ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1334285
`01/16/2024
`
`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
`
`Star Autism Support, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`01/14/2024
`
`6663 SW BEAVERTON HILLSDALE HWY #119
`PORTLAND, OR 97225
`UNITED STATES
`
`DANIEL M. WADKINS
`FOSTER GARVEY PC
`618 W. RIVERSIDE AVENUE, SUITE 300
`SPOKANE, WA 99201
`UNITED STATES
`Primary email: dan.wadkins@foster.com
`Secondary email(s): carrie.lofts@foster.com
`509.777.1600
`
`Docket no.
`
`510991-69003
`
`Applicant information
`
`Application no.
`
`97561030
`
`Opposition filing
`date
`
`Applicant
`
`01/16/2024
`
`Little Star Center, Inc.
`SUITE 220
`550 CONGRESSIONAL BLVD.
`CARMEL, IN 46032
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`07/18/2023
`
`Opposition period
`ends
`
`01/14/2024
`
`Class 044. First Use: Sep 2017 First Use In Commerce: Sep 2017
`All goods and services in the class are opposed, namely: behavioral health services, namely, provid-
`ing behavioral therapy for children with autism
`
`Applicant information
`
`Application no.
`
`97566615
`
`Publication date
`
`07/18/2023
`
`Opposition filing
`date
`
`Applicant
`
`01/16/2024
`
`Opposition period
`ends
`
`Little Star Center, Inc.
`SUITE 220
`550 CONGRESSIONAL BLVD.
`CARMEL, IN 46032
`
`

`

`UNITED STATES
`
`Goods/services affected by opposition
`
`Class 044. First Use: Sep 2017 First Use In Commerce: Sep 2017
`All goods and services in the class are opposed, namely: behavioral health services, namely, provid-
`ing behavioral therapy for children with autism
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Other
`
`Common law rights as asserted in the Notice of
`Opposition
`
`Marks cited by opposer as basis for opposition
`
`U.S. registration
`no.
`
`4090174
`
`Register
`
`Principal
`
`Registration date
`
`01/24/2012
`
`Application date
`
`04/28/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STAR
`
`NONE
`
`Class 009. First use: First Use: Nov 18, 2005 First Use In Commerce: Nov 18,
`2005
`Digital media, namely, CDs and DVDs featuring instructional, educational, and
`teaching material for the purpose of educating individuals with special needs
`Class 016. First use: First Use: Nov 18, 2006 First Use In Commerce: Nov 18,
`2006
`Printed instructional, educational, and teaching materials in the field of educating
`individuals with special needs
`Class 041. First use: First Use: Jul 11, 2004 First Use In Commerce: Jul 11,
`2004
`Educational services, namely, providing classes, seminars, workshops, training,
`and instruction in the field of educating individuals with special needs
`
`U.S. registration
`no.
`
`4141409
`
`Register
`
`Principal
`
`Registration date
`
`05/15/2012
`
`Application date
`
`04/28/2011
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STAR
`
`The mark consists of the word "STAR", with the left side of the letter "A" trailing
`to the left to elicit the perception of a shooting star.
`
`Class 009. First use: First Use: Sep 24, 2007 First Use In Commerce: Sep 24,
`2007
`Digital media, namely, CDs and DVDs featuring instructional, educational, and
`teaching material for the purpose of educating individuals with special needs
`Class 016. First use: First Use: Sep 24, 2007 First Use In Commerce: Sep 24,
`2007
`
`

