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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA972918
Filing date: 05/10/2019
IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.
Opposer Information
Name Oatly AB
Granted to Dateof previous ex-tension
05/12/2019
Address Stora Varvsgatan6 AMalmo, 21119SWEDEN
Attorney informa-tion
Karen Kreider GauntDinsmore & Shohl255 E. Fifth StreetSuite 1900Cincinnati, OH 45202UNITED [email protected], [email protected],[email protected], [email protected]
Applicant Information
Application No 88001799 Publication date 11/13/2018
Opposition FilingDate
05/10/2019 Opposition Peri-od Ends
05/12/2019
Applicant PATRICK'S GREEN MOUNTAIN TWISTERS, LLC528 Keene Farm RoadMarshfield, VT 05658UNITED STATES
Goods/Services Affected by Opposition
Class 030. First Use: 2016/03/01 First Use In Commerce: 2016/03/01All goods and services in the class are opposed, namely: Granola
Grounds for Opposition
Priority and likelihood of confusion Trademark Act Section 2(d)
Marks Cited by Opposer as Basis for Opposition
U.S. RegistrationNo.
2701730 Application Date 10/17/2000
Registration Date 04/01/2003 Foreign PriorityDate
NONE
Word Mark OATLY
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
oat-based food beverages used as a milksubstitute
Class 030. First use: First Use: 0 First Use In Commerce: 0
[ flour, bread, pancakes, oat-based gruel, ice-cream, flavored ices and fruit ices,and ] oat based food beverages
U.S. RegistrationNo.
4757998 Application Date 03/28/2014
Registration Date 06/23/2015 Foreign PriorityDate
10/01/2013
Word Mark OAT-LY!
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
Oat milk milk substitute; milk substitutes containing oats, cream substitutes con-taining oats, sour milk substitutes containing oats, yoghurt substitutes containingoats
Class 030. First use: First Use: 0 First Use In Commerce: 0
Flour; oatmeal; rolled oats; food preparations made from cereals, namely,readyto eat cereal derived food bars, cerealbased snack food; oat-based food-stuffs,namely, processed oats, oatmeal; muesli; muesli based snack food; cerealbars and cereal-based energy-bars; bread; biscuits; pastry; confectionery con-taining oats, namely, oat cakes; oat-based biscuit mixes; pancakes; waffles; pre-mixed liquid pancake batter; oat-based gruel; oat-based sauces; oat-basedvanilla custard; ice-cream; oat-based ice-cream; flavored ice-cream; fruit ice-cream
Class 032. First use: First Use: 0 First Use In Commerce: 0
Non-alcoholic beverages, namely, oat-based beverages, fruit and berry bever-agesbased on oats
U.S. RegistrationNo.
4766382 Application Date 03/28/2014
Registration Date 07/07/2015 Foreign PriorityDate
10/01/2013
Word Mark THE ORIGINAL OAT-LY!
Design Mark
Description ofMark
The mark consists of the wording "THE ORIGINAL OAT-LY!" in which the "THEORIGINAL" and "LY!" portions appear in black and the "OAT-" appear in whiteand blue and all of the foregoing are superimposed against a blue rectangle. Adesign of a blue oat ear appears inside the letter"A" in the term "OAT-".
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
Oat milk milk substitute; milk substitutes containing oats, cream substitutes con-taining oats, sour milk substitutes containing oats, yoghurt substitutes containingoats
Class 030. First use: First Use: 0 First Use In Commerce: 0
Flour; oatmeal; rolled oats; food preparations made from cereals, namely,readyto eat cereal derived food bars, cerealbased snack food; oat-based food-stuffs,namely, processed oats, oatmeal; muesli; muesli based snack food; cerealbars and cereal-based energy-bars; bread; biscuits; pastry; confectionery con-taining oats, namely, oat cakes; oat-based biscuit mixes; pancakes; waffles; pre-mixed liquid pancake batter; oat-based gruel; oat-based sauces; oat-basedvanilla custard; ice-cream; oat-based ice-cream; flavored ice-cream; fruit ice-cream
Class 032. First use: First Use: 0 First Use In Commerce: 0
Non-alcoholic beverages, namely, oat-based beverages, fruit and berry bever-agesbased on oats
U.S. RegistrationNo.
5526877 Application Date 07/13/2017
Registration Date 07/31/2018 Foreign PriorityDate
02/23/2017
Word Mark OATADO
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
Milk substitute-based beverages containing coffee; milk substitute-based drink-scontaining coffee; oat-based beverages and drinks for use as a milk substi-
tute,containing coffee; dairy substitutes, namely, oat-based cream; dairy productsubstitutes, namely, oat-based cream; milksubstitutes; skimmed milk substi-tutes; milk substitutes containing oats; skimmed milk substitutes containing oats;oat-based beverages and drinks for use as a milk substitute; non-dairy cream-ers; non-dairy coffee creamers; milk substitute powder, and milk substitutepowder for food and nutritional purposes; milk substitutes in the nature of driedmilk substitute powder, and cream substitute powder; flavored milk substitutepowder for making drinks
Class 030. First use: First Use: 0 First Use In Commerce: 0
Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules contain-ing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts; cof-fee essences; coffee flavorings inthe nature of coffee flavored syrups used inmaking food beverages and vanilla flavorings for food or beverages; decaffein-ated coffee; coffee beverages; coffeedrinks; coffee-based beverages and drinks;beverages based on coffee substitutes; coffee beverages with milk substitutes;coffee-based beverages containing milk substitutes; prepared coffee; prepared-coffee beverages; prepared coffee-basedbeverages; extracts of coffee for useas flavors in beverages; biscuits; pastry; confectionery in the nature of frozenconfectionery, confectionery made of sugar and confectionery made of sugarsubstitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cakemixes, containing coffee; oat-based biscuit mixes,containing coffee; ice bever-ages with acoffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffeeflavored ice cream; preparations for making beverages that are coffee based;milk substitutes frozenyoghurt; non-dairy frozen yoghurt; milksubstitutes frozenyoghurt containing coffee
U.S. RegistrationNo.
5526875 Application Date 07/13/2017
Registration Date 07/31/2018 Foreign PriorityDate
02/23/2017
Word Mark CAPPOATCCINO
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
Milk substitute-based beverages containing coffee; milk substitute-based drink-scontaining coffee; oat-based beverages and drinks for use as a milk substi-tute,containing coffee; dairy substitutes, namely, oat-based cream; dairy productsubstitutes, namely, oat-based cream; milksubstitutes; skimmed milk substi-tutes; milk substitutes containing oats; skimmed milk substitutes containing oats;oat-based beverages and drinks for use as a milk substitute; non-dairy cream-ers; non-dairy coffee creamers; milk substitute powder, and milk substitutepowder for food and nutritional purposes; milk substitutes in the nature of driedmilk substitute powder, and cream substitute powder; flavored milk substitutepowder for making drinks
Class 030. First use: First Use: 0 First Use In Commerce: 0
Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules contain-ing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts; cof-fee essences; coffee flavorings inthe nature of coffee flavored syrups used inmaking food beverages and vanilla flavorings for food or beverages; decaffein-ated coffee; coffee beverages; coffeedrinks; coffee-based beverages and drinks;beverages based on coffee substitutes; coffee beverages with milk substitutes;coffee-based beverages containing milk substitutes; prepared coffee; prepared-
coffee beverages; prepared coffee-basedbeverages; extracts of coffee for useas flavors in beverages; biscuits; pastry; confectionery in the nature of frozenconfectionery, confectionery made of sugar and confectionery made of sugarsubstitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cakemixes, containing coffee; oat-based biscuit mixes,containing coffee; ice bever-ages with acoffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffeeflavored ice cream; preparations for making beverages that are coffee based;milk substitutes frozenyoghurt; non-dairy frozen yoghurt; milksubstitutes frozenyoghurt containing coffee
U.S. RegistrationNo.
5526870 Application Date 07/13/2017
Registration Date 07/31/2018 Foreign PriorityDate
02/23/2017
Word Mark MACCHIOATO
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
Milk substitute-based beverages containing coffee; milk substitute-based drink-scontaining coffee; oat-based beverages and drinks for use as a milk substi-tute,containing coffee; dairy substitutes, namely, oat-based cream; dairy productsubstitutes, namely, oat-based cream; milksubstitutes; skimmed milk substi-tutes; milk substitutes containing oats; skimmed milk substitutes containing oats;oat-based beverages and drinks for use as a milk substitute; non-dairy cream-ers; non-dairy coffee creamers; milk substitute powder, and milk substitutepowder for food and nutritional purposes; milk substitutes in the nature of driedmilk substitute powder, and cream substitute powder; flavored milk substitutepowder for making drinks
Class 030. First use: First Use: 0 First Use In Commerce: 0
Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules contain-ing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts; cof-fee essences; coffee flavorings inthe nature of coffee flavored syrups used inmaking food beverages and vanilla flavorings for food or beverages; decaffein-ated coffee; coffee beverages; coffeedrinks; coffee-based beverages and drinks;beverages based on coffee substitutes; coffee beverages with milk substitutes;coffee-based beverages containing milk substitutes; prepared coffee; prepared-coffee beverages; prepared coffee-basedbeverages; extracts of coffee for useas flavors in beverages; biscuits; pastry; confectionery in the nature of frozenconfectionery, confectionery made of sugar and confectionery made of sugarsubstitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cakemixes, containing coffee; oat-based biscuit mixes,containing coffee; ice bever-ages with acoffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffeeflavored ice cream; preparations for making beverages that are coffee based;milk substitutes frozenyoghurt; non-dairy frozen yoghurt; milksubstitutes frozenyoghurt containing coffee
U.S. ApplicationNo.
87709745 Application Date 12/06/2017
Registration Date NONE Foreign Priority 11/07/2017
Date
Word Mark OATFINDER
Design Mark
Description ofMark
NONE
Goods/Services Class 009. First use: First Use: 0 First Use In Commerce: 0
Software to detect coffee shop locations and other retail store locations; soft-ware for online messaging and marketing;software to detect coffee shop loca-tions for websites and webhosting; application software to detect coffee shoplocations and other retail locations; mobile apps to detect coffee shop and retailstore locations; computer programs in the nature of downloadable software todetectcoffee shop locations; downloadable digital recipes and collections of re-cipes in electronic format
Class 029. First use: First Use: 0 First Use In Commerce: 0
Milk substitute-based beverages containing coffee; milk substitute-based drink-scontaining coffee; oat-based beverages and drinks for use as a milk substi-tute,containing coffee; dairy substitutes; dairy product substitutes, namely, milksubstitutes; milk substitutes; skimmed milk substitutes; milk substitutes contain-ing oats; skimmed milk substitutes containing oats; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, milk substitute powder for foodand nutritional purposes; dried milk substitute powder, cream substitute powder;flavored milk substitute powder for making drinks
Class 030. First use: First Use: 0 First Use In Commerce: 0
Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules contain-ing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts; cof-fee essences; coffee flavorings, namely, coffee flavored syrup used in makingfood beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based beverages and drinks; beverages based on coffee substitutes; coffeebeverages with milk substitutes; coffee-based beverages containing milk substi-tutes;prepared coffee; prepared coffee beverages; prepared coffee-basedbeverages; extracts of coffee for use as flavors in beverages; biscuits; pastryand confectionery made of sugar; oat-based cake mixes, oat-based biscuitmixes; oat-based cake mixes, containing coffee; oat-based biscuit mixes, con-taining coffee; ice beverages with a coffee base; ice cream; icecream made frommilk substitutes; non-dairy ice cream; ice cream, containing coffee, made frommilk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavoredice-cream; coffee flavoredice cream; preparations for making coffee basedbeverages; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk sub-stitutes frozen yoghurt containing coffee
Class 035. First use: First Use: 0 First Use In Commerce: 0
Take away food and drink services, namely, retail store services featuringfoodand drink
Class 042. First use: First Use: 0 First Use In Commerce: 0
Software development; development of software for online messaging and mar-keting; development of software for websites and webhosting; cloud computing
services, namely, cloud hosting provider services featuring application softwarefor cloud computing services; infrastructure asa service (IaaS) featuring softwareto detect coffee shop locations; platform as a service (PaaS) featuring softwaretodetect coffee shop locations; software as a service (SaaS) services featuringsoftware to detect coffee shop locations
Class 043. First use: First Use: 0 First Use In Commerce: 0
Provision of food and drink; café services and cafeteria services; cafés andcafeterias; restaurant take away food and drink services; take away café andcafeteria services; restaurant information services; café information services;bar information services
U.S. ApplicationNo.
87320671 Application Date 02/01/2017
Registration Date NONE Foreign PriorityDate
NONE
Word Mark OATLY
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
Oat-based drinks as milk substitutes; oat-based yogurt substitute; oat-basedcrème fraiche; oat-based cooking cream andcreamer; oat-based food spread
Class 030. First use: First Use: 0 First Use In Commerce: 0
Oat-based vanilla sauce and oat based vanilla custard; oat-based ice cream
Class 032. First use: First Use: 0 First Use In Commerce: 0
Oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruitdrink beverages; oat-based smoothie beverages
U.S. RegistrationNo.
5736047 Application Date 07/13/2017
Registration Date 04/30/2019 Foreign PriorityDate
02/13/2017
Word Mark OATLY
Design Mark
Description ofMark
NONE
Goods/Services Class 005. First use: First Use: 0 First Use In Commerce: 0
Dietary supplements and dietetic food supplements; food supplements and diet-
aryfood supplements; nutritional supplements; dietary fibre to aid digestion andfor treating constipation, dietary fibre for use as an ingredient in the manufactureof dietary supplements; oat-based food supplements and oat-based dietary sup-plements; oat-based nutritional supplements; oat-based dietary supplementdrink mixes; oat-based dietary supplemental drinks in the nature of vitamin andmineral beverages; oat-based nutritional supplement in the nature of a nutrient-dense drink mix; food for babies; functional foods, functional health foods andnutraceuticals for therapeutic purposes and for use as nutritional supplementsand dietary supplements; nutraceuticals for therapeutic purposes; nutraceuticalsfor use as a dietary supplement; grain-based functional foods for therapeuticpurposesand for use as nutritional supplements and dietary supplements; grain-based nutraceuticals for therapeutic purposes andfor use as nutritional supple-ments and dietary supplements; oat-based functional foods for therapeutic pur-poses and foruse as nutritional supplements and dietary supplements; oat-based nutraceuticals for therapeutic purposes and for use as nutritional supple-ments and dietary supplements; functional foods for slimmingpurposes, namely,weight management supplements; functional beverages for slimming purposes,namely, weight management supplements; probiotic supplements; vitamin andmineral supplements; anti-oxidant food supplements; calcium supple-ments;mineral nutritional supplements; bacteriological preparations and prepara-tions of microorganisms for medical and veterinary use, namely, probiotic bac-teria andbacteria cultures being ingredients fordietetic substances for pharma-ceutical,medical and veterinary use; food supplements and health food supple-ments for persons with special dietary requirements;grain-based food supple-ments for slimming purposes; oat-based food supplements for slimming pur-poses; dietary supplements for slimming purposes; probiotic supplements forslimming purposes; oat-baseddietary supplement drink mixes; oat-based dietarysupplemental drinks in the nature of vitamin and mineral beverages
Class 009. First use: First Use: 0 First Use In Commerce: 0
Apparatus for recording, transmission or reproduction of sound and images; au-dio cassette players and digital audio tape players; digital audio players; cd play-ers; portable multimedia players, namely, tablet computers and digital mediastreaming devices; portable music players,namely, compact disc players andMP3 players; software, namely, communication software, game software, inter-face software and graphics software; software for online messaging and market-ing; website development software and web application software; eyewear; eye-wear cases; glasses, sun glasses and contact lenses; frames for glasses; ap-plication software being apps for cloud computing services, forapplication anddatabase integration, for social networking services and streaming audio-visualmedia content via internet, for playing games and for enhancingthe audio-visualcapabilities of multimedia applications, all for smart phones,mobile phones, wire-less devices, mobiledevices, TV or smart TV; mobile apps for cloud computingservices, for application and database integration, for socialnetworking servicesand streaming audio-visual media content via internet, for playing games and forenhancing the audio-visual capabilities of multimedia applications, all for smartphones, mobile phones, wireless devices or mobile devices; computer programsbeing downloadable software, namely, communication software, game software,interface software and graphics software for cloud computing services, for ap-plication and database integration, for social networking servicesand streamingaudio-visual media content via internet, for playing games and for enhancing theaudio-visual capabilities of multimedia applications; downloadable digital recipesand collections of recipes in electronic format
Class 014. First use: First Use: 0 First Use In Commerce: 0
Precious metals and their alloys; key rings; cuff links; tie pins; tie clips; orna-ments of precious metal in the natureof jewelry, ornamental lapel pins, figurinesand statuettes made of precious metal or coated therewith; watches; clocks;jewelry; precious stones; horological and chronometric instruments; timepieces;watch buckles, watch strap buckles; watch straps
Class 018. First use: First Use: 0 First Use In Commerce: 0
Briefcases; attaché cases; briefcase-type portfolios; suitcases; suit bags;purses; business card holders in the natureof card cases; credit card holders;backpacks; key cases; coin holders; trunks and travelling bags; cosmetic bagssold empty; toilet bags, sold empty, and bagsfor shaving kits, sold empty; bags,namely, leather and imitation leather bags,sports bags, belt bags; duffle bags,tote bags; handbags; wallets; billfolds; change purses; luggage; overnight cases;umbrellas and parasols; walking sticks
Class 021. First use: First Use: 0 First Use In Commerce: 0
Tableware, namely, coffee services in the nature of tableware, tea services inthe nature of tableware, coffee scoops, ice scoops and coasters, not of paper or-textile, cookware, namely, pots and pans, steamers, roasting pans, and cook-warefor use in microwave ovens, and containers for household or kitchen use;drinking glasses, drinking vessels and barware, namely, highball glasses, whis-key glasses, cocktail glasses, carafes, decanters, coupe glasses, snifters, mugs;serving pots and jugs, coffee pots and tea pots; milk jugs; jugs for frothing milk;non-electric milk frothers; cups, saucers and mugs; bowls
Class 025. First use: First Use: 0 First Use In Commerce: 0
Clothing, namely, trousers for childrenand adults, mantles, jerseys, hoodsandhoodies; footwear; headwear; clothing, footwear and headwear for women,men, boys and girls, namely, jump suits, shirts, blouses, jackets, bathing suits;clothing, footwear and headwear for women, men, boys and girls, namely,pants, belts,shorts; clothing, footwear and headwearfor women, men, boys andgirls, namely,warm-up suits, sweatpants and sweatshirts, walking shorts; cloth-ing, footwear and headwear for women, men, boys and girls, namely, jeans,suits, dinner jacketsand formal wear in the nature of gowns,tuxedos andtrousers, sports jackets; clothing, footwear and headwear for women, men, boysand girls, namely, knitted tops, ties and other neckwear; clothing, footwear andheadwear for women, men, boys and girls, namely, stockings, tights;clothing,footwear and headwear for women, men, boys and girls, namely, hats, caps be-ing headwear, scarves, shawls, coats, outer coats, vests, sweaters; clothing,footwear and headwear for women, men, boys and girls, namely, dresses, skirts,t-shirts, beach and swimming cover-ups; clothing, footwear and headwear forwomen, men, boys and girls, namely, rainwear, rain coats, ponchos, tank tops,camisoles; tennis and golf apparel, namely,dresses, tops, skirts, pants, andshorts; biking and running and yoga apparel, namely, tops, tank tops, skirts,pants, short pants, shorts and jackets; footwear, namely, shoes, active sportshoes, sneakers, boots, slippers; blazers, pants,capes, socks, gloves; under-wear; underwear, sleepwear and loungewear for men and boys, namely, briefs,boxer shorts; underwear, sleepwear and loungewear for men and boys, namely,athletic underwear, sport knit shirts; underwear, sleepwear and loungewear formen and boys, namely,t-shirts, tank tops, undershirts, basicunderwear; under-wear, sleepwear and loungewear for men and boys, namely, robes,knitted andwoven sleepwear, sleep shirts, pajama tops, pajama bottoms; underwear, sleep-wear and loungewear for men andboys, namely, breakfast jackets, smokingjackets, bed jackets, cover-ups; knitted and woven loungewear, loungingpants,and tops, lounge jackets; intimate apparel and bodywear for women andgirls, namely, underwear, sleepwear and loungewear; belts
Class 029. First use: First Use: 0 First Use In Commerce: 0
Dairy substitutes, namely, artificial cream, hazelnut milk, soy milk, coconut oil forfood, coconut butter; dairy product substitutes, namely, oat-based cream;milksubstitutes; milk substitutes containing oats; oat milk; oat-based beverages anddrinks for use as a milk substitute; milk substitute based beverages and drinks,almond milk, almond milk-based beverages; coconut milk, coconut milk-basedbeverages; hemp milk used as milk substitute; peanut milk, peanut milk-basedbeverages; rice milk, rice milk for use as milk substitute; soya milk, soya bean-milk; functional milk substitute beverages; fruit-flavored milk substitutes basedon oats; milk substitute-based drinkscontaining coffee; yoghurt substi-
