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`ESTTA1390045
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`Filing date:
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`10/16/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91291053
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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
`Spindlehorse
`
`JASON ZEDECK
`LAW OFFICE OF JASON ZEDECK
`P.O. BOX 35210
`LOS ANGELES, CA 90035-0210
`UNITED STATES
`Primary email: jason@zedecklaw.com
`310-849-0336
`
`Other Motions/Submissions
`
`Jason Zedeck
`
`jason@zedecklaw.com
`
`/jasonzedeck/
`
`10/16/2024
`
`HELLUVA BOSS - Stipulated Motion to Amend Application - For Submissio
`n.pdf(309304 bytes )
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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Trademark Application Serial No. 97863568
`Mark: HELLUVA BOSS
`Filed: March 29, 2023
`Published: February 20, 2024
`International Classes: 16, 25, 28 and 41
`
`__________________________________________
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`Applicant.
`__________________________________________)
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`
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`HUGO BOSS AG,
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`v.
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`Spindlehorse
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`
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`Opposer,
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`Opposition No.: 91291053
`
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`STIPULATED MOTION TO AMEND APPLICATION AND WITHDRAWAL OF
`OPPOSITION
`
`
`
`Pursuant to TBMP § 605.03(b), the parties hereby stipulate that the subject application,
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`Serial No. 97863568 (the “Application”) shall be amended accordingly:
`
`Redline Version of Amended Goods and Services:
`
`International Class 16
`Art pictures in the nature of drawings; Art pictures in the nature of paintings; Art prints;
`Blank journal books; Blank note cards; Cartoon prints; Collectible printed trading cards;
`Colored pencils; Colored pens; Craft paper; Decals; Drawing pads; Drawing paper;
`Erasers; Gift wrap paper; Gift wrapping paper; Graphic art prints; Graphic art
`reproductions; Graphic prints; Notebook covers; Paper gift bags; Paper tablecloths; Party
`decorations of paper; Party ornaments of paper; Pen and pencil boxes; Pen and pencil
`cases; Pencils; Pens; Photographic prints; Printed notebooks; Printed books in the field of
`action, adventure, animation being animation cels and cartoon strips, children's
`entertainment, comedy, drama, fantasy, fiction, mystery and science fiction; Printed
`calendars; Printed children's activity books; Printed children's books; Printed comic
`strips; Printed fiction books on a variety of topics; Printed greeting cards; Printed note
`cards; Printed picture cards; Printed postcards; Printed posters; Printed stationery; Series
`of printed children's books; Sketch books; Stationery; Stickers; Stickers and sticker
`
`
`
`albums; Wall decals; Wall stickers; Wrapping paper, all the forgoing goods related to
`an animated series
`
`International Class 25 (Class deleted)
`Socks; Vests; Bandanas; Shoes; Shorts; Skirts; Aprons; Baseball caps and hats; Bottoms
`as clothing; Cap visors; Clothing jackets; Coats; Dresses; Footwear; Gloves; Hats;
`Headbands; Headwear; Hoodies; Leggings; Loungewear; Neckties; Pajamas; Pants;
`Rainwear; Scarves; Shirts; Short-sleeved or long-sleeved t-shirts; Short-sleeved shirts;
`Sleepwear; Sweatbands; Sweaters; Sweatpants; Sweatshirts; Swimwear; Ties as clothing;
`Tops as clothing; Underwear; Veils
`
`International Class 28
`Plush toys; Action figure toys; Action figures; Action figures and accessories therefor;
`Balloons; Balls for games; Board games; Card games; Children's multiple activity toys;
`Doll accessories; Dolls; Electronic action toys; Game tables; Molded toy figures; Play
`balls; Playing cards; Puppets; Smart plush toys; Soft sculpture plush toys; Stuffed and
`plush toys; Stuffed dolls; Stuffed puppets; Stuffed toys; Toy action figures; Toy action
`figures and accessories therefor; Trading cards for games, all the forgoing goods related
`to an animated series
`
`International Class 41
`Production and distribution of motion pictures; Production and distribution of television
`shows and movies; Production of films; Production of television programs; Entertainment
`in the nature of ongoing television programs in the field of action, adventure, animated
`cartoons, children's entertainment, comedy, drama, fantasy, mystery and science fiction;