`

`Printed instructional, educational, and teaching materials in the field of educating
`individuals with special needs
`Class 041. First use: First Use: Sep 24, 2007 First Use In Commerce: Sep 24,
`2007
`Educational services, namely, providing classes, seminars, workshops, training,
`and instruction in the field of educating individuals with special needs
`
`U.S. registration
`no.
`
`5013682
`
`Register
`
`Principal
`
`Registration date
`
`08/02/2016
`
`Application date
`
`12/31/2014
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STAR AUTISM SUPPORT
`
`NONE
`
`Class 009. First use: First Use: Mar 2015 First Use In Commerce: Mar 2015
`Downloadable documents in the field of educating individuals with special needs
`provided via a website; downloadable educational materials and resources in
`the nature of visual aids, lesson plans, teaching guides, and supplemental cur-
`riculum material for educators specializing in working with individuals with spe-
`cial needs provided via a website
`Class 041. First use: First Use: Mar 2015 First Use In Commerce: Mar 2015
`Providing a website featuring non-downloadable videos in the field of educating
`individuals with special needs; providing a website featuring online, non-
`downloadable educational materials and resources in the nature of visual aids,
`lesson plans, teaching guides, and supplemental curriculum material for educat-
`ors specializing in working with individuals with special needs
`Class 042. First use: First Use: May 17, 2012 First Use In Commerce: May 17,
`2012
`Providing on-line, on-downloadable computer software for aiding in the assess-
`ment, evaluation, and education of individuals with special needs and the collec-
`tion of data relating thereto; providing a website featuring resources, namely,
`non-downloadable software for use in connection with educating individuals with
`special needs in the field of receptive language, expressive language, spontan-
`eous language, functional routines, preacademics, and play and social interac-
`tion
`
`U.S. registration
`no.
`
`3488207
`
`Register
`
`Principal
`
`Registration date
`
`08/19/2008
`
`Application date
`
`01/17/2008
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`STAR AUTISM SUPPORT
`
`NONE
`
`Class 041. First use: First Use: Apr 1, 2004 First Use In Commerce: Apr 1, 2004
`Education services, namely, providing seminars, workshops, and training in the
`field of autism
`
`

`

`Attachments
`
`Consolidated Notice of Opposition re LITTLE STAR and LITTLESTAR ABA
`THERAPY - Final.pdf(2083393 bytes )
`Exhibit A to Consolidated Notice of Opposition.pdf(1229061 bytes )
`
`Signature
`
`/Daniel M. Wadkins/
`
`Name
`
`Date
`
`DANIEL M. WADKINS
`
`01/16/2024
`
`

`

`
`
`IN THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`}
`
`
`
`
`
`
`
`In the Matter Of:
`
`Trademark Application Serial Nos. 97561030 and
`97566615 for the Trademark, LITTLESTAR and
`LITTLESTAR ABA THERAPY and Design
`Both Published July 18, 2023
`
`
`__________________________________________
`
`Star Autism Support, LLC.
`Opposer,
`
`v.
`
`Little Star Center, Inc.
`Applicant.
`
`
`
`
`
`
`
`
`
`Opposition No.
`
`
`
`Application Serial Nos.
`97561030 and 97566615
`
`
`CONSOLIDATED NOTICE OF OPPOSITION
`
`
`
`I. Identification of Opposer
`
`Opposer, an Oregon limited liability company located and doing business as Star Autism Support,
`
`with a primary business address of 6663 SW Beaverton Hillsdale Hwy #119, Portland, Oregon 97225
`
`(“Opposer”), believes that it is or will be damaged by registrations of the marks shown in Application Serial
`
`No. 97561030, filed August 23, 2022, in International Class 44 and Application Serial No. 97566615, filed
`
`August 26, 2022, in International Class 44.
`
`II. Identification of Applicant, the Applications, and Opposed Marks
`
`
`
`On or about August 23, 2022, applicant Little Star Center, Inc., an Indiana corporation with its
`
`address of record at 550 Congressional Blvd., Carmel, Indiana 46032 (“Applicant”), filed an application
`
`with the U.S. Patent and Trademark Office, seeking registration, pursuant to Section 1(A) of the Trademark
`
`Act, of the standard character word mark LITTLESTAR, for “behavioral health services, namely, providing
`
`behavioral therapy for children with autism” in International Class 044, on the Principal Register of United
`
`States Trademarks (the “LITTLESTAR Word Mark”), which application the U.S. Patent and Trademark
`
`FG: 102344542.1
`
`

