The Subject Marks are not distinctive in connection with the Subject Expo Services
`
`and lack secondary meaning in connection with the Subject Expo Services.
`
`
`
`13.
`
`Applicant’s claim of distinctiveness under 15 U.S.C. §1052(f) fails with respect to the
`
`Subject Expo Services because (i) none of the prior registrations that Applicant owns for Applicant’s
`
`Mark are identified for use in connection with goods or services sufficiently similar to the Subject
`
`Expo Services and (ii) Applicant’s use of the Subject Mark in connection with the Subject Expo
`
`Services (if any) has not been substantially exclusive and has not been continuous for five years before
`
`the date on which Applicant made its claim of distinctiveness.
`
`
`
`14.
`
`Applicant does not have any exclusive right to use the Subject Marks in connection
`
`with the Subject Expo Services since the word “OUTSIDE” is used concurrently by many parties,
`
`including Opposer.
`
`
`
`15.
`
`Registration of the Subject Marks in connection with the Subject Expo Services on the
`
`Principal Register should be refused because the Subject Marks do not have the characteristics
`
`necessary to render them registerable marks on the Principal Register in connection with the Subject
`
`Expo Services.
`
`COUNT III
`
`THE SUBJECT MARKS WERE NOT IN USE IN COMMERCE AS OF THE TIME OF
`FILING THE AMENDMENT TO ALLEGE USE
`
`
`US.356266917.01
`
`
`
`4
`
`

`

`16.
`
`Applicant filed an Amendment to Allege Use against each of the Subject Applications
`
`(the “AAUs”) claiming a date of first use in commerce for all applicable goods and services (including
`
`the Subject Expo Services) of March 10, 2022. Exhibit B.
`
`17.
`
`No evidence pertaining to the Subject Expo Services was incorporated into the AAUs
`
`and, upon information and belief, the Applicant was not using the Subject Marks in connection with
`
`the Subject Expo Services at the time of filing.
`
`18.
`
`Registration of the Subject marks in connection with the Subject Expo Services should
`
`be refused because the Applicant falsely entered use information into the record.
`
`WHEREFORE, Opposer believes that it would be damaged by registration of the Subject
`
`Marks in connection with the Subject Expo Services, and respectfully prays that the Subject
`
`Applications be rejected with respect to the Subject Expo Services, and that this opposition be
`
`sustained in favor of Opposer.
`
`The $2,400.00 Notice of Opposition filing fee is being submitted concurrently with this Notice
`
`of Opposition. The Commissioner is authorized to debit the deposit account of Faegre Drinker
`
`Biddle & Reath LLP for any deficiency in the required fee.
`
`Please address all correspondence to:
`
`Louis T. Perry
`Faegre Drinker Biddle & Reath LLP
`300 N. Meridian Street, Suite 2500
`Indianapolis, Indiana 46204
`Trademark@Faegredrinker.com;
`louis.perry@faegredrinker.com;
`abe.shanehsaz@faegredrinker.com.
`
`Dated: March 13, 2023
`
`Respectfully submitted,
`
`FAEGRE DRINKER BIDDLE & REATH LLP
`
`By:
`
`/Louis T. Perry/
`
`5
`
`US.356266917.01
`
`
`

`

`
`
`
`
`
`
`
`
`
`Louis T. Perry
`Faegre Drinker Biddle & Reath LLP
`300 N. Meridian Street
`Suite 2500
`Indianapolis, Indiana 46204
`Tel: 317-237-1089
`Fax: 317-237-1000
`
`Attorney for Opposer
`
`
`
`US.356266917.01
`
`
`
`6
`
`

