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. 88257313 IT'S NOT STOCK IT'S SHUTTERSTOCK(Standard Characters, see http://uspto.report/TM/88257313/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Providing advertising, marketing and promotional services, namely, development of advertising campaigns for commercial licensing of digital photographs, images and illustrations

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 (Original Class: 035 ) for Licensing of intellectual property, namely, reproduction rights for images, photographs, stock photographs, archival photographs, art reproductions, film, video, animation, graphic designs, clip art, news images, audio data and illustrations; licensing of images, photographs, stock photographs, archival photographs, art reproductions, film, video, animation, graphic designs, clip art, news images, audio data and illustrations to others via computer networks and global communications networks; licensing of films, video, visual content and audiovisual content for others; all of the foregoing for use in the fields of electronic and print publishing, graphic design, advertising, product packaging, multimedia, film, television and live performances.
Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 01/02/2019 and first used in commerce at least as early as 01/02/2019 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 045 . The specimen(s) submitted consists of A banner across the Shutterstock webpage with the image of a purple alien female and the mark "it's not stock. it's shutterstock". There's a button on the banner that drives customers to pricing information. .
"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].
Original PDF file:
SPU0-162212401-20190909134122644379_._It_s_not_stock._It_s_Shutterstock_Specimen.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current correspondence information: Stephanie S. Spangler. Stephanie S. Spangler of Norris McLaughlin, P.A., is located at

      875 Third Avenue, 8th Floor
      New York, New York 10022
      US
The docket/reference number is 128460-3.

The phone number is 212-808-0700.

The fax number is 212-808-0844.

The email address is ssspangler@norris-law.com; dmdefilippis@norris-law.com; bstoll@norris-law.com; tmdept@norris-law.com

The applicants proposed correspondence information: Stephanie S. Spangler. Stephanie S. Spangler, is located at

      350 Fifth Avenue, 21st Floor
      New York, New York 10118
      United States

The phone number is 646-710-3417.

The email address is trademarks@shutterstock.com; Counsel@shutterstock.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: /heidi garfield/      Date: 09/09/2019
Signatory's Name: Heidi Garfield
Signatory's Position: VP, General Counsel
Signatory's Phone Number: 646-710-3417


Response Signature
Signature: /heidi garfield/     Date: 09/09/2019
Signatory's Name: Heidi Garfield
Signatory's Position: Heidi Garfield

Signatory's Phone Number: 646-710-3417

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:    Stephanie S. Spangler
   Norris McLaughlin, P.A.
   
   875 Third Avenue, 8th Floor
   New York, New York 10022
Mailing Address:    Stephanie S. Spangler
   350 Fifth Avenue, 21st Floor
   New York, New York 10118
        
Serial Number: 88257313
Internet Transmission Date: Mon Sep 09 14:31:58 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20190909143158968
710-88257313-61064efce61f57fdf8818ddecab
b4fb9fbe1ced769b2a640a6f13484ab849c3388-
N/A-N/A-20190909134122644379