tutes;yoghurt substitutes containing oats; milk substitute preparations for makingyoghurt; oat-based yoghurt substitute; oat-based yoghurt and drinking yoghurtfreeof milk and lactose; yoghurt and drinking yoghurt substitutes containing oats;fruit-flavored yoghurt substitutes; fruit-flavored yoghurt substitutes containingoats; sour milk substitutes; sour cream substitutes; sour milk substitutes contain-ing oats; sour cream substitutes containing oats; cream substitutes; crèmefraiche substitutes; cream substitutes containing oat; crème fraiche substitutescontaining oats; non-dairy creamer; oat-based cooking cream and creamer; ve-getable based cream; butter substitutes, margarine substitutes; oat-based buttersubstitutes; oat-based margarine substitutes; dairy substitute cheese, dairy sub-stitute cream cheese, dairy substitute cheese spreads; cheese mixtures beingdairy substitutes; cheese powder; cheese substitutes; oat-based cheese; instantcheese powder substitutes, skimmed milk powder,sweet whey powder; milk sub-stitute powder, milk substitute powder for food and nutritional purposes; driedmilk substitute powder, cream substitute powder; flavored milk substitute powderfor making drinks; vegetable powders; coconut milk powder; compotes, fruit andvegetable spreads; processed fruit, fruit snacks, namely, dried fruit-basedsnacks and fruit-based snack food; fruit chips; fruit-based snack foods; fruitjuices for cooking; vegetable juices for cooking; vegetable juice concentrates forfood, namely, vegetable juice, vegetable pulp and vegetable paste for cooking;oat-based and vegetable based dairy substitute productsfor slimming purposes,namely, artificial milk, cream and cheese based on oats and vegetables; milksubstitutes for usein oat-based dietary supplement drink mixes; milk substitutesfor use in oat-based dietary supplement drinks in the nature of vitamin and min-eral beverages; soup powders
Class 030. First use: First Use: 0 First Use In Commerce: 0
Processed grains, starches, and goods made thereof, namely, starch for food,baking preparations, namely, baking soda, baking powder and baking spices,and yeasts; flour, processed oats, oat-based bars and oat-based energy-bars;oatmeal, rolled oats; cereals, processed cereals; food preparations and food-stuffs made from cereals, namely, ready-to-eat cereals, cereal based snackfood; crispbread made of cereals; breakfast cereals; breakfast cereals contain-ing fibre; breakfast cereals containing a mixture of fruit and fibre; cereals flakes,namely, maize flakes and corn flakes; muesli consistingpredominantly of cer-eals; cereal bars and cereal based energy bars; crushed oats; oat flakes;muesli; oat-based gruel; snack foods consisting principally of grain; snack foodsconsisting principally of extruded cereals; wheat snacks, corn snacks, oatsnacks; snack foods and snack products made from cereals; snacks made frommuesli; snack foods made of wholewheat; bread; wholemeal bread and bread-mixes; whole wheat bread and crispbread; whole wheat grains being cooked,precooked and preserved; biscuits; pastry andconfectionery, namely, tablet con-fectionary and chocolate confectionary; oat-based cake mixes, oat-based biscuitmixes;coffee; decaffeinated coffee; instant coffee; roasted coffee, in powderform; artificial coffee; coffee drinks and beverages; coffee-based drinks andbeverages; coffee-based drinks and beverages containing milk substitutes; pan-cakes; waffles; pancake batter; liquid batter for making pancakes; oat-basedpancakes; oat-based waffles; oat-based pancake batter; oat-based liquid batterfor making pancakes; powdered preparations containing cocoa powder for usein making beverages; oat-based drinks in powder form, namely,oat-based coffeedrinks, cocoa drinks and espresso drinks in powder form; food dressings in thenature of sauces; sauces; cooking sauces; prepared foodstuffs in the form ofsauces; oat-based sauces; oat-based custard, oat-based vanilla custard, oat-based vanilla sauce; ice creamsubstitute; ice cream; ice cream made from milksubstitutes; non-dairy ice cream; oat-based ice cream; oat-based flavoured ice-cream; oat-based fruit ice-cream; flavoured ice-cream, fruit ice-cream; soy-based ice cream; frozen yoghurt based on milk substitutes; non-dairy frozenyoghurt; fermented foodstuffs based on oats, namely, oat-based soy sauce, oat-based pastes; oat-based food spread
Class 032. First use: First Use: 0 First Use In Commerce: 0
Preparations for making beverages, namely, preparations for making fruit bever-ages, fruit-based and fruit-flavored beverages, vegetable juices, smoothies,soya-based beverages not being milk substitutes, whey beverages, isotonicbeverages and sports beverages; non-alcoholic beverages, namely, non-al-coholic malt beverages, non-alcoholic fruit-based beverages, non-alcoholic wa-ter-based beverages, carbonated beverages, non-alcoholic beverages contain-ing fruit juices, non-alcoholic beverages flavored with coffee, non-alcoholicbeverages flavored with tea; non-alcoholic drinks, namely, isotonic non-alcoholicdrinks, carbonated non-alcoholic drinks and energy shots; oat-based beverages,not being milk substitutes; oat-based natural energy drinks; oat-based breakfastdrinks, namely, smoothies containing oats, fruit juices containing oats and veget-able juices containing oats; oat-based fruit drink beverages; oat-based smoothiebeverages; oat-based fruitand berry drinks and beverages; oat-based drinks andbeverages for slimming purposes, namely, smoothies containing oats, fruitjuices containing oats and vegetable juices containing oats, all for slimming pur-poses; energy drinks; energy drinks containing caffeine; recovery drinks beingsports drinks; sports drinks; functional beverages, namely, sports drinks contain-ing electrolytes, nutrified fruit drinks; functional water-based beverages, namely,water-based sports drinks, water-based energy drinks and water-based sportsrecovery drinks; nut and soy based beverages, namely, nut based beveragesnot being milk substitutes and soy based beverages not being milk substitutes;powders for the preparation of beverages, namely, powders for the preparationof fruit beverages and powders for the preparation of vegetable beverages,powders used in the preparation of fruit-based drinks; powders for use in prepar-ationof fruit based beverages
Class 035. First use: First Use: 0 First Use In Commerce: 0
Business management of wholesale and retail outlets; retail stores and retail dis-tributorships in relation to food and foodstuffs, beverages and drinks, food sup-plements and dietary food supplements,dietary supplements and dietic prepara-tions; retail stores and retail distributorships in relation to functionalfoods,functional health foods and functional beverages, slimming products; retailstores and retail distributorships in relation to dairy substitutes and dairy productsubstitutes, processed grains, oats and oat-based products; retail stores andre-tail distributorships in relation to apparatus for recording, transmission orrepro-duction of sound and images; retail stores and retail distributorships in relation togloves, belts, wallets, handbags, cases and bags; retail stores andretail distribut-orships in relation to software, eyewear, clothing, footwear, headwear; retailstores and retail distributorships in relation to precious metals, key rings, cufflinks, tie pins, tie clips, clocks, watches, jewelry and precious stones; online re-tail outlets relating to food and foodstuffs, beverages and drinks, food supple-ments and dietary food supplements, dietary supplements anddietic prepara-tions; online retail outlets relating to functional foods, functional health foods andfunctional beverages, slimming products; online retail outlets relating to dairysubstitutes and dairy product substitutes, processed grains, oats and oat-basedproducts; online retail outlets relating to apparatus forrecording, transmission orreproductionof sound and images; online retail outlets relating to gloves, belts,wallets, hand bags, cases and bags; online retailoutlets relating to software,eyewear, clothing, footwear, headwear; online retail outlets relating to preciousmetals,key rings, cuff links, tie pins, tie clips, clocks, watches, jewelry and pre-cious stones
Class 039. First use: First Use: 0 First Use In Commerce: 0
Transportation and delivery of goods; packaging and storage of food and food-stuffs, beverages and drinks, food supplements and dietary food supplements,dietary supplements and dietic preparations, functional foods, functional healthfoodsand functional beverages, slimming products, dairy substitutes and dairyproduct substitutes, processed grains, oats and oat-based products, apparatusfor recording, transmission or reproduction of sound and images, gloves, belts,wallets,hand bags, cases and bags, software, eyewear, clothing, footwear,headwear, precious metals, key rings, cuff links, tiepins, tie clips, clocks,
watches, jewelry and precious stones
Class 041. First use: First Use: 0 First Use In Commerce: 0
Education services, namely, providing classes, seminars, workshops and tutor-ingrelating to nutrition; dietary education services, namely, providing classes,seminars and workshops in the field of dietary nutrition; providing of training inthe field of health care and nutrition; provision of instruction relating to nutrition;instruction in non-medical nutrition and instruction in non-medical diet; trainingrelated to nutrition and diet
Class 043. First use: First Use: 0 First Use In Commerce: 0
Provision of food and drink; café services and cafeteria services; cafés andcafeterias; take away food and drink services; take away café and cafeteriaservices
U.S. ApplicationNo.
79224787 Application Date 07/13/2017
Registration Date NONE Foreign PriorityDate
01/26/2017
Word Mark OATGURT
Design Mark
Description ofMark
NONE
Goods/Services Class 029. First use: First Use: 0 First Use In Commerce: 0
Dairy product substitutes, namely, oat-based drinks as milk substitutes and oat-based yogurt, shakes, and cheese as dairy food substitutes; oat-based bever-agesfor use as milk substitutes; fruit-based drinks containing oats, namely, oatbased, dairy free drinks containing fruit;yoghurt substitutes containing oats;drinking yoghurt substitutes containing oats; fruit-flavored yoghurt substitutescontaining oats
Attachments 76148369#TMSN.png( bytes )79149322#TMSN.png( bytes )79149710#TMSN.png( bytes )79216762#TMSN.png( bytes )79216709#TMSN.png( bytes )79216607#TMSN.png( bytes )87709745#TMSN.png( bytes )87320671#TMSN.png( bytes )79228630#TMSN.png( bytes )79224787#TMSN.png( bytes )Totally Oatally Notice of Opposition 88001799.pdf(5548339 bytes )
Signature /Govinda M. Davis/
Name Govinda M. Davis
Date 05/10/2019
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Application Serial No. 88/001,799 Application Filing Date: June 15, 2018 Mark: TOTALLY OATALLY Published for Opposition: November 13, 2018 OATLY AB, │ │ Opposer, │ │ Opposition No. v. │ │ PATRICK'S GREEN MOUNTAIN │ TWISTERS, LLC, │ │ Applicant. │
Opposer Oatly AB (hereinafter “Oatly” or “Opposer”) is a Swedish company, with a
principal business address located at Stora Varvsgatan 6a, SE-211 19, Malmö, Sweden, and is a
prominent producer and distributor of various oat-based and milk substitute products around the
world. Oatly believes that it will be damaged by registration of Application Serial No.
88/001,799 for TOTALLY OATALLY (“the Application”) and hereby opposes same. Oatly
opposes registration of the Application for the goods set forth therein, namely:
“Granola” in International Class 030
The Application was filed on June 15, 2018, under Section 1(a) of the Trademark Act by
Patrick’s Green Mountain Twisters, LLC (“Applicant”), and published in the Official Gazette on
November 13, 2018. Oatly filed for a ninety (90) day extension of time to the Application. Oatly
was granted until March 13, 2019 to oppose the Application. Thus, this Notice of Opposition is
timely filed.
2
In support of the Notice of Opposition, Oatly states and alleges:
1. Opposer Oatly AB, is a Swedish company, with its principal place of business at
Stora Varvsgatan 6a, SE-211 19, Malmö, Sweden.
2. Oatly is the owner of U.S. federal trademark registrations and applications
relating to its distinctive trademarks containing “OAT” as used on, and registered for oat-based
beverages used as a milk substitute, yoghurts, and other foodstuffs. Oatly also owns associated
common law trademark rights based on its use of its OAT formative trademarks. By virtue of the
filing date of its earliest United States trademark application, October 17, 2000, Oatly has held
exclusive trademark rights to its marks for nearly twenty years. Oatly’s well-known “OAT”
family of trademarks is distinctive. Oatly is the owner of the following U.S. trademark
registrations and applications:
a. OATLY, U.S. Registration No. 2,701,730 for “oat-based food beverages
used as a milk substitute” in International Class 029 and “oat based food beverages” in
International Class 030, which was registered on April 1, 2003 and has a constructive use
date of October 17, 2000.
b. OAT-LY!, U.S. Registration No. 4,757,998 for “Oat milk milk substitute;
milk substitutes containing oats, cream substitutes containing oats, sour milk substitutes
containing oats, yoghurt substitutes containing oats” in International Class 029; “Flour;
oatmeal; rolled oats; food preparations made from cereals, namely, ready to eat cereal
derived food bars, cereal based snack food; oat-based foodstuffs, namely, processed oats,
oatmeal; muesli; muesli based snack food; cereal bars and cereal-based energy-bars;
bread; biscuits; pastry; confectionery containing oats, namely, oat cakes; oat-based
biscuit mixes; pancakes; waffles; pre-mixed liquid pancake batter; oat-based gruel; oat-
3
based sauces; oat-based vanilla custard; ice-cream; oat-based ice-cream; flavored ice-
cream; fruit ice-cream” in International Class 030; and “Non-alcoholic beverages,
namely, oat-based beverages, fruit and berry beverages based on oats” in International
Class 032, which was registered on June 23, 2015 and cites a priority date of October 1,
2013.
c. THE ORIGINAL OAT-LY! & Design, U.S. Registration No. 4,766,382
for “Oat milk milk substitute; milk substitutes containing oats, cream substitutes
containing oats, sour milk substitutes containing oats, yoghurt substitutes containing
oats” in International Class 029; “Flour; oatmeal; rolled oats; food preparations made
from cereals, namely, ready to eat cereal derived food bars, cereal based snack food;
oat-based foodstuffs, namely, processed oats, oatmeal; muesli; muesli based snack food;
cereal bars and cereal-based energy-bars; bread; biscuits; pastry; confectionery
containing oats, namely, oat cakes; oat-based biscuit mixes; pancakes; waffles; pre-
mixed liquid pancake batter; oat-based gruel; oat-based sauces; oat-based vanilla
custard; ice-cream; oat-based ice-cream; flavored ice-cream; fruit ice-cream” in
International Class 030; and “Non-alcoholic beverages, namely, oat-based beverages,
fruit and berry beverages based on oats” in International Class 032, which was registered
on July 7, 2015 and cites a priority date of October 1, 2013.
d. OATADO, U.S. Registration No. 5,526,877 for “Milk substitute-based
beverages containing coffee; milk substitute-based drinks containing coffee; oat-based
beverages and drinks for use as a milk substitute, containing coffee; dairy substitutes,
namely, oat-based cream; dairy product substitutes, namely, oat-based cream; milk
substitutes; skimmed milk substitutes; milk substitutes containing oats; skimmed milk
4
substitutes containing oats; oat-based beverages and drinks for use as a milk substitute;
non-dairy creamers; non-dairy coffee creamers; milk substitute powder, and milk
substitute powder for food and nutritional purposes; milk substitutes in the nature of
dried milk substitute powder, and cream substitute powder; flavored milk substitute
powder for making drinks” in International Class 029; and “Coffee; coffee beans;
mixtures of coffee; instant coffee; coffee capsules containing coffee for brewing; artificial
coffee; coffee concentrates; coffee extracts; coffee essences; coffee flavorings in the
nature of coffee flavored syrups used in making food beverages and vanilla flavorings for
food or beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based
beverages and drinks; beverages based on coffee substitutes; coffee beverages with milk
substitutes; coffee-based beverages containing milk substitutes; prepared coffee;
prepared coffee beverages; prepared coffee-based beverages; extracts of coffee for use
as flavors in beverages; biscuits; pastry; confectionery in the nature of frozen
confectionery, confectionery made of sugar and confectionery made of sugar substitutes;
oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing coffee;
oat-based biscuit mixes, containing coffee; ice beverages with a coffee base; ice cream;
ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing coffee,
made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored
ice-cream; coffee flavored ice cream; preparations for making beverages that are coffee
based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes frozen
yoghurt containing coffee” in International Class 030, which was registered on July 31,
2018, based on a foreign claim of priority of July 13, 2017.
5
e. CAPOATCCCINO, U.S. Registration No. 5,526,875 for “Milk
substitute-based beverages containing coffee; milk substitute-based drinks containing
coffee; oat-based beverages and drinks for use as a milk substitute, containing coffee;
dairy substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-based
cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats;
skimmed milk substitutes containing oats; oat-based beverages and drinks for use as a
milk substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder,
and milk substitute powder for food and nutritional purposes; milk substitutes in the
nature of dried milk substitute powder, and cream substitute powder; flavored milk
substitute powder for making drinks” in International Class 029; and “Coffee; coffee
beans; mixtures of coffee; instant coffee; coffee capsules containing coffee for brewing;
artificial coffee; coffee concentrates; coffee extracts; coffee essences; coffee flavorings in
the nature of coffee flavored syrups used in making food beverages and vanilla flavorings
for food or beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based
beverages and drinks; beverages based on coffee substitutes; coffee beverages with milk
substitutes; coffee-based beverages containing milk substitutes; prepared coffee;
prepared coffee beverages; prepared coffee-based beverages; extracts of coffee for use
as flavors in beverages; biscuits; pastry; confectionery in the nature of frozen
confectionery, confectionery made of sugar and confectionery made of sugar substitutes;
oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing coffee;
oat-based biscuit mixes, containing coffee; ice beverages with a coffee base; ice cream;
ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing coffee,
made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored
6
ice-cream; coffee flavored ice cream; preparations for making beverages that are coffee
based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes frozen
yoghurt containing coffee” in International Class 030, which was registered on July 31,
2018, and cites a priority date of February 23, 2017.
f. MACCHIOATO, U.S. Registration No. 5,526,870 for “Milk substitute-
based beverages containing coffee; milk substitute-based drinks containing coffee; oat-
based beverages and drinks for use as a milk substitute, containing coffee; dairy
substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-based
cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats;
skimmed milk substitutes containing oats; oat-based beverages and drinks for use as a
milk substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder,
and milk substitute powder for food and nutritional purposes; milk substitutes in the
nature of dried milk substitute powder, and cream substitute powder; flavored milk
substitute powder for making drinks” in International Class 009; and “Coffee; coffee
beans; mixtures of coffee; instant coffee; coffee capsules containing coffee for brewing;
artificial coffee; coffee concentrates; coffee extracts; coffee essences; coffee flavorings in
the nature of coffee flavored syrups used in making food beverages and vanilla flavorings
for food or beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based
beverages and drinks; beverages based on coffee substitutes; coffee beverages with milk
substitutes; coffee-based beverages containing milk substitutes; prepared coffee;
prepared coffee beverages; prepared coffee-based beverages; extracts of coffee for use
as flavors in beverages; biscuits; pastry; confectionery in the nature of frozen
confectionery, confectionery made of sugar and confectionery made of sugar substitutes;
7
oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing coffee;
oat-based biscuit mixes, containing coffee; ice beverages with a coffee base; ice cream;
ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing coffee,
made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored
ice-cream; coffee flavored ice cream; preparations for making beverages that are coffee
based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes frozen
yoghurt containing coffee” in International Class 030, which was registered on July 31,
2018, and cites a priority date of February 23, 2017.
g. OATFINDER, US. Application No. 87/709,745 for “Software to detect
coffee shop locations and other retail store locations; software for online messaging and
marketing; software to detect coffee shop locations for websites and webhosting;
application software to detect coffee shop locations and other retail locations; mobile
apps to detect coffee shop and retail store locations; computer programs in the nature of
downloadable software to detect coffee shop locations; downloadable digital recipes and
collections of recipes in electronic format” in International Class 009; “Milk substitute-
based beverages containing coffee; milk substitute-based drinks containing coffee; oat-
based beverages and drinks for use as a milk substitute, containing coffee; dairy
substitutes; dairy product substitutes, namely, milk substitutes; milk substitutes; skimmed
milk substitutes; milk substitutes containing oats; skimmed milk substitutes containing
oats; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, milk
substitute powder for food and nutritional purposes; dried milk substitute powder, cream
substitute powder; flavored milk substitute powder for making drinks” in International
Class 029; “Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules
8
containing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts;
coffee essences; coffee flavorings, namely, coffee flavored syrup used in making food
beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based beverages
and drinks; beverages based on coffee substitutes; coffee beverages with milk substitutes;
coffee-based beverages containing milk substitutes; prepared coffee; prepared coffee
beverages; prepared coffee-based beverages; extracts of coffee for use as flavors in
beverages; biscuits; pastry and confectionery made of sugar; oat-based cake mixes, oat-
based biscuit mixes; oat-based cake mixes, containing coffee; oat-based biscuit mixes,
containing coffee; ice beverages with a coffee base; ice cream; ice cream made from milk
substitutes; non-dairy ice cream; ice cream, containing coffee, made from milk
substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream;
coffee flavored ice cream; preparations for making coffee based beverages; milk
substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes frozen yoghurt
containing coffee” in International Class 030; “Software development; development of
software for online messaging and marketing; development of software for websites and
webhosting; cloud computing services, namely, cloud hosting provider services featuring
application software for cloud computing services; infrastructure as a service (IaaS)
featuring software to detect coffee shop locations; platform as a service (PaaS) featuring
software to detect coffee shop locations; software as a service (SaaS) services featuring
software to detect coffee shop locations” in International Class 042; and “Provision of
food and drink; café services and cafeteria services; cafés and cafeterias; take away food
and drink services; take away café and cafeteria services; restaurant information
9
services; café information services; bar information services” in International Class 043,
which cites a priority date of November 7, 2017.
h. OATLY, U.S. Application No. 87/320,671 for “Oat-based drinks as milk
substitutes; oat-based yogurt substitute; oat-based crème fraiche; oat-based cooking
cream and creamer; oat-based food spread” in International Class 029, for “Oat-based
vanilla sauce and oat based vanilla custard; oat-based ice cream” in International Class
030; and “Oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruit
drink beverages; oat-based smoothie beverages” in International Class 032, which was
filed on February 1, 2017.
