Global Format; No Form Number (Rev 8/2009) OMB No. 0651-0054 (Exp. 09/30/2014)
Petition to Make Special
The table below presents the data as entered. Input Field SERIAL NUMBER
85862083
REGISTRATION NUMBER FORM TEXT
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 Sir or Madam: Applicant, Olukai, LLC, hereby petitions the Director to advance the examination of the above C.F.R. §2.146, applicant may request that the initial examination of an application be expedite this petition, Pursuant to TMEP §1710, Applicant submits herewith the following statement of 1. 1. In May, May, 2009 2009,, Oluk Olukai ai,, LLC LLC (“Ap (“Appl plic ican ant” t”)) desi design gned ed a uni uniqu quee elem elemen entt to a heel heelst stay ay for for f designer this design element (the “Mark”) is proprietary to Applicant. See Exhibit 1A, an orig Applicant’s product showing the Mark. 2. On February 27, 2013, Applicant submitted a trade dress application for the Mark to th application serial number 85/862,083. 3. Based on the length of time and continuous use of the Mark by Applicant, the Mark is a first use is June, 2008, and date of first fir st use in commerce is August 28, 2008. Evidence of Appl incorporating the Mark. 4. Applicant has evidence of actual infringement by Hush Puppies, a brand owned by Wol and Exhibit 3, copies of pages from Hush Puppies’ website located at http://www.hushpuppies products. It appears that Hush Puppies is offering an entire line of footwear featuring the Mark 5. 5. App Appli lica cant nt has has evi evide denc ncee of of actu actual al infr infrin inge geme ment nt by Pata Patago goni nia, a, Inc Inc.. for for a pair pair of of men men’s ’s fo Woolzy Fold” and are available on Patagonia, Inc.’s website located at http://www.patagonia. from the website.
6. Applicant has evidence of actual infringement by Sperry Top-Sider, LLC, which is a pa footwear. The shoes are currently being sold under the name “Men's Cloud Logo Woven Boat http://www.sperrytopsider.com/store/SiteController/sperry/productdetails?stockNumber=0286 142350&searched=true. 142350&searched=true . See Exhibit 5, website pages. 7. Applicant has evidence of potential infringement by Acorn Products, a division of totes 8. Applicant has evidence of actual infringement by Vince Apparel, a Kellwood Company name Kia Suede Slip-On” and are available on its website located at http://www.vince.com/kia Based on the evidence of actual infringement, Applicant respectfully requests that the Dire ctor petition fee of $100 is being submitted electronically herewith. FORM FILE NAME(S)
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PAYMENT SECTION NUMBER OF CLASSES
1
FEE PER CLASS
100
TOTAL FEES DUE
100
SIGNATURE SECTION DECLARATION SIGNATURE
/Julianne R. Davis/
SIGNATORY'S NAME
Julianne R. Davis
SIGNATORY'S POSITION
Attorney of record, Oreg
SIGNATORY'S PHONE NUMBER
503.778.2118
DATE SIGNED
03/18/2013
SUBMISSION SIGNATURE
/Julianne R. Davis/
SIGNATORY'S NAME
Julianne R. Davis
SIGNATORY'S POSITION
Attorney of Record, Ore
SIGNATORY'S PHONE NUMBER
503.778.2118
DATE SIGNED
03/18/2013
AUTHORIZED SIGNATORY
YES
FILING INFORMATION SECTION
TEAS STAMP
USPTO/PMS-10.112.151 20130319175007038272 2083-201303151238173 -CC-3398-20130315123 5937
Global Format; No Form Number (Rev 8/2009) OMB No. 0651-0054 (Exp. 09/30/2014)
Petition to Make Special To the Commissioner for Trademarks: The following is submitted for application serial number. 85862083 : FORM INFORMATION
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 Sir or Madam: Applicant, Olukai, LLC, hereby petitions the Director to a dvance the examination of the above-referenced application in accordance with 37 C.F.R. §2.146. According to 37 C.F.R. §2.146, applicant may request that the initial examination of an application be expedited based upon a statement of facts showing special action is justified. In support of this petition, Pursuant to TMEP §1710, Applicant submits herewith the following statement of facts. 1. In May, 2009, Olukai, LLC (“Applicant”) designed a unique element to a heelstay for footwear. The heelstay design is both original and distinctive. As the original designer this design design element (the (the “Mark”) is proprietary proprietary to Applicant Applicant.. See Exhibit 1A, an original drawing
