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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
87765363 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 101 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/87765363/mark.png |
| LITERAL ELEMENT |
FRESH PRINCE |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) |
|
Applicant further responds to the issues in the Office Action as follows:
I. REFUSAL - SECTION 2(a) - FALSE SUGGESTION OF A CONNECTION
Willard C. Smith, II is the owner of Applicant. As such, the refusal under Section 2(a) of the Trademark Act should be withdrawn.
II. INQUIRY - RELATION BETWEEN APPLICANT AND PERSON NAMED IN THE MARK
FRESH PRINCE identifies Willard C. Smith, II, pka Will Smith, who is the owner of Applicant. Applicant has further satisfied this issue by
claiming ownership of the prior registration of FRESH PRINCE under Registration No. 3,697,484, and by providing the appropriate statement and signed Consent.
III. CONSENT - NAME OF LIVING INDIVIDUAL
The mark identifies a living individual, Willard C. Smith, II, pka Will Smith, and the required Consent has been provided.
IV. IDENTIFICATION OF GOODS
Applicant has amended its description of goods as requested. Applicant is transferring the goods "cases, skins or covers for handheld gaming
devices" from its companion application under Serial No. 87/765,317 for the same mark in Class 9 filed the same day. Applicant is transferring the goods "paper party supplies,
namely, paper party hats" from its companion application under Serial No. 87/765,328 for the same mark in Class 16 filed the same day.
V. CONCLUSION
Having satisfied the issues in the Office Action, Applicant requests that its amendments be entered and that the mark be passed to publication.
|
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
028 |
| DESCRIPTION |
| Action figure cases; action figures; adult and children party games; balloons; balls of all kinds; bath toys; bean bags; board games;
card games; children' s play cosmetics; Christmas stockings; Christmas tree ornaments; Christmas tree skirts; coin-operated arcade games; collectible toy figures; compact cases for miniature dolls
and play environments sold therewith; doll cases; doll houses; dolls and accessories therefor; electronic hand-held games; flying discs; inflatable inner tubes for aquatic recreational use; jigsaw
puzzles; jump ropes; kite parts; kites; miniature toy helmets; music box toys; musical toys; paddle ball games; parlor games; party favors in the nature of crackers or noisemakers and small toys;
pinwheels; plastic toy figures; plastic toy hoops; play houses; playing cards; plush toys; puppets; puzzles; radio-controlled toy vehicles; ride-on toys; role-playing games; sand toys; skateboards;
slot machines; snow globes; sports balls; squishies; talking toys; toy airplanes; toy balloons; toy banks; toy building blocks; toy figures and accessories therefor; toy mobiles; toy vehicles and
accessories therefor; water-squirting toys; yo-yos |
| FILING BASIS |
Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
028 |
| TRACKED TEXT DESCRIPTION |
Action figure cases; action figures; adult and children party
games; balloons; balls of all kinds; bath toys; bean bags; board
games; card games; children' s play cosmetics; Christmas stockings; Christmas tree
ornaments; Christmas tree skirts; coin-operated arcade games; collectible toy figures; compact cases for miniature dolls and play environments sold therewith; doll cases; doll houses; dolls and
accessories therefor; electronic hand-held games; flying discs; inflatable inner tubes for aquatic recreational
use; jigsaw puzzles; jump ropes; kite parts; kites; miniature
toy helmets; music box toys; musical toys; paddle ball games; parlor games;
party favors in the nature of crackers or noisemakers and small toys; pinwheels; plastic toy figures; plastic toy hoops; play houses; playing cards; plush toys; puppets;
puzzles; radio-controlled toy vehicles; ride-on toys; role-playing games; sand toys; skateboards; slot machines; snow globes; sports balls;
squishies; squishable toy figures; talking toys; toy airplanes;