i. OATLY, U.S. Application No. 79/228,630 for “Dietary supplements and
dietetic food supplements; food supplements and dietary food supplements; nutritional
supplements; dietary fibre to aid digestion and for treating constipation, dietary fibre for
use as an ingredient in the manufacture of dietary supplements; oat-based food
supplements and oat-based dietary supplements; oat-based nutritional supplements; oat-
based dietary supplement drink mixes; oat-based dietary supplemental drinks in the
nature of vitamin and mineral beverages; oat-based nutritional supplement in the nature
of a nutrient-dense drink mix; food for babies; functional foods, functional health foods
and nutraceuticals for therapeutic purposes and for use as nutritional supplements and
dietary supplements; nutraceuticals for therapeutic purposes; nutraceuticals for use as a
dietary supplement; grain-based functional foods for therapeutic purposes and for use as
nutritional supplements and dietary supplements; grain-based nutraceuticals for
therapeutic purposes and for use as nutritional supplements and dietary supplements;
oat-based functional foods for therapeutic purposes and for use as nutritional
10
supplements and dietary supplements; oat-based nutraceuticals for therapeutic purposes
and for use as nutritional supplements and dietary supplements; functional foods for
slimming purposes, namely, weight management supplements; functional beverages for
slimming purposes, namely, weight management supplements; probiotic supplements;
vitamin and mineral supplements; anti-oxidant food supplements; calcium supplements;
mineral nutritional supplements; bacteriological preparations and preparations of
microorganisms for medical and veterinary use, namely, probiotic bacteria and bacteria
cultures being ingredients for dietetic substances for pharmaceutical, medical and
veterinary use; food supplements and health food supplements for persons with special
dietary requirements; grain-based food supplements for slimming purposes; oat-based
food supplements for slimming purposes; dietary supplements for slimming purposes;
probiotic supplements for slimming purposes; oat-based dietary supplement drink mixes;
oat-based dietary supplemental drinks in the nature of vitamin and mineral beverages” in
International Class 005; “Apparatus for recording, transmission or reproduction of
sound and images; audio cassette players and digital audio tape players; digital audio
players; cd players; portable multimedia players, namely, tablet computers and digital
media streaming devices; portable music players, namely, compact disc players and MP3
players; software, namely, communication software, game software, interface software
and graphics software; software for online messaging and marketing; website
development software and web application software; eyewear; eyewear cases; glasses,
sun glasses and contact lenses; frames for glasses; application software being apps for
cloud computing services, for application and database integration, for social networking
services and streaming audio-visual media content via internet, for playing games and
11
for enhancing the audio-visual capabilities of multimedia applications, all for smart
phones, mobile phones, wireless devices, mobile devices, TV or smart TV; mobile apps
for cloud computing services, for application and database integration, for social
networking services and streaming audio-visual media content via internet, for playing
games and for enhancing the audio-visual capabilities of multimedia applications, all for
smart phones, mobile phones, wireless devices or mobile devices; computer programs
being downloadable software, namely, communication software, game software, interface
software and graphics software for cloud computing services, for application and
database integration, for social networking services and streaming audio-visual media
content via internet, for playing games and for enhancing the audio-visual capabilities of
multimedia applications; downloadable digital recipes and collections of recipes in
electronic format” in International Class 009; “Precious metals and their alloys; key
rings; cuff links; tie pins; tie clips; ornaments of precious metal in the nature of jewelry,
ornamental lapel pins, figurines and statuettes made of precious metal or coated
therewith; watches; clocks; jewelry; precious stones; horological and chronometric
instruments; timepieces; watch buckles, watch strap buckles; watch straps” in
International Class 014; “Briefcases; attaché cases; briefcase-type portfolios; suitcases;
suit bags; purses; business card holders in the nature of card cases; credit card holders;
backpacks; key cases; coin holders; trunks and travelling bags; cosmetic bags sold
empty; toilet bags, sold empty, and bags for shaving kits, sold empty; bags, namely,
leather and imitation leather bags, sports bags, belt bags; duffle bags, tote bags;
handbags; wallets; billfolds; change purses; luggage; overnight cases; umbrellas and
parasols; walking sticks” in International Class 018; “Tableware, namely, coffee services
12
in the nature of tableware, tea services in the nature of tableware, coffee scoops, ice
scoops and coasters, not of paper or textile, cookware, namely, pots and pans, steamers,
roasting pans, and cookware for use in microwave ovens, and containers for household
or kitchen use; drinking glasses, drinking vessels and barware, namely, highball glasses,
whiskey glasses, cocktail glasses, carafes, decanters, coupe glasses, snifters, mugs;
serving pots and jugs, coffee pots and tea pots; milk jugs; jugs for frothing milk; non-
electric milk frothers; cups, saucers and mugs; bowls” in International Class 021;
“Clothing, namely, trousers for children and adults, mantles, jerseys, hoods and hoodies;
footwear; headwear; clothing, footwear and headwear for women, men, boys and girls,
namely, jump suits, shirts, blouses, jackets, bathing suits; clothing, footwear and
headwear for women, men, boys and girls, namely, pants, belts, shorts; clothing,
footwear and headwear for women, men, boys and girls, namely, warm-up suits,
sweatpants and sweatshirts, walking shorts; clothing, footwear and headwear for women,
men, boys and girls, namely, jeans, suits, dinner jackets and formal wear in the nature of
gowns, tuxedos and trousers, sports jackets; clothing, footwear and headwear for women,
men, boys and girls, namely, knitted tops, ties and other neckwear; clothing, footwear
and headwear for women, men, boys and girls, namely, stockings, tights; clothing,
footwear and headwear for women, men, boys and girls, namely, hats, caps being
headwear, scarves, shawls, coats, outer coats, vests, sweaters; clothing, footwear and
headwear for women, men, boys and girls, namely, dresses, skirts, t-shirts, beach and
swimming cover-ups; clothing, footwear and headwear for women, men, boys and girls,
namely, rainwear, rain coats, ponchos, tank tops, camisoles; tennis and golf apparel,
namely, dresses, tops, skirts, pants, and shorts; biking and running and yoga apparel,
13
namely, tops, tank tops, skirts, pants, short pants, shorts and jackets; footwear, namely,
shoes, active sport shoes, sneakers, boots, slippers; blazers, pants, capes, socks, gloves;
underwear; underwear, sleepwear and loungewear for men and boys, namely, briefs,
boxer shorts; underwear, sleepwear and loungewear for men and boys, namely, athletic
underwear, sport knit shirts; underwear, sleepwear and loungewear for men and boys,
namely, t-shirts, tank tops, undershirts, basic underwear; underwear, sleepwear and
loungewear for men and boys, namely, robes, knitted and woven sleepwear, sleep shirts,
pajama tops, pajama bottoms; underwear, sleepwear and loungewear for men and boys,
namely, breakfast jackets, smoking jackets, bed jackets, cover-ups; knitted and woven
loungewear, lounging pants, and tops, lounge jackets; intimate apparel and bodywear for
women and girls, namely, underwear, sleepwear and loungewear; belts” in International
Class 025; “Dairy substitutes, namely, artificial cream, hazelnut milk, soy milk, coconut
oil for food, coconut butter; dairy product substitutes, namely, oat-based cream; milk
substitutes; milk substitutes containing oats; oat milk; oat-based beverages and drinks
for use as a milk substitute; milk substitute based beverages and drinks, almond milk,
almond milk-based beverages; coconut milk, coconut milk-based beverages; hemp milk
used as milk substitute; peanut milk, peanut milk-based beverages; rice milk, rice milk
for use as milk substitute; soya milk, soya bean milk; functional milk substitute
beverages; fruit-flavored milk substitutes based on oats; milk substitute-based drinks
containing coffee; yoghurt substitutes; yoghurt substitutes containing oats; milk
substitute preparations for making yoghurt; oat-based yoghurt substitute; oat-based
yoghurt and drinking yoghurt free of milk and lactose; yoghurt and drinking yoghurt
substitutes containing oats; fruit-flavored yoghurt substitutes; fruit-flavored yoghurt
14
substitutes containing oats; sour milk substitutes; sour cream substitutes; sour milk
substitutes containing oats; sour cream substitutes containing oats; cream substitutes;
crème fraiche substitutes; cream substitutes containing oat; crème fraiche substitutes
containing oats; non-dairy creamer; oat-based cooking cream and creamer; vegetable
based cream; butter substitutes, margarine substitutes; oat-based butter substitutes; oat-
based margarine substitutes; dairy substitute cheese, dairy substitute cream cheese, dairy
substitute cheese spreads; cheese mixtures being dairy substitutes; cheese powder;
cheese substitutes; oat-based cheese; instant cheese powder substitutes, skimmed milk
powder, sweet whey powder; milk substitute powder, milk substitute powder for food and
nutritional purposes; dried milk substitute powder, cream substitute powder; flavored
milk substitute powder for making drinks; vegetable powders; coconut milk powder;
compotes, fruit and vegetable spreads; processed fruit, fruit snacks, namely, dried fruit-
based snacks and fruit-based snack food; fruit chips; fruit-based snack foods; fruit juices
for cooking; vegetable juices for cooking; vegetable juice concentrates for food, namely,
vegetable juice, vegetable pulp and vegetable paste for cooking; oat-based and vegetable
based dairy substitute products for slimming purposes, namely, artificial milk, cream and
cheese based on oats and vegetables; milk substitutes for use in oat-based dietary
supplement drink mixes; milk substitutes for use in oat-based dietary supplement drinks
in the nature of vitamin and mineral beverages; soup powders” in International Class
029; “Processed grains, starches, and goods made thereof, namely, starch for food,
baking preparations, namely, baking soda, baking powder and baking spices, and yeasts;
flour, processed oats, oat-based bars and oat-based energy-bars; oatmeal, rolled oats;
cereals, processed cereals; food preparations and foodstuffs made from cereals, namely,
15
ready-to-eat cereals, cereal based snack food; crispbread made of cereals; breakfast
cereals; breakfast cereals containing fibre; breakfast cereals containing a mixture of
fruit and fibre; cereals flakes, namely, maize flakes and corn flakes; muesli consisting
predominantly of cereals; cereal bars and cereal based energy bars; crushed oats; oat
flakes; muesli; oat-based gruel; snack foods consisting principally of grain; snack foods
consisting principally of extruded cereals; wheat snacks, corn snacks, oat snacks; snack
foods and snack products made from cereals; snacks made from muesli; snack foods
made of whole wheat; bread; wholemeal bread and bread mixes; whole wheat bread and
crispbread; whole wheat grains being cooked, precooked and preserved; biscuits; pastry
and confectionery, namely, tablet confectionary and chocolate confectionary; oat-based
cake mixes, oat-based biscuit mixes; coffee; decaffeinated coffee; instant coffee; roasted
coffee, in powder form; artificial coffee; coffee drinks and beverages; coffee-based drinks
and beverages; coffee-based drinks and beverages containing milk substitutes; pancakes;
waffles; pancake batter; liquid batter for making pancakes; oat-based pancakes; oat-
based waffles; oat-based pancake batter; oat-based liquid batter for making pancakes;
powdered preparations containing cocoa powder for use in making beverages; oat-based
drinks in powder form, namely, oat-based coffee drinks, cocoa drinks and espresso drinks
in powder form; food dressings in the nature of sauces; sauces; cooking sauces;
prepared foodstuffs in the form of sauces; oat-based sauces; oat-based custard, oat-
based vanilla custard, oat-based vanilla sauce; ice cream substitute; ice cream; ice
cream made from milk substitutes; non-dairy ice cream; oat-based ice cream; oat-based
flavoured ice-cream; oat-based fruit ice-cream; flavoured ice-cream, fruit ice-cream;
soy-based ice cream; frozen yoghurt based on milk substitutes; non-dairy frozen yoghurt;
16
fermented foodstuffs based on oats, namely, oat-based soy sauce, oat-based pastes; oat-
based food spread” in International Class 030; “Preparations for making beverages,
namely, preparations for making fruit beverages, fruit-based and fruit-flavored
beverages, vegetable juices, smoothies, soya-based beverages not being milk substitutes,
whey beverages, isotonic beverages and sports beverages; non-alcoholic beverages,
namely, non-alcoholic malt beverages, non-alcoholic fruit-based beverages, non-
alcoholic water-based beverages, carbonated beverages, non-alcoholic beverages
containing fruit juices, non-alcoholic beverages flavored with coffee, non-alcoholic
beverages flavored with tea; non-alcoholic drinks, namely, isotonic non-alcoholic drinks,
carbonated non-alcoholic drinks and energy shots; oat-based beverages, not being milk
substitutes; oat-based natural energy drinks; oat-based breakfast drinks, namely,
smoothies containing oats, fruit juices containing oats and vegetable juices containing
oats; oat-based fruit drink beverages; oat-based smoothie beverages; oat-based fruit and
berry drinks and beverages; oat-based drinks and beverages for slimming purposes,
namely, smoothies containing oats, fruit juices containing oats and vegetable juices
containing oats, all for slimming purposes; energy drinks; energy drinks containing
caffeine; recovery drinks being sports drinks; sports drinks; functional beverages,
namely, sports drinks containing electrolytes, nutrified fruit drinks; functional water-
based beverages, namely, water-based sports drinks, water-based energy drinks and
water-based sports recovery drinks; nut and soy based beverages, namely, nut based
beverages not being milk substitutes and soy based beverages not being milk substitutes;
powders for the preparation of beverages, namely, powders for the preparation of fruit
beverages and powders for the preparation of vegetable beverages, powders used in the
17
preparation of fruit-based drinks; powders for use in preparation of fruit based
beverages” in International Class 032; “Business management of wholesale and retail
outlets; retail stores and retail distributorships in relation to food and foodstuffs,
beverages and drinks, food supplements and dietary food supplements, dietary
supplements and dietic preparations; retail stores and retail distributorships in relation
to functional foods, functional health foods and functional beverages, slimming products;
retail stores and retail distributorships in relation to dairy substitutes and dairy product
substitutes, processed grains, oats and oat-based products; retail stores and retail
distributorships in relation to apparatus for recording, transmission or reproduction of
sound and images; retail stores and retail distributorships in relation to gloves, belts,
wallets, hand bags, cases and bags; retail stores and retail distributorships in relation to
software, eyewear, clothing, footwear, headwear; retail stores and retail distributorships
in relation to precious metals, key rings, cuff links, tie pins, tie clips, clocks, watches,
jewelry and precious stones; online retail outlets relating to food and foodstuffs,
beverages and drinks, food supplements and dietary food supplements, dietary
supplements and dietic preparations; online retail outlets relating to functional foods,
functional health foods and functional beverages, slimming products; online retail outlets
relating to dairy substitutes and dairy product substitutes, processed grains, oats and
oat-based products; online retail outlets relating to apparatus for recording,
transmission or reproduction of sound and images; online retail outlets relating to
gloves, belts, wallets, hand bags, cases and bags; online retail outlets relating to
software, eyewear, clothing, footwear, headwear; online retail outlets relating to
precious metals, key rings, cuff links, tie pins, tie clips, clocks, watches, jewelry and
18
precious stones” in International Class 035; “Transportation and delivery of goods;
packaging and storage of food and foodstuffs, beverages and drinks, food supplements
and dietary food supplements, dietary supplements and dietic preparations, functional
foods, functional health foods and functional beverages, slimming products, dairy
substitutes and dairy product substitutes, processed grains, oats and oat-based products,
apparatus for recording, transmission or reproduction of sound and images, gloves,
belts, wallets, hand bags, cases and bags, software, eyewear, clothing, footwear,
headwear, precious metals, key rings, cuff links, tie pins, tie clips, clocks, watches,
jewelry and precious stones” in International Class 039; “Education services, namely,
providing classes, seminars, workshops and tutoring relating to nutrition; dietary
education services, namely, providing classes, seminars and workshops in the field of
dietary nutrition; providing of training in the field of health care and nutrition; provision
of instruction relating to nutrition; instruction in non-medical nutrition and instruction in
non-medical diet; training related to nutrition and diet” in International Class 041; and
“Provision of food and drink; café services and cafeteria services; cafés and cafeterias;
take away food and drink services; take away café and cafeteria services” in
International Class 043, citing a priority date of February 13, 2017.
j. OATGURT, U.S. Application No. 79/224,787 for “Dairy product
substitutes, namely, oat-based drinks as milk substitutes and oat-based yogurt, shakes,
and cheese as dairy food substitutes; oat-based beverages for use as milk substitutes;
fruit-based drinks containing oats, namely, oat based, dairy free drinks containing fruit;
yoghurt substitutes containing oats; drinking yoghurt substitutes containing oats; fruit-
flavored yoghurt substitutes containing oats; oat-based lactose free yoghurt; oat-based
19
lactose free drinking yoghurt; oat-based lactose free fruit-flavored yoghurt” in
International Class 029, which cites a priority date of January 26, 2017.
k. The trademark applications and registrations listed above are collectively
referred to as the “OAT Marks.” Copies of the above-mentioned registration certificates
and TSDR status pages are attached hereto as “Exhibit A.”
3. The above listed registrations are valid, subsisting, and in good standing.
4. The above listed applications are currently pending with the U.S. Patent and
Trademark Office.
5. Oatly is known and recognized for its distinctive OAT Marks. Oatly owns and
uses its OAT Marks in connection with a wide variety of oat-based foodstuffs, beverages and
related services.
6. Oatly promotes and sells its products and services on its website www.oatly.com
and in various other sales distribution channels.
7. Oatly’s milk substitute products are offered for sale nationwide at large retailers
such as Whole Foods and Target, grocery stores, as well as coffee shops and cafés.
8. Oatly also sells and markets various products under the OAT Marks such as, oat
drinks, coffee drinks, creams, oat spreads, sauces and ice creams in many countries, including
Austria, China, Denmark, Finland, France, Germany, Netherlands, Norway, Spain, Sweden and
the United Kingdom.
9. Oatly has expended substantial amounts of time, money and effort in advertising
and promoting its OAT Marks over many years, and in establishing and preserving the goodwill
associated therewith, and the goodwill associated with Oatly’s OAT Marks is a valuable asset to
Oatly.
20
10. The OAT Marks is distinctive within the meaning of the Lanham Act.
11. Oatly has used its OAT Marks in U.S. commerce and Oatly’s OAT Marks have
become distinctive of, and associated in the minds of the trade and purchasing public with Oatly
as a well-known provider of goods and services offered under its OAT Marks. By virtue of
Oatly’s efforts, Oatly has gained a significant and valuable reputation for the goods and services
associated with its OAT Marks.
12. Upon information and belief, Applicant Patrick’s Green Mountain Twisters, LLC
is the owner of TOTALLY OATALLY, Application Serial No. 88/001,799, in International
Class 030 covering “Granola.” A true and correct copy of the trademark application and TSDR
records for this mark is attached hereto as “Exhibit B.”
13. Upon information and belief, Applicant is a Vermont limited liability company
with an address listed at the USPTO as 528 Keene Farm Road, Marshfield, Vermont 05658.
14. Applicant filed U.S. Trademark Application Serial No. 88/001,799 under Section
1(a) of the Trademark Act on June 15, 2018.
15. Oatly’s earliest priority date contained in its registrations for the OAT Marks as
described above is well prior to the June 15, 2018 date of Applicant’s TOTALLY OATALLY
application.
16. Oatly’s earliest priority date contained in its registrations for the OAT Marks as
described above is well prior to the March 1, 2016 date of first use alleged in Applicant’s
TOTALLY OATALLY application.
17. By virtue of the filing date of its earliest United States trademark application,
October 17, 2000, Oatly has held exclusive trademark rights to its Oat Marks for nearly twenty
years.
21
18. Upon information and belief, Applicant had actual and/or constructive knowledge
of Oatly prior to filing the Application herein opposed.
19. Upon information and belief, Applicant had actual and/or constructive knowledge
of Oatly’s OAT Marks prior to filing the Application herein opposed.
20. Applicant is not entitled to use or register the mark that is the subject of
Application Serial No. 88/001,799 on June 15, 2018, the date of filing said Application, or on
November 13, 2018, the date of publication thereof in the Official Gazette.
21. Applicant’s goods in International Class 030 as identified in the Application are
closely related to goods and services covered by the OAT Marks.
22. Applicant’s goods are likely to be promoted to the same or a similar class of
consumers, and are presumed to travel through the same or similar channels of trade.
23. The mark as identified in the Application herein is confusingly similar to Oatly’s
OAT Marks in sight, sound, meaning, and commercial impression.
24. The mark as identified in the Application herein opposed is used in connection
with goods that are highly related to Oatly’s goods and services associated with Oatly’s OAT
Marks. If viewed on competing or related products, the mark identified in the Application herein
opposed is likely to be confused with Oatly’s OAT Marks.
25. The mark identified in the Application herein opposed so closely resembles
Oatly’s OAT Marks as to be likely, when applied to the goods of Applicant, to cause confusion
or mistake or to deceive persons by creating the erroneous impression that Applicant’s goods
originate or come from Oatly, are authorized, licensed, endorsed, sponsored by, or are connected
in some way with Oatly. Therefore, the registration thereof by Applicant would be injurious to
Oatly.
22
26. The mark identified in the Application herein opposed is likely to diminish the
value and distinctive character of Oatly’s OAT Marks, thus damaging Oatly.
27. Applicant knew or should have known of Oatly’s OAT Marks when Applicant
filed the Application.
28. Applicant’s adoption and intended use of the mark identified in the Application
herein opposed is without the license or permission of Oatly.
29. Oatly owns all registered and common-law rights in the OAT Marks. Oatly’s
ownership of trademark registrations for its OAT Marks is prima facie evidence of the validity of
its marks and of Oatly’s exclusive right to use the marks in commerce. Likewise, Oatly’s senior
and longstanding, continuous and exclusive use of the OAT Marks in connection with Oatly’s
various oat-based, milk-substitutes and related products and services has thoroughly established
the distinctiveness of that mark and Oatly’s exclusive rights thereto.
30. Priority is not at issue: Oatly’s use and registration of its OAT Marks as described
above is well prior to Applicant’s filing date for the Application.
31. Applicant’s goods in International Class 030 are closely related to the goods
offered by Oatly under its OAT Marks, and are or may be promoted to the same or a similar class
of consumers, and are or may be available through the same or similar channels of trade.
32. The Application is confusingly similar to Oatly’s OAT Marks in sight, sound,
meaning, and commercial impression and is used or intended to be used in connection with
goods that are closely related to the goods and services covered by Oatly’s OAT Marks. If
viewed on competing goods, the TOTALLY OATALLY mark and Oakly’s OAT Marks are
sufficiently similar such that confusion is likely to occur.
23
33. Registration of the Application to Applicant is barred by the provisions of 15
U.S.C. § 1052(d), for the reason that it consists of or comprises a mark which so resembles
Oatly’s OAT Marks previously registered in the United States Patent and Trademark Office,
previously used by Oatly and not abandoned, as to be likely, when used in connection with the
goods of Applicant, to cause confusion, mistake, or to deceive.
