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. 87501573 YU-GI-OH! VRAINS (Stylized and/or with Design, see http://uspto.report/TM/87501573/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: YU-GI-OH! VRAINS (Stylized and/or with Design, see http://uspto.report/TM/87501573/mark.png)
Proposed: YU-GI-OH! VRAINS (Stylized and/or with Design, see mark)
The color(s) grey, white, light blue, dark blue, red and black is/are claimed as a feature of the mark.
The mark consists of the wording "YU-GI-OH!" in grey stylized letters above the word "VRAINS" in light blue and dark blue stylized letters, outlined with jagged red and black dots and lines, all superimposed on a roughly circular background of broken, irregular rings of white, dark blue and light blue and dark blue rays.

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

This response answers the objections in the Office action by amending the goods and services list. This response also submits an amended drawing of the mark which does not include a TM symbol. Since all objections have been answered, please pass the application to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Notebooks for writing paper; stationery; postcards; rubber erasers; seals for stationery; stickers for stationery; writing instruments; bookmarkers; writing pads; pen and pencil cases; posters; trading cards; books and comic books featuring cartoons and children's stories; calendars; diaries; printed matter, namely, posters, brochures, and newsletters in the field of comics; electric pencil sharpeners; luncheon mats of paper; towels of paper; handkerchiefs of paper; pastes and adhesives for stationery or household use; comic books featuring cartoons and children's stories
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Notebooks for writing paper; Notebooks for writing; paper; stationery; postcards; rubber erasers; seals for stationery; stickers for stationery; writing instruments; bookmarkers; writing pads; pen and pencil cases; trading cards; posters; collectible trading cards; books and comic books featuring cartoons and children's stories; calendars; diaries; printed matter, namely, posters, brochures, and newsletters in the field of comics; electric pencil sharpeners; luncheon mats of paper; towels of paper; handkerchiefs of paper; pastes and adhesives for stationery or household use; comic books featuring cartoons and children's storiesClass 016 for Notebooks for writing; paper; stationery; postcards; rubber erasers; seals for stationery; stickers for stationery; writing instruments; bookmarkers; writing pads; pen and pencil cases; posters; collectible trading cards; books and comic books featuring cartoons and children's stories; calendars; diaries; printed matter, namely, posters, brochures, and newsletters in the field of comics; electric pencil sharpeners; luncheon mats of paper; towels of paper; handkerchiefs of paper; pastes and adhesives for stationery or household use; comic books featuring cartoons and children's stories
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Bags; shoulder bags; backpacks; Boston bags; carry-on bags; school bags; travelling bags; wallets; key cases; commutation-ticket holders; business card cases; pouches; umbrellas; parasols; walking sticks; canes; saddlery; clothing for domestic pets; envelopes of leather for packaging
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Bags; All-purpose carrying bags; tote bags; handbags; waist bags; shoulder bags; backpacks; Boston bags; carry-on bags; school bags; commutation-ticket holders; travelling bags; wallets; pouches; key cases; commutation-ticket holders, namely, ticket pouches; business card cases; leather pouches; pouches for holding keys; saddlery; drawstring pouches; pouches of textile; pouches for holding makeup, keys and other personal items; umbrellas; parasols; walking sticks; canes; clothing for domestic pets; envelopes of leather for packagingClass 018 for All-purpose carrying bags; tote bags; handbags; waist bags; shoulder bags; backpacks; Boston bags; carry-on bags; school bags; travelling bags; wallets; key cases; commutation-ticket holders, namely, ticket pouches; business card cases; leather pouches; pouches for holding keys; drawstring pouches; pouches of textile; pouches for holding makeup, keys and other personal items; umbrellas; parasols; walking sticks; canes; clothing for domestic pets; envelopes of leather for packaging
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing; jackets; pants; coats; sweaters; sport shirts; polo shirts; shirts; blouses; shirts for suits; sweatsuits; pajamas; nightwear; underwear; swimwear; swimming caps; T-shirts; sleep masks; aprons; socks and stockings; shawls; scarves; gloves; mittens; neckties; neckerchieves; bandanas; under garments; mufflers; ear muffs; hoods; nightcaps; headgear for wear; footwear, not for sports; shoes; boots; masquerade costumes; garters; suspenders; waistbands; belts for clothing; clothes for sports; footwear for sports
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Clothing; Clothing, namely, jeans; jackets; pants; coats; sweaters; sport shirts; polo shirts; shirts; blouses; shirts for suits; sweatsuits; pajamas; nightwear; underwear; swimwear; swimming caps; T-shirts; sleep masks; aprons; socks and stockings; shawls; scarves; gloves; mittens; neckties; neckerchieves; bandanas; under garments; mufflers; mufflers as neck scarves; ear muffs; hoods; nightcaps; headgear for wear; headwear; footwear, not for sports; shoes; boots; masquerade costumes; garters; suspenders; waistbands; belts for clothing; clothes for sports; clothes for sports, namely, jerseys; footwear for sports; footwear for sports, namely, athletic footwearClass 025 for Clothing, namely, jeans; jackets; pants; coats; sweaters; sport shirts; polo shirts; shirts; blouses; shirts for suits; sweatsuits; pajamas; nightwear; underwear; swimwear; swimming caps; T-shirts; sleep masks; aprons; socks and stockings; shawls; scarves; gloves; mittens; neckties; neckerchieves; bandanas; under garments; mufflers as neck scarves; ear muffs; hoods; nightcaps; headwear; footwear, not for sports; shoes; boots; masquerade costumes; garters; suspenders; waistbands; belts for clothing; clothes for sports, namely, jerseys; footwear for sports, namely, athletic footwear
