Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79332890 >_START (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7933289 0/large) has been amended as follows:

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

In response to the substantive refusals based on likelihood of confusion Applicant is making substantial amendments to the identification of goods and services in classes 16, 25 and 41 the effect of which will mean that in most cases there is no likelihood of confusion any longer, if there was to begin with, as there is no overlap between the goods and services. In class 16, the amended identification of goods is different from the identification of goods for registrations nos. 3272099 and 5255925. In class 41, the identification of services means that there is no longer any clash with registration nos. 4678885 and 5255925.

In class 25, the amended identification of goods does not distinguish the application from the identification of goods for registration 6082253 but the respective marks of the application and the registration 6082253 are themselves capable of being distinguished and these are not marks that in comparison would be confused. Although the respective marks contain the element START they are each independently distinctive marks because of the other elements that they contain and those distinguishing elements are sufficient for the marks not to be regarded as likely to confuse. A similar situation pertains in class 41 in relation to registration 5957619 where the mark that is cited is substantially different from the application and is of sufficient difference that there would not be confusion arising. Both marks relate to services in the field of art and each of them represents a play on the term Art but an entirely different play on the term such that the respective marks would not be regarded as confusingly similar to one another.

Insofar as the prior filed application 90029125 is concerned, the amendment that has been made to the identification of services in class 41 renders that mark and the application sufficiently different.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for Cardboard and goods made from these materials; books; catalogues; monographs; bulletins; periodicals; newspapers; book-binding material; photographs; paintings; lithographs; engravings; giclee prints; prints; stationery; calendars; posters; bookmarks; notebooks; greetings cards; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters; packaging materials; printing blocks; printed publications; children's paint-boxes; cheque book holders
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: Cardboard and goods made from these materials; Printed books in the field of art; books; printed catalogues in the field of art; catalogues; printed monographs in the field of art; monographs; printed periodicals in the field of art; bulletins; printed photographs; periodicals; paintings; newspapers; lithographs; book-binding material; engravings; photographs; giclee prints; art prints; printed posters; bookmarks; printed greetings cards; prints; artists materials, namely, modeling clay, easels; stationery; paint brushes; calendars; printed publications, namely, magazines, brochures and booklets in the field of art; posters; children's paint-boxes for use in school; notebooks; greetings cards; adhesives for stationery or household purposes; artists' materials; typewriters; packaging materials; printing blocks; printed publications; children's paint-boxes; cheque book holdersClass 016 for Printed books in the field of art; printed catalogues in the field of art; printed monographs in the field of art; printed periodicals in the field of art; printed photographs; paintings; lithographs; engravings; giclee prints; art prints; printed posters; bookmarks; printed greetings cards; artists materials, namely, modeling clay, easels; paint brushes; printed publications, namely, magazines, brochures and booklets in the field of art; children's paint-boxes for use in school

Webpage URL: None Provided
Webpage Date of Access: None Provided


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, footwear, headgear
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, footwear, headgear; Clothing, namely, T-shirts, sweatshirts, jackets, shirts, hooded tops, hooded sweatshirts, pullovers, jumpers, shorts, boxer shorts, boxer briefs, underwear, underclothes, under garments, socks, scarves, pyjamas, braces as suspenders, ties, lingerie, hosiery, bathing costumes, bathing suits, bathing trunks, bathrobes, gloves, jeans, kilts, nightwear, pajamas, trouser suits, slacks, sleeping garments, sleepwear, suits, swim wear, swimsuits, trousers, tuxedos and waistcoats, legging, jeggings, namely, pants that are partially jeans and partially leggings, cloth baby bibs, baby bodysuits, baby bottoms, baby tops, baby rompers, belts, Bermuda shorts, bikinis, blazers, blouses, body shapers, bomber jackets, bras, briefs, cagoules, camisoles, cargo pants, coats, costumes for use in role-playing games, costumes for use in children's dress up play, crop pants, crop tops, dance costumes, dresses, dressing gowns, housecoats, dungarees, ear bands, ear muffs, ear warmers, evening dresses, evening gowns, Halloween costumes, infant and toddler one piece clothing, infant sleepers, infantwear, knee highs, knickers, ladies' underwear, skirts, miniskirts, negligees, night gowns, nightshirts, nightgowns, nighties, panties, pants, stockings, suspenders, play suits, polo shirts, rain wear, school uniforms, tankinis, thong underwear, thong beachwear, and tights, bandanas; footwear; headwear, namely, hats and baseball caps, beanies, skull caps, skullies, children's headwear, hats for infants, babies, toddlers and childrenClass 025 for Clothing, namely, T-shirts, sweatshirts, jackets, shirts, hooded tops, hooded sweatshirts, pullovers, jumpers, shorts, boxer shorts, boxer briefs, underwear, underclothes, under garments, socks, scarves, pyjamas, braces as suspenders, ties, lingerie, hosiery, bathing costumes, bathing suits, bathing trunks, bathrobes, gloves, jeans, kilts, nightwear, pajamas, trouser suits, slacks, sleeping garments, sleepwear, suits, swim wear, swimsuits, trousers, tuxedos and waistcoats, legging, jeggings, namely, pants that are partially jeans and partially leggings, cloth baby bibs, baby bodysuits, baby bottoms, baby tops, baby rompers, belts, Bermuda shorts, bikinis, blazers, blouses, body shapers, bomber jackets, bras, briefs, cagoules, camisoles, cargo pants, coats, costumes for use in role-playing games, costumes for use in children's dress up play, crop pants, crop tops, dance costumes, dresses, dressing gowns, housecoats, dungarees, ear bands, ear muffs, ear warmers, evening dresses, evening gowns, Halloween costumes, infant and toddler one piece clothing, infant sleepers, infantwear, knee highs, knickers, ladies' underwear, skirts, miniskirts, negligees, night gowns, nightshirts, nightgowns, nighties, panties, pants, stockings, suspenders, play suits, polo shirts, rain wear, school uniforms, tankinis, thong underwear, thong beachwear, and tights, bandanas; footwear; headwear, namely, hats and baseball caps, beanies, skull caps, skullies, children's headwear, hats for infants, babies, toddlers and children