34. For the above reasons, use of the mark identified in the Application is likely to
cause confusion, cause mistake or deceive the public, and cause the public to believe that the
goods offered under the TOTALLY OATALLY mark emanate from or are otherwise sponsored
or endorsed by Oatly, or connected in some way to Oatly, in violation of Section 2(d) of the
Lanham Act, 15 U.S.C. § 1052(d). This likelihood of confusion will damage Oatly within the
meaning of 15 U.S.C. § 1063.
35. Registration of the mark identified in the Application herein opposed would
create statutory rights in favor of Applicant, and thereby restrict, interfere with and damage Oatly
in the unhampered conduct of its business and protection of its legitimate interests.
36. The opposition fee in the amount of $400.00 is filed herewith. The Commissioner
is authorized to charge any underpayment to Deposit Account No. 04-1133 in case of any
deficiency.
WHEREFORE, Oatly prays that Application Serial No. 88/001,799, be rejected; that
registration of the TOTALLY OATALLY mark to Applicant be refused and denied; and that this
Notice of Opposition be sustained in Oatly’s favor.
Oatly requests such other and further relief as the Board may deem just and proper.
24
Date: May 10, 2019 Respectfully submitted,
DINSMORE & SHOHL LLP
s/Karen Kreider Gaunt/ Karen Kreider Gaunt
Govinda M. Davis Dinsmore & Shohl LLP 255 East Fifth Street, Suite 1900 Cincinnati, OH 45202 Voice: (513) 977-8503 Facsimile: (513) 977-8141 Email: [email protected] [email protected] Attorneys for Opposer, Oatly AB
CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Notice of Opposition has
been served upon Applicant’s attorney of record by email and regular U.S. mail this 10th day of
May, 2019:
Douglas J. Wolinsky Primmer Piper Eggleston & Cramer PC 30 Main Street, Suite 500 Burlington, Vermont 05402 [email protected]; [email protected]
s/Karen Kreider Gaunt/ Karen Kreider Gaunt
14717630v1
EXHIBIT A
Int. Cls.: 29 and 30
Prior U.S. Cl.: 46 Reg. No. 2,701,730
United States Patent and Trademark Office Registered Apr. 1, 2003
TRADEMARKPRINCIPAL REGISTER
OATLY
SCANIAN FARMERS AB (SWEDEN CORPORA-
TION)VON TROLLS VAG 1
MALMO, SWEDEN
FOR: OAT-BASED FOOD BEVERAGES USED AS
A MILK SUBSTITUTE, IN CLASS 29 (U.S. CL. 46).
FOR: FLOUR, BREAD, PANCAKES, OAT-BASED
GRUEL, ICE-CREAM, FLAVORED ICES AND
FRUIT ICES, AND OAT BASED FOOD BEVERAGES
, IN CLASS 30 (U.S. CL. 46).
OWNER OF SWEDEN REG. NO. 350943, DATED
12-14-2001, EXPIRES 12-14-2011.
SER. NO. 76-148,369, FILED 10-17-2000.
YVONNE JONES, EXAMINING ATTORNEY
Generated on: This page was generated by TSDR on 2019-05-10 13:21:43 EDT
Mark: OATLY
OATLY
US Serial Number: 76148369 Application Filing Oct 17, 2000
Date:
US Registration 2701730 Registration Date: Apr. 01, 2003
Number:
Register: Principal
Mark Type: Trademark
Status: The registration has been renewed.
Status Date: Apr. 10, 2013
Publication Date: Jan. 07, 2003
Mark Information
Mark Literal OATLYElements:
Standard Character NoClaim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
Foreign 350943Registration
Number:
Foreign SWEDEN
Application/Registration
Country:
Foreign Information
Foreign Dec. 14, 2001
Registration Date:
Foreign Expiration Dec. 14, 2011
Date:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..] indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks *..* identify additional (new) wording in the goods/services.
For: oat-based food beverages used as a milk substitute
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 44(e)
For: [flour, bread, pancakes, oat-based gruel, ice-cream, flavored ices and fruit ices, and ] oat based food beverages
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 44(e)
Basis Information (Case Level)
Filed Use: No
Filed ITU: Yes
Filed 44D: No
Filed 44E: No
Currently Use: No
Currently ITU: No
Currently 44D: No
Currently 44E: Yes
Amended Use: No
Amended ITU: No
Amended 44D: No
Amended 44E: No
Filed 66A: No
Filed No Basis: No
Currently 66A: No
Currently No Basis: No
Current Owner(s) Information
Owner Name: OATLY AB
Owner Address: FORETAGSVAGEN 42
SE-261 51 LANDSKRONA
SWEDEN
Legal Entity Type: CORPORATION State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: David R Haarz Docket Number: 10400C-20008
Attorney Primary [email protected] Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent
Name/Address:David R Haarz
Harness, Dickey & Pierce, PLC
11730 Plaza America Dr
Suite 600Reston, VIRGINIA 20190
UNITED STATES
Phone: 703-668-8042 Fax: 703-668-8200
Correspondent e-mail:
[email protected] Correspondent e- Yes
mail Authorized:
Domestic Representative
Domestic
RepresentativeName:
Fax:
Harness, Dickey & Pierce, PLC
703-668-8200
Phone: 703-668-8000
Domestic
Representative e-mail:
[email protected] Domestic
Representative e-mail Authorized:
Yes
Prosecution History
Date
Apr. 10, 2013
Description
NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
ProceedingNumber
Apr. 10, 2013 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)77315
Apr. 10, 2013 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED77315
Apr. 09, 2013
Mar. 25, 2013
CASE ASSIGNED TO POST REGISTRATION PARALEGAL
TEAS SECTION 8 & 9 RECEIVED
77315
Apr. 09, 2009 REGISTERED - SEC. 8 (6-YR) ACCEPTED67723
Apr. 01, 2009
Mar. 31, 2009
Feb. 05, 2008
Aug. 30, 2006
May 03, 2006
Apr. 01, 2003
Jan. 07, 2003
Dec, 18, 2002
ASSIGNED TO PARALEGAL
TEAS SECTION 8 RECEIVED
CASE FILE IN TICRS
AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
AUTOMATIC UPDATE OF ASSIGNMENT OF OWNERSHIP
REGISTERED-PRINCIPAL REGISTER
PUBLISHED FOR OPPOSITION
NOTICE OF PUBLICATION
67723
Jul. 15, 2002
Jul. 15, 2002
Aug. 12, 2002
Jul. 15, 2002
Sec. 1(B) CLAIM DELETED
NOTICE OF ALLOWANCE CANCELLED
PETITION TO DIRECTOR - GRANTED
PETITION TO DIRECTOR RECEIVED
65362
Jul. 15, 2002
Feb. 05, 2002
Nov. 13, 2001
Oct. 24, 2001
Apr. 11, 2001
Mar. 26, 2001
Mar. 13, 2001
PAPER RECEIVED
NOA MAILED - SOU REQUIRED FROM APPLICANT
PUBLISHED FOR OPPOSITION
NOTICE OF PUBLICATION
APPROVED FOR PUB - PRINCIPAL REGISTER
EXAMINER'S AMENDMENT MAILED
ASSIGNED TO EXAMINER78195
Maintenance Filings or Post Registration Information
Affidavit of Section 8 - Accepted
Continued Use:
Renewal Date: Apr. 01, 2013
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location: GENERIC WEB UPDATE Date in Location: Apr. 10, 2013
Summary
Total Assignments: 2
Assignment Abstract Of Title Information
Registrant: Scanlan Farmers AB
Assignment 1 of 2
Conveyance: CHANGE OF NAME
Reel/Frame: 3298/0049 Pages: 3
Date Recorded: Apr. 27, 2006
Supporting assignment-tm-3298-0049.pdf
Documents:
Name: SCAN IAN FARMERS AB
Legal Entity Type: CORPORATION
Assignor
Execution Date: Dec 28, 2001
State or Country SWEDEN
Where Organized:
Assignee
Name: CEBA FOODS AB
Legal Entity Type: CORPORATION State or Country SWEDEN
Where Organized:
Address: SCHEELEVAGEN 18
SE-223 63 LUND, SWEDEN
Correspondent FROSS ZELNICK LEHRMAN & ZISSU, P.C.
Name:
Correspondent 866 UNITED NATIONS PLAZA
Address: NEW YORK, NY 10017
Correspondent
Domestic Representative - Not Found
Assignment 2 of 2
Conveyance: CHANGE OF NAME
Reel/Frame: 3380/0306 Pages: 3
Date Recorded: Aug. 29, 2006
Supporting assignment-tm-3380-0306.pdf
Documents:
Name: CEBA FOODS AB
Legal Entity Type: CORPORATION
Assignor
Execution Date: Jun. 26, 2006
State or Country SWEDEN
Where Organized:
Assignee
Name: OATLY AB
Legal Entity Type: CORPORATION State or Country SWEDEN
Where Organized:
Address: FORETAGSVAGEN 42
SE-261 51 LANDSKRONA, SWEDEN
Correspondent FROSS ZELNICK LEHRMAN & ZISSU, P.C.
Name:
Correspondent 866 UNITED NATIONS PLAZA
Address: NEW YORK, NY 10017
Correspondent
Domestic Representative - Not Found
Proceedings
Summary
Number of 1Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642 Filing Date: Feb 26, 2019
Number:
Status: Pending Status Date: Feb 26, 2019
Interlocutory KATIE W MCKNIGHT
Attorney:
Defendant
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN , 55402
UNITED STATES
Correspondent e- trademarks-mi btlaw.com , bwalzRbtlaw.com , kerry.thompson©btlaw.com
mail:
Associated marks
Mark Application Status
OATERRA Opposition Pending
Plaintiff(s)
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH , 45202
UNITED STATES
Serial Registration
Number Number
87925673
Correspondent e- [email protected] , [email protected] robin.bissantzpdinsmore.com , [email protected]
mail:
Associated marks
Mark Application StatusSerial Registration
Number Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
tate5 ofniteb
art,vattb
evii14„.6tateo Patent club !Trabeittarti Office
OAT LY!Reg. No. 4,757,998 °ALLY AB (SWEDEN JOINT STOCK COMPANY)
FORETAGSVAGEN 42
Registered June 23, 2015 SE-261 51 LANDSKRONASWEDEN
Int. Cls.: 29, 30 and 32
TRADEMARK
PRINCIPAL REGISTER
114:c4424,
Director of the United StatesPatent and Trademark Office
FOR: OAT MILK MILK SUBSTITUTE; MILK SUBSTITUTES CONTAINING OATS, CREAM
SUBSTITUTES CONTAINING OATS, SOUR MILK SUBSTITUTES CONTAINING OATS,
YOGHURT SUBSTITUTES CONTAINING OATS, IN CLASS 29 (U.S. CL. 46).
FOR: FLOUR; OATMEAL; ROLLED OATS; FOOD PREPARATIONS MADE FROM CEREALS,
NAMELY, READY TO EAT CEREAL DERIVED FOOD BARS, CEREAL BASED SNACK
FOOD; OAT-BASED FOODSTUFFS, NAMELY, PROCESSED OATS, OATMEAL; MUESLI;
MUESLI BASED SNACK FOOD; CEREAL BARS AND CEREAL-BASED ENERGY-BARS;
BREAD; BISCUITS; PASTRY; CONFECTIONERY CONTAINING OATS, NAMELY, OAT
CAKES; OAT-BASED BISCUIT MIXES; PANCAKES; WAFFLES; PRE-MIXED LIQUID
PANCAKE BATTER; OAT-BASED GRUEL; OAT-BASED SAUCES; OAT-BASED VANILLA
CUSTARD; ICE-CREAM; OAT-BASED ICE-CREAM; FLAVORED ICE-CREAM; FRUIT ICE-
CREAM, IN CLASS 30 (U.S. CL. 46).
FOR: NON-ALCOHOLIC BEVERAGES, NAMELY, OAT-BASED BEVERAGES, FRUIT AND
BERRY BEVERAGES BASED ON OATS, IN CLASS 32 (U.S. CLS. 45, 46 AND 48).
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR-
TICULAR FONT, STYLE, SIZE, OR COLOR.
PRIORITY DATE OF 10-1-2013 IS CLAIMED.
OWNER OF INTERNATIONAL REGISTRATION 1209273 DATED 3-28-2014, EXPIRES 3-28-
2024.
OWNER OF U.S. REG. NOS. 2,701,730 AND 3,876,387.
SER. NO. 79-149,322, FILED 3-28-2014.
CARYN GLASSER, EXAMINING ATTORNEY
REQUIREMENTS TO MAINTAIN YOUR FEDERAL
TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*
What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the
5th and 6th years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is
accepted, the registration will continue in force for the remainder of the ten-year period, calculated
from the registration date, unless cancelled by an order of the Commissioner for Trademarks or a
federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an
Application for Renewal between the 9th and 10th years after the registration date.*
See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*
What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between
every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above
with the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with
an extension of protection to the United States under the Madrid Protocol must timely file the Declarations
of Use (or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office
(USPTO). The time periods for filing are based on the U.S. registration date (not the international registration
date). The deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to
those for nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international
registrations do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the
underlying international registration at the International Bureau of the World Intellectual Property Organization,
under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated
from the date of the international registration. See 15 U.S.C. §1141j. For more information and renewal
forms for the international registration, see http://www.wipoint/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online
at http://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 / RN # 4,757,998
Generated on: This page was generated by TSDR on 2019-05-10 13:25:14 EDT
Mark: OAT-LY!
OAT LY!US Serial Number: 79149322 Application Filing Mar. 28, 2014
Date:
US Registration 4757998 Registration Date: Jun. 23, 2015
Number:
Register: Principal
Mark Type: Trademark
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Jun. 23, 2015
Publication Date: Apr. 07, 2015
Mark Information
Mark Literal OAT-LY!
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Related Properties Information
International 1209273
RegistrationNumber:
International Mar. 28, 2014
Registration Date:
Claimed Ownership 2701730, 3876387
of US
Registrations:
Goods and Services
Note:The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..] indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks'..' identify additional (new) wording in the goods/services.
For: Oat milk milk substitute; milk substitutes containing oats, cream substitutes containing oats, sour milk substitutes containing oats,
yoghurt substitutes containing oats
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Flour; oatmeal; rolled oats; food preparations made from cereals, namely, ready to eat cereal derived food bars, cereal based snack
food; oat-based foodstuffs, namely, processed oats, oatmeal; muesli; muesli based snack food; cereal bars and cereal-based energy-
bars; bread; biscuits; pastry; confectionery containing oats, namely, oat cakes; oat-based biscuit mixes; pancakes; waffles; pre-mixed
liquid pancake batter; oat-based gruel; oat-based sauces; oat-based vanilla custard; ice-cream; oat-based ice-cream; flavored ice-
cream; fruit ice-cream
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Non-alcoholic beverages, namely, oat-based beverages, fruit and berry beverages based on oats
International 032 - Primary Class U.S Class(es): 045, 046, 048
Class(es):
Class Status: ACTIVE
Basis: 66(a)
Filed Use: No
Filed ITU: No
Filed 44D: No
Filed 44E: No
Filed 66A: Yes
Filed No Basis: No
Basis Information (Case Level)
Currently Use: No
Currently ITU: No
Currently 44D: No
Currently 44E: No
Currently 66A: Yes
Currently No Basis: No
Amended Use: No
Amended ITU: No
Amended 440: No
Amended 44E: No
Current Owner(s) Information
Owner Name: Oatly AB
Owner Address: Stora Varvsgatan 6a
SE-211 19 MALMO
SWEDEN
Legal Entity Type: JOINT STOCK COMPANY State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Correspondent AWAPATENT AB
Name/Address: P.O. Box 5117
SE-200 71 Malmb
SWEDEN
Attorney of Record - None
Correspondent
Domestic Representative - Not Found
Prosecution History
Date
Oct. 18, 2018
Aug. 23, 2018
Jan. 05, 2017
Nov. 08, 2015
Oct. 21, 2015
Description
NEW REPRESENTATIVE AT IB RECEIVED
NEW REPRESENTATIVE AT IB RECEIVED
CHANGE OF NAME/ADDRESS REC'D FROM IB
FINAL DECISION TRANSACTION PROCESSED BY IB
FINAL DISPOSITION NOTICE SENT TO IB
ProceedingNumber
Oct. 21, 2015
Sep. 23, 2015
Jun. 23, 2015
Apr. 07, 2015
Apr. 04, 2015
Mar. 18, 2015
Mar. 18, 2015
Mar. 18, 2015
FINAL DISPOSITION PROCESSED
FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
REGISTERED-PRINCIPAL REGISTER
PUBLISHED FOR OPPOSITION
NOTIFICATION PROCESSED BY IB
NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
NOTICE OF PUBLICATION
76826
Feb. 27, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED68123
Feb. 26, 2015
Feb. 06, 2015
ASSIGNED TO LIE
APPROVED FOR PUB - PRINCIPAL REGISTER
68123
Feb. 05, 2015 TEAS/EMAIL CORRESPONDENCE ENTERED88889
Feb. 05, 2015
Feb. 05, 2015
Aug. 22, 2014
Aug. 06, 2014
CORRESPONDENCE RECEIVED IN LAW OFFICE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
REFUSAL PROCESSED BY IB
NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
88889
Aug. 06, 2014 REFUSAL PROCESSED BY MPU68359
Aug. 06, 2014 NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
Aug. 05, 2014 NON-FINAL ACTION WRITTEN
Aug. 02, 2014 APPLICATION FILING RECEIPT MAILED
Jul. 29, 2014 ASSIGNED TO EXAMINER
Jul. 29, 2014 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Jul. 21, 2014 SN ASSIGNED FOR SECT 66A APPL FROM IB
International Registration Information (Section 66a)
International 1209273
RegistrationNumber:
International Mar. 28, 2014
Registration Date:
Priority Claimed Yes Date of Section 67 Oct. 01, 2013
Flag: Priority Claim:
Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Jul. 21, 2014
Status: PROCESSED International
RegistrationStatus:
Notification of Jul 17, 2014
Designation Date:
International Mar. 28, 2024
Registration
Renewal Date:
First Refusal Flag: Yes
Date of Automatic Jan. 17, 2016
Protection:
TM Staff and Location Information
82426
82426
TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jun. 23, 2015
Assignment Abstract Of Title Information
Summary
Total Assignments: 1 Registrant: Oatly AB
Assignment 1 of 1
Conveyance: CHANGE OF ADDRESS
Reel/Frame: 5949/0198 Pages: 2
Date Recorded: Jan. 05, 2017
Supporting assignment-tm-5949-0198.pdf
Documents:
Name: OATLY AB
Legal Entity Type: UNKNOWN
Assignor
Execution Date: Sep. 19, 2016
State or Country NOT PROVIDED
Where Organized:
Assignee
Name: OATLY AB
Legal Entity Type: UNKNOWN State or Country NOT PROVIDED
Where Organized:
Address: STORA VARVSGATAN 6A
SE-211 19 MALMO, SWEDEN
Correspondent OATLY AB
Name:
Correspondent STORA VARVSGATAN 6A
Address: SE-211 19 MALMO
SWEDEN
Correspondent
Domestic Representative - Not Found
Proceedings
Summary
Number of 1Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642 Filing Date: Feb 26, 2019
Number:
Status: Pending
Interlocutory KATIE W MCKNIGHT
Attorney:
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN , 55402
UNITED STATES
Status Date: Feb 26, 2019
Defendant
Correspondent e- trademarks-miAbtlaw,com , bwalznbtlaw.com , kerry.thompsonAbtlaw.com
mail:
Associated marks
Mark Application Status
OATERRA Opposition Pending
Plaintiff(s)
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH , 45202UNITED STATES
Serial Registration
Number Number
87925673
Correspondent e- karen,[email protected] , [email protected] , [email protected] , christine.guogenheimerRd insmore.com
mail:
Associated marks
Mark Application StatusSerial Registration
Number Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT: ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
Generated on: This page was generated by TSDR on 2019-05-10 13:26:31 EDT
Mark: THE ORIGINAL OAT-LY!
US Serial Number: 79149710
US Registration 4766382
Number:
Register: Principal
Mark Type: Trademark
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Jul. 07, 2015
Publication Date: Apr. 21, 2015
Application Filing Mar. 28, 2014
Date:
Mark Literal THE ORIGINAL OAT-LY‘
Elements:
Standard Character NoClaim:
Registration Date: Jul. 07, 2015
Mark Information
THE ORIGINAL
LY!
Mark Drawing 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Type:
Description of The mark consists of the wording "THE ORIGINAL OAT-LY!" in which the "THE ORIGINAL" and "LY!" portions appear in black and the
Mark: "OAT-" appear in white and blue and all of the foregoing are superimposed against a blue rectangle. A design of a blue oat ear appears
inside the letter "A" in the term "OAT-".
Color Drawing: Yes
Color(s) Claimed: The color(s) blue, black and white is/are claimed as a feature of the mark.
Disclaimer: "ORIGINAL"
Design Search 05.01.25 - Cypress tree; Willow tree; Other trees or bushes
Code(s):
Related Properties Information
International 1210356Registration
Number:
International Mar. 28, 2014
Registration Date:
Claimed Ownership 2701730, 3876387
of USRegistrations:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..] indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks *..* identify additional (new) wording in the goods/services.
