ESTTA Tracking number:
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`ESTTA1398606
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`Filing date:
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`11/27/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91289318
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`Wander.com, Inc.
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`DAVID E. ARMENDARIZ
`PIRKEY BARBER PLLC
`1801 EAST 6TH STREET, SUITE 300
`AUSTIN, TX 78702
`UNITED STATES
`Primary email: tmcentral@pirkeybarber.com
`Secondary email(s): estafki@pirkeybarber.com, ckindel@pirkeybarber.com,
`flau@pirkeybarber.com, twimberly@pirkeybarber.com
`512-322-5200
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`Motion to Amend Application
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`Elizabeth Stafki
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`tmcentral@pirkeybarber.com, ckindel@pirkeybarber.com, es-
`tafki@pirkeybarber.com
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`/Elizabeth Stafki/
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`11/27/2024
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`WANDER Logo Vertical Consented Motion to Amend and Contingent Withdra
`wal.pdf(207962 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Application Serial No. 97/581,099
`Filed: September 7, 2022
`Mark: WANDER & Design
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`CREDIT ONE BANK, N.A.
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`WANDER.COM, INC.
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`v.
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`Opposer,
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`Opposition No. 91289318
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`Applicant.
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`JOINT MOTION FOR AMENDMENT OF APPLICATION AND CONTINGENT
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`CONSENTED WITHDRAWAL WITH PREJUDICE
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`Pursuant to Rule 2.133 of the Trademark Rules of Practice, Applicant respectfully requests
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`that the Class 9 goods, Class 36 services, and Class 42 services in the above-captioned application
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`be amended as shown in Exhibit A (stricken language in red indicates text to be deleted).
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`The amendments limit and simplify the current identification of goods and services in the
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`application and do not broaden their scope. See 37 C.F.R. 2.71(a) (“The applicant may amend the
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`application to clarify or limit, but not to broaden, the identification of goods and/or services.”). As
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`such, these amendments do not require republication.
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`These amendments are made pursuant to an Agreement between Applicant and Opposer,
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`who has consented to these amendments. If the amendments are approved by the Board, Opposer,
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`with Applicant’s consent, requests that the opposition be withdrawn with prejudice.
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`The parties further request that the opposition proceeding be suspended pending disposition
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`of this Joint Motion.
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`CONCLUSION
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`Applicant respectfully requests that this request to amend the application be granted in its
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`entirety.
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`Dated: November 27, 2024
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`Respectfully submitted,
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`
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`/Elizabeth Stafki/
`Chris M. Kindel
`Jered E. Matthysse
`Elizabeth Stafki
`PIRKEY BARBER PLLC
`1801 East 6th Street, Suite 300
`Austin, TX 78702
`(512) 322-5200
`(512) 322-5201 (fax)
`ckindel@pirkeybarber.com
`jmatthysse@pirkeybarber.com
`estafki@pirkeybarber.com
`Attorneys for Applicant
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`CONSENTED TO:
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`ARENTFOX SCHIFF LLP
`Attorneys for Opposer
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`By: /Jessica J. Slusser/
`Michelle A. Cooke
`Jessica J. Slusser
`555 South Flower St., 43rd Floor
`Los Angeles, CA 90071
`michelle.cooke@afslaw.com
`andrew.sevanian@afslaw.com
`jessica.slusser@afslaw.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 27, 2024 a true and correct copy of this Joint Motion for
`Amendment of Application and Contingent Consented Withdrawal With Prejudice has been served
`on Opposer’s counsel by email:
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`Michelle A. Cooke
`ARENTFOX SCHIFF LLP
`555 South Flower St., 43rd Floor
`Los Angeles, CA 90071
`TMdocket@afslaw.com
`michelle.cooke@afslaw.com
`andrew.sevanian@afslaw.com
`jessica.slusser@afslaw.com
`ross.panko@afslaw.com
`todd.hopkins@afslaw.com
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`/Elizabeth Stafki/
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` Elizabeth Stafki
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`EXHIBIT A
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`Class 9: Downloadable computer software for mobile devices for booking temporary
