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 1963 (Rev 05/2006) |
OMB No. 0651-0055 (Exp 07/31/2018) |
Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark under Sections 8 & 9
The table below presents the data as entered.
Input Field
|
Entered
|
REGISTRATION NUMBER |
1382406 |
REGISTRATION DATE |
02/11/1986 |
SERIAL NUMBER |
73517769 |
MARK SECTION |
MARK |
CACHE |
ATTORNEY SECTION (current) |
NAME |
Henry B. Ward, III |
FIRM NAME |
Moore & Van Allen PLLC |
STREET |
100 North Tryon Street, Suite 4700 |
CITY |
Charlotte |
STATE |
North Carolina |
POSTAL CODE |
28202 |
COUNTRY |
United States |
PHONE |
704-331-1000 |
FAX |
704-331-1159 |
EMAIL |
hbw-ptotmcorrespondence@mvalaw.com |
AUTHORIZED TO COMMUNICATE VIA E-MAIL |
Yes |
ATTORNEY SECTION (proposed) |
NAME |
Henry B. Ward, III |
FIRM NAME |
Moore & Van Allen PLLC |
INTERNAL ADDRESS |
Suite 4700 |
STREET |
100 North Tryon Street |
CITY |
Charlotte |
STATE |
North Carolina |
POSTAL CODE |
28202 |
COUNTRY |
United States |
PHONE |
704-331-1000 |
FAX |
704-331-1159 |
EMAIL |
CLT-TMCorrespondence@mvalaw.com |
AUTHORIZED TO COMMUNICATE VIA E-MAIL |
Yes |
DOCKET/REFERENCE NUMBER |
001690.988 |
OTHER APPOINTED ATTORNEY |
Dickson M. Lupo, J. Mark Wilson, W. Kevin Ransom, Jim Edwards, Jeffrey Gray, Patrick Horne, Arlene D. Hanks, Ellen A. Rubel, F. Emmett
Weindruch, and Samantha N. Skains |
CORRESPONDENCE SECTION (current) |
NAME |
Henry B. Ward, III |
FIRM NAME |
Moore & Van Allen PLLC |
STREET |
100 North Tryon Street, Suite 4700 |
CITY |
Charlotte |
STATE |
North Carolina |
POSTAL CODE |
28202 |
COUNTRY |
United States |
PHONE |
704-331-1000 |
FAX |
704-331-1159 |
EMAIL |
hbw-ptotmcorrespondence@mvalaw.com |
AUTHORIZED TO COMMUNICATE VIA E-MAIL |
Yes |
CORRESPONDENCE SECTION (proposed) |
NAME |
Henry B. Ward, III |
FIRM NAME |
Moore & Van Allen PLLC |
INTERNAL ADDRESS |
Suite 4700 |
STREET |
100 North Tryon Street |
CITY |
Charlotte |
STATE |
North Carolina |
POSTAL CODE |
28202 |
COUNTRY |
United States |
PHONE |
704-331-1000 |
FAX |
704-331-1159 |
EMAIL |
CLT-TMCorrespondence@mvalaw.com |
AUTHORIZED TO COMMUNICATE VIA E-MAIL |
Yes |
DOCKET/REFERENCE NUMBER |
001690.988 |
GOODS AND/OR SERVICES SECTION |
INTERNATIONAL CLASS |
025 |
GOODS OR SERVICES |
LADIES' CLOTHING, NAMELY--SHIRTS, TOPS, PANTS, JACKETS, SUITS, DRESSES, BELTS, SHOES, SCARVES, SKIRTS, SKIRTS WITH COORDINATING TOPS, T-SHIRTS
AND COATS |
SPECIMEN FILE NAME(S) |
ORIGINAL PDF FILE |
SPN0-66194219253-20160810111922403925_._CACHE_No_Specimen_of_Use_Required.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\735\177\73517769\xml3\S890002.JPG |
SPECIMEN DESCRIPTION |
No specimen is being submitted because excusable nonuse is being claimed. |
EXCUSABLE NONUSE EXPLANATION |
According to the U.S. Patent and Trademark Office, a proper claim of excusable nonuse in a Section 8 Affidavit must include all of the
following information: (1) the date of last use of the mark; (2) details explaining the special circumstances excusing nonuse; (3) the steps being taken to resume use; and (4) the approximate date
when use is expected to resume. First, regarding the date of last use of the mark, on February 4, 2015, Cache, Inc., a Delaware corporation ("Cache, Inc."), filed a Petition in Bankruptcy in the
United States Bankruptcy Court for the District of Delaware ("Bankruptcy Court") pursuant to Chapter 11 of the United States Bankruptcy Code. During the bankruptcy proceedings, Cache, Inc. entered
into an Agency Agreement with Great American Group WF, LLC ("Great American") dated March 4, 2015, whereby Cache, Inc. sold all of its assets to Great American. On March 6, 2015, the Bankruptcy Court
approved the Agency Agreement pursuant to the Order Approving Sale of All or Substantially All of Debtors' Assets and Granting Related Relief. Accordingly, the date of last use of the CACHE mark was
on March 6, 2015. Second, regarding the details explaining the special circumstances excusing nonuse, according to the TMEP § 1604.11, it is not the intent of Section 8 of the Trademark Act "to
cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the owner of the registration." In order to demonstrate excusable nonuse,
