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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79285885 XVIDEOS(Standard Characters, see http://uspto.report/TM/79285885/mark.png) has been amended as follows:

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

Please see the Response attached as a PDF to the Evidence Section. Thank you.

EVIDENCE
Evidence has been attached: Response to Office Action
Original PDF file:
evi_45921214-202012221402 51554458_._XVideos_Respon se.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 003 for Beauty care cosmetics; soaps; perfumery; essential oils; cosmetic massage gels, fluids and oils for enhancing sexual stimulation
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: Beauty care cosmetics; soaps; cosmetic soaps; perfumery; essential oils; cosmetic massage gels, fluids and oils for enhancing sexual stimulation; non-medicated stimulating cosmetic massage gels, fluids and oils for personal use on and care of intimate parts of the bodyClass 003 for Beauty care cosmetics; cosmetic soaps; perfumery; essential oils; non-medicated stimulating cosmetic massage gels, fluids and oils for personal use on and care of intimate parts of the body

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 005 for Pharmaceutical preparations; disinfectants; healthcare products [medicinal]; potency preparations; deodorants not for personal use; medical sexual aids; lubricant gel; orgasm creams; orgasm sprays; orgasm gels; aphrodisiacs; personal sexual lubricating oils; contraceptives being creams and suppositories; preparations for physical invigoration and for increasing potency
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: Pharmaceutical preparations; Pharmaceutical preparations for the treatment of sexual dysfunction; Pharmaceutical preparations for enhancing sexual performance; healthcare products [medicinal]; disinfectants; potency preparations; health care products, namely, medicinal herbal preparations, medicinal oils, medicinal tea; deodorants not for personal use; potency-enhancing preparations being pharmaceutical preparations for enhancing sexual arousal; medical sexual aids; potency-enhancing dietary, Vitamin and nutritional supplements; lubricant gel; household deodorants; medical sexual aids being pharmaceutical preparations for enhancing sexual arousal; orgasm sprays; lubricant gel being gels for use as personal lubricant; orgasm gels; orgasm creams; aphrodisiacs; orgasm sprays and orgasm gels being topical preparations for enhancing sexual arousal; personal sexual lubricating oils; aphrodisiacs in the nature of sexual stimulant gels, sprays, and creams; contraceptives being creams and suppositories; personal sexual lubricating oils being personal sexual lubricants; preparations for physical invigoration and for increasing potency; contraceptive preparations in the nature of creams and suppositories; pharmaceutical preparations for increasing physical sexual invigoration and for increasing sexual potencyClass 005 for Pharmaceutical preparations for the treatment of sexual dysfunction; Pharmaceutical preparations for enhancing sexual performance; disinfectants; health care products, namely, medicinal herbal preparations, medicinal oils, medicinal tea; potency-enhancing preparations being pharmaceutical preparations for enhancing sexual arousal; potency-enhancing dietary, Vitamin and nutritional supplements; household deodorants; medical sexual aids being pharmaceutical preparations for enhancing sexual arousal; lubricant gel being gels for use as personal lubricant; orgasm creams; orgasm sprays and orgasm gels being topical preparations for enhancing sexual arousal; aphrodisiacs in the nature of sexual stimulant gels, sprays, and creams; personal sexual lubricating oils being personal sexual lubricants; contraceptive preparations in the nature of creams and suppositories; pharmaceutical preparations for increasing physical sexual invigoration and for increasing sexual potency

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 010 for Vibro-massagers; hygienic rubber goods; condoms; sexual aids and preparations for increasing sexual stimulation; massage apparatus for beauty care; mechanical contraceptives; erotic articles for immediate application to the body; massage apparatus; functioning representations of human body parts and sex organs; love bullets; dildos; penis rings
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: Vibro-massagers; Vibro-massagers being massage apparatus; hygienic rubber goods; hygienic rubber goods being contraceptive apparatus; condoms; sexual aids and preparations for increasing sexual stimulation; adult sexual stimulation aids for increasing sexual stimulation, namely, artificial penises, penis enlargers, vibrators, benwa balls, artificial vaginas; massage apparatus for beauty care; mechanical contraceptives; mechanical contraceptive apparatus; erotic articles for immediate application to the body; erotic articles for immediate application to the body being adult sexual stimulation aids, namely, functioning representations of human body parts and sex organs, bullet-shaped vibrators, dildos, and penis rings; massage apparatus; functioning representations of human body parts and sex organs; love bullets; dildos; penis ringsClass 010 for Vibro-massagers being massage apparatus; hygienic rubber goods being contraceptive apparatus; condoms; adult sexual stimulation aids for increasing sexual stimulation, namely, artificial penises, penis enlargers, vibrators, benwa balls, artificial vaginas; massage apparatus for beauty care; mechanical contraceptive apparatus; erotic articles for immediate application to the body being adult sexual stimulation aids, namely, functioning representations of human body parts and sex organs, bullet-shaped vibrators, dildos, and penis rings