`

`EXHIBIT A
`
`[see attached]
`
`US.356266917.01
`
`
`
`
`

`

`Generated on: This page was generated by TSDR on 2023-03-13 17:29:16 EDT
`
`Mark: OUTSIDE ADVENTURE EXPO 2***
`
`US Serial Number: 90453211
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Jan. 07, 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: Jan. 06, 2023
`
`Publication Date:Jul. 12, 2022
` 
`
`Mark Literal
`Elements:
`
`OUTSIDE ADVENTURE EXPO 2***
`
`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 an image of mountains and trees superimposed over a compass design appearing above the stylized word
`OUTSIDE which appears above the stylized words ADVENTURE EXPO which appears above a rectangle which contains the number
`2 followed by three asterisks which represent the phantom element that will, in use, be represented by the numerals of the applicable
`calendar year.
`
`Disclaimer: "OUTSIDE ADVENTURE EXPO AND 2***"
`
`Design Search
`Code(s):
`
`01.01.04 - Star - a single star with six points
`01.01.05 - Stars - one or more stars with seven or more points
`05.01.01 - Pine tree; Evergreens and other trees or bushes of triangular or conical shape
`06.01.04 - Scenery with mountains; Mountains (landscapes)
`17.07.05 - Directional compasses, including mariner's compasses and compass points; Compasses (directional)
`26.11.21 - Rectangles that are completely or partially shaded
`
`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: Arranging and conducting trade shows and business expositions in the field outdoor activities and sports
`
`International
`Class(es):
`
`035 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`U.S Class(es): 100, 101, 102
`
`Basis Information (Case Level)
`
`Filed Use: No
`
`Currently Use: No
`
`

`

`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Currently ITU: Yes
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: Lodestone Events, LLC
`
`Owner Address: 3488 E. Cleve Butcher Road
`Bloomington, INDIANA UNITED STATES 47401
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`INDIANA
`
`Attorney/Correspondence Information
`
`Attorney Name: ABE JENTRY SHANEHSAZ
`
`Docket Number: 516416.12
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`trademark@faegredrinker.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`ABE JENTRY SHANEHSAZ
`FAEGRE DRINKER BIDDLE & REATH LLP
`300 N. MERIDIAN STREET, SUITE 2500
`INDIANAPOLIS, INDIANA UNITED STATES 46204
`
`Phone: 317-237-1029
`
`Fax:
`
`(317) 237-1000
`
`Correspondent e-
`mail:
`
`trademark@faegredrinker.com abe.shanehsaz@f
`aegredrinker.com tom.ryan@faegredrinker.com je
`ssica.taekman@faegredrinker.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Feb. 08, 2023
`
`ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
`
`Jan. 06, 2023
`
`OPPOSITION INSTITUTED NO. 999999
`
`Aug. 08, 2022
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`Jul. 12, 2022
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Jul. 12, 2022
`
`PUBLISHED FOR OPPOSITION
`
`Jun. 22, 2022
`
`NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
`
`Jun. 07, 2022
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`May 12, 2022
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`May 12, 2022
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`May 12, 2022
`
`TEAS REQUEST FOR RECONSIDERATION RECEIVED
`
`Feb. 15, 2022
`
`NOTIFICATION OF FINAL REFUSAL EMAILED
`
`Feb. 15, 2022
`
`FINAL REFUSAL E-MAILED
`
`Feb. 15, 2022
`
`FINAL REFUSAL WRITTEN
`
`Jan. 18, 2022
`
`TEAS/EMAIL CORRESPONDENCE ENTERED
`
`Jan. 18, 2022
`
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`
`Jan. 18, 2022
`
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`
`Jul. 19, 2021
`
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`
`Jul. 19, 2021
`
`NON-FINAL ACTION E-MAILED
`
`Jul. 19, 2021
`
`NON-FINAL ACTION WRITTEN
`
`Jul. 15, 2021
`
`ASSIGNED TO EXAMINER
`
`Apr. 08, 2021
`
`NOTICE OF DESIGN SEARCH CODE E-MAILED
`
`Apr. 07, 2021
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`Jan. 11, 2021
`
`NEW APPLICATION ENTERED
`
`Proceeding
`Number
`
`282710
`
`88889
`
`88889
`
`86335
`
`88889
`
`88889
`
`6325
`
`6325
`
`86335
`
`86335
`
`

