Notice of Opposition · 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,

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

http://estta.uspto.gov

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




10/01/2013

Word Mark OAT-LY!

Design Mark

Description ofMark

NONE


Oat milk milk substitute; milk substitutes containing oats, cream substitutes con-taining oats, sour milk substitutes containing oats, yoghurt substitutes containingoats


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


Non-alcoholic beverages, namely, oat-based beverages, fruit and berry bever-agesbased on oats




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-".


Oat milk milk substitute; milk substitutes containing oats, cream substitutes con-taining oats, sour milk substitutes containing oats, yoghurt substitutes containingoats


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


Non-alcoholic beverages, namely, oat-based beverages, fruit and berry bever-agesbased on oats




02/23/2017

Word Mark OATADO

Design Mark

Description ofMark

NONE


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


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




02/23/2017

Word Mark CAPPOATCCINO

Design Mark

Description ofMark

NONE


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


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




02/23/2017

Word Mark MACCHIOATO

Design Mark

Description ofMark

NONE


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


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.


Registration Date NONE Foreign Priority 11/07/2017

Date

Word Mark OATFINDER

Design Mark

Description ofMark

NONE


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


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


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


Take away food and drink services, namely, retail store services featuringfoodand drink


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


Provision of food and drink; cafÃ© services and cafeteria services; cafÃ©s andcafeterias; restaurant take away food and drink services; take away cafÃ© andcafeteria services; restaurant information services; cafÃ© information services;bar information services

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

NONE

Word Mark OATLY

Design Mark

Description ofMark

NONE


Oat-based drinks as milk substitutes; oat-based yogurt substitute; oat-basedcrÃ¨me fraiche; oat-based cooking cream andcreamer; oat-based food spread


Oat-based vanilla sauce and oat based vanilla custard; oat-based ice cream


Oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruitdrink beverages; oat-based smoothie beverages




02/13/2017

Word Mark OATLY

Design Mark

Description ofMark

NONE


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


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


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


Briefcases; attachÃ© 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


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


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


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; crÃ¨mefraiche substitutes; cream substitutes containing oat; crÃ¨me 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


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


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


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


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


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


Provision of food and drink; cafÃ© services and cafeteria services; cafÃ©s andcafeterias; take away food and drink services; take away cafÃ© and cafeteriaservices

U.S. ApplicationNo.


Registration Date NONE Foreign PriorityDate

01/26/2017

Word Mark OATGURT

Design Mark

Description ofMark

NONE


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.

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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-

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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

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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.

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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










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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






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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

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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

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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

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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

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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

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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,

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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

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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,

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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;

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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

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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

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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

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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


Class(es):


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



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


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


Date Recorded: Aug. 29, 2006


Documents:

Name: CEBA FOODS AB

Legal Entity Type: CORPORATION

Assignor

Execution Date: Jun. 26, 2006


Where Organized:

Assignee

Name: OATLY AB


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


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*


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


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


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:



• 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


Class(es):


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


Class(es):


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):


Basis: 66(a)

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


Amended Use: No

Amended ITU: No

Amended 440: No

Amended 44E: No


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:


Correspondent AWAPATENT AB

Name/Address: P.O. Box 5117

SE-200 71 Malmb

SWEDEN

Attorney of Record - None

Correspondent


Prosecution History

Date

Oct. 18, 2018

Aug. 23, 2018

Jan. 05, 2017

Nov. 08, 2015

Oct. 21, 2015

Description

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



NOTIFICATION PROCESSED BY IB

NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB

NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB


76826

Feb. 27, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED68123

Feb. 26, 2015

Feb. 06, 2015

ASSIGNED TO LIE


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)


RegistrationNumber:


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:


Registration

Renewal Date:

First Refusal Flag: Yes

Date of Automatic Jan. 17, 2016

Protection:


82426

82426


File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jun. 23, 2015


Summary

Total Assignments: 1 Registrant: Oatly AB

Assignment 1 of 1

Conveyance: CHANGE OF ADDRESS


Date Recorded: Jan. 05, 2017


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


Proceedings

Summary




Number:

Status: Pending


Attorney:






UNITED STATES

Status Date: Feb 26, 2019

Defendant

Correspondent e- trademarks-miAbtlaw,com , bwalznbtlaw.com , kerry.thompsonAbtlaw.com

mail:

Associated marks



Plaintiff(s)

Name: Oatly AB




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


Number Number











Prosecution History



2 NOTICE AND TRIAL DATES SENT: ANSWER DUE: Feb 26, 2019 Apr 07, 2019





Mark: THE ORIGINAL OAT-LY!

