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. 88226557 2INSPIRE(Standard Characters, see ) has been amended as follows:

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

Applicant has deleted Classes 9 and 16 from the application. As the Section 2(d) refusal pertained only to Classes 9 and 16, Applicant requests that the refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Video and computer game software and instructional manuals sold as a unit; computer game software used as a web application; computer software comprising information and programs with an artistic theme for children used as a web application; audio tapes featuring music; CD music recordings; computer software for creating and editing music; music headphones

Applicant hereby deletes the following class of goods/services from the application.
Class 016 for Printed educational and instructional materials, namely, books, arts activity books, and magazines all for children and juveniles; personal journals, children's activity books, workbooks directed to the artistic fields, picture books, storybooks, coloring books and scrapbooks; workshop manuals, educational lesson plans for use by teachers in the field of arts, teaching guides in the field of arts, teachers' manuals, instructional books all in the field of arts and crafts, easels, cardboard and packaging containers of paper for organizing craft supplies, music books, music sheets, compasses for drawing, drawing books, drawing pads, drawing paper, drawing pens, drawing rulers, painter's articles in the form of drawing boards, pencils for painting and drawing, canvas for painting, paint applicators, paint rollers, paint sets

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Toys and games namely, board games, squeeze toys, children multiple activity toys, paddle ball games, toy action figures, toy figurines and accessories therefor, toy boxes, toy mobiles, children's and babies' multiple activity toys, dolls, doll accessories, fabric dolls, card games, baby rattles, infant chew toys, bath toys, water squirting toys, ride-on toys, plush toys, soft sculpture toys, children's multiple activity toys, toy vehicles, toy model train sets, toy rockets, toy guns, musical toys, toy balloons, hand puppets, squeezable squeaking toys, stuffed toys, talking toys, inflatable toys, party favors in nature of small toys, children's coin banks, music box toys, basketballs, footballs, soccer balls, tennis balls, baseballs, bubble making wands, kites, jigsaw puzzles, skateboards, face masks, Christmas tree ornaments; magic trick kits, slime kits and cups for use in artistic activities for children
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[ Canada application number 1931453 filed 11/20/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Toys and games namely, board games, squeeze toys, children multiple activity toys, paddle ball games, toy action figures, toy figurines and accessories therefor, toy boxes, toy mobiles, children's and babies' multiple activity toys, dolls, doll accessories, fabric dolls, card games, baby rattles, infant chew toys, bath toys, water squirting toys, ride-on toys, plush toys, soft sculpture toys, children's multiple activity toys, toy vehicles, toy model train sets, toy rockets, toy guns, musical toys, toy balloons, hand puppets, squeezable squeaking toys, stuffed toys, talking toys, inflatable toys, party favors in nature of small toys, children's coin banks, music box toys, basketballs, footballs, soccer balls, tennis balls, baseballs, bubble making wands, kites, jigsaw puzzles, skateboards, face masks, Christmas tree ornaments; Toys and games namely, board games, squeeze toys, children multiple activity toys, paddle ball games, toy action figures, toy figurines and accessories therefor, toy boxes, toy mobiles, children's and babies' multiple activity toys, dolls, doll accessories, fabric dolls, card games, baby rattles, infant chew toys, bath toys, water squirting toys, ride-on toys, plush toys, soft sculpture toys, children's multiple activity toys, toy vehicles, toy model train sets, toy rockets, toy guns, musical toys, toy balloons, hand puppets, squeezable squeaking toys, stuffed toys, talking toys, inflatable toys, party favors in nature of small toys, music box toys, basketballs, footballs, soccer balls, tennis balls, baseballs, bubble making wands, kites, jigsaw puzzles, skateboards, toy face masks, Christmas tree ornaments; magic trick kits, slime kits and cups for use in artistic activities for children; magic tricks, play gel kits consisting primarily of toy putty and also including cups for use in artistic activities for childrenClass 028 for Toys and games namely, board games, squeeze toys, children multiple activity toys, paddle ball games, toy action figures, toy figurines and accessories therefor, toy boxes, toy mobiles, children's and babies' multiple activity toys, dolls, doll accessories, fabric dolls, card games, baby rattles, infant chew toys, bath toys, water squirting toys, ride-on toys, plush toys, soft sculpture toys, children's multiple activity toys, toy vehicles, toy model train sets, toy rockets, toy guns, musical toys, toy balloons, hand puppets, squeezable squeaking toys, stuffed toys, talking toys, inflatable toys, party favors in nature of small toys, music box toys, basketballs, footballs, soccer balls, tennis balls, baseballs, bubble making wands, kites, jigsaw puzzles, skateboards, toy face masks, Christmas tree ornaments; magic tricks, play gel kits consisting primarily of toy putty and also including cups for use in artistic activities for children
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 1931453 filed 11/20/2018]. 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 proposes to amend the following class of goods/services in the application:
Current: Class 035 for administrative accounting, advertising the goods and services of others, advice and information concerning commercial business management and marketing, business administration and management, business management advisory services relating to franchising, business management and enterprise organization consultancy, business management assistance, business management consulting with relation to strategy, marketing, production, personnel and retail sale matters, business planning, consultancy relating to personnel management, marketing research, online department store services, providing assistance in the field of business management within the framework of a franchise contract, real estate sales management 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.