For: Oat milk milk substitute; milk substitutes containing oats, cream substitutes containing oats, sour milk substitutes containing oats,
yoghurt substitutes containing oats
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis:
For:
InternationalClass(es):
Class Status:
Basis:
For:
InternationalClass(es):
Class Status:
66(a)
Flour; oatmeal; rolled oats; food preparations made from cereals, namely, ready to eat cereal derived food bars, cereal based snack
food; oat-based foodstuffs, namely, processed oats, oatmeal; muesli; muesli based snack food; cereal bars and cereal-based energy-
bars; bread; biscuits; pastry; confectionery containing oats, namely, oat cakes; oat-based biscuit mixes; pancakes; waffles; pre-mixed
liquid pancake batter; oat-based gruel; oat-based sauces; oat-based vanilla custard; ice-cream; oat-based ice-cream; flavored ice-
cream; fruit ice-cream
030 - Primary Class
ACTIVE
66(a)
U.S Class(es): 046
Non-alcoholic beverages, namely, oat-based beverages, fruit and berry beverages based on oats
032 - Primary Class U.S Class(es): 045, 046, 048
ACTIVE
Basis: 66(a)
Basis Information (Case Level)
Filed Use: No
Filed ITU: No
Filed 44D: No
Filed 44E: No
Filed 66A: Yes
Filed No Basis: No
Currently Use: No
Currently ITU: No
Currently 44D: No
Currently 44E: No
Currently 66A: Yes
Currently No Basis: No
Amended Use: No
Amended ITU: No
Amended 44D: No
Amended 44E: No
Owner Name:
Owner Address:
Legal Entity Type:
Oatly AB
Stora Varvsgatan 6a
SE-211 19 MALMO
SWEDEN
Joint Stock Company
Correspondent AWAPATENT AB
Name/Address: P.O. Box 5117
SE-200 71 Malmti
SWEDEN
Current Owner(s) Information
State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney of Record - None
Correspondent
Domestic Representative - Not Found
Prosecution History
Date
Oct. 18, 2018
Aug. 23, 2018
Jan. 05, 2017
Nov. 27, 2015
Nov. 09, 2015
Nov. 09, 2015
Oct. 07, 2015
Jul. 07, 2015
Apr. 21, 2015
Apr. 17, 2015
Description
NEW REPRESENTATIVE AT IB RECEIVED
NEW REPRESENTATIVE AT IB RECEIVED
CHANGE OF NAME/ADDRESS REC'D FROM IB
FINAL DECISION TRANSACTION PROCESSED BY IB
FINAL DISPOSITION NOTICE SENT TO IB
FINAL DISPOSITION PROCESSED
FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
REGISTERED-PRINCIPAL REGISTER
PUBLISHED FOR OPPOSITION
NOTIFICATION PROCESSED BY IB
ProceedingNumber
72629
Apr. 01, 2015
Apr. 01, 2015
Apr. 01, 2015
NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO 18
NOTICE OF PUBLICATION
Mar. 14, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED 66121
Mar. 14, 2015
Feb. 23, 2015
ASSIGNED TO LIE
APPROVED FOR PUB - PRINCIPAL REGISTER
66121
Feb. 05, 2015 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Feb. 05, 2015
Feb. 05, 2015
Sep. 05, 2014
Aug. 08, 2014
CORRESPONDENCE RECEIVED IN LAW OFFICE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
REFUSAL PROCESSED BY IB
NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
88889
Aug. 08, 2014
Aug. 07, 2014
REFUSAL PROCESSED BY MPU
NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
68359
Aug. 06, 2014
Aug. 05, 2014
NON-FINAL ACTION WRITTEN
APPLICATION FILING RECEIPT MAILED
85329
Jul. 30, 2014
Jul. 30, 2014
Jul. 24, 2014
ASSIGNED TO EXAMINER
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
SN ASSIGNED FOR SECT 66A APPL FROM IB
85329
International Registration Information (Section 66a)
International 1210356 International Mar. 28, 2014
Registration Registration Date:
Number:
Priority Claimed Yes Date of Section 67 Oct. 01, 2013
Flag: Priority Claim:
Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Jul 24, 2014
Status: PROCESSED InternationalRegistration
Status:
Notification of Jul. 24, 2014
Designation Date:
International Mar. 28, 2024
RegistrationRenewal Date:
First Refusal Flag: Yes
Date of Automatic Jan 24, 2016
Protection:
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jul. 07, 2015
Assignment Abstract Of Title Information
Summary
Total Assignments: 1
Assignment 1 of 1
Registrant: Oatly AB
Conveyance: CHANGE OF ADDRESS
Reel/Frame: 5949/0200
Date Recorded: Jan. 05, 2017
Supporting assignment-tm-5949-0200.pdf
Documents:
Name: OATLY AB
Legal Entity Type: UNKNOWN
Pages: 2
Assignor
Execution Date: Sep. 19, 2016
State or Country NOT PROVIDED
Where Organized:
Assignee
Name: OATLY AB
Legal Entity Type: UNKNOWN State or Country NOT PROVIDED
Where Organized:
Address: STORA VARVSGATAN 6A
SE-211 19 MALMO, SWEDEN
Correspondent OATLY AB
Name:
Correspondent STORA VARVSGATAN 6A
Address: SE-211 19 MALMO
SWEDEN
Correspondent
Domestic Representative - Not Found
Proceedings
Summary
Number of 1
Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642
Number:
Status: Pending
Interlocutory KATIE W MCKNIGHT
Attorney:
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN , 55402
UNITED STATES
Filing Date: Feb 26, 2019
Status Date: Feb 26, 2019
Defendant
Correspondent e- trademarks-minbtlaw.com , bwalzpbtlaw.com , [email protected]
mail:
Associated marks
Mark Application Status Serial Registration
Number Number
OATERRA Opposition Pending 87925673
Plaintiff(s)
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH , 45202
UNITED STATES
Correspondent e- [email protected] , govinda.dayisPdinsmore.com , robin.bissantzAdinsmore.corn , christi ne.guggenheimeradinsmore.com
mail:
Associated marks
Mark Application StatusSerialNumber
Registration
Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE I POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
Due Date
Apr 07, 2019
tate0 of aniVett
eb1ntteb 0400 Patent ant Zrabentath V% litre
OATADOReg. No. 5,526,877
Registered Jul. 31, 2018
Int. Cl.: 29, 30
Trademark
Principal Register
Director of the United States
Patent and Trademark Office
Oatly AB (SWEDEN JOINT STOCK COMPANY)
Stora Varvsgatan 6 A
Se-21 1 19 Malmo
SWEDEN
CLASS 29: Milk substitute-based beverages containing coffee; milk substitute-based drinks
containing coffee; oat-based beverages and drinks for use as a milk substitute, containing
coffee; dairy substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-
based cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats;
skimmed milk substitutes containing oats; oat-based beverages and drinks for use as a milk
substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, and milk
substitute powder for food and nutritional purposes; milk substitutes in the nature of dried
milk substitute powder, and cream substitute powder; flavored milk substitute powder for
making drinks
CLASS 30: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules
containing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts; coffee
essences; coffee flavorings in the nature of coffee flavored syrups used in making food
beverages and vanilla flavorings for food or beverages; decaffeinated coffee; coffee
beverages; coffee drinks; coffee-based beverages and drinks; beverages based on coffee
substitutes; coffee beverages with milk substitutes; coffee-based beverages containing milk
substitutes; prepared coffee; prepared coffee beverages; prepared coffee-based beverages;
extracts of coffee for use as flavors in beverages; biscuits; pastry; confectionery in the nature
of frozen confectionery, confectionery made of sugar and confectionery made of sugar
substitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing
coffee; oat-based biscuit mixes, containing coffee; ice beverages with a coffee base; ice
cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing
coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based
flavored ice-cream; coffee flavored ice cream; preparations for making beverages that are
coffee based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes
frozen yoghurt containing coffee
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
PARTICULAR FONT STYLE, SIZE OR COLOR
PRIORITY DATE OF 02-23-2017 IS CLAIMED
OWNER OF INTERNATIONAL REGISTRATION 1365731 DATED 07-13-2017,
EXPIRES 07-13-2027
SER. NO. 79-216,762, FILED 07-13-2017
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*
What and When to File:
• First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
• Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*
What and When to File:
• You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an
extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5526877
Generated on: This page was generated by TSDR on 2019-05-10 13:28:30 EDT
Mark: OATADO
OATADCUS Serial Number: 79216762 Application Filing Jul. 13, 2017
Date:
US Registration 5526877 Registration Date: Jul. 31, 2018
Number:
Register: Principal
Mark Type: Trademark
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Jul. 31, 2018
Publication Date: May 15, 2018
Mark Information
Mark Literal OATADO
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Related Properties Information
International 1365731
RegistrationNumber:
International Jul. 13, 2017
Registration Date:
Goods and Services
Note:The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..] indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks "..* identify additional (new) wording in the goods/services.
For: Milk substitute-based beverages containing coffee; milk substitute-based drinks containing coffee; oat-based beverages and drinks for
use as a milk substitute, containing coffee; dairy substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-based
cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats; skimmed milk substitutes containing oats; oat-
based beverages and drinks for use as a milk substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, and
milk substitute powder for food and nutritional purposes; milk substitutes in the nature of dried milk substitute powder, and cream
substitute powder; flavored milk substitute powder for making drinks
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules containing coffee for brewing; artificial coffee; coffee
concentrates; coffee extracts; coffee essences; coffee flavorings in the nature of coffee flavored syrups used in making food beverages
and vanilla flavorings for food or beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based beverages and drinks;
beverages based on coffee substitutes; coffee beverages with milk substitutes; coffee-based beverages containing milk substitutes;
prepared coffee; prepared coffee beverages; prepared coffee-based beverages; extracts of coffee for use as flavors in beverages;
biscuits; pastry; confectionery in the nature of frozen confectionery, confectionery made of sugar and confectionery made of sugar
substitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing coffee; oat-based biscuit mixes,
containing coffee; ice beverages with a coffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream,
containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffee flavored
ice cream; preparations for making beverages that are coffee based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk
substitutes frozen yoghurt containing coffee
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
Filed Use: No
Filed ITU: No
Filed 44D: No
Filed 44E: No
Filed 66A: Yes
Filed No Basis: No
Basis Information (Case Level)
Currently Use: No
Currently ITU: No
Currently 44D: No
Currently 44E: No
Currently 66A: Yes
Currently No Basis: No
Amended Use: No
Amended ITU: No
Amended 44D: No
Amended 44E: No
Current Owner(s) Information
Owner Name: Oatly AB
Owner Address: Stora Varvsgatan 6 A
SE-211 19 MalmO
SWEDEN
Legal Entity Type: JOINT STOCK COMPANY
Attorney Name: Karen Kreider Gaunt
Correspondent Awapatent AB
Name/Address: P.O. Box 5117SE-200 71 Malmo
SWEDEN
Domestic Karen Kreider Gaunt
RepresentativeName:
Fax: 513-977-8141
State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Correspondent
Domestic Representative
Phone: 513-977-8200
Prosecution History
Date
Dec. 07, 2018
Nov. 15, 2018
Description
FINAL DECISION TRANSACTION PROCESSED BY IB
FINAL DISPOSITION NOTICE SENT TO IB
Proceeding
Number
Nov. 15, 2018
Oct. 31, 2018
Oct. 18, 2018
Aug. 23, 2018
Jul. 31, 2018
May 15, 2018
Apr. 25, 2018
FINAL DISPOSITION PROCESSED
FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
NEW REPRESENTATIVE AT IB RECEIVED
NEW REPRESENTATIVE AT IB RECEIVED
REGISTERED-PRINCIPAL REGISTER
PUBLISHED FOR OPPOSITION
NOTICE OF PUBLICATION
73787
Apr. 12, 2018
Apr. 05, 2018
Apr. 04, 2018
ASSIGNED TO LIE
EXAMINERS AMENDMENT MAILED
APPROVED FOR PUB - PRINCIPAL REGISTER
70629
Apr. 04, 2018 EXAMINER'S AMENDMENT ENTERED 88888
Apr. 04, 2018
Mar. 28, 2018
EXAMINERS AMENDMENT -WRITTEN
NON-FINAL ACTION MAILED
93650
Mar. 27, 2018 NON-FINAL ACTION WRITTEN 93650
Mar. 16, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED88889
Mar. 15, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Mar. 15, 2018
Mar. 15, 2018
Mar, 15, 2018
Nov, 04, 2017
Oct. 18, 2017
Oct. 18, 2017
Oct. 13, 2017
Oct. 12, 2017
Oct. 11, 2017
Sep. 26, 2017
Sep. 22, 2017
Sep. 21, 2017
TEAS RESPONSE TO OFFICE ACTION RECEIVED
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
REFUSAL PROCESSED BY IB
NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
REFUSAL PROCESSED BY MPU
NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
NON-FINAL ACTION WRITTEN
ASSIGNED TO EXAMINER
APPLICATION FILING RECEIPT MAILED
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
SN ASSIGNED FOR SECT 66A APPL FROM IB
International Registration Information (Section 66
International 1365731
Registration
Number:
Priority Claimed YesFlag:
International Jul. 13, 2017
Registration Date:
Date of Section 67 Feb. 23, 2017
Priority Claim:
Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Sep. 21, 2017
Status: PROCESSED InternationalRegistration
Status:
Notification of Sep. 21, 2017Designation Date:
International Jul. 13, 2027
RegistrationRenewal Date:
First Refusal Flag: Yes
Date of Automatic Mar. 21, 2019
Protection:
68359
93650
93650
TM Staff and Location Information
Current Location: PUBLICATION AND ISSUE SECTION
TM Staff Information - None
File Location
Date in Location: Jul. 31, 2018
Summary
Number of 1Proceedings:
Proceedings
Type of Proceeding: Opposition
Proceeding 91246642 Filing Date: Feb 26, 2019
Number:
Status: Pending Status Date: Feb 26, 2019
Interlocutory KATIE W MCKNIGHT
Attorney:
Defendant
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN , 55402
UNITED STATES
Correspondent e- trademarks-miAbtlaw.com , [email protected] , kerry,thompsonAbtlaw.com
mail:
Associated marks
Mark Application StatusSerial Registration
Number Number
OATERRA
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH , 45202
UNITED STATES
Opposition Pending
Plaintiff(s)
87925673
Correspondent e- karen,qaunt@dinsinore,com , govindadayisAdinsmore.com , robin,bissantzAdinsmore.com , christine.quonenheimerftdinsmore,com
mail:
Associated marks
Mark Application StatusSerial
NumberRegistration
Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
tate5 of amf 1twomo%
erti„.lintteb *tato Vatent anti Trattentarti 4/P ffire
CAPPOATCC I NOReg. No. 5,526,875
Registered Jul. 31, 2018
Int. Cl.: 29, 30
Trademark
Principal Register
Director of the United States
Patent and Trademark Office
Oatly AB (SWEDEN JOINT STOCK COMPANY)
Stora Varvsgatan 6 A
Se-211 19 Malmb
SWEDEN
CLASS 29: Milk substitute-based beverages containing coffee; milk substitute-based drinks
containing coffee; oat-based beverages and drinks for use as a milk substitute, containing
coffee; dairy substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-
based cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats;
skimmed milk substitutes containing oats; oat-based beverages and drinks for use as a milk
substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, and milk
substitute powder for food and nutritional purposes; milk substitutes in the nature of dried
milk substitute powder, and cream substitute powder; flavored milk substitute powder for
making drinks
CLASS 30: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules
containing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts; coffee
essences; coffee flavorings in the nature of coffee flavored syrups used in making food
beverages and vanilla flavorings for food or beverages; decaffeinated coffee; coffee
beverages; coffee drinks; coffee-based beverages and drinks; beverages based on coffee
substitutes; coffee beverages with milk substitutes; coffee-based beverages containing milk
substitutes; prepared coffee; prepared coffee beverages; prepared coffee-based beverages;
extracts of coffee for use as flavors in beverages; biscuits; pastry; confectionery in the nature
of frozen confectionery, confectionery made of sugar and confectionery made of sugar
substitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing
coffee; oat-based biscuit mixes, containing coffee; ice beverages with a coffee base; ice
cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing
coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based
flavored ice-cream; coffee flavored ice cream; preparations for making beverages that are
coffee based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes
frozen yoghurt containing coffee
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
PARTICULAR FONT STYLE, SIZE OR COLOR
PRIORITY DATE OF 02-23-2017 IS CLAIMED
OWNER OF INTERNATIONAL REGISTRATION 1365599 DATED 07-13-2017,
EXPIRES 07-13-2027
SER. NO. 79-216,709, FILED 07-13-2017
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*
What and When to File:
• First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
• Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*
What and When to File:
• You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an
extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipoint/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5526875
Generated on: This page was generated by TSDR on 2019-05-10 13:30:23 EDT
Mark: CAPPOATCCINO
CAPPOATCCINC
US Serial Number: 79216709 Application Filing Jul. 13, 2017
Date:
US Registration 5526875 Registration Date: Jul. 31, 2018
Number:
Register: Principal
Mark Type: Trademark
TM5 Common Status
Descriptor:
LIVE/REGISTRATION/Issued and Active
The trademark application has been registered with the Office.
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Jul. 31, 2018
Publication Date: May 15, 2018
Mark Information
Mark Literal CAPPOATCCINO
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Related Properties Information
International 1365599
RegistrationNumber:
International Jul. 13, 2017
Registration Date:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..1 indicate deleted goods/services;• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability: and
• Asterisks * * identify additional (new) wording in the goods/services.
For: Milk substitute-based beverages containing coffee; milk substitute-based drinks containing coffee; oat-based beverages and drinks for
use as a milk substitute, containing coffee; dairy substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-based
cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats; skimmed milk substitutes containing oats; oat-
based beverages and drinks for use as a milk substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, and
milk substitute powder for food and nutritional purposes; milk substitutes in the nature of dried milk substitute powder, and cream
substitute powder; flavored milk substitute powder for making drinks
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules containing coffee for brewing; artificial coffee; coffee
concentrates; coffee extracts; coffee essences; coffee flavorings in the nature of coffee flavored syrups used in making food beverages
and vanilla flavorings for food or beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based beverages and drinks;
beverages based on coffee substitutes; coffee beverages with milk substitutes; coffee-based beverages containing milk substitutes;
prepared coffee; prepared coffee beverages; prepared coffee-based beverages; extracts of coffee for use as flavors in beverages;
biscuits; pastry; confectionery in the nature of frozen confectionery, confectionery made of sugar and confectionery made of sugar
substitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing coffee; oat-based biscuit mixes,
containing coffee; ice beverages with a coffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream,
containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffee flavored
ice cream; preparations for making beverages that are coffee based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk
substitutes frozen yoghurt containing coffee
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
Filed Use: No
Filed ITU: No
Filed 44D: No
Filed 44E: No
Filed 66A: Yes
Filed No Basis: No
Basis Information (Case Level)
Currently Use: No
Currently ITU: No
Currently 44E: No
Currently 66A: Yes
Currently No Basis: No
Current Owner(s) Information
Owner Name: Oatly AB
Owner Address: Stora Varvsgatan 6 A
SE-211 19 Malmo
SWEDEN
Legal Entity Type: JOINT STOCK COMPANY State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney Name: Karen Kreider Gaunt
Correspondent Awapatent AB
Name/Address: P.O. Box 5117SE-200 71 Malmo SWEDEN
Domestic Karen Kreider Gaunt
Representative
Name:
Fax: 513-977-8141
Date Description
Attorney of Record
Correspondent
Domestic Representative
Phone: 513-977-8200
Prosecution History
Proceeding
Number
Dec. 07, 2018 FINAL DECISION TRANSACTION PROCESSED BY IB
Nov. 19, 2018 FINAL DISPOSITION NOTICE SENT TO IB
Nov. 19, 2018 FINAL DISPOSITION PROCESSED 72629
Oct. 31, 2018 FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
Oct. 18, 2018 NEW REPRESENTATIVE AT IB RECEIVED
Aug. 23, 2018 NEW REPRESENTATIVE AT IB RECEIVED
Jul, 31, 2018 REGISTERED-PRINCIPAL REGISTER
May 15, 2018 PUBLISHED FOR OPPOSITION
Apr. 25, 2018 NOTICE OF PUBLICATION
Apr. 12, 2018 ASSIGNED TO LIE 70629
Apr. 05, 2018 EXAMINERS AMENDMENT MAILED
Apr. 04, 2018 APPROVED FOR PUB - PRINCIPAL REGISTER
Apr. 04, 2018 EXAMINER'S AMENDMENT ENTERED 88888
Apr. 04, 2018 EXAMINERS AMENDMENT -WRITTEN 93650
Mar. 28, 2018 NON-FINAL ACTION MAILED
Mar. 27, 2018 NON-FINAL ACTION WRITTEN 93650
Mar. 16, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Mar, 15, 2018
Mar. 15, 2018
Mar. 15, 2018
Mar. 15, 2018
Nov. 04, 2017
Oct. 17, 2017
CORRESPONDENCE RECEIVED IN LAW OFFICE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
REFUSAL PROCESSED BY IB
NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
88889
Oct. 17, 2017
Oct. 13, 2017
REFUSAL PROCESSED BY MPU
NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
67445
Oct. 12, 2017 NON-FINAL ACTION WRITTEN 93650
Oct. 11, 2017
Sep. 26, 2017
Sep. 22, 2017
Sep. 21, 2017
ASSIGNED TO EXAMINER
APPLICATION FILING RECEIPT MAILED
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
SN ASSIGNED FOR SECT 66A APPL FROM IB
93650
International Registration Information (Section 66a)
International 1365599Registration
Number:
International Jul. 13, 2017
Registration Date:
Priority Claimed Yes Date of Section 67 Feb. 23, 2017
Flag: Priority Claim:
Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Sep. 21, 2017
Status: PROCESSED InternationalRegistration
Status:
Notification of Sep. 21, 2017Designation Date:
International Jul. 13, 2027Registration
Renewal Date:
First Refusal Flag: Yes
Date of Automatic Mar. 21, 2019Protection:
TM Staff and Location Information
Current Location: PUBLICATION AND ISSUE SECTION
TM Staff Information - None
File Location
Date in Location: Jul. 31, 2018
Proceedings
Summary
Number of 1Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642 Filing Date: Feb 26, 2019
Number:
Status: Pending Status Date: Feb 26, 2019
Interlocutory KATIE W MCKNIGHT
Attorney:
Defendant
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN UNITED STATES , 55402
Correspondent e- trademarks-miQbtlaw.com , [email protected] , [email protected]
mail:
Associated marks
Mark Application Status
OATERRA Opposition Pending
Plaintiff(s)
Serial Registration
Number Number
87925673
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH UNITED STATES , 45202
Correspondent e- karen.qaunt d insmore.com govinda.dayisadinsmore.com , robin,[email protected] , christine.quggenheimerAdinsmore.com
mail:
Associated marks
Mark Application StatusSerial Registration
Number Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE I POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
tatef4 of amvat
f ebMullet( *Mt' latent anti Trabentark 41%
MACCH IOATOReg. No. 5,526,870
Registered Jul. 31, 2018
Int. Cl.: 29, 30
Trademark
Principal Register
Director of the United States
Patent and Trademark Office
Oatly AB (SWEDEN JOINT STOCK COMPANY)
Stora Varvsgatan 6a
Se-211 19 Malmo
SWEDEN
CLASS 29: Milk substitute-based beverages containing coffee; milk substitute-based drinks
containing coffee; oat-based beverages and drinks for use as a milk substitute, containing
coffee; dairy substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-
based cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats;
skimmed milk substitutes containing oats; oat-based beverages and drinks for use as a milk
substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, and milk
substitute powder for food and nutritional purposes; milk substitutes in the nature of dried
milk substitute powder, and cream substitute powder; flavored milk substitute powder for
making drinks
CLASS 30: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules
containing coffee for brewing; artificial coffee; coffee concentrates; coffee extracts; coffee
essences; coffee flavorings in the nature of coffee flavored syrups used in making food
beverages and vanilla flavorings for food or beverages; decaffeinated coffee; coffee
beverages; coffee drinks; coffee-based beverages and drinks; beverages based on coffee
substitutes; coffee beverages with milk substitutes; coffee-based beverages containing milk
substitutes; prepared coffee; prepared coffee beverages; prepared coffee-based beverages;
extracts of coffee for use as flavors in beverages; biscuits; pastry; confectionery in the nature
of frozen confectionery, confectionery made of sugar and confectionery made of sugar
substitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing
coffee; oat-based biscuit mixes, containing coffee; ice beverages with a coffee base; ice
cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream, containing
coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based
flavored ice-cream; coffee flavored ice cream; preparations for making beverages that are
coffee based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes
frozen yoghurt containing coffee
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
PARTICULAR FONT STYLE, SIZE OR COLOR
PRIORITY DATE OF 02-23-2017 IS CLAIMED
OWNER OF INTERNATIONAL REGISTRATION 1365441 DATED 07-13-2017,
EXPIRES 07-13-2027
SER. NO. 79-216,607, FILED 07-13-2017
REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*
What and When to File:
• First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
• Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*
What and When to File:
• You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an
extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipoint/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5526870
Generated on: This page was generated by TSDR on 2019-05-10 13:31:31 EDT
Mark: MACCHIOATO
MACCH IOATC
US Serial Number: 79216607 Application Filing Jul. 13, 2017
Date:
US Registration 5526870 Registration Date: Jul. 31, 2018
Number:
Register: Principal
Mark Type: Trademark
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Jul. 31, 2018
Publication Date: May 15, 2018
Mark Information
Mark Literal MACCHIOATO
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Related Properties Information
I nternational 1365441
RegistrationNumber:
International Jul. 13, 2017
Registration Date:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..1 indicate deleted goods/services;
* Double parenthesis ((..)) identity any goods/services not claimed in a Section 15 affidavit of incontestability; and