Registrant must set forth sufficient facts to demonstrate that nonuse of the mark is due to special circumstances beyond the owner's control or "forced by outside causes," and is not due to any
intention to abandon the mark. In re Moorman Manufacturing Company, 203 U.S.P.Q. 712, 713 (Comm'r Pats. 1979). As stated in the TMEP § 1604.11, "[t]emporary nonuse due to the sale of business might
be considered excusable." Likewise, the United States District Court for the Southern District of New York has held that the temporary suspension of business due to bankruptcy does not abandon any
assignable rights in trademarks. Merry Hull and Company v. Hi-Line Co., 243 F. Supp. 45, 50-53, 146 USPQ 274 (S.D. N.Y. 1965); see also McCarthy on Trademarks and Unfair Competition § 18:28, 18-73.
As noted above, on February 4, 2015, Cache, Inc. filed a Petition in Bankruptcy pursuant to Chapter 11 of the United States Bankruptcy Code. During the bankruptcy proceedings, Cache, Inc. entered
into an Agency Agreement with Great American dated March 4, 2015, whereby Cache, Inc. sold all of its assets to Great American. On March 6, 2015, the Bankruptcy Court approved the Agency Agreement
pursuant to the Order Approving Sale of All or Substantially All of Debtors' Assets and Granting Related Relief. Registrant respectfully submits that the temporary forced suspension of use of the
CACHE mark due to the Petition in Bankruptcy filed by Cache, Inc. on February 4, 2015, and the sale of all or substantially all of Cache, Inc.'s assets pursuant to the Agency Agreement approved by
the Bankruptcy Court on March 6, 2015, pursuant to the Order Approving Sale of All or Substantially All of Debtors' Assets and Granting Related Relief, constitutes "special circumstances beyond the
owner's control" and excusable nonuse under Section 8(b)(2) of the Trademark Act (15 U.S.C. §1058(b)(2)). Third, regarding the steps being taken to resume use, The Cato Corporation ("Cato") is
presently engaged in the following activities: market research to determine the specific products and product designs to be offered in connection with the CACHE mark. Cato is also investigating
locations and capabilities for manufacturing products to be offered in connection with the CACHE, and consulting with a branding consultant. Additionally, Cato is developing a website to be hosted at
the domain name www.cache.com through which Cato intends to advertise, market, offer sale, promote, and sell products bearing the CACHE mark. Lastly, regarding the approximate date when use is
expected to resume, Cato intends to launch a fall 2016 CACHE product collection. Accordingly, Cato expects to resume use of the CACHE mark sometime between summer and fall of 2016. |
OWNER SECTION (current) |
NAME |
THE CATO CORPORATION |
STREET |
8100 DENMARK ROAD |
CITY |
CHARLOTTE |
STATE |
North Carolina |
ZIP/POSTAL CODE |
28273 |
COUNTRY |
United States |
LEGAL ENTITY SECTION (current) |
TYPE |
corporation |
STATE/COUNTRY OF INCORPORATION |
Delaware |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
NUMBER OF CLASSES PAID |
1 |
SUBTOTAL AMOUNT |
400 |
GRACE PERIOD |
200 |
TOTAL FEE PAID |
600 |
SIGNATURE SECTION |
SIGNATURE |
/Christin J. Reische/ |
SIGNATORY'S NAME |
Christin J. Reische |
SIGNATORY'S POSITION |
Vice President, General Counsel, Asst Secy |
DATE SIGNED |
08/10/2016 |
PAYMENT METHOD |
ET |
FILING INFORMATION |
SUBMIT DATE |
Wed Aug 10 11:59:01 EDT 2016 |
TEAS STAMP |
USPTO/S08N09-XX.XXX.XXX.X
XX-20160810115901827607-1
382406-5502ecec3956f0c2a7
dc837ec586f3e4253fdb52b1e
5a20767a1d36a268b2cb7-ET-
9118-20160810111922403925 |
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 1963 (Rev 05/2006) |
OMB No. 0651-0055 (Exp 07/31/2018) |
Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark under Sections 8 & 9
To the Commissioner for Trademarks:
REGISTRATION NUMBER: 1382406
REGISTRATION DATE: 02/11/1986
MARK: CACHE (see, )
The owner, THE CATO CORPORATION, a corporation of Delaware, having an address of
8100 DENMARK ROAD
CHARLOTTE, North Carolina 28273
United States
is filing a Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark under Sections 8 & 9.
