Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA673156
`ESTTA Tracking number:
`05/19/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`85779347
`Johnson Outdoors Inc.
`JOHNSON OUTDOORS
`ANDREW J HEINISCH
`REINHART BOERNER VAN DEUREN PC
`2215 PERRYGREEN WAY
`ROCKFORD, IL 61107-6811
`UNITED STATES
`rockmail@reinhartlaw.com
`Applicants Request for Remand and Amendment
`Johnson Outdoors Motion to Remand.pdf(20572 bytes )
`Daniel E. Kattman
`tmadmin@reinhartlaw.com
`/dek/
`05/19/2015
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`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
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`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
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`In re:
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`Serial No.: 85779347
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`Applicant: Johnson Outdoors Inc.
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`Filing Date: November 14, 2012
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`Mark: JOHNSON OUTDOORS
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`MOTION TO REMAND AND REQUEST FOR SUSPENSION; ALTERNATIVE
`MOTION TO EXTEND APPLICANT'S TIME TO FILE ITS APPEAL BRIEF AND
`STRIKE EVIDENCE CONTAINED IN THE EXAMINING ATTORNEY'S FINAL
`OFFICE ACTION
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`Applicant hereby requests that the Board remand this case to the Examining Attorney and
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`suspend the Ex-Parte Appeal pending Applicant's response to the Final Office Action dated
`January 5, 2015 and the Examining Attorney's decision relating to such response.
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`In the alternative, if the Board refuses to remand the case back to the Examining
`Attorney, Applicant requests that the Board grant Applicant a sixty (60) day extension of time to
`file its Appeal Brief; and Applicant requests that the Board strike all evidence and arguments
`contained in the Examining Attorney's Final Office Action dated January 5, 2015 from the
`record; or issue an order preventing the Examining Attorney from relying on such evidence and
`arguments in the Examining Attorney's reply brief.
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`Respectfully submitted,
`
`By:___/dek/__________________________
`Daniel E. Kattman
`Attorney for Applicant
`Reinhart Boerner Van Deuren s.c.
`1000 North Water Street, Suite 1900
`Milwaukee, WI 53202
`(414) 298-8185
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`Date: May 19, 2015
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`DKATTMAN/30596101
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re:
`
`Serial No.: 85779347
`
`Applicant: Johnson Outdoors Inc.
`
`Filing Date: November 14, 2012
`
`Mark: JOHNSON OUTDOORS
`
`
`
`BRIEF IN SUPPORT OF MOTION TO REMAND AND REQUEST FOR SUSPENSION;
`ALTERNATIVE MOTION TO EXTEND APPLICANT'S TIME TO FILE ITS APPEAL
`BRIEF AND STRIKE EVIDENCE CONTAINED IN THE EXAMINING ATTORNEY'S
`FINAL OFFICE ACTION
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`In support of Applicant's Motion, Applicant submits the following facts and arguments:
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`On June 2, 2014, the Examining Attorney issued a Non-Final Office Action. The June 2,
`2014 Office Action states that Applicant had raised new issues with respect to acceptable
`descriptions of goods and services for International Classes 8, 14 and 25. The Office Action
`does not indicate that the Examining Attorney's Section 2(d) objections are made final.
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`Applicant then submitted a response to the June 2, 2014 Office Action on December 2,
`2014.
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`In response to the Applicant's December 2, 2014 response, the Examining Attorney
`issued a Final Office Action on January 5, 2015.
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`This Final Office Action indicated that the only remaining issues were as follows:
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`"For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now
`made FINAL with respect to U.S. Registration No(s). 0233698, 0519909, 1277753,
`0966416, 3945988, and 3459897."
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` and
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`"The requirement for an acceptable identification is now made FINAL for the reasons set
`forth below."
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`DKATTMAN/30596101
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`2
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`Along with the Examining Attorney's Final Office Action dated January 5, 2015, the
`Examining Attorney included NEW evidence and NEW arguments not previously provided in
`the Examining Attorney's previous Office Actions that pertain to the Examining Attorney's
`Section 2(d) refusal.
`
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`Notwithstanding Applicant's six (6) month deadline to file a response to the Examining
`Attorney's Final Office Action of January, 5, 2015, on March 20, 2015, the TTAB issued a letter
`indicating that the appeal is resumed.
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`Applicant believes that the TTAB's decision to resume the Ex-Parte Appeal is in error
`because the Examining Attorney has not submitted a denial of Applicant's Request for
`Reconsideration; and Applicant is entitled to respond to the new arguments and new evidence
`contained in the Examining Attorney's Final Office Action dated January 5, 2015.
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`Additionally, Applicant is entitled to respond to the Examining Attorney's final refusal
`with respect to Applicant's description of goods and services, which were amended in
`Applicant's December 2, 2014 response.
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`As further support, Applicant will be prejudiced if it is not able to file a response to the
`January 5, 2015 Final Office Action because Applicant cannot submit evidence during the Ex-
`Parte Appeal in response to the Examining Attorney's new arguments and evidence contained in
`the January 5, 2015 Final Office Action. Additionally, Applicant should be allowed to amend its
`description of goods and services in response to a final office action, which were only made final
`in the Examining Attorney's January 5, 2015 Final Office Action.
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`Therefore, Applicant requests that the Board remand this case back to the Examining
`Attorney and allow Applicant to file a response to the January 5, 2015 Final Office Action.
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`Alternatively, if the Board determines that Applicant is not entitled to response to the
`January 5, 2015 Final Office Action, the Board must strike any evidence and arguments
`contained in the Examining Attorney's January 5, 2015 Final Office Action because Applicant
`will not be entitled to refute or provide its own evidence during the Ex-Parte Appeal in response
`to the Examining Attorney's new arguments and new evidence contained in the January 5, 2015
`Final Office Action.
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`Respectfully submitted,
`
`By:___/dek/__________________________
`Daniel E. Kattman
`Attorney for Applicant
`Reinhart Boerner Van Deuren s.c.
`1000 North Water Street, Suite 1900
`Milwaukee, WI 53202
`(414) 298-8185
`
`
`
`Date: May 19, 2015
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`DKATTMAN/30596101
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