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 025 for Clothing; sexy underwear; intimate wear; clothing of lacquer, leather and imitations of leather; footwear for women; men's shoes; headgear; bodysuits; ladies' underwear; men's underwear
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: Clothing; Clothing, namely, lingerie, hosiery, stockings, garters, brassieres, panties, shirts, jackets, pants, shorts, skirts, dresses, slippers, footwear, hats, socks; sexy underwear; intimate wear; intimate wear, namely, hosiery, stockings, garters, brassieres, panties, shirts, jackets, pants, shorts, skirts, dresses, slippers, footwear, hats, socks; clothing of lacquer, leather and imitations of leather; clothing of lacquer, leather and imitations of leather, namely, lingerie, hosiery, stockings, garters, brassieres, panties, shirts, jackets, pants, shorts, skirts, dresses, slippers, footwear, hats, socks; footwear for women; men's shoes; headgear; headgear being headwear; bodysuits; ladies' underwear; men's underwearClass 025 for Clothing, namely, lingerie, hosiery, stockings, garters, brassieres, panties, shirts, jackets, pants, shorts, skirts, dresses, slippers, footwear, hats, socks; sexy underwear; intimate wear, namely, hosiery, stockings, garters, brassieres, panties, shirts, jackets, pants, shorts, skirts, dresses, slippers, footwear, hats, socks; clothing of lacquer, leather and imitations of leather, namely, lingerie, hosiery, stockings, garters, brassieres, panties, shirts, jackets, pants, shorts, skirts, dresses, slippers, footwear, hats, socks; footwear for women; men's shoes; headgear being headwear; bodysuits; ladies' underwear; men's underwear

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: WebGroup Czech Republic, a.s., a limited liability company legally organized under the laws of Czech Republic
Proposed: WebGroup Czech Republic, a.s., a limited liability company legally organized under the laws of Czech Republic
      Email Address: XXXX

ADDITIONAL STATEMENTS
SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
As to Class 41, the mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 4341707 and 5198416


The owner's/holder's proposed attorney information: Anne F. Downey. Other appointed attorneys are Kimberly I. Shimomura, Brian B. Shaw, Rowland Richards. Anne F. Downey of Harter Secrest & Emery LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Suite 1000
      50 Fountain Plaza
      Buffalo, New York 14202
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 102993.34.
      The phone number is 7168443768.
      The email address is adowney@hselaw.com

Anne F. Downey submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      FRKELLY
Correspondence Information (proposed):
      Anne F. Downey
      PRIMARY EMAIL FOR CORRESPONDENCE: adowney@hselaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademark@hselaw.com

The docket/reference number is 102993.34.

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)
Declaration Signature

DECLARATION: 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, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /afd/      Date: 12/22/2020
Signatory's Name: Anne F. Downey
Signatory's Position: applicant's attorney, licensed in NY
Signatory's Phone Number: 7168443768


Response Signature
Signature: /afd/     Date: 12/22/2020
Signatory's Name: Anne F. Downey
Signatory's Position: applicant's attorney, licensed in NY

Signatory's Phone Number: 7168443768

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:    FRKELLY
   
   
   27 Clyde Road, Ballsbridge
   Dublin 4,
Mailing Address:    Anne F. Downey
   Harter Secrest & Emery LLP
   Suite 1000
   50 Fountain Plaza
   Buffalo, New York 14202
        
Serial Number: 79285885
Internet Transmission Date: Tue Dec 22 14:18:16 ET 2020
TEAS Stamp: USPTO/ROA-X.XX.XXX.XX-202012221418163905
47-79285885-75024ce3eb2f5776a544811e6a6a
96313383809343d5c86de1485f9962872fe067-N
/A-N/A-20201222140251554458