US Serial Number: 79149710

US Registration 4766382

Number:

Register: Principal



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):


International 1210356Registration

Number:


Registration Date:

Claimed Ownership 2701730, 3876387

of USRegistrations:

Goods and Services

Note:





For: Oat milk milk substitute; milk substitutes containing oats, cream substitutes containing oats, sour milk substitutes containing oats,

yoghurt substitutes containing oats


Class(es):


Basis:

For:

InternationalClass(es):

Class Status:

Basis:

For:


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)


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


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



SE-200 71 Malmti

SWEDEN



Where Organized:



Correspondent


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



CHANGE OF NAME/ADDRESS REC'D FROM 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


Mar. 14, 2015 LAW OFFICE PUBLICATION REVIEW COMPLETED 66121

Mar. 14, 2015

Feb. 23, 2015

ASSIGNED TO LIE


66121

Feb. 05, 2015 TEAS/EMAIL CORRESPONDENCE ENTERED 88889

Feb. 05, 2015

Feb. 05, 2015

Sep. 05, 2014

Aug. 08, 2014





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 1210356 International Mar. 28, 2014

Registration Registration Date:

Number:

Priority Claimed Yes Date of Section 67 Oct. 01, 2013


Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Jul 24, 2014

Status: PROCESSED InternationalRegistration

Status:

Notification of Jul. 24, 2014

Designation Date:


RegistrationRenewal Date:


Date of Automatic Jan 24, 2016

Protection:



File Location

Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jul. 07, 2015


Summary

Total Assignments: 1

Assignment 1 of 1

Registrant: Oatly AB

Conveyance: CHANGE OF ADDRESS

Reel/Frame: 5949/0200

Date Recorded: Jan. 05, 2017


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


Proceedings

Summary

Number of 1

Proceedings:


Proceeding 91246642

Number:

Status: Pending


Attorney:






UNITED STATES

Filing 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





UNITED STATES

Correspondent e- [email protected] , govinda.dayisPdinsmore.com , robin.bissantzAdinsmore.corn , christi ne.guggenheimeradinsmore.com

mail:

Associated marks

Mark Application StatusSerialNumber

Registration

Number











Prosecution History

Entry Number History Text Date


2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019


4 D APPEARANCE I POWER OF ATTORNEY Apr 04, 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





• 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.



• 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.*


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/.



extensions of protection, you can file the registration maintenance documents referenced above online at h

ttp://www.uspto.gov.






Page: 2 of 2 / RN # 5526877


Mark: OATADO

OATADCUS Serial Number: 79216762 Application Filing Jul. 13, 2017

Date:

US Registration 5526877 Registration Date: Jul. 31, 2018

Number:

Register: Principal




Publication Date: May 15, 2018

Mark Information

Mark Literal OATADO

Elements:


Claim:


Type:



RegistrationNumber:

International Jul. 13, 2017

Registration Date:

Goods and Services




• 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


Class(es):


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


Class(es):


Basis: 66(a)

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


Amended Use: No

Amended ITU: No

Amended 44D: No

Amended 44E: No



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


Where Organized:


Attorney of Record

Correspondent


Phone: 513-977-8200

Prosecution History

Date

Dec. 07, 2018

Nov. 15, 2018

Description



Proceeding

Number

Nov. 15, 2018

Oct. 31, 2018

Oct. 18, 2018

Aug. 23, 2018

Jul. 31, 2018

May 15, 2018

Apr. 25, 2018








73787

Apr. 12, 2018

Apr. 05, 2018

Apr. 04, 2018

ASSIGNED TO LIE

EXAMINERS AMENDMENT MAILED


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


ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED

TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED










International Registration Information (Section 66


Registration

Number:

Priority Claimed YesFlag:


Registration Date:

Date of Section 67 Feb. 23, 2017

Priority Claim:

Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Sep. 21, 2017


Status:

Notification of Sep. 21, 2017Designation Date:




Date of Automatic Mar. 21, 2019

Protection:

68359

93650

93650


Current Location: PUBLICATION AND ISSUE SECTION


File Location

Date in Location: Jul. 31, 2018

Summary


Proceedings



Number:



Attorney:

Defendant






UNITED STATES

Correspondent e- trademarks-miAbtlaw.com , [email protected] , kerry,thompsonAbtlaw.com

mail:

Associated marks


Number Number

OATERRA

Name: Oatly AB





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











Prosecution History







tate5 of amf 1twomo%

erti„.lintteb *tato Vatent anti Trattentarti 4/P ffire

CAPPOATCC I NOReg. No. 5,526,875


Int. Cl.: 29, 30

Trademark

Principal Register




Stora Varvsgatan 6 A

Se-211 19 Malmb

SWEDEN









making drinks





















EXPIRES 07-13-2027

SER. NO. 79-216,709, FILED 07-13-2017





























international registration, see http://www.wipoint/madrid/en/.










Page: 2 of 2 / RN # 5526875


Mark: CAPPOATCCINO

CAPPOATCCINC

US Serial Number: 79216709 Application Filing Jul. 13, 2017

Date:


Number:

Register: Principal


TM5 Common Status

Descriptor:

LIVE/REGISTRATION/Issued and Active

The trademark application has been registered with the Office.




Mark Information

Mark Literal CAPPOATCCINO

Elements:


Claim:


Type:



RegistrationNumber:


Registration Date:

Goods and Services

Note:


• 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.








Class(es):


Basis: 66(a)













Class(es):


Basis: 66(a)

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 44E: No

Currently 66A: Yes





SE-211 19 Malmo

SWEDEN


Where Organized:




Name/Address: P.O. Box 5117SE-200 71 Malmo SWEDEN


Representative

Name:

Fax: 513-977-8141

Date Description

Attorney of Record

Correspondent


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







88889

Oct. 17, 2017

Oct. 13, 2017



67445

Oct. 12, 2017 NON-FINAL ACTION WRITTEN 93650

Oct. 11, 2017

Sep. 26, 2017

Sep. 22, 2017

Sep. 21, 2017





93650


International 1365599Registration

Number:


Registration Date:

Priority Claimed Yes Date of Section 67 Feb. 23, 2017




Status:

Notification of Sep. 21, 2017Designation Date:

International Jul. 13, 2027Registration

Renewal Date:


Date of Automatic Mar. 21, 2019Protection:




File Location


Proceedings

Summary




Number:



Attorney:

Defendant





MINNEAPOLIS MN UNITED STATES , 55402

Correspondent e- trademarks-miQbtlaw.com , [email protected] , [email protected]

mail:

Associated marks



Plaintiff(s)

Serial Registration

Number Number

87925673

Name: Oatly AB




CINCINNATI OH UNITED STATES , 45202

Correspondent e- karen.qaunt d insmore.com govinda.dayisadinsmore.com , robin,[email protected] , christine.quggenheimerAdinsmore.com

mail:

Associated marks


Number Number











Prosecution History





4 D APPEARANCE I POWER OF ATTORNEY Apr 04, 2019


tatef4 of amvat

f ebMullet( *Mt' latent anti Trabentark 41%

MACCH IOATOReg. No. 5,526,870


Int. Cl.: 29, 30

Trademark

Principal Register




Stora Varvsgatan 6a

Se-211 19 Malmo

SWEDEN









making drinks





















EXPIRES 07-13-2027

SER. NO. 79-216,607, FILED 07-13-2017





























international registration, see http://www.wipoint/madrid/en/.