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 1931453 filed 11/20/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: administrative accounting, advertising the goods and services of others, advice and information concerning commercial business management and marketing, business administration and management, business management advisory services relating to franchising, business management and enterprise organization consultancy, business management assistance, business management consulting with relation to strategy, marketing, production, personnel and retail sale matters, business planning, consultancy relating to personnel management, marketing research, online department store services, providing assistance in the field of business management within the framework of a franchise contract, real estate sales management services; administrative accounting, advertising the goods and services of others, advice and information concerning commercial business management and marketing, business administration and management, business management advisory services relating to franchising, business management and enterprise organization consultancy, business management assistance, business management consulting with relation to strategy, marketing, production, personnel and retail sale matters, business planning, consultancy relating to personnel management, marketing research, online retail department store services, providing assistance in the field of business management within the framework of a franchise contract, real estate sales management servicesClass 035 for administrative accounting, advertising the goods and services of others, advice and information concerning commercial business management and marketing, business administration and management, business management advisory services relating to franchising, business management and enterprise organization consultancy, business management assistance, business management consulting with relation to strategy, marketing, production, personnel and retail sale matters, business planning, consultancy relating to personnel management, marketing research, online retail department store services, providing assistance in the field of business management within the framework of a franchise contract, real estate sales management services
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 1931453 filed 11/20/2018]. 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 proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment and educational services, namely, live theatrical performances, live performances by a musical band and providing hands-on educational programs for children in the field of arts and science; Production of television programs in the nature of radio programs, television shows with an artistic theme for children
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[ Canada application number 1931453 filed 11/20/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Entertainment and educational services, namely, live theatrical performances, live performances by a musical band and providing hands-on educational programs for children in the field of arts and science; Production of television programs in the nature of radio programs, television shows with an artistic theme for children; Production of television programs in the nature of television shows with an artistic theme for childrenClass 041 for Entertainment and educational services, namely, live theatrical performances, live performances by a musical band and providing hands-on educational programs for children in the field of arts and science; Production of television programs in the nature of television shows with an artistic theme for children
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 1931453 filed 11/20/2018]. 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
The foreign registration has not yet issued. Applicant requests that the application be suspended until a copy of the foreign registration is available.


SIGNATURE(S)
Response Signature
Signature: /Aaron Y. Silverstein/     Date: 07/18/2019
Signatory's Name: Aaron Y. Silverstein
Signatory's Position: Attorney of record, MA/NY bar member

Signatory's Phone Number: +1.978.463.9100

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: 88226557
Internet Transmission Date: Thu Jul 18 08:19:48 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.X.XX.XXX-20190718081948749
289-88226557-620fd973c5ed0af54c5c852f990
e75ec896859ad33c6df428d7669df2e33debb8fc
-N/A-N/A-20190718080235545613