Global Format; No Form Number (Rev 8/2009)

OMB No. 0651-0054 (Exp. 09/30/2014)

Petition to Make Special

The table below presents the data as entered.

Input Field Entered

SERIAL NUMBER 85862083

REGISTRATION NUMBER

FORM TEXT

Commissioner for TrademarksP.O. Box 1451Alexandria, VA 22313-1451 Sir or Madam: Applicant, Olukai, LLC, hereby petitions the Director to advance the examination of the above-referenced application in accordance with 37 C.F.R. §2.146.  According to 37C.F.R. §2.146, applicant may request that the initial examination of an application be expedited based upon a statement of facts showing special action is justified.   In support ofthis petition, Pursuant to TMEP §1710, Applicant submits herewith the following statement of facts. 1.         In May, 2009, Olukai, LLC (“Applicant”) designed a unique element to a heelstay for footwear.   The heelstay design is both original and distinctive.  As the originaldesigner this design element (the “Mark”) is proprietary to Applicant.   See Exhibit 1A, an original drawing prepared for a Fall 2007 launch date and Exhibit 1B, photograph ofApplicant’s product showing the Mark. 2.         On February 27, 2013, Applicant submitted a trade dress application for the Mark to the U.S. Patent and Trademark Office (“USPTO”).   The USPTO assigned theapplication serial number 85/862,083.  3.         Based on the length of time and continuous use of the Mark by Applicant, the Mark is associated with Applicant’s product in the minds of consumers.   Applicant’s date offirst use is June, 2008, and date of first use in commerce is August 28, 2008.  Evidence of Applicant’s long and continuous use is supported by the volume of sales of productsincorporating the Mark. 4.         Applicant has evidence of actual infringement by Hush Puppies, a brand owned by Wolverine World Wide, Inc.  See Exhibit 2, a page from a current Hush Puppies catalog,and Exhibit 3, copies of pages from Hush Puppies’ website located at http://www.hushpuppies.com/US/en/FiveCollection-Men-sFiveCollection, both showing the infringingproducts.  It appears that Hush Puppies is offering an entire line of footwear featuring the Mark. 5.         Applicant has evidence of actual infringement by Patagonia, Inc. for a pair of men’s footwear.   The shoes are currently being sold under the name “Patagonia Men's MauiWoolzy Fold” and are available on Patagonia, Inc.’s website located at http://www.patagonia.com/us/product/mens-maui-woolzy-fold-shoe?p=78572-0-666.  See Exhibit 4, a pagefrom the website. 

6.         Applicant has evidence of actual infringement by Sperry Top-Sider, LLC, which is a part of the Wolverine Worldwide, Inc. family of companies, for a pair of men’sfootwear.  The shoes are currently being sold under the name “Men's Cloud Logo Woven Boat Oxford” and are available on Sperry Top-Sider, LLC’s website located athttp://www.sperrytopsider.com/store/SiteController/sperry/productdetails?stockNumber=0286799&showDefaultOption=true&skuId=***7********0286799*M110&productId=7-142350&searched=true.  See Exhibit 5, website pages. 7.         Applicant has evidence of potential infringement by Acorn Products, a division of totes Isotoner Corporation.  See Exhibit 6, photograph obtained by Applicant. 8.         Applicant has evidence of actual infringement by Vince Apparel, a Kellwood Company, for a pair of women’s footwear.   The shoes are currently being sold under thename Kia Suede Slip-On” and are available on its website located at http://www.vince.com/kia-suede-slip-on-/invt/vnb7940l4/&bklist.  See Exhibit 7, a website page. Based on the evidence of actual infringement, Applicant respectfully requests that the Director grant this petition to make special.  In accordance with 37 C.F.R. §2.6, the requiredpetition fee of $100 is being submitted electronically herewith.  

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PAYMENT SECTION

NUMBER OF CLASSES 1

FEE PER CLASS 100

TOTAL FEES DUE 100

SIGNATURE SECTION

DECLARATION SIGNATURE /Julianne R. Davis/

SIGNATORY'S NAME Julianne R. Davis

SIGNATORY'S POSITION Attorney of record, Oregon bar member

SIGNATORY'S PHONE NUMBER 503.778.2118

DATE SIGNED 03/18/2013

SUBMISSION SIGNATURE /Julianne R. Davis/

SIGNATORY'S NAME Julianne R. Davis

SIGNATORY'S POSITION Attorney of Record, Oregon State Bar Member

SIGNATORY'S PHONE NUMBER 503.778.2118

DATE SIGNED 03/18/2013

AUTHORIZED SIGNATORY YES

FILING INFORMATION SECTION

TEAS STAMP

USPTO/PMS-10.112.151.172-20130319175007038272-85862083-20130315123817325937-CC-3398-20130315123817325937

Global Format; No Form Number (Rev 8/2009)