`

`TM Staff and Location Information
`
`TM Attorney: MUNN LEWIS, LAKEISHA S
`
`TM Staff Information
`
`Law Office
`Assigned:
`
`LAW OFFICE 105
`
`File Location
`
`Current Location: PUBLICATION AND ISSUE SECTION
`
`Date in Location: Jun. 08, 2022
`
`Assignment Abstract Of Title Information
`
`Summary
`
`Total Assignments: 1
`
`Applicant: Lodestone Events, LLC
`
`Assignment 1 of 1
`
`Conveyance: ASSIGNS THE ENTIRE INTEREST
`
`Reel/Frame: 7943/0084
`
`Date Recorded: Jan. 10, 2023
`
`Supporting
`Documents:
`
`assignment-tm-7943-0084.pdf
`
`Pages: 7
`
`Assignor
`
`Name: OVERLAND EXPO
`
`Execution Date: Jan. 09, 2023
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`INDIANA
`
`DBA, AKA, TA,
`Formerly:
`
`FORMERLY LODESTONE EVENTS, LLC
`
`Name: EMERALD X, LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`Address: 100 BROADWAY
`14TH FLOOR
`NEW YORK, NEW YORK 10005
`
`Assignee
`
`State or Country
`Where Organized:
`
`DELAWARE
`
`Correspondent
`Name:
`
`Correspondent
`Address:
`
`KIMBERLY MIHOVICS C/O FRIED FRANK ET AL
`
`Correspondent
`
`1 NEW YORK PLAZA
`27TH FLOOR
`NEW YORK, NY 10004
`
`Domestic Representative - Not Found
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`2
`
`Type of Proceeding: Opposition
`
`Proceeding
`Number:
`
`91282710
`
`Status: Pending
`
`Interlocutory
`Attorney:
`
`LAWRENCE (LARRY) T STANLEY
`
`Filing Date: Jan 06, 2023
`
`Status Date: Jan 06, 2023
`
`Defendant
`
`Name: Lodestone Events, LLC
`
`Correspondent
`Address:
`
`ABE JENTRY SHANEHSAZ
`FAEGRE DRINKER BIDDLE & REATH LLP
`300 N. MERIDIAN STREET, SUITE 2500
`INDIANAPOLIS IN UNITED STATES , 46204
`
` 
`
` 
`
`

`

`Correspondent e-
`mail:
`
`trademark@faegredrinker.com , abe.shanehsaz@faegredrinker.com , tom.ryan@faegredrinker.com , jessica.taekman@faegredrinker.c
`om
`
`Associated marks
`
`Mark
`
`OUTSIDE ADVENTURE EXPO 2***
`
`Application Status
`
`Opposition Pending
`
`Plaintiff(s)
`
`Serial
`Number
`
`90453211
`
`Registration
`Number
`
`Name: Outside Interactive, Inc.
`
`Correspondent
`Address:
`
`ELEANOR M. LACKMAN
`MITCHELL SILBERBERG & KNUPP LLP
`437 MADISON AVENUE, 25TH FLOOR
`NEW YORK NY UNITED STATES , 10022
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`OUTSIDE
`
`OUTSIDE
`
`OUTSIDE
`
`OUTSIDE
`
`trademark@msk.com , eml@msk.com , d2g@msk.com
`
`Application Status
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Registered
`
`REGISTERED AND RENEWED
`
`OUTSIDE EVENTS
`
`Registered
`
`OUTSIDE
`
`OUTSIDE GO
`
`OUTSIDE GO
`
`OUTSIDE TV
`
`OUTSIDE STUDIOS
`
`REGISTERED AND RENEWED
`
`Section 8 and 15 - Accepted and Acknowledged
`
`Registered
`
`Registered
`
`Registered
`
`Serial
`Number
`
`Registration
`Number
`
`73714438
`
`76082618
`
`87193005
`
`75050531
`
`90884856
`
`76082619
`
`86977056
`
`86128039
`
`88672666
`
`88923025
`
`1507125
`
`2546325
`
`5292743
`
`2025585
`
`6850291
`
`2648063
`
`4819937
`
`5396636
`
`6073889
`
`6226313
`
`OUTSIDE TELEVISION
`
`REGISTERED AND RENEWED
`
`OUTSIDE FILMS
`
`OUTSIDE BOOKS
`
`OUTSIDE ONLINE
`
`OUTSIDE ONLINE
`
`OUTSIDE
`
`OUTSIDE
`
`Section 8 and 15 - Accepted and Acknowledged
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`REGISTERED AND RENEWED
`
`Request For Extension of Time to File Opposition
`
`Request For Extension of Time to File Opposition
`
`Prosecution History
`
`2304468
`
`4672364
`
`2539895
`
`2030603
`
`2012332
`
`75155455
`
`85888034
`
`76170615
`
`74525999
`
`74525998
`
`90538524
`
`90538532
`
`Entry Number
`
`History Text
`
`5
`
`4
`
`3
`
`2
`
`1
`
`EXTENSION OF TIME GRANTED
`
`D MOT FOR EXT W/ CONSENT
`
`INSTITUTED
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`FILED AND FEE
`
`Date
`
`Feb 15, 2023
`
`Feb 15, 2023
`
`Jan 06, 2023
`
`Jan 06, 2023
`
`Jan 06, 2023
`
`Due Date
`
`Feb 15, 2023
`
`Proceeding
`Number:
`
`90453211
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`Type of Proceeding: Extension of Time
`
`Filing Date: Aug 08, 2022
`
`Status Date: Jan 08, 2023
`
`Name: Lodestone Events, LLC
`
`Correspondent
`Address:
`
`ABE JENTRY SHANEHSAZ
`FAEGRE DRINKER BIDDLE & REATH LLP
`300 N. MERIDIAN STREET, SUITE 2500
`INDIANAPOLIS IN UNITED STATES , 46204
`
`Defendant
`
`Correspondent e-
`mail:
`
`trademark@faegredrinker.com , abe.shanehsaz@faegredrinker.com , tom.ryan@faegredrinker.com , jessica.taekman@faegredrinker.c
`om
`
`Associated marks
`
`