`accommodation and vacation real estate listings; downloadable software in the nature of a mobile
`application for booking temporary accommodation and vacation real estate listings and for
`processing financial transactions; downloadable applications for use with mobile devices for
`booking and making reservations for temporary accommodation and vacation real estate listing
`and for processing financial transactions; downloadable computer software platform that facilitates
`the provision of information and processing financial transactions relating to temporary
`accommodation and vacation real estate listing services
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`Class 36: Rental of homes and apartments; Providing ratings, reviews, and recommendations of
`rental properties posted by renters via a website
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`Class 39: Providing a website featuring travel information and commentary; providing travel
`information to travelers regarding fares, timetables and public transport; providing a website
`featuring information on travel; providing an on-line computer database in the field of travel
`information services; providing an on-line searchable computer database featuring information
`on travel; providing information about travel, via the internet; providing information, news and
`commentary in the field of travel; providing reviews of travel service providers; providing links
`to the web sites of others featuring transportation and travel
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`Class 42: Providing temporary use of web-based software application that allows users of mobile
`phones, portable media players, handheld computers and related mobile devices to arrange for
`the remote exchange of keys to lodgings and homes and for locking and software application that
`allows users of mobile phones, portable media players, handheld computers and related mobile
`devices to rent temporary lodging, access information, listings and announcements about
`temporary accommodations and vocation rentals; providing temporary use of web-based
`software application that allows users of mobile phones, portable media players, handheld
`computers and related mobile devices to provide reviews and feedback about temporary lodging;
`providing temporary use of web-based software application that allows users of mobile phones,
`portable media players, handheld computers and related mobile devices to make payments for
`the purchases of goods and services; providing temporary use of web-based software application
`that allows users of mobile phones, portable media players, handheld computers and related
`mobile devices to search for travel, temporary accommodation, travel information and related
`topics and for making reservations and bookings for temporary accommodations; providing
`temporary use of web-based software application that allows users of mobile phones, portable
`media players, handheld computers and related mobile devices to provide travel reviews and
`recommendations for local attractions; software as a service (SaaS) services featuring software
`that allows users of mobile phones, portable media players, handheld computers and related
`mobile devices to arrange for the remote exchange of keys to lodgings, homes and vehicles and
`for locking and unlocking lodgings homes and vehicles; software as a service (SaaS) services
`featuring software management tools that allows users of mobile phones, portable media players,
`handheld computers and related mobile devices to arrange for temporary lodging check-in help;
`software as a service (SaaS) services featuring software that allows users of mobile phones,
`portable media players, handheld computers and related mobile devices to rent temporary
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`lodging, access information, listings and announcements about temporary lodging; software as a
`service (SaaS) services featuring software that allows users of mobile phones, portable media
`players, handheld computers and related mobile devices to provide reviews and feedback about
`temporary lodging; software as a service (SaaS) services featuring software that allows users of
`mobile phones, portable media players, handheld computers and related mobile devices to make
`payments for the purchases of goods and services; software as a service (SaaS) services featuring
`software that allows users of mobile phones, portable media players, handheld computers and
`related mobile devices to search for travel, temporary accommodation, travel information and
`related topics and for making reservations and bookings for transportation, temporary
`accommodations; providing a website featuring a search engine for the purpose of booking
`temporary housing accommodations and lodging
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`Class 43: Arranging temporary housing accommodations and lodging; providing information
`regarding temporary housing accommodation and lodging via the internet; providing travel
`lodging and accommodation information services over global computer networks, namely, an
`online searchable database featuring information about temporary housing accommodations and
`lodging; providing information about the rental of temporary lodging, temporary
`accommodations and temporary vacation accommodations, namely, property descriptions,
`property images, reviews, locations, amenities, availability and rates; Providing online
`reservation and booking for temporary lodging, temporary accommodations and temporary
`vacation accommodations; providing information about temporary lodging, temporary
`accommodations and temporary vacation accommodations by an interactive website
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