Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1049801
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`Filing date:
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`04/17/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Petition for Cancellation
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`Notice is hereby given that the following party has filed a petition to cancel the registration indicated below.
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`Petitioner Information
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`Name
`
`Entity
`
`Address
`
`Attorney informa-
`tion
`
`Admar International, Inc.
`
`Corporation
`
`Citizenship
`
`Delaware
`
`3030 Aurora Avenue
`Monroe, LA 71201
`UNITED STATES
`
`Robert M. Chiaviello, Jr.
`NubyLaw
`3030 Aurora Avenue
`Monroe, LA 71201
`UNITED STATES
`bobc@nuby.com
`3184104012
`
`Registration Subject to Cancellation
`
`Registration No.
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`4514183
`
`Registration date
`
`04/15/2014
`
`Registrant
`
`J-1 Trading Wholesale, Inc.
`537 El Sur St.
`Duarte, CA 910103156
`UNITED STATES
`
`Additional Registrant Information
`
`Additional registrant in-
`formation provided by
`the petitioner
`
`1191 Huntington Dr., STE 161
`Duarte, CA 91010
`UNITED STATES
`no email provided
`662-586-1029
`
`Goods/Services Subject to Cancellation
`
`Class 009. First Use: 2013/03/01 First Use In Commerce: 2013/03/01
`All goods and services in the class are subject to cancellation, namely: Thermometers
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`Grounds for Cancellation
`
`Abandonment
`
`Fraud on the USPTO
`
`Trademark Act Section 14(3)
`
`Trademark Act Section 14(3); In re Bose Corp.,
`580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
`2009)
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`

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`Attachments
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`Nubee - US Cancellation - Reg No. 4,514,183 - Petition - Final.pdf(267032 bytes
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`Signature
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`/Robert M. Chiaviello, Jr./
`
`Name
`
`Date
`
`Robert M. Chiaviello, Jr.
`
`04/17/2020
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
`In the Matter of Registration No. 4,514,183
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`For the Mark: NUBEE
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`Registered: 15 April 2014
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`ADMAR INTERNATIONAL, INC.,
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`Petitioner,
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`Cancellation No. _________
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`J-1 TRADING WHOLESALE, INC.,
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`v.
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`Respondent.
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`Admar International, Inc., Petitioner, a corporation organized and existing under the laws
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`of Delaware with a principal place of business at 3030 Aurora Avenue, Monroe, LA 71201,
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`believes that it has been and will continue to be damaged by U.S. Trademark Registration No.
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`4,514,183 for the mark NUBEE, and hereby petitions for cancellation of the NUBEE registration
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`pursuant to Section 14(3) of the Lanham Trademark Act of 1946 ("Lanham Act"), 15 U.S.C. §
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`1064(3).
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`As grounds for cancellation, Petitioner alleges as follows:
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`1. Petitioner is in the business of owning and licensing intellectual property.
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`2. Petitioner is the owner of U.S. Trademark Registration No. 2,335,700 for the word mark
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`NUBY for infant pacifiers in International Class 10.
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`1
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`3. Petitioner is the owner of twelve U.S. Trademark applications for the word mark NUBY
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`in the various international classes, including for medical thermometers in International
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`Class 10, and for the various goods and services as set out in the chart attached as Exhibit
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`A.
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`4. Petitioner has licensed the NUBY word mark in interstate commerce in the United States
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`to Luv n’ care, Ltd., continuously since January 1, 1998 for use in connection with the sale
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`and distribution of products falling within International Class 10 including medical
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`thermometers. Petitioner and its licensee have sold since 1998 substantial quantity of
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`goods falling with International Class 10 including medical thermometers. All good will
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`associated with the use of the NUBY mark accrues to the benefit of Petitioner.
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`5. As a result of the widespread, continuous, and exclusive use of the NUBY mark on
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`products falling within International Class 10, including medical thermometers, to identify
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`Petitioner as their ultimate source, Petitioner owns valid and subsisting federal statutory
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`and common law rights to the NUBY mark for use on medical thermometers.
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`6. Petitioner’s NUBY mark is distinctive to both the consuming public and Petitioner’s trade.
