Application

PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2014)

---

PTO Form 1478 (Rev 9/2006)

OMB No. 0651-0009 (Exp 12/31/2014)

Trademark/Service Mark Application, Principal Register

Serial Number: 85526896

Filing Date: 01/27/2012

To the Commissioner for Trademarks:

MARK: DELUXE (stylized and/or with design, see mark)

The literal element of the mark consists of DELUXE.
The color(s) red and white is/are claimed as a feature of the mark. The mark consists of the lowercase word DELUXE in white, inside a stylized, digitized, red circle comprised of a plethora of smaller circles of varying shades of red.
The applicant, Deluxe Laboratories, Inc., a corporation of Delaware, having an address of
      1377 North Serrano Avenue
      Hollywood, California 90027
      United States


requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:

       International Class 009:  Motion picture and television films; digital media, namely, pre-recorded DVDs, HD DVDs, Blu-Ray DVDs, and downloadable audio and video recordings featuring motion picture films, television shows, and video programs
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

       International Class 035:  Inventory control and computerized tracking and tracing of packages in transit; advertising and marketing of motion pictures, television shows, and advertisements; preparing audio-visual displays in the fields of music, motion pictures, television shows, and advertisements; preparing audio-visual presentations for use in advertising; post-production editing services for video and audio commercials; merchandise packaging; product merchandising; merchandise packaging, namely, packaging music, videos, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media; business services, namely, outsourcing in the field of translation services, namely, providing the transfer of information relating to captions and subtitles for audio-visual works; business management of assets in the nature of television programs, motion picture films and commercials, and commercial, industrial and corporate audio-visual media content; arranging and conducting tradeshow exhibitions for commercial or advertising purposes in the fields of entertainment, television, software and video games; organizational services, namely, indexing files representing film, video, audio, picture and document content, for post production industries; display arrangement services of digital files representing film, video, audio, picture and document content, for post production industries; inventory management, namely locating digital files representing film, video, audio, picture and document content, for post production industries; business management services, namely, digital and intellectual property asset management
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

       International Class 039:  Deposit and transport of cameras, film, video, digital media, data processing and accessories thereto; storage and warehousing of film, digital and video media, and promotional material related to movies, television shows, and advertisements, namely, clothing, posters, and movie, television show, and advertisement cut-outs; electronic storage of digital and video images, digital cinema and sound recordings; storage of motion pictures, television shows, advertisements, digital cinema, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, and online media; rejuvenation services for film, tape, DVD, HD DVD, Blu-Ray DVD and other recorded, digital, downloadable, and online media, namely, cleaning of film, tape, DVD, HD DVD, Blu-Ray DVD and other recorded, digital, downloadable, and online media; storage of master video discs, audio tapes, and CD-ROMs of music and images; media management, namely, moving, archiving, and transporting digital files representing film, video, audio, picture and document content, for post production industries; packing articles for transportation; delivery of goods by truck; warehouse storage; and warehousing services
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

       International Class 040:  Duplication and replication of motion picture films, television shows, advertisements, and video programs on film, videotape, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media; digital compression of audio and video data; mastering and duplication of positive and negative motion picture prints to videotape, DVD, HD DVD, Blu-Ray DVD and other recorded, digital, downloadable, and online media; cutting of negatives; rental of printing machines and apparatus for industrial development and printing in the photographic, cinema and television industries; color enhancement of black and white cinematic film; closed captioning of films and videos; digital correction services of videos, and digital video transfer, namely, providing color correction and conversion of motion picture, television, and advertising film to video film; film and any other video media reproduction, namely, remastering of films from one format to another; film and video data digital compression; digital data compression and contract manufacturing in the field of digital versatile discs; duplication of video-tape, DVD, HD DVD, Blu-Ray DVD and other recorded, digital, downloadable, and online media in all professional formats; video services, namely, mastering and duplication of professional video tape, DVD, HD DVD, Blu-Ray DVD, and other recorded, digital, downloadable, and online media formats; providing digital compression of media and digital data; film development services; film to videotape, DVD, HD DVD, Blu-Ray and other recorded, digital, downloadable, and online media transfer services, namely, conversion of motion picture, television, and advertising film to videotape, DVD, HD DVD, Blu-Ray and other recorded, digital, downloadable, and online media; film and other video media back-up services, namely, digital preservation and restoration of cinematic films; printing services for sound, video, and data recordings; processing and printing of motion picture, television and advertising films; conversion of motion picture, television, and advertising film from 2D to 3D
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