4. Asterisks *..* identify additional (new) wording in the goods/services.
For: Milk substitute-based beverages containing coffee; milk substitute-based drinks containing coffee; oat-based beverages and drinks for
use as a milk substitute, containing coffee; dairy substitutes, namely, oat-based cream; dairy product substitutes, namely, oat-based
cream; milk substitutes; skimmed milk substitutes; milk substitutes containing oats; skimmed milk substitutes containing oats; oat-
based beverages and drinks for use as a milk substitute; non-dairy creamers; non-dairy coffee creamers; milk substitute powder, and
milk substitute powder for food and nutritional purposes; milk substitutes in the nature of dried milk substitute powder, and cream
substitute powder; flavored milk substitute powder for making drinks
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules containing coffee for brewing; artificial coffee; coffee
concentrates; coffee extracts; coffee essences; coffee flavorings in the nature of coffee flavored syrups used in making food beverages
and vanilla flavorings for food or beverages; decaffeinated coffee; coffee beverages; coffee drinks; coffee-based beverages and drinks;
beverages based on coffee substitutes; coffee beverages with milk substitutes; coffee-based beverages containing milk substitutes;
prepared coffee; prepared coffee beverages; prepared coffee-based beverages; extracts of coffee for use as flavors in beverages;
biscuits; pastry; confectionery in the nature of frozen confectionery, confectionery made of sugar and confectionery made of sugar
substitutes; oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing coffee; oat-based biscuit mixes,
containing coffee; ice beverages with a coffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream,
containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffee flavored
ice cream; preparations for making beverages that are coffee based; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk
substitutes frozen yoghurt containing coffee
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
Filed Use: No
Filed ITU: No
Filed 440: No
Filed 44E: No
Filed 66A: Yes
Filed No Basis: No
Basis Information (Case Level)
Currently Use: No
Currently ITU: No
Currently 44D: No
Currently 44E: No
Currently 66A: Yes
Currently No Basis: No
Amended Use: No
Amended ITU: No
Amended 44D: No
Amended 44E: No
Current Owner(s) Information
Owner Name: Oatly AB
Owner Address: Stora Varvsgatan 6a
SE-211 19 MALMO
SWEDEN
Legal Entity Type: JOINT STOCK COMPANY State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney Name: Karen Kreider Gaunt
Correspondent Awapatent AB
Name/Address: P.O. Box 5117
SE-200 71 MalmO
SWEDEN
Domestic Karen Kreider Gaunt
RepresentativeName:
Fax: 513-977-8141
Attorney of Record
Correspondent
Domestic Representative
Phone: 513-977-8200
Prosecution History
Date
Dec. 07, 2018
Nov. 17, 2018
Description
FINAL DECISION TRANSACTION PROCESSED BY IB
FINAL DISPOSITION NOTICE SENT TO IB
ProceedingNumber
Nov. 17, 2018
Oct. 31, 2018
Oct. 18, 2018
Aug. 23, 2018
Jul. 31, 2018
May 15, 2018
Apr. 25, 2018
FINAL DISPOSITION PROCESSED
FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
NEW REPRESENTATIVE AT 18 RECEIVED
NEW REPRESENTATIVE AT IB RECEIVED
REGISTERED-PRINCIPAL REGISTER
PUBLISHED FOR OPPOSITION
NOTICE OF PUBLICATION
67445
Apr. 12, 2018
Apr. 05, 2018
Apr. 04, 2018
ASSIGNED TO LIE
EXAMINERS AMENDMENT MAILED
APPROVED FOR PUB - PRINCIPAL REGISTER
70629
Apr. 04, 2018 EXAMINER'S AMENDMENT ENTERED88888
Apr. 04, 2018
Mar. 28, 2018
EXAMINERS AMENDMENT -WRITTEN
NON-FINAL ACTION MAILED
93650
Mar. 27, 2018 NON-FINAL ACTION WRITTEN93650
Mar. 16, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED88889
Mar. 15, 2018
Mar. 15, 2018
CORRESPONDENCE RECEIVED IN LAW OFFICE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
88889
Mar. 15, 2018 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Mar. 15, 2018 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Nov. 04, 2017 REFUSAL PROCESSED BY IB
Oct. 16, 2017 NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
Oct. 16, 2017 REFUSAL PROCESSED BY MPU 72629
Oct. 13, 2017 NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
Oct. 12, 2017 NON-FINAL ACTION WRITTEN 93650
Oct. 11, 2017 ASSIGNED TO EXAMINER 93650
Sep. 20, 2017 APPLICATION FILING RECEIPT MAILED
Sep. 16, 2017 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Sep. 14, 2017 SN ASSIGNED FOR SECT 66A APPL FROM IB
International Registration Information (Section 66a)
International 1365441
Registration
Number:
International Jul. 13, 2017
Registration Date:
Priority Claimed Yes Date of Section 67 Feb. 23, 2017
Flag: Priority Claim:
Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Sep. 14, 2017
Status: PROCESSED InternationalRegistration
Status:
Notification of Sep. 14, 2017
Designation Date:
International Jul. 13, 2027
Registration
Renewal Date:
First Refusal Flag: Yes
Date of Automatic Mar. 14, 2019
Protection:
TM Staff and Location Information
Current Location: PUBLICATION AND ISSUE SECTION
TM Staff Information - None
File Location
Date in Location: Jul. 31, 2018
Proceedings
Summary
Number of 1
Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642
Number:
Status: Pending
Interlocutory KATIE W MCKNIGHT
Attorney:
Filing Date: Feb 26, 2019
Status Date: Feb 26, 2019
Defendant
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN , 55402
UNITED STATES
Correspondent e- [email protected] , bwalzathtlaw.com , [email protected]
mail:
Associated marks
Mark
OATERRA
Application Status
Opposition Pending
Serial Registration
Number Number
87925673
Plaintiff(s)
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH , 45202
UNITED STATES
Correspondent e- karen.gauntAdinsmore.com , g2yinda.dayisadinsmore.com , rob in.bissantz dinsmore.com , christine.guggenheimerAd insmore.com
mail:
Associated marks
Mark Application StatusSerialNumber
RegistrationNumber
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
Generated on: This page was generated by TSDR on 2019-05-10 13:31:55 EDT
Mark: OATFINDER
US Serial Number: 87709745
Filed as TEAS RF: Yes
Register: Principal
Mark Type: Trademark, Service Mark
TM5 Common Status
Descriptor:
OATFINDER
Application Filing Dec 06, 2017
Date:
Currently TEAS RF: Yes
LIVE/APPLICATION/Published for Opposition
A pending trademark application has been examined by the Office and has
been published in a way that provides an opportunity for the public to oppose
its registration.
Status: Application has been published for opposition. The opposition period begins on the date of publication.
Status Date: May 07, 2019
Publication Date: May 07, 2019
Mark Information
Mark Literal OATFINDER
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Priority Claimed: Yes
Foreign 017435538
Application
Number:
Foreign 017435538
RegistrationNumber:
Foreign EUROPEAN UNION
Application/RegistrationCountry:
Foreign Information
Foreign Nov 07, 2017
Application Filing
Date:
Foreign Mar. 02, 2018
Registration Date:
Foreign Expiration Nov. 07, 2027
Date:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..) indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks'..` identify additional (new) wording in the goods/services.
For: Software to detect coffee shop locations and other retail store locations; software for online messaging and marketing; software to
detect coffee shop locations for websites and webhosting; application software to detect coffee shop locations and other retail
locations; mobile apps to detect coffee shop and retail store locations; computer programs in the nature of downloadable software to
detect coffee shop locations; downloadable digital recipes and collections of recipes in electronic format
International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class(es):
Class Status: ACTIVE
Basis: 1(b) 44(e)
For: Milk substitute-based beverages containing coffee; milk substitute-based drinks containing coffee; oat-based beverages and drinks for
use as a milk substitute, containing coffee; dairy substitutes; dairy product substitutes, namely, milk substitutes; milk substitutes;
skimmed milk substitutes; milk substitutes containing oats; skimmed milk substitutes containing oats; non-dairy creamers; non-dairy
coffee creamers; milk substitute powder, milk substitute powder for food and nutritional purposes; dried milk substitute powder, cream
substitute powder; flavored milk substitute powder for making drinks
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 1(b) 44(e)
For: Coffee; coffee beans; mixtures of coffee; instant coffee; coffee capsules containing coffee for brewing; artificial coffee; coffee
concentrates; coffee extracts; coffee essences; coffee flavorings, namely, coffee flavored syrup used in making food beverages;
decaffeinated coffee; coffee beverages; coffee drinks; coffee-based beverages and drinks; beverages based on coffee substitutes;
coffee beverages with milk substitutes; coffee-based beverages containing milk substitutes; prepared coffee; prepared coffee
beverages; prepared coffee-based beverages; extracts of coffee for use as flavors in beverages; biscuits; pastry and confectionery
made of sugar; oat-based cake mixes, oat-based biscuit mixes; oat-based cake mixes, containing coffee; oat-based biscuit mixes,
containing coffee; ice beverages with a coffee base; ice cream; ice cream made from milk substitutes; non-dairy ice cream; ice cream,
containing coffee, made from milk substitutes; oat-based ice cream; flavored ice-cream; oat-based flavored ice-cream; coffee flavored
ice cream; preparations for making coffee based beverages; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes
frozen yoghurt containing coffee
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 1(b) 44(e)
For: Take away food and drink services, namely, retail store services featuring food and drink
International 035 - Primary Class U.S Class(es): 100, 101, 102
Class(es):
Class Status: ACTIVE
Basis: 1(b) 44(e)
For: Software development; development of software for online messaging and marketing; development of software for websites and
webhosting; cloud computing services, namely, cloud hosting provider services featuring application software for cloud computing
services; infrastructure as a service (IaaS) featuring software to detect coffee shop locations; platform as a service (PaaS) featuring
software to detect coffee shop locations; software as a service (SaaS) services featuring software to detect coffee shop locations
International 042 - Primary Class U.S Class(es): 100, 101
Class(es):
Class Status: ACTIVE
Basis: 1(b) 44(e)
For: Provision of food and drink; café services and cafeteria services; cafés and cafeterias; restaurant take away food and drink services;
take away café and cafeteria services; restaurant information services; café information services; bar information services
International 043 - Primary Class
Class(es):
Class Status: ACTIVE
Basis: 1(b) 44(e)
U.S Class(es): 100, 101
Basis Information (Case Level)
Filed Use: No
Filed ITU: Yes
Filed 4413: Yes
Filed 44E: No
Filed 66A: No
Filed No Basis: No
Currently Use: No
Currently ITU: Yes
Currently 44E: Yes
Currently 66A: No
Currently No Basis: No
Current Owner(s) Information
Owner Name: Oatly AB
Owner Address: Stora Varvsgatan 6 A
Malmo SWEDEN 21119
Legal Entity Type: aktiebolag (ab) State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney Name: Karen Kreider Gaunt
Attorney Primary karen.qauntAdinsmore.com
Email Address:
Correspondent KAREN KREIDER GAUNT
Name/Address: DINSMORE & SHOHL LLP
255 EAST FIFTH STREET, SUITE 1900
CINCINNATI, OHIO UNITED STATES 45202
Phone: 513-977-8200 x8503
Attorney of Record
Docket Number: 109083-1
Correspondent e- karen.qauntpdinsmore.com tmdocketAdinsmore.
mail: coal
Domestic Karen Kreider Gaunt
RepresentativeName:
Fax: 513-977-8141
Domestic karen.qauntpdinsmore.com
Representative e-mail:
Date Description
May 07, 2019
May 07, 2019
Apr. 17, 2019
Apr. 03, 2019
Mar. 29, 2019
Mar. 21, 2019
Mar. 15, 2019
Mar. 15, 2019
Mar. 15, 2019
Nov. 14, 2018
Nov. 14, 2018
Nov, 14, 2018
Nov. 05, 2018
Nov. 05, 2018
Nov. 01, 2018
Oct. 23, 2018
Jul. 20, 2018
Jul. 20, 2018
Jul. 20, 2018
Jul, 19, 2018
Jul. 18, 2018
Jul. 18, 2018
Jan. 24, 2018
Jan. 24, 2018
Jan. 24, 2018
Jan. 18, 2018
Dec. 15, 2017
Dec. 09, 2017
Attorney Email Yes
Authorized:
Correspondent
Fax: 513-977-8141
Correspondent e- Yesmail Authorized:
Domestic Representative
Phone: 513-977-8200 x8503
Domestic Yes
Representative e-
mail Authorized:
Prosecution History
OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
PUBLISHED FOR OPPOSITION
NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
ELECTRONIC RECORD REVIEW COMPLETE
ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED
APPROVED FOR PUB - PRINCIPAL REGISTER
TEAS/EMAIL CORRESPONDENCE ENTERED
CORRESPONDENCE RECEIVED IN LAW OFFICE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
NOTIFICATION OF PRIORITY ACTION E-MAILED
PRIORITY ACTION E-MAILED
PRIORITY ACTION WRITTEN
TEAS/EMAIL CORRESPONDENCE ENTERED
CORRESPONDENCE RECEIVED IN LAW OFFICE
ASSIGNED TO LIE
TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED
NOTIFICATION OF LETTER OF SUSPENSION E-MAILED
LETTER OF SUSPENSION E-MAILED
SUSPENSION LETTER WRITTEN
TEAS/EMAIL CORRESPONDENCE ENTERED
CORRESPONDENCE RECEIVED IN LAW OFFICE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
NOTIFICATION OF NON-FINAL ACTION E-MAILED
NON-FINAL ACTION E-MAILED
NON-FINAL ACTION WRITTEN
ASSIGNED TO EXAMINER
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
ProceedingNumber
93249
88889
88889
6326
6326
81112
68171
68171
68171
6332
6332
81112
88889
88889
6325
6325
81112
81112
TM Attorney: HUSSAIN, TASNEEM
Current Location: PUBLICATION AND ISSUE SECTION
TM Staff Information
Law Office LAW OFFICE 118
Assigned:
File Location
Date in Location: Apr. 03, 2019
Proceedings
Summary
Number of 1Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642
Number:
Status: Pending
Interlocutory KATIE W MCKNIGHT
Attorney:
Name: Ashley Keightley
Correspondent BRADLEY J WALZAddress: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN UNITED STATES , 55402
Filing Date: Feb 26, 2019
Status Date: Feb 26, 2019
Defendant
Correspondent e- trademarks-miAbtlaw.com , bwalzabtlaw.com , kerry.thompsonAbtlaw.com
mail:
Associated marks
Mark Application Status
OATERRA Opposition Pending
Plaintiff(s)
Serial Registration
Number Number
87925673
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH UNITED STATES , 45202
Correspondent e- karen.gauntAdinsmore.com , [email protected] , robin,[email protected] , [email protected]
mail:
Associated marks
Mark Application StatusSerial Registration
Number Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
Generated on: This page was generated by TSDR on 2019-05-10 13:32:42 EDT
Mark: OATLY
US Serial Number: 87320671
Filed as TEAS RF: Yes
Register: Principal
Mark Type: Trademark
TM5 Common StatusDescriptor:
OATLY
Application Filing Feb 01, 2017
Date:
Currently TEAS RF: Yes
LIVE/APPLICATION/Under Examination
The trademark application has been accepted by the Office (has met the
minimum filing requirements) and that this application has been assigned to
an examiner.
Status: A third request for extension of time to file a Statement of Use has been granted.
Status Date: Jan. 17, 2019
Publication Date: Jun. 06, 2017 Notice of Aug. 01, 2017
Allowance Date:
Mark Information
Mark Literal OATLY
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets (.1 indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks *.." identify additional (new) wording in the goods/services.
For: Oat-based drinks as milk substitutes; oat-based yogurt substitute; oat-based crème fraiche; oat-based cooking cream and creamer;
oat-based food spread
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 1(b)
For: Oat-based vanilla sauce and oat based vanilla custard; oat-based ice cream
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 1(b)
For: Oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruit drink beverages; oat-based smoothie beverages
International 032 - Primary Class U.S Class(es): 045, 046, 048
Class(es):
Class Status: ACTIVE
Basis: 1(b)
Basis Information (Case Level)
Filed Use: No
Filed ITU: Yes
Filed 44D: No
Filed 44E: No
Filed 66A: No
Filed No Basis: No
Currently Use: No
Currently ITU: Yes
Currently 44E: No
Currently 66A: No
Currently No Basis: No
Current Owner(s) Information
Owner Name: Oatly AB
Owner Address: Stora Varvsgatan 6 A
Malmo SWEDEN 21119
Legal Entity Type: JOINT STOCK COMPANY State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Karen Kreider Gaunt Docket Number: 109083-1
Attorney Primary karen.gauntAdinsmore.com
Email Address:
Correspondent KAREN KREIDER GAUNT
Name/Address: DINSMORE & SHOHL LLP
255 EAST FIFTH STREET, SUITE 1900
CINCINNATI, OHIO UNITED STATES 45202
Attorney Email Yes
Authorized:
Correspondent
Phone: 513-977-8200 Fax: 513-977-8141
Correspondent e- karen.gauntAdinsmore.com tmdocket@dinsmore. Correspondent e- Yes
mail: corn mail Authorized:
Domestic Representative
Phone: 513-977-8200Domestic Karen Kreider Gaunt
RepresentativeName:
Fax: 513-977-8141
Domestic karen.qauntadinsmore.com Domestic Yes
Representative e- Representative e-
mail: mail Authorized:
Prosecution History
Date Description Proceeding
Number
Jan. 19, 2019 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jan. 17, 2019 EXTENSION 3 GRANTED 98765
Jan. 17, 2019 EXTENSION 3 FILED 98765
Jan. 17, 2019 TEAS EXTENSION RECEIVED
Jun. 21, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Jun. 19, 2018 EXTENSION 2 GRANTED 98765
Jun. 19, 2018 EXTENSION 2 FILED 98765
Jun. 19, 2018 TEAS EXTENSION RECEIVED
Feb. 21, 2018 NOTICE OF APPROVAL OF EXTENSION REQUEST E-MAILED
Feb. 20, 2018 EXTENSION 1 GRANTED 66530
Feb. 01, 2018 EXTENSION 1 FILED 66530
Feb. 20, 2018 CASE ASSIGNED TO INTENT TO USE PARALEGAL 66530
Feb. 02, 2018 NOTICE OF REVIVAL - E-MAILED
Feb, 02, 2018 EXTENSION RECEIVED WITH TEAS PETITION
Feb. 02, 2018 PETITION TO REVIVE-GRANTED 88889
Feb. 02, 2018 TEAS PETITION TO REVIVE RECEIVED
Aug. 01, 2017
Jun. 06, 2017
Jun. 06, 2017
May 17, 2017
May 01, 2017
Apr. 27, 2017
Feb. 06, 2017
Feb. 04, 2017
NOA E-MAILED - SOU REQUIRED FROM APPLICANT
OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
PUBLISHED FOR OPPOSITION
NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
APPROVED FOR PUB - PRINCIPAL REGISTER
ASSIGNED TO EXAMINER
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
TM Attorney: MARTIN, CHRISTINE C
Current Location: INTENT TO USE SECTION
TM Staff Information
Law Office LAW OFFICE 104
Assigned:
File Location
Date in Location: Aug. 01, 2017
85324
Proceedings
Summary
Number of 1
Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642 Filing Date: Feb 26, 2019
Number:
Status: Pending Status Date: Feb 26, 2019
Interlocutory KATIE W MCKNIGHT
Attorney:
Defendant
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN UNITED STATES , 55402
Correspondent e- [email protected] , [email protected] , kerry.thompsonQbtlaw.com
mail:
Associated marks
Mark Application Status
OATERRA Opposition Pending
Plaintiff(s)
Serial Registration
Number Number
87925673
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH UNITED STATES , 45202
Correspondent e- [email protected] , [email protected] , robin.bissantzadinsmore.com , christi ne.guggenheimer@,dinsmore.com
mail:
Associated marks
Mark Application StatusSerialNumber
Registration
Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
Generated on: This page was generated by TSDR on 2019-05-10 13;33;06 EDT
Mark: OATLY
OATLYUS Serial Number: 79228630 Application Filing Jul. 13, 2017
Date:
US Registration 5736047 Registration Date: Apr. 30, 2019
Number:
Register: Principal
Mark Type: Trademark, Service Mark
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Apr. 30, 2019
Publication Date: Feb. 12, 2019
Mark Information
Mark Literal OATLY
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Translation: The wording ''OATLY" has no meaning in a foreign language.