Page: 2 of 2 / RN # 5526870


Mark: MACCHIOATO

MACCH IOATC

US Serial Number: 79216607 Application Filing Jul. 13, 2017

Date:


Number:

Register: Principal





Mark Information

Mark Literal MACCHIOATO

Elements:


Claim:


Type:


I nternational 1365441

RegistrationNumber:


Registration Date:

Goods and Services

Note:


• 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.








Class(es):


Basis: 66(a)













Class(es):


Basis: 66(a)

Filed Use: No

Filed ITU: No

Filed 440: 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


Amended Use: No

Amended ITU: No

Amended 44D: No

Amended 44E: No



Owner Address: Stora Varvsgatan 6a

SE-211 19 MALMO

SWEDEN


Where Organized:





SE-200 71 MalmO

SWEDEN


RepresentativeName:

Fax: 513-977-8141

Attorney of Record

Correspondent


Phone: 513-977-8200

Prosecution History

Date

Dec. 07, 2018

Nov. 17, 2018

Description



ProceedingNumber

Nov. 17, 2018

Oct. 31, 2018

Oct. 18, 2018

Aug. 23, 2018

Jul. 31, 2018

May 15, 2018

Apr. 25, 2018



NEW REPRESENTATIVE AT 18 RECEIVED





67445

Apr. 12, 2018

Apr. 05, 2018

Apr. 04, 2018

ASSIGNED TO LIE



70629

Apr. 04, 2018 EXAMINER'S AMENDMENT ENTERED88888

Apr. 04, 2018

Mar. 28, 2018


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



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



Registration

Number:


Registration Date:

Priority Claimed Yes Date of Section 67 Feb. 23, 2017




Status:

Notification of Sep. 14, 2017

Designation Date:


Registration

Renewal Date:


Date of Automatic Mar. 14, 2019

Protection:




File Location


Proceedings

Summary

Number of 1

Proceedings:


Proceeding 91246642

Number:

Status: Pending


Attorney:



Defendant






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





UNITED STATES

Correspondent e- karen.gauntAdinsmore.com , g2yinda.dayisadinsmore.com , rob in.bissantz dinsmore.com , christine.guggenheimerAd insmore.com

mail:

Associated marks


RegistrationNumber











Prosecution History








Mark: OATFINDER


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


Mark Information

Mark Literal OATFINDER

Elements:


Claim:


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:


• Brackets [..) indicate deleted goods/services;


• 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):


Basis: 1(b) 44(e)


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



Class(es):


Basis: 1(b) 44(e)


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,



ice cream; preparations for making coffee based beverages; milk substitutes frozen yoghurt; non-dairy frozen yoghurt; milk substitutes



Class(es):


Basis: 1(b) 44(e)

For: Take away food and drink services, namely, retail store services featuring food and drink


Class(es):


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):


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):


Basis: 1(b) 44(e)

U.S Class(es): 100, 101


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





Malmo SWEDEN 21119

Legal Entity Type: aktiebolag (ab) State or Country SWEDEN

Where Organized:



Attorney Primary karen.qauntAdinsmore.com

Email Address:


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


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:


Phone: 513-977-8200 x8503

Domestic Yes

Representative e-

mail Authorized:

Prosecution History

OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED


NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED

ELECTRONIC RECORD REVIEW COMPLETE

ON HOLD - ELECTRONIC RECORD REVIEW REQUIRED


TEAS/EMAIL CORRESPONDENCE ENTERED



NOTIFICATION OF PRIORITY ACTION E-MAILED

PRIORITY ACTION E-MAILED

PRIORITY ACTION WRITTEN



ASSIGNED TO LIE

TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED

NOTIFICATION OF LETTER OF SUSPENSION E-MAILED

LETTER OF SUSPENSION E-MAILED

SUSPENSION LETTER WRITTEN




NOTIFICATION OF NON-FINAL ACTION E-MAILED

NON-FINAL ACTION E-MAILED




NEW APPLICATION ENTERED IN TRAM


ProceedingNumber

93249

88889

88889

6326

6326

81112

68171

68171

68171

6332

6332

81112

88889

88889

6325

6325

81112

81112

TM Attorney: HUSSAIN, TASNEEM


TM Staff Information

Law Office LAW OFFICE 118

Assigned:

File Location

Date in Location: Apr. 03, 2019

Proceedings

Summary



Proceeding 91246642

Number:

Status: Pending


Attorney:


Correspondent BRADLEY J WALZAddress: BARNES & THORNBURG LLP





Defendant

Correspondent e- trademarks-miAbtlaw.com , bwalzabtlaw.com , kerry.thompsonAbtlaw.com

mail:

Associated marks



Plaintiff(s)

Serial Registration

Number Number

87925673

Name: Oatly AB





Correspondent e- karen.gauntAdinsmore.com , [email protected] , robin,[email protected] , [email protected]

mail:

Associated marks


Number Number











Prosecution History








Mark: OATLY


Filed as TEAS RF: Yes

Register: Principal


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:


Claim:


Type:

Goods and Services

Note:


• Brackets (.1 indicate deleted goods/services;


• 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


Class(es):


Basis: 1(b)

For: Oat-based vanilla sauce and oat based vanilla custard; oat-based ice cream


Class(es):


Basis: 1(b)

For: Oat-based natural energy drinks; oat-based breakfast drinks; oat-based fruit drink beverages; oat-based smoothie beverages


Class(es):


Basis: 1(b)


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





Malmo SWEDEN 21119


Where Organized:


Attorney of Record

Attorney Name: Karen Kreider Gaunt Docket Number: 109083-1

Attorney Primary karen.gauntAdinsmore.com

Email Address:



255 EAST FIFTH STREET, SUITE 1900


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:


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







NEW APPLICATION ENTERED IN TRAM


TM Attorney: MARTIN, CHRISTINE C

Current Location: INTENT TO USE SECTION


Law Office LAW OFFICE 104

Assigned:

File Location

Date in Location: Aug. 01, 2017

85324

Proceedings

Summary

Number of 1

Proceedings:



Number:



Attorney:

Defendant






Correspondent e- [email protected] , [email protected] , kerry.thompsonQbtlaw.com

mail:

Associated marks



Plaintiff(s)

Serial Registration

Number Number

87925673

Name: Oatly AB





Correspondent e- [email protected] , [email protected] , robin.bissantzadinsmore.com , christi ne.guggenheimer@,dinsmore.com

mail:

Associated marks


Registration

Number











Prosecution History







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 Date: Apr. 30, 2019

Publication Date: Feb. 12, 2019

Mark Information

Mark Literal OATLY

Elements:


Claim:


Type:

Translation: The wording ''OATLY" has no meaning in a foreign language.


I nternational 1393445Registration

Number:


Registration Date:

Goods and Services

Note:


• Brackets [..] indicate deleted goods/services:

• Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability: and


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):


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


Class(es):


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):


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):


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


Class(es):


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):


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


Class(es):


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


Class(es):


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


Class(es):


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;


Class Status:

Basis:

For:


Class Status:

Basis:

For:


Class Status:

Basis:

For:


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


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


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


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


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


Legal Entity Type: LIMITED LIABILITY COMPANY State or Country SWEDEN

Where Organized:


Attorney of Record



Name/Address: P.O. BOX 5117SE-200 71 MALMÖ

SWEDEN


RepresentativeName:

Fax: 513-977-8141

Correspondent


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




NOTIFICATION OF POSSIBLE OPPOSITION SENT TO 18

NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB




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








74221

May 14, 2018

May 11,2018


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


70029

Mar. 20, 2018

Mar. 20, 2018



81853

Mar. 16, 2018

Mar, 16, 2018

Mar. 15, 2018




81853



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:


Registration

Renewal Date:





File Location

Date in Location: Apr. 30, 2019

Proceedings

Summary

Number of 1

Proceedings:



Number:



Attorney:

Defendant






UNITED STATES

Correspondent e- trademarks-miAbtlaw.com , [email protected] , kerry.thompsonAbtlaw.com

mail:

Associated marks


Number Number


Plaintiff(s)