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`7. Since 1998, Petitioner and Petitioner’s licensee have expended substantial time, money and
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`resources marketing and promoting products falling within International Class 10,
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`including medical thermometers, sold under the NUBY mark throughout the United States
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`including the use of point of purchase materials, displays and social media.
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`8. The products falling within International Class 10, including medical thermometers,
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`Petitioner has licensed under the NUBY mark are of high quality encompassing attractive
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`and unique product designs and are constructed of high quality materials using state of the
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`art manufacturing. Petitioner has at all times exercised control over the quality of the
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`2
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`products licensed for use under the NUBY mark to insure that they are of the highest
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`quality.
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`9. Upon information and belief, Respondent, J-1 Trading Wholesale, Inc., a California
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`corporation with an address of 537 Sur Street, Duarte, California 91010, is the current listed
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`owner of Registration No. 4,514,183 for the mark NUBEE in connection with non-medical
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`thermometers in International Class 9. That trademark registration, based on an application
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`filed on September 4, 2013, was issued on April 15, 2014.
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`10. Upon information and belief, Respondent is not and has not used the NUBEE mark in
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`connection with non-medical thermometers for many years with no intention of using the
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`mark for non-medical thermometers and therefore has abandoned the NUBEE mark.
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`11. Petitioner’s NUBY mark has been used on medical thermometers since 1998 and was
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`widely known to the industry and consuming public at the time Respondent filed the
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`application for Registration No. 4,514,183 or any other date on which the Respondent may
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`rely for purposes of priority. Upon information and belief, Respondent knew or should
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`have known that Petitioner’s NUBY mark was in widespread use on medical thermometers.
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`Upon information and belief, Respondent was not using the NUBEE mark on non-medical
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`thermometers and had no bona fide intention of using the NUBEE mark on non-medical
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`thermometers at the time Respondent filed the application to register the NUBEE mark or
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`at any time thereafter. Upon information and belief, Respondent deliberately and with the
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`intent to defraud the U.S. Patent and Trademark Office filed its application in International
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`Class 10 for non-medical thermometers despite the fact it only used the mark on medical
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`thermometers so as to avoid a refusal based on Petitioner’s use on medical thermometers.
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`3
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`12. Respondent’s mark when spoken or used verbally is so like Petitioner’s NUBY mark that
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`Respondent knew or should have known that applying to register the NUBEE mark in Class
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`10 would have resulted in a refusal on the basis of likelihood of confusion with the medical
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`thermometers originating from Petitioner.
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`13. Respondent’s Trademark Registration No. 4,514,183 interferes with the sale of medical
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`thermometers falling within International Class 10 Petitioner offers under its NUBY mark.
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`GROUND FOR CANCELLATION –
`ABANDONMENT AND FRAUD
`
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`14. Respondent’s registration should be cancelled because it has not been used on non-medical
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`thermometers in International Class 9 and upon information and belief Respondent has
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`never had a bona fide intent to use the mark on goods falling within International Class 9
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`and therefore has abandoned the mark. Upon information and belief, Registrant filed its
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`application to register the mark in International Class 9, despite the fact it only used the
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`mark on goods falling with International Class 10, so as to avoid a refusal based on
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`Petitioner’s NUBY mark and therefore committed fraud in obtaining the registration.
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`Respondent’s registration interferes with Petitioner’s use of the NUBY mark and is causing
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`damage to Petitioner thereby.
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`4
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`WHEREFORE, Petitioner respectfully requests that its cancellation be sustained, and the
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`Respondent’s Trademark Registration No. 4,514,183 be cancelled.
`
`Respectfully submitted this 17th day of April 2020,
`
`_/s/Robert M. Chiaviello Jr._____
`Robert M. Chiaviello, Jr.
`NubyLaw
`New York Bar No. 2148687
`Texas Bar No. 04190720
`Louisiana Bar No. 37370
`3030 Aurora Avenue
`Monroe, LA 71201
`(318) 410-4012
`bobc@nuby.com
`
`Attorney for Petitioner Admar International, Inc.
