Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86117863 RCI (Stylized and/or with Design, see http://uspto.report/TM/86117863/mark.png) has been amended as follows:

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

REMARKS

 

This is a Response to the Office Action issued March 4, 2014.

 

Applicant has amended the Class 28 identification to toys, namely, plush toys, stuffed toys, board games, dolls, and plastic toys, namely, mechanical action toys, toy airplanes, toy arrows, toy banks, bath toys, bendable toys, toy building blocks, toy construction blocks, toy boxes, cat toys, dog toys, drawing toys, mechanical actions toys, mechanical toys, music box toys, toy noisemakers, pet toys, squeeze toys, and toy figures in order to provide additional clarification as to the nature of the goods.

 

The amended description is properly classified in Class 28. This description was previously accepted by the USPTO for Class 28 of Applicant’s prior Registration No. 2,720,297, for the same mark, which was registered on June 3, 2003.  Because the amended description mirrors a description for identical goods previously accepted by the USPTO in Class 28, provides clarification of the associated goods as requested by the Examining Attorney, and falls within the scope of the original identification, it should be acceptable in Class 28.

 

Because Applicant has responded to all issues raised by the Examining Attorney, Applicant respectfully requests the application be approved for registration on the Principal Register.  Should the Examining Attorney have any questions, she is invited to contact Applicant’s counsel at 202.585.8210 or 202-585-8207.

 

Respectfully submitted,

 

/LJK/                          

 

Jeffrey L. Costellia

Lauren J. Krupka

Katherine Bastian

Nixon Peabody LLP

401 Ninth Street NW, Suite 900

Washington, DC 20004-2128

P (202) 585-8000

nptm@nixonpeabody.com

 

 

 

15043941.1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for toys, games, and playthings
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Hong Kong registration number 2000B10235 registered 10/23/1999 with a renewal date of __________ and an expiration date of 10/23/2016 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: toys, games, and playthings; toys, namely, plush toys, stuffed toys, board games, dolls, and plastic toys, namely, mechanical action toys, toy airplanes, toy arrows, toy banks, bath toys, bendable toys, toy building blocks, toy construction blocks, toy boxes, cat toys, dog toys, drawing toys, mechanical actions toys, mechanical toys, music box toys, toy noisemakers, pet toys, squeeze toys, and toy figuresClass 028 for toys, namely, plush toys, stuffed toys, board games, dolls, and plastic toys, namely, mechanical action toys, toy airplanes, toy arrows, toy banks, bath toys, bendable toys, toy building blocks, toy construction blocks, toy boxes, cat toys, dog toys, drawing toys, mechanical actions toys, mechanical toys, music box toys, toy noisemakers, pet toys, squeeze toys, and toy figures
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Hong Kong registration number 2000B10235 registered 10/23/1999 with a renewal date of __________ and an expiration date of 10/23/2016 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and 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 or services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /Lauren J. Krupka/     Date: 07/01/2014
Signatory's Name: Lauren J. Krupka
Signatory's Position: Attorney of Record, MD bar member

Signatory's Phone Number: 202-585-8210

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86117863
Internet Transmission Date: Tue Jul 01 17:51:58 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201407011751582
01653-86117863-5008c266edd4b88521f4da68e
57d4e1c5636a3ceefcc8127c3fcc332adf8785-N
/A-N/A-20140701174403692817