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. 88199737 OUTSHINERY(Standard Characters, see http://uspto.report/TM/88199737/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 016 for trade materials; sell sheets; tasting notes for alcoholic beverages; shelf-talkers; graphics; icons; illustrations; animations; Design of marketing materials for others; Distribution of marketing materials for others; Concept and brand development services for others; Designing of packaging and wrapping materials; Digital printing services
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: trade materials; photographs; sell sheets; trade materials, namely, sell sheets in the nature of printed paper advertising sheets; tasting notes for alcoholic beverages; Printed paper advertising sheets in the nature of tasting notes for advertising alcoholic beverages; shelf-talkers; shelf-talkers in the nature of printed paper advertising signs; graphics; illustrations; icons; animation cells; animations; Design of marketing materials for others; Distribution of marketing materials for others; Concept and brand development services for others; Designing of packaging and wrapping materials; Digital printing servicesClass 016 for photographs; trade materials, namely, sell sheets in the nature of printed paper advertising sheets; Printed paper advertising sheets in the nature of tasting notes for advertising alcoholic beverages; shelf-talkers in the nature of printed paper advertising signs; illustrations; animation cells;

Deleted Filing Basis: 1(b)
In International Class 016, the mark was first used at least as early as 12/00/2015 . and first used in commerce at least as early as 12/00/2015 .

Applicant hereby submits one(or more) specimen(s) for Class 016 . The specimen(s) submitted consists of copy of a good (a photograph) bearing the mark (in the bottom left corner) .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Videos; Project management services; Personal image development consultation services; Corporate image development consultation services; Marketing consulting services; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Business development services; Video production services; Video recording services; Providing advertising and advertisement services; Digital advertising services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/2016 and first used in commerce at least as early as 00/00/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Videos; Business project management services; Project management services; Corporate image development consultation services; Personal image development consultation services; Marketing consulting services; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Business development services; Providing advertising and advertisement services; Digital advertising services; Video production services; Creative marketing design services; Video recording services; marketing the goods of others; Design of marketing materials for others; Distribution of marketing materials for others; Concept and brand development services for others; Designing of packaging and wrapping materialsClass 035 for Business project management services; Corporate image development consultation services; Marketing consulting services; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Business development services; Providing advertising and advertisement services; Digital advertising services; Creative marketing design services; marketing the goods of others; Design of marketing materials for others; Distribution of marketing materials for others; Concept and brand development services for others; Designing of packaging and wrapping materials;
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/2016 and first used in commerce at least as early as 00/00/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of Screenshot of the applicant?s web page which displays the mark in association with the applicant's services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 040 for Consulting services relating to product development, design, and improvement; Digital asset management service; Providing stock photography services; Providing image archive services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/2017 and first used in commerce at least as early as __________, and is now in use in such commerce.

Proposed:
Tracked Text Description: Consulting services relating to product development, design, and improvement; digital asset management services, namely, creation and management of database containing visual media on behalf of others; Digital asset management service; digital printing services.; Providing stock photography services; Providing image archive servicesClass 040 for digital asset management services, namely, creation and management of database containing visual media on behalf of others; digital printing services.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/2017 and first used in commerce at least as early as 00/00/2017 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 040 . The specimen(s) submitted consists of Screenshot of the applicant?s web page which displays the mark in association with the applicant's services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Photographs; Photography services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2015 and first used in commerce at least as early as 12/00/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Photographs; Photography services; Image processing services, namely, digital imaging services; Video production services; Video recording servicesClass 041 for Photography services; Image processing services, namely, digital imaging services; Video production services; Video recording services;
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/2015 and first used in commerce at least as early as 00/00/2015 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 041 . The specimen(s) submitted consists of Screenshot of the applicant?s web pages which display the mark in association with the applicant's services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Image processing services; Marketing design services; Marketing the goods of others
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/2015 and first used in commerce at least as early as 00/00/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Image processing services; Consulting services relating to new product development, design, and improvement; Marketing design services; Electronic storage services for archiving images; Marketing the goods of othersClass 042 for Consulting services relating to new product development, design, and improvement; Electronic storage services for archiving images
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 00/00/2017 and first used in commerce at least as early as 00/00/2017 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042 . The specimen(s) submitted consists of Screenshot of the applicant?s web pages which display the mark in association with the applicant's services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2

The applicant's current attorney information: Gina M. Lupino. Gina M. Lupino of LUPINO LAW, is located at

      2300-1066 W. HASTINGS STREET
      VANCOUVER, V6E3X2
      CA
The docket/reference number is 2762-00591.

The phone number is +1-7787080119.

The email address is gina@lupinolaw.com

The applicants proposed attorney information: Gina M. Lupino. Gina M. Lupino of LUPINO LAW, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2300-1066 W. HASTINGS STREET
      VANCOUVER, V6E3X2
      Canada
The docket/reference number is 2762-00591.

The phone number is +1-7787080119.

The email address is gina@lupinolaw.com

Gina M. Lupino 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: GINA M. LUPINO. GINA M. LUPINO of LUPINO LAW, is located at

      2300-1066 W. HASTINGS STREET
      VANCOUVER, V6E3X2
      CA
The docket/reference number is 2762-00591.

The phone number is +1-7787080119.

The email address is gina@lupinolaw.com; andrea@lupinolaw.com; trademarks@lupinolaw.com

The applicants proposed correspondence information: Gina M. Lupino. Gina M. Lupino of LUPINO LAW, is located at

      2300-1066 W. HASTINGS STREET
      VANCOUVER, V6E3X2
      Canada
The docket/reference number is 2762-00591.

The phone number is +1-7787080119.

The email address is gina@lupinolaw.com

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: /Gina M. Lupino/      Date: 08/22/2019
Signatory's Name: Gina M. Lupino
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 7787080119


Response Signature
Signature: /Gina M. Lupino/     Date: 08/22/2019
Signatory's Name: Gina M. Lupino
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 7787080119

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:    GINA M. LUPINO
   LUPINO LAW
   
   2300-1066 W. HASTINGS STREET
   VANCOUVER, V6E3X2
Mailing Address:    Gina M. Lupino
   LUPINO LAW
   2300-1066 W. HASTINGS STREET
   VANCOUVER, V6E3X2
        
Serial Number: 88199737
Internet Transmission Date: Thu Aug 22 17:33:50 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019082217335003
8465-88199737-610bcf8ea11e3885e2523f2b67
a343da4ddc83b3dcbfa18c5ccc1780fb6ccd68-N
/A-N/A-20190822145441466559