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`ESTTA Tracking number:
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`ESTTA1132478
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`Filing date:
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`05/10/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92075659
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`Party
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`Correspondence
`Address
`
`Plaintiff
`Drunk Elephant, LLC
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`TRAVIS R. WIMBERLY
`PIRKEY BARBER PLLC
`1081 EAST 6TH STREET, SUITE 300
`AUSTIN, TX 78702
`UNITED STATES
`Primary Email: twimberly@pirkeybarber.com
`Secondary Email(s): estafki@pirkeybarber.com, eolson@pirkeybarber.com, tm-
`central@pirkeybarber.com
`512-322-5200
`
`Submission
`
`Filer's Name
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`Filer's email
`
`Other Motions/Submissions
`
`Travis R. Wimberly
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`twimberly@pirkeybarber.com, estafki@pirkeybarber.com,
`eolson@pirkeybarber.com, tmcentral@pirkeybarber.com
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`Signature
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`Date
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`/Travis R. Wimberly/
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`05/10/2021
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`Attachments
`
`Joint Resp to Board Order.pdf(1229946 bytes )
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Reg. No. 5,391,961
`
`Mark: SILI PHARMA
`Issued: January 30, 2018
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`
`
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`§
`§
`§
`§
`§
`§
`§
`§ Cancelation No. 92075659
`§
`§
`§
`§
`§
`§
`§
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`
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`DRUNK ELEPHANT, LLC,
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`
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`v.
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`SUERTE Y SALUD LLC,
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`
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`Petitioner
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`Respondent
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`
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`JOINT RESPONSE TO BOARD ORDER
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`
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`On April 14, 2021, the parties jointly filed a motion to amend the subject registration, U.S.
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`Reg. No. 5,391,961, to delete certain goods in Class 3. 12 TTABVUE. Shortly after, the Board
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`filed an order requiring (1) the applicable filing fee under Trademark Rule 2.6; and (2) a
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`declaration supporting the amendment under Trademark Rule 2.20. 14 TTABVUE. Counsel for
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`Petitioner then spoke to the interlocutory attorney by phone to clarify the order’s requirements.
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`On the first requirement, the Board is authorized to draw on the Deposit Account of
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`Petitioner’s counsel, Pirkey Barber PLLC, Account No. 50-3924/DUNK200/TRW, to cover the
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`applicable $100 filing fee under Trademark Rule 2.6(a)(11)(ii). Petitioner counsel’s electronic
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`signature below confirms consent for the Board to draw on the Deposit Account. On the second
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`requirement, Exhibit A attached to this joint motion contains a sworn declaration from Respondent
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`supporting the requested amendment.
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`
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`DATED: May 10, 2021
`
`Respectfully submitted,
`
`/Travis R. Wimberly/
`Travis R. Wimberly
`PIRKEY BARBER PLLC
`1801 E. 6th Street, Suite 300
`Austin, TX 78702
`(512) 322-5200
`twimberly@pirkeybarber.com
`
`Attorney for Petitioner
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`
`
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`/Rosenny Burgos/
`Rosenny Burgos
`LAW OFFICES OF ROSENNY BURGOS, PA
`18520 NW 67 Ave.
`Miami, FL 33015
`(305) 392-7476
`rbtrademark@rosennyburgos.com
`
`Attorney for Respondent
`
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`CERTIFICATE OF SERVICE
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`
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`I certify that I served a true and correct copy of this filing by email on counsel for
`Respondent on May 10, 2021.
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`
`/Travis R. Wimberly/
`Travis R. Wimberly
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`EXHIBIT A
`EXHIBIT A
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`
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`SWORN DECLARATION IN SUPPORT OF AMENDMENT
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`
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`LE )55%wgos£91,)“, hereby declare as follows:
`
`1.
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`Iama @égaei/
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`ofSuertey Salud LLC, theowner ofU. S. Reg. No. 5,391,961
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`covering the mark SILI PHARMA.
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`2.
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`l have authority to execute documents for and to legally bind Suerte y Salud LLC.
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`3. On behalf of Suerte y Salud LLC, I request that the Board delete the following goods from
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`the identification in US. Reg. No. 5,391,961: “Non—medicated skin care preparations,
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`namely, creams, lotions, gels, toners, cleaners and peels.” The result of this requested
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`amendment in context of the full identification is shown below:
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`1C 003. US 00] 004 006 050 051 052. G & S: Massage creams; Massage gels, other than
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` for medical purposes;
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`1C 005. US 006 018 044 046 051 052. G & S: Anti—inflammatory gels; Anti-inflammatory
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`ointments; Homeopathic anti-inflammatory ointment; Topical analgesic creams.
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`I understand that willful false statements and the like are punishable by fine or imprisonment, or
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`both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the
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`validity of the application or submission or any registration resulting therefrom, declares that all
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`statements made of his/her own knowledge are true and all statements made on information and
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`belief are believed to be true.
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`
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`Datezfi\:jflr~ é 5M/é/
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