TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88290745 DIATYPE(Standard Characters, see http://uspto.report/TM/88290745/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for printing house supplies, namely, script patterns, script templates, papers, fonts, typographical characters, paper and cardboard; paper models for art, namely, architectural models; paper and paper supplies for use in painting, drawing and paper sculpture; paper and writing materials for teachers and instructors
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: printing house supplies, namely, script patterns, script templates, papers, fonts, typographical characters, paper and cardboard; printing house supplies, namely, printed script patterns, script templates, papers, printed fonts, printed typographical characters, paper and cardboard; paper models for art, namely, architectural models; paper and paper supplies for use in painting, drawing and paper sculpture; paper and paper supplies in the nature of glue for stationary use for use in painting, drawing and paper sculpture; paper and writing materials for teachers and instructors; paper and writing materials for teachers and instructors, namely, printed teaching materials in the field of painting, calligraphy and writing.Class 016 for printing house supplies, namely, printed script patterns, script templates, papers, printed fonts, printed typographical characters, paper and cardboard; paper models for art, namely, architectural models; paper and paper supplies in the nature of glue for stationary use for use in painting, drawing and paper sculpture; paper and writing materials for teachers and instructors, namely, printed teaching materials in the field of painting, calligraphy and writing.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 040 for Typesetting services, namely, development and manufacturing of supplies for print shops; printed works; development of film in the field of photography and cinematography; duplication of audio and video recordings; distribution, renting and leasing of supplies in the field of printing, cinematography and photography, and duplication of audio and video recordings; consultation services in the field of printing, cinematography and photography, and duplication of audio and video recordings
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Typesetting services, namely, development and manufacturing of supplies for print shops; Typesetting services, namely, custom manufacturing of supplies for print shops; printed works; printing of printed works; development of film in the field of photography and cinematography; duplication of audio and video recordings; distribution, renting and leasing of supplies in the field of printing, cinematography and photography, and duplication of audio and video recordings; distribution in the nature of renting and leasing of supplies in the field of printing, and duplication of audio and video recordings; consultation services in the field of printing, cinematography and photography, and duplication of audio and video recordings; consultation services in the field of printing, and duplication of audio and video recordingsClass 040 for Typesetting services, namely, custom manufacturing of supplies for print shops; printing of printed works; development of film in the field of photography and cinematography; duplication of audio and video recordings; distribution in the nature of renting and leasing of supplies in the field of printing, and duplication of audio and video recordings; consultation services in the field of printing, and duplication of audio and video recordings
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 041 for Educational services, namely, holding seminars and workshops in the field of printing and graphic design; publishing of available characters and letter images for use by others
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Educational services, namely, holding seminars and workshops in the field of printing and graphic design; publishing of available characters and letter images for use by others; distribution in the nature of renting and leasing supplies in the field of cinematography and photography; consultation services in the fields of cinematography and photography; educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services in the nature of educational services, namely, holding seminars and workshops in the field of printing and graphic designClass 041 for Educational services, namely, holding seminars and workshops in the field of printing and graphic design; publishing of available characters and letter images for use by others; distribution in the nature of renting and leasing supplies in the field of cinematography and photography; consultation services in the fields of cinematography and photography; educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services in the nature of educational services, namely, holding seminars and workshops in the field of printing and graphic design
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 042 for design and development of fonts for use in printing and on computer interfaces; IT-services, namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control in print shops; graphic design services; educational services, namely, holding seminars and workshops in the field of printing and graphic design; consultation services, namely, holding seminars and workshops in the field of printing and graphic design; distribution, renting and leasing of objects in connection with the implementation of the aforementioned services, as far as contained in this class
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: design and development of fonts for use in printing and on computer interfaces; IT-services, namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control in print shops; graphic design services; educational services, namely, holding seminars and workshops in the field of printing and graphic design; distribution in the nature of renting and leasing of objects in connection with the implementation of the aforementioned services, as far as contained in this class, namely, computer software and programs.; consultation services, namely, holding seminars and workshops in the field of printing and graphic design; distribution, renting and leasing of objects in connection with the implementation of the aforementioned services, as far as contained in this classClass 042 for design and development of fonts for use in printing and on computer interfaces; IT-services, namely, software programming and implementation of software for authentication and quality control in print shops; development of computer hardware and software for authentication and quality control in print shops; graphic design services; distribution in the nature of renting and leasing of objects in connection with the implementation of the aforementioned services, as far as contained in this class, namely, computer software and programs.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of 12/21/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for distribution in the nature of wholesale retail store services for printing and photography supplies, and computer software
Filing Basis: Section 44(e),Based on Foreign Registration: 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 and /or services, and submits a copy of [__________ registration number 018003984 registered 06/06/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRN0-968517277-164039813_ ._MUS18Z04_DIATYPE.pdf
Converted PDF file(s) ( 9 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7Foreign Registration-8Foreign Registration-9

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Dinamo GmbH, a limited liability company legally organized under the laws of Switzerland, having an address of
      Schönaustrasse 46
      Basel, 4058
      Switzerland

Proposed: Dinamo GmbH, a limited liability company legally organized under the laws of Switzerland, having an address of
      Schönaustrasse 46
      Basel, 4058
      Switzerland
      Email Address: XXXX
Correspondence Information (current):
      Sarah M. Stemer
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@patentusa.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is T-11074.
Correspondence Information (proposed):
      Sarah M. Stemer
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@patentusa.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is T-11074.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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: /Sarah M. Stemer/      Date: 07/09/2020
Signatory's Name: Sarah M. Stemer
Signatory's Position: Associate at Lerner Greenberg Stemer LLP, Florida Bar Member
Signatory's Phone Number: 9549251100


Request for Reconsideration Signature
Signature: /Sarah M. Stemer/     Date: 07/09/2020
Signatory's Name: Sarah M. Stemer
Signatory's Position: Florida Bar Member, Attorney of Record

Signatory's Phone Number: 9549251100

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Sarah M. Stemer
   LERNER GREENBERG STEMER LLP
   
   PO BOX 2480
   HOLLYWOOD, Florida 33022
Mailing Address:    Sarah M. Stemer
   LERNER GREENBERG STEMER LLP
   PO BOX 2480
   HOLLYWOOD, Florida 33022
        
RAM Sale Number: 88290745
RAM Accounting Date: 07/09/2020
        
Serial Number: 88290745
Internet Transmission Date: Thu Jul 09 17:05:53 ET 2020
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XX-20200709170553909
777-88290745-710fdfa4cf27cc11237ae2b940f
6686d57fcbb3673abc37a0d41dcc4bf2d5fcf8-C
C-05525572-20200709164039813566