For International Class 025, the mark is in use in commerce on or in connection with
all goods/services, or to indicate membership in the collective membership organization, listed in the
existing registration for this specific class: LADIES' CLOTHING, NAMELY--SHIRTS, TOPS, PANTS, JACKETS, SUITS, DRESSES, BELTS, SHOES, SCARVES, SKIRTS, SKIRTS WITH COORDINATING TOPS, T-SHIRTS AND COATS
; or, the owner is making the listed excusable nonuse claim.
The owner is submitting one(or more) specimen(s) showing the mark as used in commerce on or in connection with any item in this class, consisting of a(n) No specimen is being submitted because
excusable nonuse is being claimed..
Original PDF file:
SPN0-66194219253-20160810111922403925_._CACHE_No_Specimen_of_Use_Required.pdf
Converted PDF file(s) (1 page)
Specimen File1
The following explanation of excusable nonuse has been made of record: According to the U.S. Patent and Trademark Office, a proper claim of excusable nonuse in a Section 8 Affidavit must include all
of the following information: (1) the date of last use of the mark; (2) details explaining the special circumstances excusing nonuse; (3) the steps being taken to resume use; and (4) the approximate
date when use is expected to resume. First, regarding the date of last use of the mark, on February 4, 2015, Cache, Inc., a Delaware corporation ("Cache, Inc."), filed a Petition in Bankruptcy in the
United States Bankruptcy Court for the District of Delaware ("Bankruptcy Court") pursuant to Chapter 11 of the United States Bankruptcy Code. During the bankruptcy proceedings, Cache, Inc. entered
into an Agency Agreement with Great American Group WF, LLC ("Great American") dated March 4, 2015, whereby Cache, Inc. sold all of its assets to Great American. On March 6, 2015, the Bankruptcy Court
approved the Agency Agreement pursuant to the Order Approving Sale of All or Substantially All of Debtors' Assets and Granting Related Relief. Accordingly, the date of last use of the CACHE mark was
on March 6, 2015. Second, regarding the details explaining the special circumstances excusing nonuse, according to the TMEP § 1604.11, it is not the intent of Section 8 of the Trademark Act "to
cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the owner of the registration." In order to demonstrate excusable nonuse,
Registrant must set forth sufficient facts to demonstrate that nonuse of the mark is due to special circumstances beyond the owner's control or "forced by outside causes," and is not due to any
intention to abandon the mark. In re Moorman Manufacturing Company, 203 U.S.P.Q. 712, 713 (Comm'r Pats. 1979). As stated in the TMEP § 1604.11, "[t]emporary nonuse due to the sale of business might
be considered excusable." Likewise, the United States District Court for the Southern District of New York has held that the temporary suspension of business due to bankruptcy does not abandon any
assignable rights in trademarks. Merry Hull and Company v. Hi-Line Co., 243 F. Supp. 45, 50-53, 146 USPQ 274 (S.D. N.Y. 1965); see also McCarthy on Trademarks and Unfair Competition § 18:28, 18-73.