Related Properties Information
I nternational 1393445Registration
Number:
International Jul. 13, 2017
Registration Date:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets [..] indicate deleted goods/services:
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability: and
• Asterisks *..* identify additional (new) wording in the goods/services.
For: Dietary supplements and dietetic food supplements; food supplements and dietary food supplements; nutritional supplements; dietary
fibre to aid digestion and for treating constipation, dietary fibre for use as an ingredient in the manufacture of dietary supplements; oat-
based food supplements and oat-based dietary supplements; oat-based nutritional supplements; oat-based dietary supplement drink
mixes; oat-based dietary supplemental drinks in the nature of vitamin and mineral beverages; oat-based nutritional supplement in the
nature of a nutrient-dense drink mix; food for babies; functional foods, functional health foods and nutraceuticals for therapeutic
purposes and for use as nutritional supplements and dietary supplements; nutraceuticals for therapeutic purposes; nutraceuticals for
use as a dietary supplement; grain-based functional foods for therapeutic purposes and for use as nutritional supplements and dietary
supplements; grain-based nutraceuticals for therapeutic purposes and for use as nutritional supplements and dietary supplements; oat-
based functional foods for therapeutic purposes and for use as nutritional supplements and dietary supplements; oat-based
nutraceuticals for therapeutic purposes and for use as nutritional supplements and dietary supplements; functional foods for slimming
purposes, namely, weight management supplements; functional beverages for slimming purposes, namely, weight management
supplements; probiotic supplements; vitamin and mineral supplements; anti-oxidant food supplements; calcium supplements; mineral
nutritional supplements; bacteriological preparations and preparations of microorganisms for medical and veterinary use, namely,
probiotic bacteria and bacteria cultures being ingredients for dietetic substances for pharmaceutical, medical and veterinary use; food
supplements and health food supplements for persons with special dietary requirements; grain-based food supplements for slimming
purposes; oat-based food supplements for slimming purposes; dietary supplements for slimming purposes; probiotic supplements for
slimming purposes; oat-based dietary supplement drink mixes; oat-based dietary supplemental drinks in the nature of vitamin and
mineral beverages
International 005 - Primary Class U.S Class(es): 006, 018, 044, 046, 051, 052
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Apparatus for recording, transmission or reproduction of sound and images; audio cassette players and digital audio tape players;
digital audio players; cd players; portable multimedia players, namely, tablet computers and digital media streaming devices; portable
music players, namely, compact disc players and MP3 players; software, namely, communication software, game software, interface
software and graphics software; software for online messaging and marketing; website development software and web application
software; eyewear; eyewear cases; glasses, sun glasses and contact lenses; frames for glasses; application software being apps for
cloud computing services, for application and database integration, for social networking services and streaming audio-visual media
content via internet, for playing games and for enhancing the audio-visual capabilities of multimedia applications, all for smart phones,
mobile phones, wireless devices, mobile devices, TV or smart TV; mobile apps for cloud computing services, for application and
database integration, for social networking services and streaming audio-visual media content via internet, for playing games and for
enhancing the audio-visual capabilities of multimedia applications, all for smart phones, mobile phones, wireless devices or mobile
devices; computer programs being downloadable software, namely, communication software, game software, interface software and
graphics software for cloud computing services, for application and database integration, for social networking services and streaming
audio-visual media content via internet, for playing games and for enhancing the audio-visual capabilities of multimedia applications;
downloadable digital recipes and collections of recipes in electronic format
International 009 - Primary Class
Class(es):
Class Status: ACTIVE
Basis: 66(a)
U.S Class(es): 021, 023, 026, 036, 038
For: Precious metals and their alloys; key rings; cuff links; tie pins; tie clips; ornaments of precious metal in the nature of jewelry,
ornamental lapel pins, figurines and statuettes made of precious metal or coated therewith; watches; clocks; jewelry; precious stones;
horological and chronometric instruments; timepieces; watch buckles, watch strap buckles; watch straps
International 014 - Primary Class U.S Class(es): 002, 027, 028, 050
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Briefcases; attaché cases; briefcase-type portfolios; suitcases; suit bags; purses; business card holders in the nature of card cases;
credit card holders; backpacks; key cases; coin holders; trunks and travelling bags; cosmetic bags sold empty; toilet bags, sold empty,
and bags for shaving kits, sold empty; bags, namely, leather and imitation leather bags, sports bags, belt bags; duffle bags, tote bags;
handbags; wallets; billfolds; change purses; luggage; overnight cases; umbrellas and parasols; walking sticks
International 018 - Primary Class U.S Class(es): 001, 002, 003, 022, 041
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Tableware, namely, coffee services in the nature of tableware, tea services in the nature of tableware, coffee scoops, ice scoops and
coasters, not of paper or textile, cookware, namely, pots and pans, steamers, roasting pans, and cookware for use in microwave
ovens, and containers for household or kitchen use; drinking glasses, drinking vessels and barware, namely, highball glasses, whiskey
glasses, cocktail glasses, carafes, decanters, coupe glasses, snifters, mugs; serving pots and jugs, coffee pots and tea pots; milk jugs;
jugs for frothing milk; non-electric milk frothers; cups, saucers and mugs; bowls
International 021 - Primary Class
Class(es):
Class Status: ACTIVE
Basis: 66(a)
U.S Class(es): 002, 013, 023, 029, 030, 033, 040, 050
For: Clothing, namely, trousers for children and adults, mantles, jerseys, hoods and hoodies; footwear; headwear; clothing, footwear and
headwear for women, men, boys and girls, namely, jump suits, shirts, blouses, jackets, bathing suits; clothing, footwear and headwear
for women, men, boys and girls, namely, pants, belts, shorts; clothing, footwear and headwear for women, men, boys and girls,
namely, warm-up suits, sweatpants and sweatshirts, walking shorts; clothing, footwear and headwear for women, men, boys and girls,
namely, jeans, suits, dinner jackets and formal wear in the nature of gowns, tuxedos and trousers, sports jackets; clothing, footwear
and headwear for women, men, boys and girls, namely, knitted tops, ties and other neckwear; clothing, footwear and headwear for
women, men, boys and girls, namely, stockings, tights; clothing, footwear and headwear for women, men, boys and girls, namely, hats,
caps being headwear, scarves, shawls, coats, outer coats, vests, sweaters; clothing, footwear and headwear for women, men, boys
and girls, namely, dresses, skirts, t-shirts, beach and swimming cover-ups; clothing, footwear and headwear for women, men, boys and
girls, namely, rainwear, rain coats, ponchos, tank tops, camisoles; tennis and golf apparel, namely, dresses, tops, skirts, pants, and
shorts; biking and running and yoga apparel, namely, tops, tank tops, skirts, pants, short pants, shorts and jackets; footwear, namely,
shoes, active sport shoes, sneakers, boots, slippers; blazers, pants, capes, socks, gloves; underwear; underwear, sleepwear and
loungewear for men and boys, namely, briefs, boxer shorts; underwear, sleepwear and loungewear for men and boys, namely, athletic
underwear, sport knit shirts; underwear, sleepwear and loungewear for men and boys, namely, t-shirts, tank tops, undershirts, basic
underwear; underwear, sleepwear and loungewear for men and boys, namely, robes, knitted and woven sleepwear, sleep shirts,
pajama tops, pajama bottoms; underwear, sleepwear and loungewear for men and boys, namely, breakfast jackets, smoking jackets,
bed jackets, cover-ups; knitted and woven loungewear, lounging pants, and tops, lounge jackets; intimate apparel and bodywear for
women and girls, namely, underwear, sleepwear and loungewear; belts
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Dairy substitutes, namely, artificial cream, hazelnut milk, soy milk, coconut oil for food, coconut butter; dairy product substitutes,
namely, oat-based cream; milk substitutes; milk substitutes containing oats; oat milk; oat-based beverages and drinks for use as a milk
substitute; milk substitute based beverages and drinks, almond milk, almond milk-based beverages; coconut milk, coconut milk-based
beverages; hemp milk used as milk substitute; peanut milk, peanut milk-based beverages; rice milk, rice milk for use as milk substitute;
soya milk, soya bean milk; functional milk substitute beverages; fruit-flavored milk substitutes based on oats; milk substitute-based
drinks containing coffee; yoghurt substitutes; yoghurt substitutes containing oats; milk substitute preparations for making yoghurt; oat-
based yoghurt substitute; oat-based yoghurt and drinking yoghurt free of milk and lactose; yoghurt and drinking yoghurt substitutes
containing oats; fruit-flavored yoghurt substitutes; fruit-flavored yoghurt substitutes containing oats; sour milk substitutes; sour cream
substitutes; sour milk substitutes containing oats; sour cream substitutes containing oats; cream substitutes; crème fraiche substitutes;
cream substitutes containing oat; creme fraiche substitutes containing oats; non-dairy creamer; oat-based cooking cream and creamer;
vegetable based cream; butter substitutes, margarine substitutes; oat-based butter substitutes; oat-based margarine substitutes; dairy
substitute cheese, dairy substitute cream cheese, dairy substitute cheese spreads; cheese mixtures being dairy substitutes; cheese
powder; cheese substitutes; oat-based cheese; instant cheese powder substitutes, skimmed milk powder, sweet whey powder; milk
substitute powder, milk substitute powder for food and nutritional purposes; dried milk substitute powder, cream substitute powder;
flavored milk substitute powder for making drinks; vegetable powders; coconut milk powder; compotes, fruit and vegetable spreads;
processed fruit, fruit snacks, namely, dried fruit-based snacks and fruit-based snack food; fruit chips; fruit-based snack foods; fruit
juices for cooking; vegetable juices for cooking; vegetable juice concentrates for food, namely, vegetable juice, vegetable pulp and
vegetable paste for cooking; oat-based and vegetable based dairy substitute products for slimming purposes, namely, artificial milk,
cream and cheese based on oats and vegetables; milk substitutes for use in oat-based dietary supplement drink mixes; milk
substitutes for use in oat-based dietary supplement drinks in the nature of vitamin and mineral beverages; soup powders
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Processed grains, starches, and goods made thereof, namely, starch for food, baking preparations, namely, baking soda, baking
powder and baking spices, and yeasts; flour, processed oats, oat-based bars and oat-based energy-bars; oatmeal, rolled oats; cereals,
processed cereals; food preparations and foodstuffs made from cereals, namely, ready-to-eat cereals, cereal based snack food;
crispbread made of cereals; breakfast cereals; breakfast cereals containing fibre; breakfast cereals containing a mixture of fruit and
fibre; cereals flakes, namely, maize flakes and corn flakes; muesli consisting predominantly of cereals; cereal bars and cereal based
energy bars; crushed oats; oat flakes; muesli; oat-based gruel; snack foods consisting principally of grain; snack foods consisting
principally of extruded cereals; wheat snacks, corn snacks, oat snacks; snack foods and snack products made from cereals; snacks
made from muesli; snack foods made of whole wheat; bread; wholemeal bread and bread mixes; whole wheat bread and crispbread;
whole wheat grains being cooked, precooked and preserved; biscuits; pastry and confectionery, namely, tablet confectionary and
chocolate confectionary; oat-based cake mixes, oat-based biscuit mixes; coffee; decaffeinated coffee; instant coffee; roasted coffee, in
powder form; artificial coffee; coffee drinks and beverages; coffee-based drinks and beverages; coffee-based drinks and beverages
containing milk substitutes; pancakes; waffles; pancake batter; liquid batter for making pancakes; oat-based pancakes; oat-based
waffles; oat-based pancake batter; oat-based liquid batter for making pancakes; powdered preparations containing cocoa powder for
use in making beverages; oat-based drinks in powder form, namely, oat-based coffee drinks, cocoa drinks and espresso drinks in
powder form; food dressings in the nature of sauces; sauces; cooking sauces; prepared foodstuffs in the form of sauces; oat-based
sauces; oat-based custard, oat-based vanilla custard, oat-based vanilla sauce; ice cream substitute; ice cream; ice cream made from
milk substitutes; non-dairy ice cream; oat-based ice cream; oat-based flavoured ice-cream; oat-based fruit ice-cream; flavoured ice-
cream, fruit ice-cream; soy-based ice cream; frozen yoghurt based on milk substitutes; non-dairy frozen yoghurt; fermented foodstuffs
based on oats, namely, oat-based soy sauce, oat-based pastes; oat-based food spread
International 030 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
For: Preparations for making beverages, namely, preparations for making fruit beverages, fruit-based and fruit-flavored beverages,
vegetable juices, smoothies, soya-based beverages not being milk substitutes, whey beverages, isotonic beverages and sports
beverages; non-alcoholic beverages, namely, non-alcoholic malt beverages, non-alcoholic fruit-based beverages, non-alcoholic water-
based beverages, carbonated beverages, non-alcoholic beverages containing fruit juices, non-alcoholic beverages flavored with coffee,
non-alcoholic beverages flavored with tea; non-alcoholic drinks, namely, isotonic non-alcoholic drinks, carbonated non-alcoholic drinks
and energy shots; oat-based beverages, not being milk substitutes; oat-based natural energy drinks; oat-based breakfast drinks,
namely, smoothies containing oats, fruit juices containing oats and vegetable juices containing oats; oat-based fruit drink beverages;
oat-based smoothie beverages; oat-based fruit and berry drinks and beverages; oat-based drinks and beverages for slimming
purposes, namely, smoothies containing oats, fruit juices containing oats and vegetable juices containing oats, all for slimming
purposes; energy drinks; energy drinks containing caffeine; recovery drinks being sports drinks; sports drinks; functional beverages,
namely, sports drinks containing electrolytes, nutrified fruit drinks; functional water-based beverages, namely, water-based sports
drinks, water-based energy drinks and water-based sports recovery drinks; nut and soy based beverages, namely, nut based
beverages not being milk substitutes and soy based beverages not being milk substitutes; powders for the preparation of beverages,
namely, powders for the preparation of fruit beverages and powders for the preparation of vegetable beverages, powders used in the
preparation of fruit-based drinks; powders for use in preparation of fruit based beverages
International 032 - Primary Class U.S Class(es): 045, 046, 048
Class(es):
Class Status: ACTIVE
Basis: 66(e)
For: Business management of wholesale and retail outlets; retail stores and retail distributorships in relation to food and foodstuffs,
beverages and drinks, food supplements and dietary food supplements, dietary supplements and dietic preparations; retail stores and
retail distributorships in relation to functional foods, functional health foods and functional beverages, slimming products; retail stores
and retail distributorships in relation to dairy substitutes and dairy product substitutes, processed grains, oats and oat-based products;
InternationalClass(es):
Class Status:
Basis:
For:
InternationalClass(es):
Class Status:
Basis:
For:
InternationalClass(es):
Class Status:
Basis:
For:
InternationalClass(es):
Class Status:
Basis:
retail stores and retail distributorships in relation to apparatus for recording, transmission or reproduction of sound and images; retail
stores and retail distributorships in relation to gloves, belts, wallets, hand bags, cases and bags; retail stores and retail distributorships
in relation to software, eyewear, clothing, footwear, headwear; retail stores and retail distributorships in relation to precious metals, key
rings, cuff links, tie pins, tie clips, clocks, watches, jewelry and precious stones; online retail outlets relating to food and foodstuffs,
beverages and drinks, food supplements and dietary food supplements, dietary supplements and dietic preparations; online retail
outlets relating to functional foods, functional health foods and functional beverages, slimming products; online retail outlets relating to
dairy substitutes and dairy product substitutes, processed grains, oats and oat-based products; online retail outlets relating to
apparatus for recording, transmission or reproduction of sound and images; online retail outlets relating to gloves, belts, wallets, hand
bags, cases and bags; online retail outlets relating to software, eyewear, clothing, footwear, headwear; online retail outlets relating to
precious metals, key rings, cuff links, tie pins, tie clips, clocks, watches, jewelry and precious stones
035 - Primary Class U.S Class(es): 100, 101, 102
ACTIVE
66(a)
Transportation and delivery of goods; packaging and storage of food and foodstuffs, beverages and drinks, food supplements and
dietary food supplements, dietary supplements and dietic preparations, functional foods, functional health foods and functional
beverages, slimming products, dairy substitutes and dairy product substitutes, processed grains, oats and oat-based products,
apparatus for recording, transmission or reproduction of sound and images, gloves, belts, wallets, hand bags, cases and bags,
software, eyewear, clothing, footwear, headwear, precious metals, key rings, cuff links, tie pins, tie clips, clocks, watches, jewelry and
precious stones
039 - Primary Class U.S Class(es): 100, 105
ACTIVE
66(a)
Education services, namely, providing classes, seminars, workshops and tutoring relating to nutrition; dietary education services,
namely, providing classes, seminars and workshops in the field of dietary nutrition; providing of training in the field of health care and
nutrition; provision of instruction relating to nutrition; instruction in non-medical nutrition and instruction in non-medical diet; training
related to nutrition and diet
041 - Primary Class U.S Class(es): 100, 101, 107
ACTIVE
66(a)
Provision of food and drink; café services and cafeteria services; cafes and cafeterias; take away food and drink services; take away
cafe and cafeteria services
043 - Primary Class
ACTIVE
66(a)
U.S Class(es): 100, 101
Basis Information (Case Level)
Filed Use: No
Filed ITU: No
Filed 44D: No
Filed 44E: No
Filed 66A: Yes
Filed No Basis: No
Currently Use: No
Currently ITU: No
Currently 44D: No
Currently 44E: No
Currently 66A: Yes
Currently No Basis: No
Amended Use: No
Amended ITU: No
Amended 44D: No
Amended 44E: No
Owner Name:
Owner Address:
Oatly AB
Store Varvsgatan 6 A
SE-211 19 Malmo
SWEDEN
Current Owner(s) Information
Legal Entity Type: LIMITED LIABILITY COMPANY State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Karen Kreider Gaunt
Correspondent AWAPATENT AB
Name/Address: P.O. BOX 5117SE-200 71 MALMÖ
SWEDEN
Domestic Karen Kreider Gaunt
RepresentativeName:
Fax: 513-977-8141
Correspondent
Domestic Representative
Phone: 513-977-8200
Prosecution History
Date
Apr, 30, 2019
Feb. 12, 2019
Feb. 08, 2019
Jan. 23, 2019
Jan. 23, 2019
Jan. 23, 2019
Jan. 11, 2019
Jan. 10, 2019
Description
REGISTERED-PRINCIPAL REGISTER
PUBLISHED FOR OPPOSITION
NOTIFICATION PROCESSED BY IB
NOTIFICATION OF POSSIBLE OPPOSITION SENT TO 18
NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
NOTICE OF PUBLICATION
EXAMINERS AMENDMENT MAILED
APPROVED FOR PUB - PRINCIPAL REGISTER
Proceeding
Number
Jan. 10, 2019 EXAMINER'S AMENDMENT ENTERED88888
Jan. 10, 2019 EXAMINERS AMENDMENT -WRITTEN81853
Nov. 27, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED74221
Nov. 27, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE74221
Nov, 23, 2018
Nov. 14, 2018
Nov. 14, 2018
Nov. 14, 2018
Oct. 18, 2018
Aug. 23, 2018
Jun. 02, 2018
May 14, 2018
ASSIGNED TO LIE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
NEW REPRESENTATIVE AT IB RECEIVED
NEW REPRESENTATIVE AT IB RECEIVED
REFUSAL PROCESSED BY IB
NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
74221
May 14, 2018
May 11,2018
REFUSAL PROCESSED BY MPU
NON-FINAL ACTION (18 REFUSAL) PREPARED FOR REVIEW
67445
May 10, 2018 NON-FINAL ACTION WRITTEN81853
Mar. 29, 2018
Mar. 21, 2018
NON-FINAL ACTION (IB REFUSAL) WITHDRAWN FOR REVIEW
NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
70029
Mar. 20, 2018
Mar. 20, 2018
NON-FINAL ACTION WRITTEN
APPLICATION FILING RECEIPT MAILED
81853
Mar. 16, 2018
Mar, 16, 2018
Mar. 15, 2018
ASSIGNED TO EXAMINER
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
SN ASSIGNED FOR SECT 66A APPL FROM IB
81853
International Registration Information (Section 66a)
International 1393445
RegistrationNumber:
Priority Claimed Yes
Flag:
Ina Registration REQUEST FOR EXTENSION OF PROTECTION
Status: PROCESSED
International Jul, 13, 2017
Registration Date:
Date of Section 67 Feb. 13, 2017
Priority Claim:
Date of Mar. 15, 2018
InternationalRegistration
Status:
Notification of Mar. 15, 2018 Date of Automatic Sep. 15, 2019
Designation Date: Protection:
International Jul. 13, 2027
Registration
Renewal Date:
First Refusal Flag: Yes
TM Staff and Location Information
Current Location: PUBLICATION AND ISSUE SECTION
TM Staff Information - None
File Location
Date in Location: Apr. 30, 2019
Proceedings
Summary
Number of 1
Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642 Filing Date: Feb 26, 2019
Number:
Status: Pending Status Date: Feb 26, 2019
Interlocutory KATIE W MCKNIGHT
Attorney:
Defendant
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN , 55402
UNITED STATES
Correspondent e- trademarks-miAbtlaw.com , [email protected] , kerry.thompsonAbtlaw.com
mail:
Associated marks
Mark Application Status Serial Registration
Number Number
OATERRA Opposition Pending 87925673
Plaintiff(s)
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH , 45202
UNITED STATES
Correspondent e- karen.eauntadinsmore.com , goyindadayispdinsmore.com , robin.bissantzQdinsmore.com , [email protected]
mail:
Associated marks
Mark Application StatusSerial Registration
Number Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LY! Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 D APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
Due Date
Apr 07, 2019
Generated on: This page was generated by TSDR on 2019-05-10 13:33:37 EDT
Mark: OATGURT
US Serial Number: 79224787
Register: Principal
Mark Type: Trademark
TM5 Common Status 041.411%.Descriptor:
ii
OATG U RTApplication Filing Jul 13, 2017
Date:
LIVE/APPLICATION/Opposition Pending
The pending trademark application has been examined by the Office and was
published for opposition, at which time one or more oppositions were filed but
they have not yet been decided.