`Entertainment services, namely, an ongoing series featuring action, adventure, animated
`cartoons, children's entertainment, comedy, drama, fantasy, mystery and science fiction
`provided through Internet transmission and streaming; Entertainment services, namely,
`continuing video programs featuring action, adventure, animated cartoons, children's
`entertainment, comedy, drama, fantasy, mystery and science fiction accessible by means
`of Internet transmission and streaming; Entertainment services, namely, continuing video
`programs featuring action, adventure, animated cartoons, children's entertainment,
`comedy, drama, fantasy, mystery and science fiction distributed via various platforms
`across multiple forms of transmission media; Entertainment services, namely, production
`and distribution of ongoing television programs in the field of action, adventure,
`animated cartoons, children's entertainment, comedy, drama, fantasy, mystery and
`science fiction; Entertainment services, namely, providing video podcasts in the field of
`action, adventure, animated cartoons, children's entertainment, comedy, drama, fantasy,
`mystery and science fiction; Entertainment, namely, production of television programs,
`videos and video segments; Entertainment, namely, a continuing children's entertainment
`and animated cartoon show broadcast over television, satellite, audio, and video media;
`Production and distribution of videos in the field of action, adventure, animated cartoons,
`children's entertainment, comedy, drama, fantasy, mystery and science fiction; Providing
`a website featuring non-downloadable videos in the field of action, adventure, animated
`cartoons, children's entertainment, comedy, drama, fantasy, mystery and science fiction;
`Providing films, not downloadable, via video-on-demand transmission services;
`
`
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`Providing non-downloadable videos in the field of action, adventure, animated cartoons,
`children's entertainment, comedy, drama, fantasy, mystery and science fiction via a
`website; Providing on-line videos featuring action, adventure, animated cartoons,
`children's entertainment, comedy, drama, fantasy, mystery and science fiction, not
`downloadable; Providing online non-downloadable videos in the field of action,
`adventure, animated cartoons, children's entertainment, comedy, drama, fantasy, mystery
`and science fiction; Providing television programs, not downloadable, via video-on-
`demand transmission services; Provision of non-downloadable films and movies via a
`video-on-demand service; Provision of non-downloadable films and television
`programmes via a video-on-demand service, all the forgoing services related to an
`animated series
`
`
`Clean Version of Amended Goods and Services
`
`International Class 16
`Art pictures in the nature of drawings; Art pictures in the nature of paintings; Art prints;
`Blank journal books; Blank note cards; Cartoon prints; Collectible printed trading cards;
`Colored pencils; Colored pens; Craft paper; Decals; Drawing pads; Drawing paper;
`Erasers; Gift wrap paper; Gift wrapping paper; Graphic art prints; Graphic art
`reproductions; Graphic prints; Notebook covers; Paper gift bags; Paper tablecloths; Party
`decorations of paper; Party ornaments of paper; Pen and pencil boxes; Pen and pencil
`cases; Pencils; Pens; Photographic prints; Printed notebooks; Printed books in the field of
`action, adventure, animation being animation cels and cartoon strips, children's
`entertainment, comedy, drama, fantasy, fiction, mystery and science fiction; Printed
`calendars; Printed children's activity books; Printed children's books; Printed comic
`strips; Printed fiction books on a variety of topics; Printed greeting cards; Printed note
`cards; Printed picture cards; Printed postcards; Printed posters; Printed stationery; Series
`of printed children's books; Sketch books; Stationery; Stickers; Stickers and sticker
`albums; Wall decals; Wall stickers; Wrapping paper, all the forgoing goods related to an
`animated series
`
`International Class 28
`Plush toys; Action figure toys; Action figures; Action figures and accessories therefor;
`Balloons; Balls for games; Board games; Card games; Children's multiple activity toys;
`Doll accessories; Dolls; Electronic action toys; Game tables; Molded toy figures; Play
`balls; Playing cards; Puppets; Smart plush toys; Soft sculpture plush toys; Stuffed and
`plush toys; Stuffed dolls; Stuffed puppets; Stuffed toys; Toy action figures; Toy action
`figures and accessories therefor; Trading cards for games, all the forgoing goods related
`to an animated series
`
`International Class 41