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`5
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`EXHIBIT A
`EXHIBIT A
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`
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`6
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`

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`Serial
`Number
`
`Class
`
`88634179 3
`
`88634597 5
`
`Nuby Word Mark Applications
`
`Goods
`
`Baby bubble bath; Baby hair conditioner; Baby hand soap; Baby lotion; Baby oil;
`Baby oils; Baby powder; Baby powders; Baby shampoo; Baby sun creams; Baby
`wipes impregnated with cleaning preparations; Body cream; Body cream soap;
`Body creams; Body lotion; Body lotions; Body oil; Body oils; Body powder; Body
`scrub; Body scrubs; Body sprays; Body wash; Dish detergents; Face creams;
`Laundry detergent; Laundry detergents; Laundry fabric conditioner; Laundry soap;
`Lip balm; Lip balm; Lip cream; Moisturizing creams; Moisturizing creams;
`Moisturizing preparations for the skin; Shampoo-conditioners; Shampoos; Cases
`for baby wipes impregnated with cleaning preparations; Deodorants for body care;
`Disposable wipes impregnated with cleaning chemicals or compounds for industrial
`and commercial use; Face and body beauty creams; Face and body creams; Face
`and body lotions; Facial moisturizers; Hair shampoo; Hair shampoos and
`conditioners; Hand cleaning gels; Hand cleaners; Liquid laundry detergents; Liquid
`soaps for laundry; Lotions for face and body care; Moisturizing body lotions; Nasal
`cleaning preparations for personal sanitary purposes; Non-medicated lip balm that
`does not contain beeswax; Non-medicated lip balms; Non-medicated lip care
`preparations; Non-medicated balms for use on lips; Non-medicated herbal body
`care products, namely, body oils, salves, and lip balms; Non-medicated lotions for
`body; Non-medicated skin care preparation, namely, body mist; Non-medicated
`soaps for babies; Non-medicated soaps for babies; Powder laundry detergents;
`Pre-moistened towelettes impregnated with a detergent for cleaning; Scented
`body lotions and creams; Shampoos for babies; Skin moisturizer; Skin moisturizing
`gel; Skin care preparations, namely, body balm; Skin cleanser in liquid spray form
`for use as a baby wipe alternative; Tooth cleaning preparations
`Aloe Vera gel for therapeutic purposes; Aloe Vera preparations for therapeutic
`purposes; Anti-bacterial soap; Anti-cough drops; Anti-inflammatories; Anti-
`inflammatory and antipyretic preparations; Anti-inflammatory gels; Anti-
`inflammatory ointments; Anti-inflammatory salves; Anti-inflammatory sprays;
`Anti-itch cream; Anti-itch ointment; Antibacterial hand lotions; Antibacterial hand
`soaps; Antibacterial handwash; Antibacterial handwashes; Antibacterial liquid
`soap; Antibacterial liquid soaps; Antibacterial skin soaps; Antibacterial soap;
`Antibacterial spray; Antibacterial wipes; Babies' diaper-pants; Babies' diapers;
`Babies' diapers of paper; Babies' napkin-pants; Babies' napkins; Babies' swim
`diapers; Baby diapers; Baby food; Baby foods; Breast pads; Calamine lotion;
`Disposable sanitizing wipes; Disposable training pants; Hemorrhoid preparations;
`Hemorrhoid preparations; Hemorrhoid treatment preparations; Hemorrhoidal
`ointments; Herbal supplements; Homeopathic supplements; Hydrocortisone
`cream; Infant cloth diapers; Infant diaper covers; Infant formula; Insect repellents;
`Insect repellents
`in pre-moistened towelette form;
`Insect-repellents; Kits
`comprised primarily of sanitizer gel and disinfecting wipes and also including
`sanitary masks, plastic gloves and hand cream used for germ prevention;
`Mentholated ointment for medical use; Mercurial ointments for medical use; Nail
`fungus treatment preparations; Non-medicated topical gel for the prevention and
`
`
`
`7
`
`

`

`treatment of allergies; Non-medicated topical gel for the prevention and treatment
`of cold and flu; Nursing pads; Nutritional supplements; Nutritional supplements,
`namely, probiotic compositions; Pharmaceutical skin lotions; Preparations for
`repelling animals, birds and insects; Teething gels; Topical dermatological
`preparations that treat insect bites and stings; Topical first aid gel; Topical gel for
`medical and therapeutic treatment of diaper rash; Wearable insect repelling
`devices for attachment to clothing sold pre-filled with insect repelling preparations;
`Anti-insect spray; Bracelets impregnated with insect repellent; Breast-nursing