`

`Mark
`
`Application Status
`
`OUTSIDE ADVENTURE EXPO 2***
`
`Opposition Pending
`
`Potential Opposer(s)
`
`Name: Outside Interactive, Inc.
`
`Correspondent
`Address:
`
`ANNMARIE CORDING
`WEINER & CORDING
`3100 ARAPAHOE, SUITE 202
`BOULDER CO UNITED STATES , 80303
`
`Serial
`Number
`
`90453211
`
`Registration
`Number
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`annmarie@weinercording.com , slawton@outsideinc.com , celrod@outsideinc.com , trademarks@weinercording.com
`
`Application Status
`
`Serial Number
`
`Prosecution History
`
`Entry Number
`
`History Text
`
`EXT GRANTED
`
`FINAL 60-DAY REQUEST TO EXT TIME TO OPPOSE
`
`EXT GRANTED
`
`ADD'L 60-DAY REQUEST TO EXT TIME TO OPPOSE
`
`EXT GRANTED
`
`FIRST 30-DAY REQUEST TO EXT TIME TO OPPOSE
`
`6
`
`5
`
`4
`
`3
`
`2
`
`1
`
`Date
`
`Oct 20, 2022
`
`Oct 20, 2022
`
`Sep 01, 2022
`
`Sep 01, 2022
`
`Aug 08, 2022
`
`Aug 08, 2022
`
`Registration
`Number
`
`Due Date
`
`

`

`EXHIBIT B
`
`[see attached]
`
`US.356266917.01
`
`
`
`
`

`

`PTO- 1553
`
`Approved for use through 03/31/2024. OMB 0651-0054
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number
`
`Trademark/Service Mark Amendment to Allege Use
`(15 U.S.C. Section 1051(c))
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`90538532
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 116
`
`EXTENSION OF USE
`
`NO
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`OWNER SECTION (current)
`
`NAME
`
`MAILING ADDRESS
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`https://tmng-al.uspto.gov/resting2/api/img/90538532/large
`
`OUTSIDE
`
`NO
`
`NO
`
`OUTSIDE INTERACTIVE, INC.
`
`5720 FLATIRON PKWY
`
`BOULDER
`
`Colorado
`
`80301
`
`STATE/COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY
`
`United States
`
`OWNER SECTION (proposed)
`
`NAME
`
`MAILING ADDRESS
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`OUTSIDE INTERACTIVE, INC.
`
`5720 FLATIRON PKWY
`
`BOULDER
`
`Colorado
`
`80301
`
`STATE/COUNTRY/REGION/JURISDICTION/U.S.
`TERRITORY
`
`United States
`
`EMAIL
`
`XXXX
`
`CORRESPONDENCE INFORMATION (current)
`
`NAME
`
`PRIMARY EMAIL ADDRESS FOR
`CORRESPONDENCE
`
`Devin Lee Looijen
`
`dlooijen@db-iplaw.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY
`COPIES)
`
`mail@db-iplaw.com
`
`DOCKET/REFERENCE NUMBER
`
`OUT-0197T
`
`