prepared for a Fall 2007 launch date and Exhibit 1B, photograph of Applicant’s product showing the Mark. 2. On February 27, 2013, Applicant submitted a trade dress application for the Mark to the U.S. Patent and Trademark Office (“USPTO”). The USPTO assigned assigned the application application serial number 85/862,083. 3. Based on the length of time and continuous use of the Mark by Applicant, the Mark is associated with Applicant’s product product in the minds of consumers. Applicant’s date of first use is June, 2008, and date of first use in commerce is August 28, 2008. Evidence of Applicant’s long and continuous use is supported by the volume of sales of products incorporating the Mark. 4. Applicant has evidence of actual infringement by Hush Puppies, a brand owned by Wolverine World Wide, Inc. See Exhibit 2, a page from a current Hush Puppies catalog, and Exhibit 3, copies of pages from Hush Puppies’ website located at http://www.hushpuppies.com/US/en/FiveCollection-Men-sFiveCollection,, both showing the http://www.hushpuppies.com/US/en/FiveCollection-Men-sFiveCollection infringing products. It appears that Hush Puppies is offering an entire line of footwear featuring the Mark. 5. Applicant has evidence of actual infringement by Patagonia, Inc. for a pair of men’s footwear. The shoes are currently being sold under the name “Patagonia Men's Maui Woolzy Fold” and are available on Patagonia, Inc.’s website located at http://www.patagonia.com/us/product/mens-maui-woolzy-fold-shoe?p=78572-0-666. http://www.patagonia.com/us/product/mens-maui-woolzy-fold-shoe?p=78572-0-666 . See Exhibit 4, a page from the website. 6. Applicant has evidence of actual infringement by Sperry Top-Sider, LLC, which is a part of the Wolverine Worldwide, Worldwide, Inc. family of companies, companies, for a pair of men’s footwear. footwear. The shoes are currently being sold under the name “Men's Cloud Logo Woven Boat Oxford” and are available on Sperry Top-Sider, LLC’s website located at http://www.sperrytopsider.com/store/SiteController/sperry/productdetails?stockNumber=02867 142350&searched=true. 142350&searched=true . See Exhibit 5, website pages. 7. Applicant has evidence of potential infringement by Acorn Products, a division of totes Isotoner Corporation. See Exhibit 6, photograph obtained by Applicant. 8. Applicant has evidence of actual infringement by Vince Apparel, a Kellwood Company, for a pair of of women’s footwear. The shoes are currently being being sold under the the name Kia Suede Slip-On” and are available on its website located at http://www.vince.com/kia-suede-slip-on-/invt/vnb7940l4/&bklist. http://www.vince.com/kia-suede-slip-on-/invt/vnb7940l4/&bklist . See Exhibit 7, a website page. Based on the evidence of actual infringement, Applicant respectfully requests that the Dir ector grant this petition to make special. In accordance with 37 C.F.R. §2.6, the required petition
fee of $100 is being submitted electronically herewith. FORM FILE NAME(S)
Form File1 Form File2 Form File3 Form File4 Form File5 Form File6 Form File7 Form File8 Form File9 Form File10 Form File11 FEE(S)
Fee(s) in the amount of $100 is being submitted. SIGNATURE(S) Declaration Signature
The undersigned being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting resulting registration, declares declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true. Signature: /Julianne R. Davis/Date: 03/18/2013 Signatory's Name: Julianne R. Davis Signatory's Position: Attorney of record, Oregon bar member Signatory's Phone Number: 503.778.2118 Submission Signature
Signature: /Julianne R. Davis/Date: 03/18/2013 Signatory's Name: Julianne R. Davis Signatory's Position: Attorney of Record, Oregon State Bar Member Signatory's Phone Number: 503.778.2118
RAM Sale Number: 3398 RAM Accounting Date: 03/20/2013
Serial Number: 85862083 Internet Transmission Date: TEAS Stamp: USPTO/PMS-10.112.151.172-201303191750070 38272-85862083-20130315123817325937-CC-3 398-20130315123817325937