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for (BASED ON SECTION 1(b)) Educational and instructional services, namely, providing classes, panel discussions, and seminars relating to arts, crafts, sports, comics, and entertainment, and providing information thereof; arranging, conducting, and organizing game events, namely, card game competitions; providing non-downloadable electronic books and electronic comics in the field of cartoons, games, movies, and toys via communication networks and providing information thereof; services of reference libraries for electronic publications; services of reference libraries for literature and documentary records and providing information thereof; providing non-downloadable images, namely, motion pictures and still images via the internet or mobile phone communications and providing information thereof; movie showing, movie film production, and movie film distribution and providing information thereof; entertainment services, namely, providing non-downloadable sound recordings featuring music via internet or mobile phone communications and providing information thereof; providing non-downloadable games via communications by computer terminals or mobile phone communications and providing information thereof; providing amusement facilities and providing information thereof; providing non-downloadable electronic books and electronic comics in the field of cartoons via communication networks and providing information thereof; (BASED ON SECTION 1(a)) Entertainment services, namely, an ongoing series featuring animated cartoons provided through webcasts
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2017 and first used in commerce at least as early as 06/01/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: (BASED ON SECTION 1(b)) Educational and instructional services, namely, providing classes, panel discussions, and seminars relating to arts, crafts, sports, comics, and entertainment, and providing information thereof; arranging, conducting, and organizing game events, namely, card game competitions; providing non-downloadable electronic books and electronic comics in the field of cartoons, games, movies, and toys via communication networks and providing information thereof; services of reference libraries for electronic publications; services of reference libraries for literature and documentary records and providing information thereof; providing non-downloadable images, namely, motion pictures and still images via the internet or mobile phone communications and providing information thereof; movie showing, movie film production, and movie film distribution and providing information thereof; entertainment services, namely, providing non-downloadable sound recordings featuring music via internet or mobile phone communications and providing information thereof; providing non-downloadable games via communications by computer terminals or mobile phone communications and providing information thereof; providing amusement facilities and providing information thereof; providing non-downloadable electronic books and electronic comics in the field of cartoons via communication networks and providing information thereof; (BASED ON SECTION 1(a)) Entertainment services, namely, an ongoing series featuring animated cartoons provided through webcastsClass 041 for (BASED ON SECTION 1(b)) Educational and instructional services, namely, providing classes, panel discussions, and seminars relating to arts, crafts, sports, comics, and entertainment, and providing information thereof; arranging, conducting, and organizing game events, namely, card game competitions; providing non-downloadable electronic books and electronic comics in the field of cartoons, games, movies, and toys via communication networks and providing information thereof; services of reference libraries for electronic publications; services of reference libraries for literature and documentary records and providing information thereof; providing non-downloadable images, namely, motion pictures and still images via the internet or mobile phone communications and providing information thereof; movie showing, movie film production, and movie film distribution and providing information thereof; entertainment services, namely, providing non-downloadable sound recordings featuring music via internet or mobile phone communications and providing information thereof; providing non-downloadable games via communications by computer terminals or mobile phone communications and providing information thereof; providing amusement facilities and providing information thereof; (BASED ON SECTION 1(a)) Entertainment services, namely, an ongoing series featuring animated cartoons provided through webcasts
Filing Basis: Section 1(b), Intent to Use: 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 in the application. 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 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/services that meet the certification standards of the applicant.

Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2017 and first used in commerce at least as early as 06/01/2017 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /dwe/     Date: 12/06/2017
Signatory's Name: David Ehrlich
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 212-813-5920

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87501573
Internet Transmission Date: Wed Dec 06 10:50:19 EST 2017
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201712061050190
19231-87501573-510f4767590bed491382673c9
3cfb6b9ecf1246781a8b119a9ad39e8f29bfbd68
-N/A-N/A-20171206104529229569