toy balloons; toy banks; toy building blocks; toy figures and accessories therefor;
toy mobiles; toy vehicles and accessories therefor; water-squirting toys; yo-yos;
cases, skins or covers for handheld gaming devices; paper party supplies, namely, paper party hats |
| FINAL DESCRIPTION |
| Action figure cases; action figures; adult and children party games; balloons; balls of all kinds; bath toys; bean bags; board games;
card games; children' s play cosmetics; Christmas stockings; Christmas tree ornaments; Christmas tree skirts; coin-operated arcade games; collectible toy figures; compact cases for miniature dolls
and play environments sold therewith; doll cases; doll houses; dolls and accessories therefor; electronic hand-held games; flying discs; inflatable inner tubes for aquatic recreational use; jigsaw
puzzles; jump ropes; kite parts; kites; miniature toy helmets; music box toys; musical toys; paddle ball games; parlor games; party favors in the nature of crackers or noisemakers and small toys;
pinwheels; plastic toy figures; plastic toy hoops; play houses; playing cards; plush toys; puppets; puzzles; radio-controlled toy vehicles; ride-on toys; role-playing games; sand toys; skateboards;
slot machines; snow globes; sports balls; squishable toy figures; talking toys; toy airplanes; toy balloons; toy banks; toy building blocks; toy figures and accessories therefor; toy mobiles; toy
vehicles and accessories therefor; water-squirting toys; yo-yos; cases, skins or covers for handheld gaming devices; paper party supplies, namely, paper party hats |
| FILING BASIS |
Section 1(b) |
| ADDITIONAL STATEMENTS SECTION |
| ACTIVE PRIOR REGISTRATION(S) |
The applicant claims ownership of active prior U.S. Registration Number(s) 3697484. |
| NAME(S), PORTRAITS(S), SIGNATURE(S) OF INDIVIDUAL(S) |
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Willard C. Smith, pka Will Smith, whose consent(s) to register
is made of record. |
| CONSENT FILE NAME(S) |
| ORIGINAL PDF FILE |
consent-12146203103-155855424_._77372187.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\877\653\87765363\xml4\ROA0002.JPG |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/jillpietrini/ |
| SIGNATORY'S NAME |
Jill M. Pietrini |
| SIGNATORY'S POSITION |
Attorney of record, California bar member |
| SIGNATORY'S PHONE NUMBER |
(310) 228-3700 |
| DATE SIGNED |
11/02/2018 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Fri Nov 02 16:09:07 EDT 2018 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XXX-
20181102160907034231-8776
5363-6102d91a9d62dcf283dc
133ff0df8954772e0ff60c0a4
1adec297ffb2861c4cad-N/A-
N/A-20181102160339021813 |
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.
87765363 FRESH PRINCE(Standard Characters, see http://uspto.report/TM/87765363/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Applicant further responds to the issues in the Office Action as follows:
I. REFUSAL - SECTION 2(a) - FALSE SUGGESTION OF A CONNECTION
Willard C. Smith, II is the owner of Applicant. As such, the refusal under Section 2(a) of the Trademark Act should be withdrawn.
II. INQUIRY - RELATION BETWEEN APPLICANT AND PERSON NAMED IN THE MARK
FRESH PRINCE identifies Willard C. Smith, II, pka Will Smith, who is the owner of Applicant. Applicant has further satisfied this issue by
claiming ownership of the prior registration of FRESH PRINCE under Registration No. 3,697,484, and by providing the appropriate statement and signed Consent.
III. CONSENT - NAME OF LIVING INDIVIDUAL
The mark identifies a living individual, Willard C. Smith, II, pka Will Smith, and the required Consent has been provided.
IV. IDENTIFICATION OF GOODS
Applicant has amended its description of goods as requested. Applicant is transferring the goods "cases, skins or covers for handheld gaming
devices" from its companion application under Serial No. 87/765,317 for the same mark in Class 9 filed the same day. Applicant is transferring the goods "paper party supplies,
namely, paper party hats" from its companion application under Serial No. 87/765,328 for the same mark in Class 16 filed the same day.