`

`
`
`Office assigned Serial Number 97561030 (the “LITTLESTAR Word Application”). The LITTLESTAR
`
`Word Application was published in the Official Gazette on July 18, 2023.
`
`
`
`On or about August 26, 2022, Applicant filed an application with the U.S. Patent and Trademark
`
`Office, seeking registration, pursuant to Section 1(A) of the Trademark Act, of the design mark
`
`, which features the words LITTLESTAR ABA THERAPY, for “behavioral health
`
`services, namely, providing behavioral therapy for children with autism” in International Class 044, on the
`
`Principal Register of United States Trademarks (the “LITTLESTAR Design Mark”), which application the
`
`U.S. Patent and Trademark Office assigned Serial Number 97566615 (the “LITTLESTAR Design
`
`Application”). The LITTLESTAR Design Application was published in the Official Gazette on July 18,
`
`2023. The LITTLESTAR Word Application and the LITTLESTAR Design Application are collectively
`
`referred to herein as, the “Applications.” The LITTLESTAR Word Mark and the LITTLESTAR Design
`
`Mark are collectively referred to herein as, the “Opposed Marks.”
`
`III. Extensions of Opposition Periods for Applications
`
`On August 17, 2023, Opposer, through its counsel, timely filed Requests for Extensions of the
`
`Opposition Periods for the Applications, to and including September 16, 2023, which Requests were
`
`granted on August 17, 2023. On September 11, 2023, Opposer, through its counsel, timely filed Second
`
`Requests for Extensions of the Opposition Periods for the Applications, to and including November 15,
`
`2023, which Requests were granted on September 11, 2023. On November 10, 2023, Opposer, through its
`
`counsel, timely filed Final Requests for Extensions of the Opposition Periods for the Applications, to and
`
`including January 14, 2024, which Requests were granted on November 10, 2023.
`
`IV. Grounds for the Consolidated Opposition
`
`
`
`Opposer believes that it will be damaged by registrations of the Opposed Marks, and hereby
`
`opposes registrations of the same. The grounds for this consolidated opposition are as follows.
`
`
`Opposer’s Use of the STAR Marks for Autism and other Behavioral Health Related
`A.
`Goods and Services
`
`
`FG: 102344542.1
`
`

`

`
`
`
`
`1.
`
`Opposer provides, among other things, curriculum materials, workshops, training and
`
`educational services to educators and others who work with children with autism and other behavioral
`
`health needs. Opposer sells and offers for sale its goods and services in interstate commerce and online.
`
`
`
`2.
`
`Since at least as early as July 11, 2004, Opposer has used continuously in interstate
`
`commerce its STAR mark, and since then has used its various other STAR Marks (as such term is defined
`
`below), to identify its goods and services and distinguish those goods and services from the goods and
`
`services of others.
`
`
`
`3.
`
`Opposer has used and uses the STAR Marks by (i) affixing the STAR Marks to labels and
`
`packaging for various types of goods offered for sale, sold and transported in interstate commerce, (ii)
`
`displaying the same on its point-of-sale website where customers may purchase Opposer’s goods and
`
`services, and (iii) displaying the same on its advertising and marketing of Opposer’s goods and services.
`
`Use of Opposer’s STAR Marks in connection with Opposer’s services are easily seen on Opposer’s website,
`
`and examples of such use are shown below:
`
`
`
`FG: 102344542.1
`
`

`

`
`
`
`
`
`
`
`
`4.
`
`Opposer’s goods and services bearing the STAR Marks are offered for sale and sold
`
`throughout
`
`the United States on Opposer’s website,
`
`including, but not
`
`limited
`
`to:
`
`https://starautismsupport.com/purchase/Parent-Training, https://starautismsupport.com/product/sols-plus-
`
`FG: 102344542.1
`
`

`

`
`
`media-center,
`
`https://starautismsupport.com/training,
`
`https://starautismsupport.com/purchase/STAR-
`
`Program,
`
`https://starautismsupport.com/curriculum,
`
`https://starautismsupport.com/curriculum/links-
`
`curriculum,
`
`https://starautismsupport.com/product/teaching-social-communication-children-autism-set
`
`and https://starautismsupport.com/curriculum/star-program.
`
`
`
`5.
`
`Since at least before the filing date of the Applications, Opposer’s STAR Marks have been
`
`and continue to be the subject of substantial and continuous marketing and promotion by Opposer in
`
`connection with its products and services. Opposer has and continues to widely market and promote its
`
`STAR Marks to consumers by, for example, displaying the STAR Marks on its products, on its marketing
`
`materials, on Opposer’s websites and social media sites, and at trade shows and conventions. Opposer
`
`engages in extensive advertising and promotion of its goods and services under its STAR Marks. As a
`
`result, Opposer has built up, at great expense and effort, valuable goodwill in its STAR Marks, and has
`
`developed strong common law rights in the marks.
`
`6.
`
`In addition to its registration rights as discussed below, Opposer relies on its common law
`
`rights in its STAR Marks in this Consolidated Opposition.
`
`B.
`
`Opposer’s Federal Registration Nos. 4090174, 4141409, 5013682, 3488207 of the STAR
`
`Mark, STAR and Design Mark, and STAR AUTISM SUPPORT Marks
`
`
`
`7.
`
`In addition to Opposer’s common law rights, Opposer owns and relies on the following
`
`incontestable registrations:
`
`Registration
`Date
`1/24/2012
`
`First Use in
`Commerce
`Class 9, 16:
`11/18/2005
`
`Class 41:
`7/11/2004
`
`Goods and Services
`
`Filing
`Date
`4/28/2011 Class 9: Digital media, namely, CDs and
`DVDs featuring instructional,
`educational, and teaching material for
`the purpose of educating individuals
`with special needs
`Class 16: Printed instructional,
`educational, and teaching materials in
`the field of educating individuals with
`special needs
`Class 41: Educational services, namely,
`providing classes, seminars, workshops,
`training, and instruction in the field of
`educating individuals with special needs
`
`Mark and
`Reg. No.
`STAR
`
`Reg. No.:
`4090174
`
`
`
`FG: 102344542.1
`
`