`

`CORRESPONDENCE INFORMATION (proposed)
`
`NAME
`
`PRIMARY EMAIL ADDRESS FOR
`CORRESPONDENCE
`
`Devin Lee Looijen
`
`dlooijen@db-iplaw.com
`
`SECONDARY EMAIL ADDRESS(ES) (COURTESY
`COPIES)
`
`mail@db-iplaw.com
`
`DOCKET/REFERENCE NUMBER
`
`OUT-0197T
`
`GOODS AND/OR SERVICES SECTION
`
`INTERNATIONAL CLASS
`
`009
`
`CURRENT IDENTIFICATION
`
`GOODS OR SERVICES DELETED FROM THE
`APPLICATION
`
`GOODS OR SERVICES IN USE IN COMMERCE
`
`Downloadable computer software for organizing and viewing digital images
`and photographs; Downloadable e-books in the field of sporting, fitness,
`athletics, health, nutrition, and the outdoors; Downloadable electronic books
`in the field of sporting, fitness, athletics, health, nutrition, and the outdoors;
`Downloadable geographic information system (GIS) software;
`Downloadable non-fiction books in the field of sporting, fitness, athletics,
`health, nutrition, and the outdoors; Downloadable photographs in the field
`of sporting, fitness, athletics, and the outdoors; Downloadable podcasts in
`the field of sporting, fitness, athletics, health, nutrition, and the outdoors;
`Downloadable software in the nature of a mobile application for GPS
`navigation and location tracking; Downloadable tutorial e-books in the field
`of sporting, fitness, athletics, health, nutrition, and the outdoors; Motion
`picture films about sporting, fitness, athletics, and the outdoors
`
`Downloadable computer software for organizing and viewing digital images
`and photographs; Downloadable e-books in the field of sporting, fitness,
`athletics, health, nutrition, and the outdoors; Downloadable electronic books
`in the field of sporting, fitness, athletics, health, nutrition, and the outdoors;
`Downloadable non-fiction books in the field of sporting, fitness, athletics,
`health, nutrition, and the outdoors; Downloadable photographs in the field
`of sporting, fitness, athletics, and the outdoors; Downloadable tutorial e-
`books in the field of sporting, fitness, athletics, health, nutrition, and the
`outdoors
`
`Downloadable geographic information system (GIS) software;
`Downloadable podcasts in the field of sporting, fitness, athletics, health,
`nutrition, and the outdoors; Downloadable software in the nature of a
`mobile application for GPS navigation and location tracking; Motion picture
`films about sporting, fitness, athletics, and the outdoors
`
`FIRST USE ANYWHERE DATE
`
`FIRST USE IN COMMERCE DATE
`
`03/10/2022
`
`03/10/2022
`
`SPECIMEN FILE NAME(S)
`
`\\TICRS\EXPORT18\IMAGEOUT 18\905\385\90538532\xml5 \
`AAU0002.JPG
`
`SPECIMEN DESCRIPTION
`
`Website featuring downloadable podcasts
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`INTERNATIONAL CLASS
`
`None Provided
`
`None Provided
`
`016
`
`Photographic prints; Portraits in the nature of printed photographs; Printed
`books in the field of sporting, fitness, athletics, health, nutrition, and the
`outdoors; Printed cook books; Printed educational books featuring sporting,
`fitness, athletics, health, nutrition, and the outdoors; Printed guide books
`featuring sporting, fitness, athletics, health, nutrition, and the outdoors;
`Printed magazines featuring sporting, fitness, athletics, health, nutrition, and
`the outdoors; Printed magazines in the field of sporting, fitness, athletics,
`
`CURRENT IDENTIFICATION
`
`