`pads; Dietary and nutritional supplements; Disposable baby diapers; Disposable
`swim diapers for children and infants; First aid kits; First aid kits for domestic or
`other non-professional use; Food for babies; Food for infants; Food for infants,
`namely, human breast milk; Gels, creams and solutions for dermatological use;
`Homeopathic anti-inflammatory ointment; In vitro gender prediction test kit; In-
`vitro ovulation prediction test kit for home use; Liquid herbal supplements; Liquid
`nutritional supplement; Medicated baby oils; Medicated baby powders; Medicated
`cream soap; Medicated creams for treating dermatological conditions; Medicated
`shampoos for babies; Medicated skin care preparations, namely, creams, lotions,
`gels, toners, cleaners and peels; Medicated soaps for babies; Medicated
`supplements for foodstuffs for babies; Medicinal creams for skin care; Mineral
`nutritional supplements; Mosquito-repellent patches for babies; Multipurpose
`medicated antibiotic cream, analgesic balm and mentholated salve; Nappies as
`baby diapers; Natural herbal supplements; Ovulation test kits; Powdered milk for
`babies; Pregnancy test kits for home use; Preparations to prevent nail-biting and
`thumb-sucking; Tissues impregnated with antibacterial preparations; Topical
`analgesic creams
`Electric food blenders; Electric food blenders; Electric food choppers; Electric food
`grinders; Electric food processors; Electric food slicers; Electric fruit peelers; Electric
`fruit presses; Electric fruit presses for household use; Electric fruit squeezers for
`household purposes; Electric juice extractors; Electric juicers; Electric mixers;
`Electric mixers for household purposes; Electrical juice extractors for fruit; Electrical
`squeezers for fruit and vegetable; Food processors, electric; Fruit presses, electric,
`for household purposes; Hand-held electric-powered food processors; Juice
`extractors, electric
`Emery boards; Fingernail clippers; Flatware, namely, forks, knives, and spoons;
`Manicure sets; Nail clippers; Nail scissors; Tableware, namely, knives, forks and
`spoons; Disposable tableware, namely, knives, forks and spoons; Disposable
`tableware, namely, spoons; Forks and spoons being tableware; Forks being
`tableware; Knives being tableware; Knives, forks, and spoons being tableware;
`Spoons being tableware; Spoons made of precious metal being tableware
`Babies' bottles; Baby bottle nipples; Baby bottle that plays sounds using wireless
`technology; Baby bottles; Baby feeding dummies; Baby feeding pacifiers; Baby
`nursers; Breast milk storage bottles; Breast pumps; Breast shields; Breast warmer
`pads for medical purposes; Dropper bottles for administering medication, sold
`empty; Droppers for administering medication, sold empty; Feeding bottle teats;
`Feeding bottles; Gum massaging instruments; Nasal aspirators; Nursing bottles;
`Pacifier clips; Pacifier cloth for attachment to infant pacifiers; Spoons for
`administering medicine; Teething rings; Thermometers for medical purposes;
`Thermometers for medical use; Bottle holders for holding babies' bottles, namely,
`holders for holding babies' bottles during feeding in the nature of flexible braces for
`wearing around the neck of the person holding a feeding baby; Bottle holders for
`holding babies' bottles, namely, holders for holding babies' bottles in the nature of
`rigid braces for clamping to babies' seats during feeding; Clinical thermometers;
`
`88634601 7
`
`88634604 8
`
`88634605 10
`
`
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`8
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`

`

`88634609 11
`
`88634611 20
`
`88634612 21
`
`Clips for pacifiers; Cups adapted for feeding babies and children; Dishes adapted
`for feeding babies and children; Disposable baby bottle liners; Disposable feeding
`bottle teats; Disposable teats being pacifiers for babies; Dummies for babies; Ear
`thermometers; Fever
`thermometers; Gum massagers
`for babies;
`Infrared
`thermometers for medical purposes; Nipples for baby bottles; Pacifiers for babies;
`Pouches specially adapted for holding pacifiers; Teats being pacifiers for babies;
`Teething rings incorporating baby rattles
`
`Baby bottle sterilizers; Child safe protective covers for bathtub spouts; Electric
`beverage heaters; Electric beverage warmers; Electric cup heaters; Electric food
`dehydrators; Electric food dehydrators for household purposes; Electric food
`warmers; Electric heater for infant food; Electric kettles; Electric kettles for