Status: An opposition after publication is pending at the Trademark Trial and Appeal Board, For further information, see TTABVUE on the
Trademark Trial and Appeal Board web page.
Status Date: Sep. 26, 2018
Publication Date: Sep. 18, 2018
Mark Information
Mark Literal OATGURT
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Related Properties Information
International 1384228
RegistrationNumber:
International Jul. 13, 2017
Registration Date:
Goods and Services
Note:The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets (.1 indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks *..' identify additional (new) wording in the goods/services.
For: Dairy product substitutes, namely, oat-based drinks as milk substitutes and oat-based yogurt, shakes, and cheese as dairy food
substitutes; oat-based beverages for use as milk substitutes; fruit-based drinks containing oats, namely, oat based, dairy free drinks
containing fruit; yoghurt substitutes containing oats; drinking yoghurt substitutes containing oats; fruit-flavored yoghurt substitutes
containing oats
International 029 - Primary Class U.S Class(es): 046
Class(es):
Class Status: ACTIVE
Basis: 66(a)
Filed Use: No
Filed ITU: No
Filed 44D: No
Filed 44E: No
Filed 66A: Yes
Basis Information (Case Level)
Currently Use: No
Currently ITU: No
Currently 44E: No
Currently 66A: Yes
Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Oatly AB
Owner Address: Stora Varvsgatan 6 A
SE-211 19 MalmöSWEDEN
Legal Entity Type: JOINT STOCK COMPANY State or Country SWEDEN
Where Organized:
Attorney/Correspondence Information
Correspondent KAREN KRIEDER GAUNT
Name/Address: DINSMORE & SHOHL LLP
255 E FIFTH ST STE 1900
CINCINNATI, OHIO UNITED STATES 45202
Domestic Karen Kreider Gaunt
RepresentativeName:
Fax: 513-977-8141
Attorney of Record - None
Correspondent
Domestic Representative
Phone: 513-977-8200
Prosecution History
Date DescriptionProceedingNumber
Mar. 06, 2019
Mar. 01, 2019
Oct. 18, 2018
Oct. 12, 2018
LIMITATION FROM THE IB EXAMINED AND ENTERED
LIMITATION OF GOODS RECEIVED FROM 113
NEW REPRESENTATIVE AT 113 RECEIVED
REFUSAL PROCESSED BY IB
68359
Sep. 26, 2018
Sep. 20, 2018
Sep. 20, 2018
Sep. 19, 2018
Sep. 18, 2018
Aug. 29, 2018
Aug. 23, 2018
OPPOSITION INSTITUTED NO. 999999
OPPOSITION NOTICE (IB REFUSAL) SENT TO IB
OPPOSITION NOTICE (IB REFUSAL) CREATED
OPPOSITION PAPERS RECEIVED AT TTAB
PUBLISHED FOR OPPOSITION
NOTICE OF PUBLICATION
NEW REPRESENTATIVE AT IB RECEIVED
243827
Aug. 13, 2018
Aug. 03, 2018
Aug. 01, 2018
ASSIGNED TO LIE
APPROVED FOR PUB - PRINCIPAL REGISTER
EXAMINERS AMENDMENT MAILED
69712
Aug. 01, 2018 EXAMINER'S AMENDMENT ENTERED88888
Aug. 01, 2018
Jul. 30, 2018
Jul. 30, 2018
EXAMINERS AMENDMENT -WRITTEN
ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
81112
Jul, 30, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED88889
Jul. 30, 2018
Jul. 30, 2018
Feb. 16, 2018
Jan. 31, 2018
CORRESPONDENCE RECEIVED IN LAW OFFICE
TEAS RESPONSE TO OFFICE ACTION RECEIVED
REFUSAL PROCESSED BY IB
NON-FINAL ACTION MAILED REFUSAL SENT TO IB
88889
Jan. 31, 2018
Jan. 24, 2018
REFUSAL PROCESSED BY MPU
NON-FINAL ACTION (113 REFUSAL) PREPARED FOR REVIEW
73787
Jan. 23, 2018
Jan. 23, 2018
NON-FINAL ACTION WRITTEN
APPLICATION FILING RECEIPT MAILED
81112
Jan. 18, 2018
Jan. 18, 2018
Jan. 17, 2018
ASSIGNED TO EXAMINER
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
SN ASSIGNED FOR SECT 66A APPL FROM IB
81112
International Registration Information (Section 66a)
International 1384228
Registration
Number:
International Jul. 13, 2017
Registration Date:
Priority Claimed Yes Date of Section 67 Jan. 26, 2017
Flag: Priority Claim:
Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Jan. 17, 2018
Status: PROCESSED InternationalRegistration
Status:
Notification of Jan. 11, 2018
Designation Date:
International Jul. 13, 2027
RegistrationRenewal Date:
First Refusal Flag: Yes
Date of Automatic Jul. 11, 2019
Protection:
TM Staff and Location Information
TM Staff Information
TM Attorney: HUSSAIN, TASNEEM Law Office LAW OFFICE 118
Assigned:
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Aug. 15, 2018
Proceedings
Summary
Number of 3
Proceedings:
Type of Proceeding: Opposition
Proceeding 91246642 Filing Date: Feb 26, 2019
Number:
Status: Pending
Interlocutory KATIE W MCKNIGHT
Attorney:
Name: Ashley Keightley
Correspondent BRADLEY J WALZ
Address: BARNES & THORNBURG LLP
225 SOUTH SIXTH STREET, SUITE 2800
MINNEAPOLIS MN UNITED STATES , 55402
Status Date: Feb 26, 2019
Defendant
Correspondent e- [email protected] , bwalzabtlaw.com , kerry.thompson(abtlaw.com
mail:
Associated marks
Mark Application Status Serial Registration
Number Number
OATERRA Opposition Pending 87925673
Plaintiff(s)
Name: Oatly AB
Correspondent KAREN KREIDER GAUNT
Address: DINSMORE & SHOHL LLP
255 EAST FIFTH ST, SUITE 1900
CINCINNATI OH UNITED STATES , 45202
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail:
Associated marks
Mark Application StatusSerial Registration
Number Number
OATADO Registered 79216762 5526877
CAPPOATCCINO Registered 79216709 5526875
MACCHIOATO Registered 79216607 5526870
THE ORIGINAL OAT-LY! Registered 79149710 4766382
OAT-LYI Registered 79149322 4757998
OATLY REGISTERED AND RENEWED 76148369 2701730
OATFINDER Published For Opposition 87709745
OATLY Third Extension - Granted 87320671
OATLY Registered 79228630 5736047
OATGURT Opposition Pending 79224787
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 26, 2019
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019 Apr 07, 2019
3 PENDING, INSTITUTED Feb 26, 2019
4 0 APPEARANCE / POWER OF ATTORNEY Apr 04, 2019
5 ANSWER Apr 05, 2019
Type of Proceeding: Opposition
Proceeding 91243827 Filing Date: Sep 19, 2018
Number:
Status: Suspended Status Date: Nov 16, 2018
Interlocutory WENDY COHEN
Attorney:
Defendant
Name: Oatly AB
Correspondent KAREN KRIEDER GAUNT
Address: DINSMORE & SHOHL LLP
255 E FIFTH ST STE 1900
CINCINNATI OH UNITED STATES , 45202
Correspondent e- [email protected] , [email protected] , christine.guggenheirner@dinsmore,com , michael.wheeler@d insmore.c
mail: om
Associated marks
Mark Application Status
OATGURT Opposition Pending
Plaintiff(s)
Name: Nothing But Real, Inc.
Correspondent WILLIAM J SEITER
Address: SEITER LEGAL STUDIO
2500 BROADWAY BLDG F SUITE F 125
SANTA MONICA CA UNITED STATES , 90404
Correspondent e- wi lliamjseiter©seiterlegalstudio.com
mail:
Serial Registration
Number Number
79224787
Associated marks
Mark Application Status Serial Registration
Number Number
OATGURT Suspension Letter - Mailed 88055291
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Sep 19, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Sep 26, 2018 Nov 05, 2018
3 INSTITUTED Sep 26, 2018
4 D APPEARANCE / POWER OF ATTORNEY Sep 27, 2018
5 P MOT TO AMEND PLEADING/AMENDED PLEADING Oct 04, 2018
6 TRIAL DATES RESET Oct 17, 2018
7 D MOT TO DISMISS: FRCP 12(8) Nov 16, 2018
8 RESPONSE DUE Nov 26, 2018
9 P MOT TO AMEND PLEADING/AMENDED PLEADING Nov 27, 2018
10 D MOT FOR SUMMARY JUDGMENT Dec 31, 2018
11 P OPP/RESP TO MOTION Jan 29, 2019
12 D REPLY IN SUPPORT OF MOTION Feb 18, 2019
Type of Proceeding: Opposition
Proceeding 91239763
Number:
Status: Terminated
Interlocutory JENNIFER KRISP
Attorney:
Name:
CorrespondentAddress:
Correspondent e-mail:
Associated marks
Mark
OATGURT
Name:
CorrespondentAddress:
Nothing But Real, Inc.
PATRICK J CONCANNON
NUTTER MCCLENNEN & FISH LLP
SEAPORT WEST 155 SEAPORT BLVD
BOSTON MA UNITED STATES , 02210
pconcannonAnutter.com , docket nutter.com
Oatly AB
KAREN KREIDER GAUNT
DINSMORE & SHOHL LLP
Filing Date: Feb 28, 2018
Status Date: Apr 12, 2018
Defendant
Application Status
Abandoned - After Inter-Partes Decision
Plaintiff(s)
Serial
Number
87507029
Registration
Number
Correspondent e-mail:
Associated marks
Mark
OATGURT
255 E 5TH STREET, SUITE 1900
CINCINNATI OH UNITED STATES , 45202
karen.gauntadinsmore.com , robin.bissantzAdinsmore.com
Serial Registration
Number Number
79224787
Application Status
Opposition Pending
Prosecution History
Entry Number History Text Date Due Date
1 FILED AND FEE Feb 28, 2018
2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 28, 2018 Apr 09, 2018
3 PENDING, INSTITUTED Feb 28, 2018
4 D APPEARANCE / POWER OF ATTORNEY Apr 05, 2018
5 W/DRAW OF APPLICATION Apr 09, 2018
6 BD DECISION: SUSTAINED Apr 12, 2018
7 TERMINATED Apr 12, 2018
EXHIBIT B
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2021)
Trademark/Service Mark Application, Principal Register
Serial Number: 88001799
Filing Date: 06/15/2018
The table below presents the data as entered.
Input Field Entered
SERIAL NUMBER 88001799
MARK INFORMATION
*MARK Totally Oatally
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
LITERAL ELEMENT Totally Oatally
MARK STATEMENTThe mark consists of standard characters, without claim to any
particular font style, size, or color.
REGISTER Principal
APPLICANT INFORMATION
*OWNER OF MARK PATRICK'S GREEN MOUNTAIN TWISTERS, LLC
*STREET 528 Keene Farm Road
*CITY Marshfield
*STATE
(Required for U.S. applicants)Vermont
*COUNTRY United States
*ZIP/POSTAL CODE
(Required for U.S. and certain international addresses)05658
LEGAL ENTITY INFORMATION
TYPE limited liability company
STATE/COUNTRY WHERE LEGALLY ORGANIZED Vermont
GOODS AND/OR SERVICES AND BASIS INFORMATION
INTERNATIONAL CLASS 030
*IDENTIFICATION Granola
FILING BASIS SECTION 1(a)
FIRST USE ANYWHERE DATE At least as early as 03/01/2016
FIRST USE IN COMMERCE DATE At least as early as 03/01/2016
SPECIMEN FILE NAME(S)\\TICRS\EXPORT17\IMAGEOUT
17\880\017\88001799\xml1\ RFA0003.JPG
\\TICRS\EXPORT17\IMAGEOUT
17\880\017\88001799\xml1\ RFA0004.JPG
SPECIMEN DESCRIPTION Front and back of Totally Oatally granola container
ATTORNEY INFORMATION
NAME Douglas J. Wolinsky
FIRM NAME Primmer Piper Eggleston & Cramer PC
STREET 30 Main Street, Suite 500
CITY Burlington
STATE Vermont
COUNTRY United States
ZIP/POSTAL CODE 05401
PHONE 802-864-0880
FAX 802-8640328
EMAIL ADDRESS [email protected]
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
CORRESPONDENCE INFORMATION
NAME Douglas J. Wolinsky
FIRM NAME Primmer Piper Eggleston & Cramer PC
STREET 30 Main Street, Suite 500
CITY Burlington
STATE Vermont
COUNTRY United States
ZIP/POSTAL CODE 05401
PHONE 802-864-0880
FAX 802-8640328
*EMAIL ADDRESS [email protected]; [email protected]
*AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
FEE INFORMATION
APPLICATION FILING OPTION TEAS RF
NUMBER OF CLASSES 1
APPLICATION FOR REGISTRATION PER CLASS 275
*TOTAL FEE DUE 275
*TOTAL FEE PAID 275
SIGNATURE INFORMATION
SIGNATURE /Douglas J. Wolinsky/
SIGNATORY'S NAME Douglas J. Wolinsky
SIGNATORY'S POSITION Attorney of Record, Vermont bar member
SIGNATORY'S PHONE NUMBER 802-864-0880
DATE SIGNED 06/15/2018
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2021)
Trademark/Service Mark Application, Principal Register
Serial Number: 88001799
Filing Date: 06/15/2018
To the Commissioner for Trademarks:
MARK: Totally Oatally (Standard Characters, see mark)
The literal element of the mark consists of Totally Oatally.
The mark consists of standard characters, without claim to any particular font style, size, or color.
The applicant, PATRICK'S GREEN MOUNTAIN TWISTERS, LLC, a limited liability company legally organized under the laws of Vermont,
having an address of
528 Keene Farm Road
Marshfield, Vermont 05658
United States
requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register
established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:
For specific filing basis information for each item, you must view the display within the Input Table.
International Class 030: Granola
In International Class 030, the mark was first used by the applicant or the applicant's related company or licensee or predecessor in interest at
least as early as 03/01/2016, and first used in commerce at least as early as 03/01/2016, and is now in use in such commerce. The applicant is
submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in the class of listed
goods/services, consisting of a(n) Front and back of Totally Oatally granola container.
Specimen File1
Specimen File2
The applicant's current Attorney Information:
Douglas J. Wolinsky of Primmer Piper Eggleston & Cramer PC 30 Main Street, Suite 500
Burlington, Vermont 05401
United States
802-864-0880(phone)
802-8640328(fax)
[email protected] (authorized)
The applicant's current Correspondence Information:
Douglas J. Wolinsky
Primmer Piper Eggleston & Cramer PC
30 Main Street, Suite 500
Burlington, Vermont 05401
802-864-0880(phone)
802-8640328(fax)
[email protected];[email protected] (authorized)
E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant, the applicant's
attorney, or the applicant's domestic representative at the e-mail address provided in this application. I understand that a valid e-mail address
must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent application-related submissions via the
Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Reduced Fee status and a requirement to
submit an additional processing fee of $125 per international class of goods/services.
A fee payment in the amount of $275 has been submitted with the application, representing payment for 1 class(es).
Declaration
Basis:
If the applicant is filing the application based on use in commerce under 15 U.S.C. § 1051(a):
The signatory believes that the applicant is the owner of the trademark/service mark sought to be registered;
The mark is in use in commerce on or in connection with the goods/services in the application;
The specimen(s) shows the mark as used on or in connection with the goods/services in the application; and
To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
And/Or
If the applicant is filing the application based on an intent to use the mark in commerce under 15 U.S.C. § 1051(b), § 1126(d),
and/or § 1126(e):
The signatory believes that the applicant is entitled to use the mark in commerce;
The applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services in the
application; and
To the best of the signatory's knowledge and belief, the facts recited in the application are accurate.
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the
mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
goods/services of such other persons, to cause confusion or mistake, or to deceive.
To the best of the signatory's knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the
allegations and other factual contentions made above have evidentiary support.
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §
1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration
resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and
belief are believed to be true.
Declaration Signature
Signature: /Douglas J. Wolinsky/ Date: 06/15/2018
Signatory's Name: Douglas J. Wolinsky
Signatory's Position: Attorney of Record, Vermont bar member
Payment Sale Number: 88001799
Payment Accounting Date: 06/15/2018
Serial Number: 88001799
Internet Transmission Date: Fri Jun 15 09:06:54 EDT 2018
TEAS Stamp: USPTO/BAS-XX.XX.XXX.XXX-2018061509065484
2556-88001799-610255cc6c1b08e47e34c24e24
8caf59df4593f8984e114db9bdc5663e93943bbd
-CC-7650-20180615085943789268
Generated on: This page was generated by TSDR on 2019-05-10 13:22:05 EDT
Mark: TOTALLY OATALLY
Totally Oatal ly
US Serial Number: 88001799 Application Filing Jun. 15, 2018Date:
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Trademark
Status: A request for an extension of time to file an opposition has been filed with the Trademark Trial and Appeal Board. For further
information, see TTABVUE on the Trademark Trial and Appeal Board web page.
Status Date: Dec. 12, 2018
Publication Date: Nov. 13, 2018
Mark Information
Mark Literal TOTALLY OATALLY
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
• Brackets (..1 indicate deleted goods/services;
• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
• Asterisks *.." identify additional (new) wording in the goods/services.
For: Granola
International 030 - Primary Class
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Mar. 01, 2016
U.S Class(es): 046
Use in Commerce: Mar. 01, 2016
Basis Information (Case Level)
Filed Use: Yes Currently Use: Yes Amended Use: No
Filed ITU: No Currently ITU: No Amended ITU: No
Filed 44D: No Currently 44D: No Amended 44D: No
Filed 44E: No Currently 44E: No Amended 44E: No
Filed 66A: No Currently 66A: No
Filed No Basis: No Currently No Basis: No
Current Owner(s) Information
Owner Name: PATRICK'S GREEN MOUNTAIN TWISTERS, LLC
Owner Address: 528 Keene Farm Road
Marshfield, VERMONT 05658
UNITED STATES
Legal Entity Type: LIMITED LIABILITY COMPANY State or Country VERMONT
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Douglas J. Wolinsky
Attorney Primary dwol insky pri mmer.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Name/Address:DOUGLAS J. WOLINSKY
PRIMMER PIPER EGGLESTON & CRAMER PC
30 MAIN STREET, SUITE 500
BURLINGTON, VERMONT 05401
UNITED STATES
Correspondent
Phone: 802-864-0880 Fax: 802-8640328
Correspondent e- dwolinskyAprimmer.com [email protected] Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Date
Dec, 12, 2018
Nov. 13, 2018
Nov. 13, 2018
Oct. 24, 2018
Oct. 04, 2018
Oct. 03, 2018
Jun. 20, 2018
Jun. 19, 2018
Description
EXTENSION OF TIME TO OPPOSE RECEIVED
OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
PUBLISHED FOR OPPOSITION
NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
APPROVED FOR PUB - PRINCIPAL REGISTER
ASSIGNED TO EXAMINER
NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
NEW APPLICATION ENTERED I N TRAM
TM Staff and Location Information
TM Staff Information
TM Attorney: MICHOS, JOHN E Law Office LAW OFFICE 118
Assigned:
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Oct. 05, 2018
ProceedingNumber
67443
Summary
Number of 1
Proceedings:
Proceedings
Type of Proceeding: Extension of Time
Proceeding 88001799
Number:
Status: Extension of Time to Oppose Filed
InterlocutoryAttorney:
Name: PATRICK'S GREEN MOUNTAIN TWISTERS, LLC
Correspondent DOUGLAS J. WOLINSKY
Address: PRIMMER PIPER EGGLESTON & CRAMER PC
30 MAIN STREET, SUITE 500
BURLINGTON VT , 05401
Correspondent e- dwol i [email protected] , sonei [email protected]
mail:
Associated marks
Filing Date: Dec 12, 2018
Status Date: Dec 12, 2018
Defendant
Mark Application Status
TOTALLY OATALLY
Serial Registration
Number Number
Request For Extension of Time to File Opposition 88001799
Potential Opposer(s)
Name: Oatly AB
Correspondent Karen Kreider Gaunt
Address: Dinsmore & Shohl255 E. Fifth StreetSuite 1900Cincinnati OH , 45202UNITED STATES
Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]
mail:
Prosecution History
Entry Number History Text Date
1 FIRST 90-DAY REQUEST TO EXT TIME TO OPPOSE Dec 12, 2018
2 EXT GRANTED Dec 12, 2018
3 FINAL 60-DAY REQUEST TO EXT TIME TO OPPOSE Mar 13, 2019
4 EXT GRANTED Mar 13, 2019
Due Date