`

`health, nutrition, and the outdoors; Printed publications, namely, magazines
`and books in the field of sporting, fitness, athletics, health, nutrition, and the
`outdoors; Printed resource books in the field of sporting, fitness, athletics,
`health, nutrition, and the outdoors; Printed tutorial books in the field of
`sporting, fitness, athletics, health, nutrition, and the outdoors; Prints in the
`nature of printed photographs
`
`Photographic prints; Portraits in the nature of printed photographs; Prints in
`the nature of printed photographs; Printed books in the field of sporting,
`fitness, athletics, health, nutrition, and the outdoors; Printed cook books;
`Printed educational books featuring sporting, fitness, athletics, health,
`nutrition, and the outdoors; Printed guide books featuring sporting, fitness,
`athletics, health, nutrition, and the outdoors; Printed resource books in the
`field of sporting, fitness, athletics, health, nutrition, and the outdoors;
`Printed tutorial books in the field of sporting, fitness, athletics, health,
`nutrition, and the outdoors
`
`Printed magazines featuring sporting, fitness, athletics, health, nutrition, and
`the outdoors; Printed magazines in the field of sporting, fitness, athletics,
`health, nutrition, and the outdoors; Printed publications, namely, books in
`the field of sporting, fitness, athletics, health, nutrition, and the outdoors
`
`03/10/2022
`
`03/10/2022
`
`\\TICRS\EXPORT18\IMAGEOUT 18\905\385\90538532\xml5 \
`AAU0003.JPG
`
`SPN1-983816920-2022031015 1448128737_._IC_016_Sampl e_3_-
`_Outside_Mag.pdf
`
`\\TICRS\EXPORT18\IMAGEOUT 18\905\385\90538532\xml5\
`AAU0004.JPG
`
`GOODS OR SERVICES DELETED FROM THE
`APPLICATION
`
`GOODS OR SERVICES IN USE IN COMMERCE
`
`FIRST USE ANYWHERE DATE
`
`FIRST USE IN COMMERCE DATE
`
`SPECIMEN FILE NAME(S)
`
`       JPG FILE(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (1 page)
`
`SPECIMEN DESCRIPTION
`
`Magazine cover, subscription page
`
`        WEBPAGE URL
`
`        WEBPAGE DATE OF ACCESS
`
`INTERNATIONAL CLASS
`
`None Provided
`
`None Provided
`
`025
`
`CURRENT IDENTIFICATION
`
`Athletic jackets; Athletic pants; Athletic shirts
`
`GOODS OR SERVICES
`
`WEBPAGE URL
`
`WEBPAGE DATE OF ACCESS
`
`INTERNATIONAL CLASS
`
`CURRENT IDENTIFICATION
`
`GOODS OR SERVICES
`
`WEBPAGE URL
`
`WEBPAGE DATE OF ACCESS
`
`INTERNATIONAL CLASS
`
`DELETE ALL ITU GOODS/SERVICES IN THIS CLASS
`
`None Provided
`
`None Provided
`
`029
`
`Prepared food kits composed of meat, poultry, fish, seafood, and/or
`vegetables and also including sauces or seasonings, ready for cooking and
`assembly as a meal; Packaged meals consisting primarily of meat, fish,
`poultry or vegetables
`
`DELETE ALL ITU GOODS/SERVICES IN THIS CLASS
`
`None Provided
`
`None Provided
`
`035
`
`Promotion of financial and insurance services, on behalf of third parties;
`
`

`

`Administration of a program for enabling participants to obtain discounts on
`products and services; Arranging and conducting special events for
`commercial, promotional or advertising purposes; Business services,
`namely, developing fundraising campaigns for others; Computerized on-line
`retail store services in the field of equipment, goods, and apparel for
`sporting, fitness, athletics, and the outdoors; Event planning and
`management for marketing, branding, promoting or advertising the goods
`and services of others; Magazine subscription and fulfillment services;
`Membership club services in the nature of providing discounts to members
`in the field of sporting, fitness, athletics, health, nutrition, and the outdoors;
`Membership club services providing discounts and administrative
`processing of rebates for the services of others; On-line retail store services
`featuring downloadable electronic books; Organization of events,
`exhibitions, fairs and shows for commercial, promotional and advertising
`purposes; Promoting the sale of goods and services of others through
`electronic couponing, promotions and discounts; Providing a website
`featuring an online marketplace for exchanging goods and services with
`other users; Providing advertising space in periodicals, newspapers and
`magazines; Providing on-line registration services for sporting, fitness,
`athletic, health, nutrition, and outdoor events; Subscriptions to electronic
`journals
`
`Promotion of financial and in