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. 88201365 GODZILLA(Standard Characters, see http://uspto.report/TM/88201365/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 014 for Alloys of precious metal; semi-wrought precious stones and their imitations; key chains; key holders of precious metals; charms for key chains; jewelry boxes; trophies (prize cups); commemorative shields; earrings; badges of precious metal; necklaces; bracelets; pendants; medals; lockets; rings being jewelry; jewelry, namely, amulets; personal ornaments, other than cuff links; jewelry; charms for jewelry; statues of precious metal and their alloys; shoe ornaments of precious metal; shoe jewelry; wrist watches; wall clocks; alarm clocks; watches; clocks
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 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[ Japan application number 2018-138708 filed 11/07/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Alloys of precious metal; semi-wrought precious stones and their imitations; key chains; key holders of precious metals; charms for key chains; jewelry boxes; trophies (prize cups); prize cups of precious metal; commemorative shields; commemorative shields of precious metal; earrings; badges of precious metal; necklaces; bracelets; pendants; medals; lockets; rings being jewelry; jewelry, namely, amulets; personal ornaments, other than cuff links; personal ornaments in the nature of jewelry; jewelry; charms for jewelry; statues of precious metal and their alloys; shoe ornaments of precious metal; shoe jewelry of precious metal; shoe jewelry; wrist watches; wall clocks; alarm clocks; watches; clocksClass 014 for Alloys of precious metal; semi-wrought precious stones and their imitations; key chains; key holders of precious metals; charms for key chains; jewelry boxes; prize cups of precious metal; commemorative shields of precious metal; earrings; badges of precious metal; necklaces; bracelets; pendants; medals; lockets; rings being jewelry; jewelry, namely, amulets; personal ornaments in the nature of jewelry; jewelry; charms for jewelry; statues of precious metal and their alloys; shoe jewelry of precious metal; shoe jewelry; wrist watches; wall clocks; alarm clocks; watches; clocks
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 [ Japan application number 2018-138708 filed 11/07/2018]. 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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant's counsel thanks the Examiner for the careful consideration given the application. Applicant has amended the listing of goods in accordance with the Examiner's suggestions. Per the Examiner's request, applicant hereby confirms that the entity type of TOHO CO., LTD. is a corporation of Japan. In response to the Examiner's inquiry, Applicant states that the Japanese Trademark Application No. 2018-138708 has not yet been registered. Applicant hereby requests suspension pending receipt of the foreign registration documentation.


SIGNATURE(S)
Response Signature
Signature: /bryanmgallo/     Date: 04/24/2019
Signatory's Name: BRYAN M. GALLO
Signatory's Position: ATTORNEY OF RECORD, OHIO BAR MEMBER

Signatory's Phone Number: 216-579-1700

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: 88201365
Internet Transmission Date: Thu Apr 25 11:45:08 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190425114508
845436-88201365-620c87617ca92c068d9f7b61
2cd14f9a44ea495388e23f6939d5bb3c909cde52
-N/A-N/A-20190424130149942603