`

`
`
`STAR and
`Design Mark
`
`
`
`
`Reg. No.
`4141409
`
`
`
`STAR
`AUTISM
`SUPPORT
`
`
`Reg. No.
`5013682
`
`
`
`STAR
`AUTISM
`SUPPORT
`
`FG: 102344542.1
`
`4/28/2011 Class 9: Digital media, namely, CDs and
`DVDs featuring instructional,
`educational, and teaching material for
`the purpose of educating individuals
`with special needs
`Class 16: Printed instructional,
`educational, and teaching materials in
`the field of educating individuals with
`special needs
`Class 41: Educational services, namely,
`providing classes, seminars, workshops,
`training, and instruction in the field of
`educating individuals with special needs
`12/31/2014 Class 9: Downloadable documents in the
`field of educating individuals with
`special needs provided via a website;
`downloadable educational materials and
`resources in the nature of visual aids,
`lesson plans, teaching guides, and
`supplemental curriculum material for
`educators specializing in working with
`individuals with special needs provided
`via a website
`Class 41: Providing a website featuring
`non-downloadable videos in the field of
`educating individuals with special
`needs; providing a website featuring
`online, non-downloadable educational
`materials and resources in the nature of
`visual aids, lesson plans, teaching
`guides, and supplemental curriculum
`material for educators specializing in
`working with individuals with special
`needs
`Class 42: Providing on-line, non-
`downloadable computer software for
`aiding in the assessment, evaluation, and
`education of individuals with special
`needs and the collection of data relating
`thereto; providing a website featuring
`resources, namely, non-downloadable
`software for use in connection with
`educating individuals with special needs
`in the field of receptive language,
`expressive language, spontaneous
`language, functional routines,
`preacademics, and play and social
`interaction
`1/17/2008 Class 41: Education services, namely,
`providing seminars, workshops, and
`training in the field of autism
`
`9/24/2007
`
`5/15/2012
`
`8/2/2016
`
`Class 9, 41:
`3/2015
`
`Class 42:
`5/17/2012
`
`
`4/1/2004
`
`8/19/2008
`
`

`

`
`
`
`
`
`
`Reg. No.
`3488207
`
`True and correct copies of the above registrations are attached hereto as Exhibit A and made of
`
`record.
`
`8.
`
`The various STAR formative Marks used by Opposer and represented by the above noted
`
`STAR registration (U.S. Reg. No. 4090174), STAR and Design mark
`
`registration (U.S. Reg.
`
`No. 4141409), STAR AUTISM SUPPORT registration (U.S. Reg. No. 5013682), and STAR AUTISM
`
`SUPPORT registration (U.S. Reg. No. 3488207) are collectively referred to herein as the “STAR Marks.”
`
`9.
`
`Opposer owns and relies upon in this Consolidated Opposition each of the above listed
`
`registrations for the STAR Marks, all of which have filing dates that precede the Applications, and all of
`
`which have dates of first use that precede the dates of first use recited in the Applications.
`
`10.
`
`Opposer’s above listed registrations for the STAR Marks are valid, subsisting, unrevoked
`
`and uncancelled; as such they constitute prima facie evidence of the validity of the registered marks and of
`
`the registrations thereof, of Opposer’s ownership of the marks shown therein, and of Opposer’s exclusive
`
`right to use the registered marks in commerce on or in connection with the goods or services specified in
`
`the registrations. Trademark Act §§ 7 and 33, 15 U.S.C. §§ 1057, 1115. Opposer’s registrations also
`
`constitute notice to Applicant of Opposer’s claim of ownership of the marks shown therein as provided in
`
`the Trademark Act § 22, 15 U.S.C. § 1072.
`
`11.
`
`All of Opposer’s above-listed registrations for its STAR Marks are incontestable and
`
`therefore such registrations also constitute conclusive evidence of the validity of the registered marks and
`
`of the registration of the marks, of Opposer’s ownership of the marks, and of Opposer’s exclusive right to
`
`use the registered marks in commerce. Trademark Act § 33(b), 15 U.S.C. § 1115.
`
`FG: 102344542.1
`
`