`household purposes; Electric plate warmers; Electric vaporizers for household
`purposes; Electric warmers for feeding bottles; Electrically-heated mugs; Toilet
`trainer seats, namely, smaller training seats for attachment to full-size toilets and
`toilet seats for training purposes; Electric heaters for babies' bottles; Heaters,
`electric, for feeding bottles; Toilet bowls for children; Toilet seat adaptors for children
`in the nature of a plastic device that is specially adapted to rest on a toilet seat; Toilet
`seats for children
`Baby bolsters; Baby bouncers; Baby changing mats; Baby changing platforms; Baby
`head support cushions; Baby walkers; Booster seats; Bottle racks; Clothes hangers;
`Anti-roll cushions for babies; Bath seats for babies; Cots for babies; Cribs for babies;
`Dual-purpose cushions for supporting a feeding bottle and the head and neck of an
`infant; Furniture primarily of metal, namely, mirrors, bed frames, dining tables, coffee
`tables, end tables, desks, display cases, shelving, dog gates, and baby gates;
`Hangers for clothes; Head positioning pillows for babies; Head support cushions for
`babies; High chairs for babies; Non-metal safety gates for babies, children, and pets;
`Pillows used for cradling, supporting, propping and feeding babies not for medical
`or therapeutic purposes; Plastic bottle caps for storing powdered nutritional
`supplements and for dispensing those supplements into the bottle; Playpens for
`babies; Portable baby bath seats for use in bath tubs
`Baby bathtubs; Bowls; Cleaning brushes for household use; Combs; Containers for
`household or kitchen use; Containers for household use; Containers for household
`use for enveloping and packaging domestic waste, including diapers and nappies,
`for storage and disposal, namely, sanitary waste disposal units comprising tubs or
`bins with or without reels or cassettes containing wrapping materials for enveloping
`waste; Cup lids; Cups; Cups and mugs; Cups, not of precious metal; Dish drying
`racks; Dishwashing brushes; Electric tooth brushes; Electric toothbrush replacement
`handles and recharging docks sold as a unit; Hair brushes; Hair, nail and tooth
`brushes; Hairbrushes; Infant bathtubs; Plastic bag holders for household use; Plastic
`bath racks; Plastic bathtubs for children; Plastic bottle with blown cavity insert sold
`empty; Plastic containers in the shape of fruits and vegetables for storing individual
`fruits and vegetables, and for extending the life of those fruits and vegetables; Plastic
`drink bottle identification tag; Plastic freezer pop forms; Plastic juice box holders;
`Plastic place mats; Plastic plates; Plastic water bottle holders and attached
`carabiner clip sold as a unit; Plastic water bottles sold empty; Potties for children;
`Sports bottles sold empty; Tooth brushes; Toothbrush cases; Toothbrush head
`covers; Toothbrush holders; Vegetable mashers; Bottle cleaning brushes; Dental
`care kit comprising toothbrushes and floss; Disposable gloves for home use; Double
`wall cups; Double wall cups with lids; Double wall cups with lids and straws; Drinking
`cups; Drinking cups for children and parts and fittings therefor, namely, drinking cups
`for children sold as a unit with non-insulated lids; Drinking cups for infants and parts
`and fittings therefor, namely, valves and lids sold as a unit; Drinking cups sold with
`lids therefor; Drinking bottles for sports; Drinking cups for babies and children;
`Drinking cups for babies and children and parts and fittings therefor, namely, cups
`for babies and children sold as a unit with valves and lids; Drinking straws for babies
`
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`9
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`

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`and children; Electric toothbrush replacement heads; Electric toothbrushes;
`Electrical toothbrushes; Finger toothbrushes; Finger toothbrushes for babies; Hair
`combs; Heat-insulated containers for beverages; Heat-insulated containers for
`household use; Home dental care product for babies and children's gums and teeth,
`namely, finger brushes; Inflatable bath tubs for babies; Insulated containers for food
`or beverage for domestic use; Insulated containers for food or beverages;
`Interdental brushes for cleaning the teeth; Manual toothbrushes; Multipurpose
`wiping cloth for use with infants and toddlers; Non-woven textile wipes for cleaning
`baby bottles and baby feeding equipment; Oral care kit comprising toothbrushes and