Name: Oatly AB





UNITED STATES

Correspondent e- karen.eauntadinsmore.com , goyindadayispdinsmore.com , robin.bissantzQdinsmore.com , [email protected]

mail:

Associated marks


Number Number











Prosecution History



2 NOTICE AND TRIAL DATES SENT; ANSWER DUE: Feb 26, 2019




Due Date

Apr 07, 2019


Mark: OATGURT


Register: Principal


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:


Claim:


Type:



RegistrationNumber:


Registration Date:

Goods and Services


• Brackets (.1 indicate deleted goods/services;


• 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


Class(es):


Basis: 66(a)

Filed Use: No

Filed ITU: No

Filed 44D: No

Filed 44E: No

Filed 66A: Yes


Currently Use: No

Currently ITU: No

Currently 44E: No

Currently 66A: Yes


Filed No Basis: No




SE-211 19 MalmöSWEDEN


Where Organized:


Correspondent KAREN KRIEDER GAUNT


255 E FIFTH ST STE 1900



RepresentativeName:

Fax: 513-977-8141


Correspondent


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


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




243827

Aug. 13, 2018

Aug. 03, 2018

Aug. 01, 2018

ASSIGNED TO LIE



69712

Aug. 01, 2018 EXAMINER'S AMENDMENT ENTERED88888

Aug. 01, 2018

Jul. 30, 2018

Jul. 30, 2018




81112

Jul, 30, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED88889

Jul. 30, 2018

Jul. 30, 2018

Feb. 16, 2018

Jan. 31, 2018




NON-FINAL ACTION MAILED REFUSAL SENT TO IB

88889

Jan. 31, 2018

Jan. 24, 2018


NON-FINAL ACTION (113 REFUSAL) PREPARED FOR REVIEW

73787

Jan. 23, 2018

Jan. 23, 2018



81112

Jan. 18, 2018

Jan. 18, 2018

Jan. 17, 2018




81112



Registration

Number:


Registration Date:

Priority Claimed Yes Date of Section 67 Jan. 26, 2017


Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Jan. 17, 2018


Status:

Notification of Jan. 11, 2018

Designation Date:




Date of Automatic Jul. 11, 2019

Protection:



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:



Number:

Status: Pending


Attorney:







Defendant

Correspondent e- [email protected] , bwalzabtlaw.com , kerry.thompson(abtlaw.com

mail:

Associated marks


Number Number


Plaintiff(s)

Name: Oatly AB





Correspondent e- [email protected] , [email protected] , [email protected] , [email protected]

mail:

Associated marks


Number Number





OAT-LYI Registered 79149322 4757998






Prosecution History





4 0 APPEARANCE / POWER OF ATTORNEY Apr 04, 2019



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


255 E FIFTH ST STE 1900


Correspondent e- [email protected] , [email protected] , christine.guggenheirner@dinsmore,com , michael.wheeler@d insmore.c

mail: om

Associated marks


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


Number Number

OATGURT Suspension Letter - Mailed 88055291

Prosecution History


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


Proceeding 91239763

Number:

Status: Terminated

Interlocutory JENNIFER KRISP

Attorney:

Name:

CorrespondentAddress:


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


Status Date: Apr 12, 2018

Defendant

Application Status

Abandoned - After Inter-Partes Decision

Plaintiff(s)

Serial

Number

87507029

Registration

Number


Associated marks

Mark

OATGURT

255 E 5TH STREET, SUITE 1900


karen.gauntadinsmore.com , robin.bissantzAdinsmore.com

Serial Registration

Number Number

79224787

Application Status

Opposition Pending

Prosecution History






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


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


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


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


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:


Claim:


Type:

Goods and Services

Note:


• Brackets (..1 indicate deleted goods/services;


• Asterisks *.." identify additional (new) wording in the goods/services.

For: Granola


Class(es):


Basis: 1(a)

First Use: Mar. 01, 2016

U.S Class(es): 046

Use in Commerce: Mar. 01, 2016


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


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 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:


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







NEW APPLICATION ENTERED I N TRAM



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


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


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