`

`
`
`
`
`C.
`
`Applicant’s Use of the LITTLESTAR Word Mark and the LITTLESTAR Design Mark
`
`for Behavioral Health Services for Children with Autism
`
`12.
`
`Upon information and belief, Applicant sells, offers for sale, or intends to offer for sale,
`
`services using the LITTLESTAR Word Mark and the LITTLESTAR Design Mark in the United States in
`
`interstate commerce.
`
`13.
`
`The services recited in the Applications opposed hereby – namely, “behavioral health
`
`services, namely, providing behavioral therapy for children with autism” – are closely related to the services
`
`sold and offered for sale by Opposer and covered by its federally-registered STAR Marks.
`
`14.
`
`Upon information and belief, Applicant and Opposer compete, or will compete, for the
`
`same customers in the same geographic markets, in the same lines of trade and business, and sell, advertise,
`
`and promote their products in the same channels of trade.
`
`15.
`
`Upon information and belief, consumers in the market for autism related behavioral health
`
`services are likely to encounter Applicant’s LITTLESTAR Word Mark and LITTLESTAR Design Mark
`
`and Applicant’s services offered thereunder and Opposer’s STAR Marks and Opposer’s services offered
`
`thereunder.
`
`
`
`
`
`D.
`
`Opposer’s Priority
`
`16.
`
`Opposer’s use in trade in interstate commerce of the registered STAR mark (U.S. Reg. No.
`
`4090174; date of first use July 11, 2004), STAR and Design mark
`
`(U.S. Reg. No. 4141409;
`
`date of first use September 24, 2007), STAR AUTISM SUPPORT (U.S. Reg. No. 5013682; date of first
`
`use May 17, 2012), and STAR AUTISM SUPPORT (U.S. Reg. No. 3488207; date of first use April 1,
`
`2004) predates the filing date of the LITTLESTAR Word Application (date of filing August 23, 2022) and
`
`the LITTLESTAR Design Application (date of filing August 26, 2022), and predates and has priority over
`
`Applicant’s first use and first use in commerce of Applicant’s applications, which list September 2017 as
`
`the first use date in both Applications.
`
`I. Claims
`
`FG: 102344542.1
`
`

`

`
`
`A.
`
`Count 1 – Likelihood of Confusion
`
`17.
`
`In view of the similarity between Opposer’s STAR Marks and Applicant’s LITTLESTAR
`
`Word Mark and LITTLESTAR Design Mark, and the near-identical nature of the goods and services of the
`
`respective parties offered and to be offered under those marks as described herein, the Opposed Marks so
`
`closely resemble Opposer’s registered STAR Marks previously used in the United States, and not
`
`abandoned, as to be likely, when applied to Applicant’s services, to cause confusion, or to cause mistake,
`
`or to deceive among the relevant purchasing public, within the meaning of Section 2(d) of the Trademark
`
`Act, 15 U.S.C. § 1052(d), all to Opposer’s irreparable damage.
`
`B.
`
`Count 2 – Unfair Association
`
`18.
`
`Consumers encountering Applicant’s LITTLESTAR Word Mark and LITTLESTAR
`
`Design Mark are likely to believe, falsely, that Opposer is the source of Applicant’s services offered
`
`thereunder, or that Opposer has authorized or licensed Applicant to use Opposer’s STAR Marks, or that
`
`there is some affiliation or connection between Opposer and Applicant, in violation of § 43(a) of the
`
`Trademark Act, 15 U.S.C. §1125(a), all to Opposer’s irreparable damage.
`
`C.
`
`Conclusion
`
`19.
`
`Based upon the foregoing, Opposer believes and respectfully submits that registration of
`
`Applicant’s LITTLESTAR Word Mark and LITTLESTAR Design Mark, recited in U.S. Trademark
`
`Application Serial Nos. 97561030 and 97566615, filed on the Principal Register of the U.S. Patent and
`
`Trademark Office, should be refused for the reasons that: such registration will cause irreparable injury and
`
`damage to Opposer; Applicant’s LITTLESTAR Word Mark and LITTLESTAR Design Mark so resemble
`
`Opposer’s registered and incontestable STAR Marks previously used and registered in the United States
`
`and not abandoned as to be likely to cause confusion, or to cause mistake, or to deceive; Opposer enjoys
`
`priority over Applicant’s rights to use its confusingly similar mark; and Applicant’s registration and use of
`
`the LITTLESTAR Word Mark and LITTLESTAR Design Mark will suggest falsely a connection between
`
`Applicant and Opposer, or the source of the goods and services offered by each.
`
`
`
`
`
`FG: 102344542.1
`
`

