Response to Office Action

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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79276500 ONLYFANS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7927650 0/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The office action states that Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2320066, 5769267, and 5769268 .

With respect to U.S. Registration No. 2320066, applicant respectfully submits that in view of the amendment of services in Classes 35, 38 and 41, in particular, deleting services related to sporting and fitness, excluding services covered by the cited registration as well as specifying entertainment services in Class 41 should be sufficient to overcome this citation.

As to prior U.S. Registration Nos. 5769267 and 5769268, applicant claims ownership of these registrations.

In view of the foregoing, applicant respectfully requests that Section 2(d) refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software for enabling transmission of photographs; computer software for the collection, organizing, transmission, storage and sharing of data and information; computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; computer software platforms
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Downloadable computer software for enabling transmission of photographs; computer software for the collection, organizing, transmission, storage and sharing of data and information; downloadable computer software for the collection, organizing, transmission, storage and sharing of data and information; computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; downloadable computer software which facilitates online access services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; computer software platforms; downloadable computer software platforms for application development and database managementClass 009 for Downloadable computer software for enabling transmission of photographs; downloadable computer software for the collection, organizing, transmission, storage and sharing of data and information; downloadable computer software which facilitates online access services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; downloadable computer software to enable uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; downloadable computer software platforms for application development and database management

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 035 for Online subscription services for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for sporting, fitness and entertainment purposes
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Online subscription services for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for sporting, fitness and entertainment purposes; Online subscription services, namely, arranging subscriptions of the online publications of others for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for entertainment purposes, excluding providing athletic information by computer by means of a global computer networkClass 035 for Online subscription services, namely, arranging subscriptions of the online publications of others for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for entertainment purposes, excluding providing athletic information by computer by means of a global computer network

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 038 for Telecommunications; providing access to interactive communication services (blogs); providing Internet chatrooms; telecommunications services, namely, electronic transmission of data, messages, graphics, images and information; peer-to-peer photo sharing services, namely, electronic transmission of digital photo files among internet users; providing access to computer, electronic and online databases; providing online forums for communication on topics of user interest; providing online chat rooms and electronic bulletin boards; broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, messages, graphics, and images; photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audio visual content and data among internet and mobile device users; electronic exchange of messages via chat lines, chatrooms and Internet forums; video-on-demand transmission services; video broadcasting; providing access to a web site that gives users the ability to upload photographs
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Telecommunications; Telecommunication consultation services; providing access to interactive communication services (blogs); providing access to interactive communication blog websites on the Internet; providing Internet chatrooms; telecommunications services, namely, electronic transmission of data, messages, graphics, images and information; telecommunications services, namely, electronic transmission of data, messages, graphics, images and information by electronic networks; peer-to-peer photo sharing services, namely, electronic transmission of digital photo files among internet users; providing access to computer, electronic and online databases; providing online forums for communication on topics of user interest; providing online chat rooms and electronic bulletin boards; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, messages, graphics, and images; Internet broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, messages, graphics, and images; photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audio visual content and data among internet and mobile device users; electronic exchange of messages via chat lines, chatrooms and Internet forums; electronic exchange of messages being electronic message transmission via chat lines, chatrooms and Internet forums; video-on-demand transmission services; video broadcasting; providing access to a web site that gives users the ability to upload photographs; providing telecommunication internet access to a web site that gives users the ability to upload photographs, excluding providing athletic information by computer by means of a global computer networkClass 038 for Telecommunication consultation services; providing access to interactive communication blog websites on the Internet; providing Internet chatrooms; telecommunications services, namely, electronic transmission of data, messages, graphics, images and information by electronic networks; peer-to-peer photo sharing services, namely, electronic transmission of digital photo files among internet users; providing access to computer, electronic and online databases; providing online forums for communication on topics of user interest; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; Internet broadcasting services over computer or other communication networks namely, uploading, posting, displaying, tagging, and electronically transmitting data, information, messages, graphics, and images; photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audio visual content and data among internet and mobile device users; electronic exchange of messages being electronic message transmission via chat lines, chatrooms and Internet forums; video-on-demand transmission services; video broadcasting; providing telecommunication internet access to a web site that gives users the ability to upload photographs, excluding providing athletic information by computer by means of a global computer network