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; arranging of trade fairs; organisation of trade fairs; promotion of fairs for trade purposes; opinion polling; data processing; provision of business information; retail services connected with the sale of works of art, paintings, sculptures, prints, printed matter, books, catalogues and stationery
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: Advertising; Advertising services; business management; business administration; office functions; providing office functions; organisation, operation and supervision of loyalty and incentive schemes; organization, operation and supervision of royalty and incentive schemes, namely, business organization and administration consumer loyalty programs; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; arranging of trade fairs; organisation of trade fairs; organization of trade fairs; promotion of fairs for trade purposes; opinion polling; provision of business information; data processing; retail store services featuring works of art, paintings, sculptures, prints, printed matter, books, catalogues and stationery; retail services connected with the sale of works of art, paintings, sculptures, prints, printed matter, books, catalogues and stationeryClass 035 for Advertising services; business management; business administration; providing office functions; organization, operation and supervision of royalty and incentive schemes, namely, business organization and administration consumer loyalty programs; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; arranging of trade fairs; organization of trade fairs; promotion of fairs for trade purposes; provision of business information; retail store services featuring works of art, paintings, sculptures, prints, printed matter, books, catalogues and stationery

Webpage URL: None Provided
Webpage Date of Access: None Provided


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 Education; provision of training; entertainment; sporting and cultural activities; organisation of exhibitions for cultural or educational purposes; arranging colloquia; organisation of competitions; publication of texts and images; electronic publishing; production of films, radio and television programs
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: Education; Education namely, conducting workshops and seminars in the field of art; provision of training; provision of training in the field of art; entertainment; entertainment, namely, art exhibitions; sporting and cultural activities; organization of exhibitions for cultural or educational purposes; organisation of exhibitions for cultural or educational purposes; arranging colloquia in the field of art; arranging colloquia; organization of competitions in the field of visual arts; organisation of competitions; publication of text and images, other than publicity texts; publication of texts and images; electronic publishing, namely, publishing electronic publications; electronic publishing; production of films, radio and television programsClass 041 for Education namely, conducting workshops and seminars in the field of art; provision of training in the field of art; entertainment, namely, art exhibitions; organization of exhibitions for cultural or educational purposes; arranging colloquia in the field of art; organization of competitions in the field of visual arts; publication of text and images, other than publicity texts; electronic publishing, namely, publishing electronic publications; production of films, radio and television programs

Webpage URL: None Provided
Webpage Date of Access: None Provided


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: Start Art Global Limited a(n) Limited Company of England & Wales legally organized under the laws of United Kingdom
Proposed: Start Art Global Limited, limited liability company legally organized under the laws of United Kingdom
      Email Address: XXXX

ADDITIONAL STATEMENTS
Color Claim
The color(s) black, white and green is/are claimed as a feature of the mark.

Description of mark
The mark consists of the symbols and wording ")_ START, the ")_ ST" appearing in black with "ART" appearing in white within a green rectangular carrier.

The owner's/holder's proposed attorney information: Graham Farrington. Graham Farrington of Ladas & Parry LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Suite 1600
      224 S. Michigan Ave
      Chicago, Illinois 60604
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is T110662.
      The email address is gfarrington@ladas.com

Graham Farrington 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):
      Ladas & Parry LLP
Correspondence Information (proposed):
      Graham Farrington
      PRIMARY EMAIL FOR CORRESPONDENCE: gfarrington@ladas.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is T110662.

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: /gfarrington/     Date: 02/03/2023
Signatory's Name: Graham Farrington
Signatory's Position: Attorney of record, New York Bar member
Signature method: Signed directly within the form

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:    Ladas & Parry LLP
   
   3-7 Temple Avenue
   Temple Chambers,
   London EC4Y 0DA,
Mailing Address:    Graham Farrington
   Ladas & Parry LLP
   Suite 1600
   224 S. Michigan Ave
   Chicago, Illinois 60604
        
Serial Number: 79332890
Internet Transmission Date: Fri Feb 03 06:30:29 ET 2023
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20230203063029
865780-79332890-850b9dd34ea2db9c2bf024c8
c9a7bf3a7c874e1a7376cabe74c55d91585fdd18
-N/A-N/A-20230203055235080480