`

`
`
`WHEREFORE, Opposer respectfully requests that registration of U.S. Trademark Application
`
`Serial Nos. 97561030 and 97566615 be refused, that no registration be issued thereon to Applicant, and
`
`that this Consolidated Opposition be sustained in favor of Opposer.
`
`Dated this 16h day of January, 2024.
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`STAR AUTISM SUPPORT LLC
`
`By:
`
`
`
`
`
`
`
`
` /Daniel M. Wadkins/
`Daniel M. Wadkins
`Foster Garvey, P.C.
`618 W Riverside Ave #300
`Spokane, WA 99201
`dan.wadkins@foster.com
`Attorney for Opposer, Star Autism Support LLC
`
`FG: 102344542.1
`
`

`

`STAR
`
`Reg. No. 4,090,174
`
`STAR AUTISM SUPPORT, INC. (OREGON CORPORATION)
`6663 SW BEAVERTON HILLSDALE HWY, #119
`Registered Jan. 24, 2012 PORTLAND, oR 97225
`
`Int. Cls.: 9, 16 and 41
`
`TRADEMARK
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FOR: DIGITAL MEDIA, NAMELY, CDS AND DVDS FEATURING INSTRUCTIONAL,
`EDUCATIONAL, AND TEACHING MATERIAL FOR THE PURPOSE OF EDUCATING INDI(cid:173)
`VIDUALS WITH SPECIAL NEEDS, IN CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).
`
`FIRST USE 11-18-2005; IN COMMERCE 11-18-2005.
`
`FOR: PRINTED INSTRUCTIONAL, EDUCATIONAL, AND TEACHING MATERIALS IN THE
`FIELD OF EDUCATING INDIVIDUALS WITH SPECIAL NEEDS, IN CLASS 16 (U.S. CLS.
`2, 5, 22, 23, 29, 37, 38 AND 50).
`
`FIRST USE 11-18-2006; IN COMMERCE 11-18-2006.
`
`FOR: EDUCATIONAL SERVICES, NAMELY, PROVIDING CLASSES, SEMINARS, WORK(cid:173)
`SHOPS, TRAINING, AND INSTRUCTION IN THE FIELD OF EDUCATING INDIVIDUALS
`WITH SPECIAL NEEDS, IN CLASS 41 (U.S. CLS. 100, 101 AND 107).
`
`FIRST USE 7-11-2004; IN COMMERCE 7-11-2004.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR(cid:173)
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`OWNER OF U.S. REG. NO. 3,488,207.
`
`SER. NO. 85-307,834, FILED 4-28-2011.
`
`JASON TURNER, EXAMINING ATTORNEY
`
`Director of the United States Patent and frademark Office
`
`

`

`Generated on: This page was generated by TSDR on 2024-01-16 17:18:05 EST
`
`Mark: STAR
`
`US Serial Number: 85307834
`
`US Registration
`Number:
`
`4090174
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Trademark, Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Status: The registration has been renewed.
`
`Status Date: Apr. 04, 2022
`
`Publication Date:Aug. 02, 2011
` 
`
`Application Filing
`Date:
`
`Apr. 28, 2011
`
`Registration Date: Jan. 24, 2012
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Mark Information
`
`Mark Literal
`Elements:
`
`STAR
`
`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
`
`Related Properties Information
`
`Claimed Ownership
`of US
`Registrations:
`
`3488207
`
`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: Digital media, namely, CDs and DVDs featuring instructional, educational, and teaching material for the purpose of educating
`individuals with special needs
`
`International
`Class(es):
`
`009 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 021, 023, 026, 036, 038
`
`First Use: Nov. 18, 2005
`
`Use in Commerce: Nov. 18, 2005
`
`For: Printed instructional, educational, and teaching materials in the field of educating individuals with special needs
`
`International
`Class(es):
`
`016 - Primary Class
`
`U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
`
`

