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. 88195990 MINI HEROES (Stylized and/or with Design, see http://uspto.report/TM/88195990/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for (Based on 44(d) Priority Application) (Based on Use in Commerce) Baby and toddler clothing, namely, bodysuits, t-shirts, knit and woven tops, hooded tops, pants, sleepers, jackets, skirts, dresses, one-piece rompers, overalls, bandanas, hats, sweaters, one-piece underwear; baby bibs; (Based on 44(d) Priority Application) (Based on Intent to Use) Baby and toddler clothing, namely, mittens; baby outerwear, namely, raincoats, snow suits, shell jackets; baby swimwear; baby sacks in the nature of infant sleepers; baby bunting; diaper bags; baby towels and washcloths; baby shoes and booties; baby bed sheets, swaddles, blankets, throws and comforters
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 08/00/2018 and first used in commerce at least as early as 08/00/2018 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1927381 filed 10/26/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: (Based on 44(d) Priority Application) (Based on Use in Commerce) Baby and toddler clothing, namely, bodysuits, t-shirts, knit and woven tops, hooded tops, pants, sleepers, jackets, skirts, dresses, one-piece rompers, overalls, bandanas, hats, sweaters, one-piece underwear; baby bibs; baby bibs, not of paper; (Based on 44(d) Priority Application) (Based on Intent to Use) Baby and toddler clothing, namely, mittens; baby outerwear, namely, raincoats, snow suits, shell jackets; baby swimwear; baby sacks in the nature of infant sleepers; baby bunting; baby shoes and booties; diaper bags; swaddling clothes; baby towels and washcloths; baby bed sheets, swaddles, blankets, throws and comfortersClass 025 for (Based on 44(d) Priority Application) (Based on Use in Commerce) Baby and toddler clothing, namely, bodysuits, t-shirts, knit and woven tops, hooded tops, pants, sleepers, jackets, skirts, dresses, one-piece rompers, overalls, bandanas, hats, sweaters, one-piece underwear; baby bibs, not of paper; (Based on 44(d) Priority Application) (Based on Intent to Use) Baby and toddler clothing, namely, mittens; baby outerwear, namely, raincoats, snow suits, shell jackets; baby swimwear; baby sacks in the nature of infant sleepers; baby shoes and booties; swaddling clothes
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 08/00/2018 and first used in commerce at least as early as 08/00/2018 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1927381 filed 10/26/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 024 for Swaddling blankets; baby bunting; baby towels and washcloths; baby bed sheets; baby blankets, throws and comforters
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 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1927381 filed 10/26/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Richard Y. Kim. Richard Y. Kim of MCDERMOTT WILL & EMERY LLP, is located at

      THE MCDERMOTT BUILDING
      500 NORTH CAPITOL STREET, N.W.
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 067600-0221.

The phone number is 202-756-8000.

The fax number is 202.756.8087.

The email address is IPDocketWashington@mwe.com

The applicants proposed attorney information: Richard Y. Kim. Other appointed attorneys are all others. Richard Y. Kim of MCDERMOTT WILL & EMERY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      THE MCDERMOTT BUILDING
      500 NORTH CAPITOL STREET, N.W.
      WASHINGTON, District of Columbia 20001-1531
      United States
The docket/reference number is 067600-0221.

The phone number is 202-756-8000.

The fax number is 202.756.8087.

The email address is IPDocketWashington@mwe.com

Richard Y. Kim 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.
The applicant's current correspondence information: RICHARD Y. KIM. RICHARD Y. KIM of MCDERMOTT WILL & EMERY LLP, is located at

      THE MCDERMOTT BUILDING
      500 NORTH CAPITOL STREET, N.W.
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 067600-0221.

The phone number is 202-756-8000.

The fax number is 202.756.8087.

The email address is IPDocketWashington@mwe.com; rkim@mwe.com

The applicants proposed correspondence information: Richard Y. Kim. Richard Y. Kim of MCDERMOTT WILL & EMERY LLP, is located at

      THE MCDERMOTT BUILDING
      500 NORTH CAPITOL STREET, N.W.
      WASHINGTON, District of Columbia 20001-1531
      United States
The docket/reference number is 067600-0221.

The phone number is 202-756-8000.

The fax number is 202.756.8087.

The email address is IPDocketWashington@mwe.com; rkim@mwe.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use MINI apart from the mark as shown.


Miscellaneous Statement
Applicant maintains both bases of application under Sections 1(b) and 44 (d) of the Trademark Act. Applicant respectfully requests suspension of the application pending the submission of the copy of the foreign certificate of registration.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Richard Y. Kim/      Date: 08/22/2019
Signatory's Name: Richard Y. Kim
Signatory's Position: Attorney of Record
Signatory's Phone Number: 202.756.8000


Response Signature
Signature: /Richard Y. Kim/     Date: 08/22/2019
Signatory's Name: Richard Y. Kim
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202.756.8000

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:    RICHARD Y. KIM
   MCDERMOTT WILL & EMERY LLP
   THE MCDERMOTT BUILDING
   500 NORTH CAPITOL STREET, N.W.
   WASHINGTON, District of Columbia 20001
Mailing Address:    Richard Y. Kim
   MCDERMOTT WILL & EMERY LLP
   THE MCDERMOTT BUILDING
   500 NORTH CAPITOL STREET, N.W.
   WASHINGTON, District of Columbia 20001-1531
        
RAM Sale Number: 88195990
RAM Accounting Date: 08/22/2019
        
Serial Number: 88195990
Internet Transmission Date: Thu Aug 22 14:18:48 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190822141848
998402-88195990-610a8d6827f777ba57588446
98521fca52e1f42ecc3ed11a99bf8ed71616734-
DA-18488074-20190821173417514462