`Production and distribution of motion pictures; Production and distribution of television
`shows and movies; Production of films; Production of television programs; Entertainment
`in the nature of ongoing television programs in the field of action, adventure, animated
`cartoons, children's entertainment, comedy, drama, fantasy, mystery and science fiction;
`Entertainment services, namely, an ongoing series featuring action, adventure, animated
`cartoons, children's entertainment, comedy, drama, fantasy, mystery and science fiction
`
`
`
`provided through Internet transmission and streaming; Entertainment services, namely,
`continuing video programs featuring action, adventure, animated cartoons, children's
`entertainment, comedy, drama, fantasy, mystery and science fiction accessible by means
`of Internet transmission and streaming; Entertainment services, namely, continuing video
`programs featuring action, adventure, animated cartoons, children's entertainment,
`comedy, drama, fantasy, mystery and science fiction distributed via various platforms
`across multiple forms of transmission media; Entertainment services, namely, production
`and distribution of ongoing television programs in the field of action, adventure,
`animated cartoons, children's entertainment, comedy, drama, fantasy, mystery and
`science fiction; Entertainment services, namely, providing video podcasts in the field of
`action, adventure, animated cartoons, children's entertainment, comedy, drama, fantasy,
`mystery and science fiction; Entertainment, namely, production of television programs,
`videos and video segments; Entertainment, namely, a continuing children's entertainment
`and animated cartoon show broadcast over television, satellite, audio, and video media;
`Production and distribution of videos in the field of action, adventure, animated cartoons,
`children's entertainment, comedy, drama, fantasy, mystery and science fiction; Providing
`a website featuring non-downloadable videos in the field of action, adventure, animated
`cartoons, children's entertainment, comedy, drama, fantasy, mystery and science fiction;
`Providing films, not downloadable, via video-on-demand transmission services;
`Providing non-downloadable videos in the field of action, adventure, animated cartoons,
`children's entertainment, comedy, drama, fantasy, mystery and science fiction via a
`website; Providing on-line videos featuring action, adventure, animated cartoons,
`children's entertainment, comedy, drama, fantasy, mystery and science fiction, not
`downloadable; Providing online non-downloadable videos in the field of action,
`adventure, animated cartoons, children's entertainment, comedy, drama, fantasy, mystery
`and science fiction; Providing television programs, not downloadable, via video-on-
`demand transmission services; Provision of non-downloadable films and movies via a
`video-on-demand service; Provision of non-downloadable films and television
`programmes via a video-on-demand service, all the forgoing services related to an
`animated series
`
`
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`
`
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`
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`The parties further stipulate that, upon amendment of the Application as set forth above,
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`the instant opposition shall be dismissed with prejudice. In the event that the Board will not grant
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`the amendment, Opposer and Applicant request that the proceeding be suspended for three (3)
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`months so the parties can consider further settlement positions.
`
`Dated: October __, 2024
`11
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`Respectfully submitted,
`
`by: ____________________
`Jason P. Zedeck, Esq.
`Law Office of Jason Zedeck
`P.O. Box 35210
`Los Angeles, California 90035-0210
`E-mail: jason@zedecklaw.com
`Telephone: 310-849-0336
`
`Attorney for Applicant
`Spindlehorse
`
`by:____________________
`Sixtine Bousquet-Lambert, Esq.
`IP Legal Counsel
`HUGO BOSS Fashion Inc.
`55 Water Street, 48th floor
`New York, NY 10041
`Email:sixtine_bousquetlambert@hugoboss.com
`
`Attorney for Opposer
`HUGO BOSS AG
`
`
`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing STIPULATION TO
`AMENDMENT OF APPLICATION AND WITHDRAWAL OF OPPOSITION has been
`duly served on the Opposer via e-mail to Sixtine Bousquet-Lambert, Esq., Opposer’s counsel, at
`1116
`sixtine_bousquetlambert@hugoboss.com, on this __ day of October, 2024 to:
`
`
`
`
`by: ___/jasonpzedeck _______
`Jason Zedeck
`
`

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