`floss; Paper and plastic cups; Place mats of plastic; Plastic cups; Plastic storage
`containers for domestic use; Plastic storage containers for household or domestic
`use; Plastic storage containers for household use; Portable potties for children;
`Portable beverage container holder; Portable plastic containers for storing
`household and kitchen goods; Powder applicator sold empty for holding and
`dispensing baby powder; Pre-moistened towelettes for cleaning; Re-usable or
`disposable plastic or silicone valves sold for use with training cups for babies and
`children; Recyclable flexible plastic pouches sold empty for holding water or
`nutritional liquids; Reusable plastic water bottles sold empty; Reusable self-sealing
`lids for household use for bowls, cups, containers and the storage of food; Reusable
`silicone food covers for household containers; Sippy cups; Stands for portable baby
`baths; Suction bowls; Tablemats of plastic; Thermal insulated containers for food or
`beverages; Thermally insulated containers for food; Tooth brushes, non-electric;
`Toothbrushes; Toothbrushes; Toothbrushes; Toothbrushes, electric; Training cups
`for babies and children; Training cups for infants
`Bath toy organizers in the nature of net bags secured by suction cups; Multi-strand
`lanyard used to attach a child's toys, bottles, books, sippy cup and other similar
`items to a stroller, car seat, high chair, store cart or other similar apparatus; Tethers
`in the nature of polypropylene straps that are secured with suction cups to an object
`for holding children's utensils and toys
`Baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted crib
`sheets, crib skirts, crib blankets, and diaper changing pad covers not of paper; Baby
`blankets; Burp cloths; Diaper changing pads not of paper; Diaper changing cloths
`for babies; Sleeping bags for babies
`Babies' pants; Babies' trousers; Baby bibs not of paper; Baby bodysuits; Baby
`bottoms; Baby tops; Children's and infant's apparel, namely, jumpers, overall
`sleepwear, pajamas, rompers and one-piece garments; Children's and infants'
`apparel treated with fire and heat retardants, namely, jumpers, overall sleepwear,
`pajamas, rompers and one-piece garments; Children's and infants' cloth bibs;
`Children's cloth eating bibs; Children's headwear; Children's underwear; Bibs for
`babies, sleeved, not of paper; Body suits for babies or children; Bottoms as clothing
`for babies or children; Clothing for babies, toddlers and children, treated with fire
`and heat retardants, namely, pajamas, jackets, shirts, pants, jumpers; Coats for
`babies or children; Dresses for babies or children; Hats for infants, babies, toddlers
`and children; Headwear for babies or children; Jackets for babies or children; Knitted
`baby shoes; One-piece garments for children; Pajamas for babies or children; Pants
`for babies or children; Plastic baby bibs; Shirts for infants, babies, toddlers and
`children; Shirts for babies or children; Shoes for babies or children; Shorts for babies
`or children
`Baby gyms; Baby multiple activity toys; Baby rattles; Baby rattles incorporating
`teething rings; Baby swings; Mobiles for children; Play balls; Toy animals; Toy
`animals and accessories therefor; Toy jewelry; Toy stuffed animals; Toy vehicles;
`Bath toys; Bathtub toys; Carry bags sold filled with children's toys; Children's multiple
`activity toys; Crib mobiles; Crib toys; Decorative toy mobiles and plush toys for
`children made of felt; Infant toys; Infant action crib toys; Infant development toys;
`Musical toys; Plastic character toys; Play mats containing infant toys; Plush toys;
`Plush toys with attached comfort blanket; Soft sculpture plush toys; Squeezable
`
`88634614 22
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`88634616 24
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`88634618 25
`
`88634623 28
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`
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`10
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`

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`squeaking toys; Squeeze toys; Stuffed toy animals; Stuffed toy bears; Stuffed toys;
`Stuffed and plush toys; Toy mobiles; Toy musical boxes; Two and three dimensional
`positionable toy figures sold as a unit with other toys; Water toys; Water squirting
`toys; Water-squirting toys
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`11
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