As noted above, on February 4, 2015, Cache, Inc. filed a Petition in Bankruptcy pursuant to Chapter 11 of the United States Bankruptcy Code. During the bankruptcy proceedings, Cache, Inc. entered
into an Agency Agreement with Great American dated March 4, 2015, whereby Cache, Inc. sold all of its assets to Great American. On March 6, 2015, the Bankruptcy Court approved the Agency Agreement
pursuant to the Order Approving Sale of All or Substantially All of Debtors' Assets and Granting Related Relief. Registrant respectfully submits that the temporary forced suspension of use of the
CACHE mark due to the Petition in Bankruptcy filed by Cache, Inc. on February 4, 2015, and the sale of all or substantially all of Cache, Inc.'s assets pursuant to the Agency Agreement approved by
the Bankruptcy Court on March 6, 2015, pursuant to the Order Approving Sale of All or Substantially All of Debtors' Assets and Granting Related Relief, constitutes "special circumstances beyond the
owner's control" and excusable nonuse under Section 8(b)(2) of the Trademark Act (15 U.S.C. §1058(b)(2)). Third, regarding the steps being taken to resume use, The Cato Corporation ("Cato") is
presently engaged in the following activities: market research to determine the specific products and product designs to be offered in connection with the CACHE mark. Cato is also investigating
locations and capabilities for manufacturing products to be offered in connection with the CACHE, and consulting with a branding consultant. Additionally, Cato is developing a website to be hosted at
the domain name www.cache.com through which Cato intends to advertise, market, offer sale, promote, and sell products bearing the CACHE mark. Lastly, regarding the approximate date when use is
expected to resume, Cato intends to launch a fall 2016 CACHE product collection. Accordingly, Cato expects to resume use of the CACHE mark sometime between summer and fall of 2016.
The registrant's current Attorney Information: Henry B. Ward, III of Moore & Van Allen PLLC
100 North Tryon Street, Suite 4700
Charlotte, North Carolina 28202
United States
The registrant's proposed Attorney Information: Henry B. Ward, III of Moore & Van Allen PLLC
Suite 4700
100 North Tryon Street
Charlotte, North Carolina 28202
United States
The docket/reference number is 001690.988.
The Other Appointed Attorney(s): Dickson M. Lupo, J. Mark Wilson, W. Kevin Ransom, Jim Edwards, Jeffrey Gray, Patrick Horne, Arlene D. Hanks, Ellen A. Rubel, F. Emmett Weindruch, and Samantha N.
Skains.
The phone number is 704-331-1000.
The fax number is 704-331-1159.
The email address is CLT-TMCorrespondence@mvalaw.com.
The registrant's current Correspondence Information: Henry B. Ward, III of Moore & Van Allen PLLC
100 North Tryon Street, Suite 4700
Charlotte, North Carolina 28202
United States
The registrant's proposed Correspondence Information: Henry B. Ward, III of Moore & Van Allen PLLC
Suite 4700
100 North Tryon Street
Charlotte, North Carolina 28202
United States
The docket/reference number is 001690.988.
The phone number is 704-331-1000.
The fax number is 704-331-1159.
The email address is CLT-TMCorrespondence@mvalaw.com.
A fee payment in the amount of $600 will be submitted with the form, representing payment for 1 class(es), plus any additional grace period fee, if necessary.
Declaration
Section 8: Declaration of Use and/or Excusable Nonuse in Commerce
Unless the owner has specifically claimed excusable nonuse, the mark is in use in commerce on or in connection with the goods/services, or to indicate membership in the collective membership
organization identified above, as evidenced by the attached specimen(s) showing the mark as used in commerce.
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 this submission, 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.
Section 9: Application for Renewal
The registrant requests that the registration be renewed for the goods/services/collective organization identified above.
Signature: /Christin J. Reische/ Date: 08/10/2016
Signatory's Name: Christin J. Reische
Signatory's Position: Vice President, General Counsel, Asst Secy
Mailing Address
(current):
Moore & Van Allen PLLC
100 North Tryon Street, Suite 4700
Charlotte, North Carolina 28202
Mailing Address
(proposed):
Moore & Van Allen PLLC
100 North Tryon Street
Charlotte, North Carolina 28202
Serial Number: 73517769
Internet Transmission Date: Wed Aug 10 11:59:01 EDT 2016
TEAS Stamp: USPTO/S08N09-XX.XXX.XXX.XXX-201608101159
01827607-1382406-5502ecec3956f0c2a7dc837
ec586f3e4253fdb52b1e5a20767a1d36a268b2cb
7-ET-9118-20160810111922403925