`

`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Nov. 18, 2006
`
`Use in Commerce: Nov. 18, 2006
`
`For: Educational services, namely, providing classes, seminars, workshops, training, and instruction in the field of educating individuals with
`special needs
`
`International
`Class(es):
`
`041 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`U.S Class(es): 100, 101, 107
`
`First Use: Jul. 11, 2004
`
`Use in Commerce: Jul. 11, 2004
`
`Basis Information (Case Level)
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Filed No Basis: No
`
`Currently No Basis: No
`
`Current Owner(s) Information
`
`Owner Name: STAR AUTISM SUPPORT LLC
`
`Owner Address: 6663 SW BEAVERTON-HILLSDALE HWY #119
`BEAVERTON, OREGON UNITED STATES 97225
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`OREGON
`
`Attorney/Correspondence Information
`
`Attorney Name: Daniel M. Wadkins
`
`Docket Number: 510991-62002
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`dan.wadkins@foster.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Daniel M. Wadkins
`Foster Garvey PC
`618 W. Riverside Avenue, Suite 300
`Spokane, WASHINGTON UNITED STATES 99201
`
`Phone: 509.777.1600
`
`Correspondent e-
`mail:
`
`dan.wadkins@foster.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Nov. 01, 2023
`
`AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
`
`Apr. 04, 2022
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
`
`Apr. 04, 2022
`
`REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
`
`Apr. 04, 2022
`
`REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
`
`Mar. 29, 2022
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Nov. 29, 2021
`
`TEAS SECTION 8 & 9 RECEIVED
`
`Aug. 06, 2021
`
`APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED
`
`Aug. 06, 2021
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Aug. 06, 2021
`
`ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
`
`Proceeding
`Number
`
`

`

`Aug. 06, 2021
`
`TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
`
`Aug. 06, 2021
`
`TEAS CHANGE OF OWNER ADDRESS RECEIVED
`
`Jan. 24, 2021
`
`COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
`
`Mar. 30, 2017
`
`NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
`
`Mar. 30, 2017
`
`REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
`
`Mar. 30, 2017
`
`CASE ASSIGNED TO POST REGISTRATION PARALEGAL
`
`Jan. 31, 2017
`
`TEAS SECTION 8 & 15 RECEIVED
`
`Jan. 31, 2017
`
`TEAS CHANGE OF CORRESPONDENCE RECEIVED
`
`Jan. 24, 2017
`
`COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
`
`Jan. 24, 2012
`
`REGISTERED-PRINCIPAL REGISTER
`
`Dec. 16, 2011
`
`EXTENSION OF TIME TO OPPOSE PROCESS - TERMINATED
`
`Aug. 19, 2011
`
`EXTENSION OF TIME TO OPPOSE RECEIVED
`
`Aug. 02, 2011
`
`OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
`
`Aug. 02, 2011
`
`PUBLISHED FOR OPPOSITION
`
`Jun. 30, 2011
`
`LAW OFFICE PUBLICATION REVIEW COMPLETED
`
`Jun. 30, 2011
`
`ASSIGNED TO LIE
`
`Jun. 13, 2011
`
`APPROVED FOR PUB - PRINCIPAL REGISTER
`
`Jun. 13, 2011
`
`EXAMINER'S AMENDMENT ENTERED
`
`Jun. 13, 2011
`
`NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
`
`Jun. 13, 2011
`
`EXAMINERS AMENDMENT E-MAILED
`
`Jun. 13, 2011
`
`EXAMINERS AMENDMENT -WRITTEN
`
`Jun. 09, 2011
`
`ASSIGNED TO EXAMINER
`
`May 05, 2011
`
`NOTICE OF PSEUDO MARK MAILED
`
`May 04, 2011
`
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
`
`May 02, 2011
`
`NEW APPLICATION ENTERED
`TM Staff and Location Information
`
`Current Location: GENERIC WEB UPDATE
`
`Date in Location: Apr. 04, 2022
`
`Assignment Abstract Of Title Information
`
`TM Staff Information - None
`
`File Location
`
`Summary
`
`Total Assignments: 1
`
`Conveyance: ENTITY CONVERSION
`
`Reel/Frame: 8235/0628
`
`Date Recorded: Oct. 23, 2023
`
`Supporting
`Documents:
`
`assignment-tm-8235-0628.pdf
`
`Assignment 1 of 1
`
`Registrant: STAR Autism Support, Inc.
`
` 
`
`Pages: 4
`
`Assignor
`
`Name: STAR AUTISM SUPPORT, INC.
`
`Execution Date: Sep. 14, 2023
`
`Legal Entity Type: CORPORATION
`
`Name: STAR AUTISM SUPPORT LLC
`
`Legal Entity Type: LIMITED LIABILITY COMPANY
`
`State or Country
`Where Organized:
`
`OREGON
`
`Assignee
`
`State or Country
`Where Organized:
`
`OREGON
`
`Address: 6663 SW BEAVERTON-HILLSDALE HWY #119
`BEAVERTON, OREGON 97225
`
`Correspondent
`
`Correspondent
`Name:
`
`DANIEL M. WADKINS, FOSTER GARVEY PC
`
`