V. CONCLUSION
Having satisfied the issues in the Office Action, Applicant requests that its amendments be entered and that the mark be passed to publication.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Action figure cases; action figures; adult and children party games; balloons; balls of all kinds; bath toys; bean bags; board games; card games; children' s play
cosmetics; Christmas stockings; Christmas tree ornaments; Christmas tree skirts; coin-operated arcade games; collectible toy figures; compact cases for miniature dolls and play environments sold
therewith; doll cases; doll houses; dolls and accessories therefor; electronic hand-held games; flying discs; inflatable inner tubes for aquatic recreational use; jigsaw puzzles; jump ropes; kite
parts; kites; miniature toy helmets; music box toys; musical toys; paddle ball games; parlor games; party favors in the nature of crackers or noisemakers and small toys; pinwheels; plastic toy
figures; plastic toy hoops; play houses; playing cards; plush toys; puppets; puzzles; radio-controlled toy vehicles; ride-on toys; role-playing games; sand toys; skateboards; slot machines; snow
globes; sports balls; squishies; talking toys; toy airplanes; toy balloons; toy banks; toy building blocks; toy figures and accessories therefor; toy mobiles; toy vehicles and accessories therefor;
water-squirting toys; yo-yos
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: Action figure cases;
action figures;
adult and children party games;
balloons;
balls of all kinds;
bath toys;
bean bags;
board games;
card games;
children' s play cosmetics;
Christmas stockings;
Christmas tree ornaments;
Christmas tree skirts;
coin-operated arcade games;
collectible toy figures;
compact cases for miniature dolls
and play environments sold therewith;
doll cases;
doll houses;
dolls and accessories therefor;
electronic hand-held games;
flying discs;
inflatable inner tubes for aquatic recreational use;
jigsaw
puzzles;
jump ropes;
kite parts;
kites;
miniature toy helmets;
music box toys;
musical toys;
paddle ball games;
parlor games;
party favors in the
nature of crackers or noisemakers and small toys;
pinwheels;
plastic toy figures;
plastic toy hoops;
play houses;
playing cards;
plush toys;
puppets;
puzzles;
radio-controlled toy vehicles;
ride-on toys;
role-playing games;
sand toys;
skateboards;
slot machines;
snow globes;
sports balls;
squishies;
squishable toy figures;
talking toys;
toy airplanes;
toy
balloons;
toy banks;
toy building blocks;
toy figures and accessories therefor;
toy
mobiles;
toy vehicles and accessories therefor;
water-squirting toys;
yo-yos;
cases, skins or covers for handheld gaming devices;
paper party supplies, namely, paper party hatsClass 028 for Action figure cases; action
figures; adult and children party games; balloons; balls of all kinds; bath toys; bean bags; board games; card games; children' s play cosmetics; Christmas stockings; Christmas tree ornaments;
Christmas tree skirts; coin-operated arcade games; collectible toy figures; compact cases for miniature dolls and play environments sold therewith; doll cases; doll houses; dolls and accessories
therefor; electronic hand-held games; flying discs; inflatable inner tubes for aquatic recreational use; jigsaw puzzles; jump ropes; kite parts; kites; miniature toy helmets; music box toys; musical
toys; paddle ball games; parlor games; party favors in the nature of crackers or noisemakers and small toys; pinwheels; plastic toy figures; plastic toy hoops; play houses; playing cards; plush toys;
puppets; puzzles; radio-controlled toy vehicles; ride-on toys; role-playing games; sand toys; skateboards; slot machines; snow globes; sports balls; squishable toy figures; talking toys; toy
airplanes; toy balloons; toy banks; toy building blocks; toy figures and accessories therefor; toy mobiles; toy vehicles and accessories therefor; water-squirting toys; yo-yos; cases, skins or covers
for handheld gaming devices; paper party supplies, namely, paper party hats
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.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3697484.
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Willard C. Smith, pka Will Smith, whose consent(s) to register is made of record.
Original PDF file:
consent-12146203103-155855424_._77372187.pdf
Converted PDF file(s) ( 1 page)
Consent File1
SIGNATURE(S)
Response Signature
Signature: /jillpietrini/ Date: 11/02/2018
Signatory's Name: Jill M. Pietrini
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: (310) 228-3700
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: 87765363
Internet Transmission Date: Fri Nov 02 16:09:07 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201811021609070
34231-87765363-6102d91a9d62dcf283dc133ff
0df8954772e0ff60c0a41adec297ffb2861c4cad
-N/A-N/A-20181102160339021813