OMB No. 0651-0054 (Exp. 09/30/2014)

Petition to Make SpecialTo the Commissioner for Trademarks:

The following is submitted for application serial number. 85862083 :

FORM INFORMATION

Commissioner for TrademarksP.O. Box 1451Alexandria, VA 22313-1451 Sir or Madam: Applicant, Olukai, LLC, hereby petitions the Director to advance the examination of theabove-referenced application in accordance with 37 C.F.R. §2.146.  According to 37 C.F.R.§2.146, applicant may request that the initial examination of an application be expedited basedupon a statement of facts showing special action is justified.   In support of this petition,Pursuant to TMEP §1710, Applicant submits herewith the following statement of facts. 1.         In May, 2009, Olukai, LLC (“Applicant”) designed a unique element to a heelstay forfootwear.  The heelstay design is both original and distinctive.  As the original designer thisdesign element (the “Mark”) is proprietary to Applicant.   See Exhibit 1A, an original drawing

prepared for a Fall 2007 launch date and Exhibit 1B, photograph of Applicant’s productshowing the Mark. 2.         On February 27, 2013, Applicant submitted a trade dress application for the Mark tothe U.S. Patent and Trademark Office (“USPTO”).   The USPTO assigned the applicationserial number 85/862,083.  3.         Based on the length of time and continuous use of the Mark by Applicant, the Mark isassociated with Applicant’s product in the minds of consumers.   Applicant’s date of first useis June, 2008, and date of first use in commerce is August 28, 2008.  Evidence of Applicant’slong and continuous use is supported by the volume of sales of products incorporating theMark. 4.         Applicant has evidence of actual infringement by Hush Puppies, a brand owned byWolverine World Wide, Inc.  See Exhibit 2, a page from a current Hush Puppies catalog, andExhibit 3, copies of pages from Hush Puppies’ website located athttp://www.hushpuppies.com/US/en/FiveCollection-Men-sFiveCollection, both showing theinfringing products.  It appears that Hush Puppies is offering an entire line of footwearfeaturing the Mark. 5.         Applicant has evidence of actual infringement by Patagonia, Inc. for a pair of men’sfootwear.  The shoes are currently being sold under the name “Patagonia Men's Maui WoolzyFold” and are available on Patagonia, Inc.’s website located athttp://www.patagonia.com/us/product/mens-maui-woolzy-fold-shoe?p=78572-0-666.  SeeExhibit 4, a page from the website. 6.         Applicant has evidence of actual infringement by Sperry Top-Sider, LLC, which is apart of the Wolverine Worldwide, Inc. family of companies, for a pair of men’s footwear.  The shoes are currently being sold under the name “Men's Cloud Logo Woven Boat Oxford”and are available on Sperry Top-Sider, LLC’s website located athttp://www.sperrytopsider.com/store/SiteController/sperry/productdetails?stockNumber=0286799&showDefaultOption=true&skuId=***7********0286799*M110&productId=7-142350&searched=true.  See Exhibit 5, website pages. 7.         Applicant has evidence of potential infringement by Acorn Products, a division of totesIsotoner Corporation.  See Exhibit 6, photograph obtained by Applicant. 8.         Applicant has evidence of actual infringement by Vince Apparel, a KellwoodCompany, for a pair of women’s footwear.   The shoes are currently being sold under thename Kia Suede Slip-On” and are available on its website located athttp://www.vince.com/kia-suede-slip-on-/invt/vnb7940l4/&bklist.  See Exhibit 7, a websitepage. Based on the evidence of actual infringement, Applicant respectfully requests that the Directorgrant this petition to make special.  In accordance with 37 C.F.R. §2.6, the required petition

fee of $100 is being submitted electronically herewith.  

FORM FILE NAME(S)

Form File1Form File2Form File3Form File4Form File5Form File6Form File7Form File8Form File9Form File10Form File11

FEE(S)Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)Declaration SignatureThe undersigned being hereby warned that willful false statements and the like so made are punishable byfine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements mayjeopardize the validity of the application or any resulting registration, declares that the facts set forthabove are true; all statements made of his/her own knowledge are true; and all statements made oninformation and belief are believed to be true.

Signature: /Julianne R. Davis/      Date: 03/18/2013Signatory's Name: Julianne R. DavisSignatory's Position: Attorney of record, Oregon bar memberSignatory's Phone Number: 503.778.2118

Submission SignatureSignature: /Julianne R. Davis/     Date: 03/18/2013Signatory's Name: Julianne R. DavisSignatory's Position: Attorney of Record, Oregon State Bar MemberSignatory's Phone Number: 503.778.2118

        

RAM Sale Number: 3398RAM Accounting Date: 03/20/2013        

Serial Number: 85862083Internet Transmission Date:TEAS Stamp: USPTO/PMS-10.112.151.172-20130319175007038272-85862083-20130315123817325937-CC-3398-20130315123817325937