`

`Correspondent
`Address:
`
`618 W. RIVERSIDE AVENUE, SUITE 300
`SPOKANE, WA 99201
`
`Domestic Representative - Not Found
`Proceedings
`
`Summary
`
`Number of
`Proceedings:
`
`4
`
`Type of Proceeding: Opposition
`
` 
`
`Proceeding
`Number:
`
`91287746
`
`Status: Suspended
`
`Interlocutory
`Attorney:
`
`REBECCA J STEMPIEN_COYLE
`
`Filing Date: Oct 18, 2023
`
`Status Date: Dec 08, 2023
`
`Defendant
`
`Name: Starfish Social Club, LLC
`
`Correspondent
`Address:
`
`STARFISH SOCIAL CLUB, LLC
`13300 OLD BLANCO RD, STE 190
`SAN ANTONIO TX UNITED STATES , 78216
`
`brightesttimelinesteph@gmail.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`STARFISH SOCIAL CLUB
`
`97228944
`
`Plaintiff(s)
`
`Name: Star Autism Support, Inc.
`
`Correspondent
`Address:
`
`DANIEL M. WADKINS
`FOSTER GARVEY PC
`618 W. RIVERSIDE AVENUE, SUITE 300
`SPOKANE WA UNITED STATES , 99201
`
`dan.wadkins@foster.com , trademarks@foster.com , carrie.lofts@foster.com
`
`Application Status
`
`Serial Number
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`STAR
`
`STAR
`
`Registration
`Number
`
`4090174
`
`4141409
`
`5013682
`
`3488207
`
`Due Date
`
`Nov 27, 2023
`
`85307834
`
`85307861
`
`86493797
`
`77374582
`
`Date
`
`Dec 08, 2023
`
`Oct 18, 2023
`
`Oct 18, 2023
`
`Oct 18, 2023
`
`STAR AUTISM SUPPORT
`
`STAR AUTISM SUPPORT
`
`Entry Number
`
`History Text
`
`NOTICE OF DEFAULT
`
`INSTITUTED
`
`NOTICE AND TRIAL DATES SENT; ANSWER DUE:
`
`FILED AND FEE
`
`4
`
`3
`
`2
`
`1
`
`Prosecution History
`
`Proceeding
`Number:
`
`91277496
`
`Status: Terminated
`
`Interlocutory
`Attorney:
`
`ANDREW P BAXLEY
`
`Name: Firstar
`
`Correspondent FIRSTAR
`
`Type of Proceeding: Opposition
`
`Filing Date: Jul 20, 2022
`
`Status Date: Dec 06, 2022
`
`Defendant
`
`

`

`Address: 618 EAST SOUTH STREET SUITE 500
`ORLANDO FL UNITED STATES , 32801
`
`jatkins@firstbehavioral.org
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`FIRSTAR
`
`Name: Star Autism Support, Inc.
`
`Correspondent
`Address:
`
`DAN WADKINS
`FOSTER GARVEY PC
`618 W. RIVERSIDE AVENUE, SUITE 300
`SPOKANE WA UNITED STATES , 99201
`
`dan.wadkins@foster.com , carrie.lofts@foster.com
`
`Correspondent e-
`mail:
`
`Associated marks
`
`Mark
`
`STAR
`
`STAR
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`90531945
`
`Plaintiff(s)
`
`Application Status
`
`Serial Number
`
`Registration
`Number
`
`4090174
`
`4141409
`
`5013682
`
`3488207
`
`Due Date
`
`Oct 03, 2022
`
`Aug 29, 2022
`
`85307834
`
`85307861
`
`86493797
`
`77374582
`
`Date
`
`Dec 06, 2022
`
`Dec 06, 2022
`
`Oct 21, 2022
`
`Aug 24, 2022
`
`Jul 20, 2022
`
`Jul 20, 2022
`
`Jul 20, 20