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 041 for Providing entertainment services, namely, providing entertainment services featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network; providing entertainment services in the fields of social and community interest groups, specifically sporting, fitness and entertainment community interest groups through computers or electronic and online databases; publication of electronic journals and web logs featuring user generated or specified content in relation to sporting, fitness and entertainment purposes; electronic publishing services for others
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Providing entertainment services, namely, providing entertainment services featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network; Providing entertainment services, namely, providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network in the field of adult entertainment; providing entertainment services in the fields of social and community interest groups, specifically sporting, fitness and entertainment community interest groups through computers or electronic and online databases; providing entertainment services in the fields of social and community interest groups, specifically entertainment community interest groups through computers or electronic and online databases, namely, providing an online computer database featuring information regarding eservice; publication of electronic journals and web logs featuring user generated or specified content in relation to sporting, fitness and entertainment purposes; publication of electronic journals and web logs featuring user generated or specified content in relation to entertainment purposes; electronic publishing services for others; electronic publishing services for others, namely, publication of text and graphic works on CD, DVD, on-line in the field of adult entertainment, excluding providing athletic information by computer by means of a global computer networkClass 041 for Providing entertainment services, namely, providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and text through a website and via a global computer network in the field of adult entertainment; providing entertainment services in the fields of social and community interest groups, specifically entertainment community interest groups through computers or electronic and online databases, namely, providing an online computer database featuring information regarding eservice; publication of electronic journals and web logs featuring user generated or specified content in relation to entertainment purposes; electronic publishing services for others, namely, publication of text and graphic works on CD, DVD, on-line in the field of adult entertainment, excluding providing athletic information by computer by means of a global computer network

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following:

Current:
Class 042 for Technical support services, namely, providing help desk services in the field of computer software, namely, providing users with instructions and advice on the use of downloadable computer software, provided online and via e-mail; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts; online providing of non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; providing online non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; updating of Internet pages; software design services; design of computer systems; installation and maintenance of software for Internet access; rental and maintenance of memory space for websites, for others (hosting); providing or rental of electronic memory space on the Internet (web space)
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.


Proposed:

Tracked Text Description: Technical support services, namely, providing help desk services in the field of computer software, namely, providing users with instructions and advice on the use of downloadable computer software, provided online and via e-mail; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts; online providing of non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; providing online non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; updating of Internet pages; updating of Internet webpages for others; software design services; design of computer systems; installation and maintenance of software for Internet access; installation and maintenance of computer software for Internet access; rental and maintenance of memory space for websites, for others (hosting); rental and maintenance of server memory space and server hosting for websites, for others; providing or rental of electronic memory space on the Internet (web space); providing or rental of electronic server memory space on the InternetClass 042 for Technical support services, namely, providing help desk services in the field of computer software, namely, providing users with instructions and advice on the use of downloadable computer software, provided online and via e-mail; computer services, namely, providing an interactive website featuring technology that allows users to manage their online photograph and social networking accounts; online providing of non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; providing online non-downloadable software for displaying and sharing user location data, photographs and images, and for searching for and locating other users and places and interacting therewith; updating of Internet webpages for others; software design services; design of computer systems; installation and maintenance of computer software for Internet access; rental and maintenance of server memory space and server hosting for websites, for others; providing or rental of electronic server memory space on the Internet

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Fenix International Limited a(n)       Email Address: XXXX

Proposed: Fenix International Limited, a corporation of England
      Email Address: XXXX

ADDITIONAL STATEMENTS
Color Claim
The color(s) balck and blue is/are claimed as a feature of the mark.

Description of mark
The mark consists of the wording "ONLYFANS" with the word portion "ONLY" in black and the word portion "FANS" in blue. Within the letter "O" is a blue lock design. The color white in the mark is background only and is not being claimed as a feature of the mark.

Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5769267 and 5769268.

Correspondence Information (current):
      Jan Tamulewicz
      PRIMARY EMAIL FOR CORRESPONDENCE: jan.tamulewicz@katten.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 389932/00025.
Correspondence Information (proposed):
      Jan Tamulewicz
      PRIMARY EMAIL FOR CORRESPONDENCE: jan.tamulewicz@katten.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): julie.libal@katten.com

The docket/reference number is 389932/00025.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Jan Tamulewicz/     Date: 09/01/2020
Signatory's Name: Jan Tamulewicz
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-940-8673

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Jan Tamulewicz
   Katten Muchin Rosenman LLP
   
   575 Madison Avenue
   New York, New York 10022-2585
Mailing Address:    Jan Tamulewicz
   Katten Muchin Rosenman LLP
   575 Madison Avenue
   New York, New York 10022-2585
        
Serial Number: 79276500
Internet Transmission Date: Tue Sep 01 17:50:52 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020090117505253
6577-79276500-750bc2bf199d9a4b0a82648bee
74163a3957b849f2b9d77bb7cf3d76fef18917aa
-N/A-N/A-20200901172914494651