       International Class 041:  Motion picture, television, and advertising film, videotape and digital video laboratory and post-production services, namely, high-resolution scanning of film, digital color timing, laser film recording of digital video and high definition images to film; digital and video mastering services for motion pictures, television shows, and advertisements; digital imaging; digital and electronic manipulation of images for motion pictures, television shows, and advertisements; recording digital images onto film; video and audio media production, namely, production of video cassettes and DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media for others; production of visual, optical and digital special effects for others, for television, motion pictures, advertisements, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media, namely, digital cinema; audio recording and production; film editing services; electronically producing motion picture, television, and advertising film from videotape, DVD, HD DVD, Blu-Ray DVD and other recorded, digital, downloadable, and online media recordings; producing special visual effects for videotapes, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media; production and distribution of motion pictures, television shows, and advertisements; providing voice-overs for videotapes, records, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media; consulting services in connection with film production and distribution; production of master video discs, audio tapes, and CD-ROMS of music and images; arranging for distribution or syndication of motion pictures, television shows, and advertisements; distribution services for film, tape, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media; video editing services; dubbing services and film editing; video and sound track for cinema, television and advertisements
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

       International Class 042:  Design and development of computer software; product research and development; hosting the websites of others; website design services for others; digital watermarking; custom packaging services for sound, video, and data recordings; graphic design services for print media in the field of entertainment; DVD menu packaging and design for others; design for others of music, video, DVD, and digital media packaging; quality control for others of the duplication, replication and distribution of digital film and video; content creation services, namely, authoring and development of interactive computer software and media content; design and development of multimedia products, namely, DVD menu design for others; retrieving digital files representing film, video, audio, picture and document content, for post production industries; conversion of data or documents from physical to electronic media; operation of laboratories for the processing of motion picture, television, and advertising films; formatting and conversion of media and digital data; digital conversion of motion picture, television, and advertising films to videotapes, DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, and online media; film to tape digital transfer services namely, transferring film to DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media; authoring services for DVDs, HD DVDs, Blu-Ray DVDs and other recorded, digital, downloadable, and online media
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).

       International Class 045:  Product security consultation services in the motion picture, television, and advertising industries, namely, product authentication, detection of product piracy, and the recording and tracking of digital data; security printing, namely, encoding of media and digital data for use in tracking the source of unauthorized copies thereof and providing encoding and transcoding of media and digital data; encoding of motion picture, television, and advertising films for use in tracking the source of unauthorized copies thereof; providing content security for recorded media; anti-piracy rights management, namely, product security services in the motion picture, television, and advertising industries; security related technology and services, namely, tracking and tracing services used to secure, track, and trace encoded film against fraud, piracy, and counterfeiting; electronic content protection services; research and development in connection with the illegal downloading and storing of unauthorized digital motion picture, television, and advertising files
Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services. (15 U.S.C. Section 1051(b)).



The applicant claims ownership of U.S. Registration Number(s) 3610895, 3678251, 3526510, and others.

DELUXE has become distinctive of the goods/services through the applicant's substantially exclusive and continuous use in commerce that the U.S. Congress may lawfully regulate for at least the five years immediately before the date of this statement.

DELUXE has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 3610895, 3678250, 3664490, 3618079, 3801521, 3610896, 3653057, 3653058, 3678252, and 3487309.

For informational purposes only, applicant's website address is: www.bydeluxe.com

The applicant's current Attorney Information:
      Andrew N. Spivak and M. Scott Brown, Paul J. Bosco, and Adam D. Resnick of Mosaic Legal Group, PLLC
      5185 MacArthur Boulevard, NW, Suite 350
      Washington, District of Columbia 20016-3341
      United States

The applicant's current Correspondence Information:

Andrew N. Spivak

Mosaic Legal Group, PLLC

5185 MacArthur Boulevard, NW, Suite 350

Washington, District of Columbia 20016-3341

(202) 600-2270(phone)

(202) 600-2261(fax)

aspivak@mosaiclegalgroup.com (authorized)

A fee payment in the amount of $2275 has been submitted with the application, representing payment for 7 class(es).

Declaration

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.

Declaration Signature

Signature: /Andrew N. Spivak/   Date: 01/27/2012
Signatory's Name: Andrew N. Spivak
Signatory's Position: Attorney of record, DC bar member
RAM Sale Number: 9436
RAM Accounting Date: 01/27/2012

Serial Number: 85526896
Internet Transmission Date: Fri Jan 27 11:30:29 EST 2012
TEAS Stamp: USPTO/BAS-XXX.XXX.XXX.XX-201201271130292
04050-85526896-490fd4e15d947475cc8e4eb4f
e3809ba42d-CC-9436-20120127110223955908