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. 88303680 SUPERPET(Standard Characters, see http://uspto.report/TM/88303680/mark.png) has been amended as follows:

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

Registration is refused under Trademark Act Section 2(d), because of a likelihood of confusion with the mark in U.S. Registration No. 3792808. Applicant has clarified the nature of its goods and services, including among other things, deleting the following services from Class 035: "production, organisation, management, operation and supervision of trade fairs and shows." Applicant respectfully requests that the refusal with respect to Registration No. 3792808. Applicant advises that Application Serial No. 87730782 has been abandoned. Accordingly, Applicant respectfully requests the provisional refusal with respect to Serial No. 87730782 be withdrawn. Finally, Applicant respectfully requests withdrawal of the provisional refusal with respect to Serial Nos. 88108551 and 88052728, or in the alternative, suspension of its application pending the final disposition of Application Serial Nos. 88108551 and 88052728. Further and favorable action is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Childrens' books, printed matter, manuals; printed publications; instructional and teaching materials; magazines, catalogues, programmes and photographs; diaries, notepads and calendars, greetings cards; writing implements; posters
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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: Childrens' books, printed matter, manuals; Children's books; printed publications; printed matter and printed publications, namely, books and booklets in the field of animals; instructional and teaching materials; manuals in the field of animal care; magazines, catalogues, programmes and photographs; printed instructional and teaching materials in the field of animal care; general feature magazines; comic magazines, children's magazines; catalogues in the field of animals; programmes, namely, souvenir programs in the field of theatre performance; photographs; diaries, notepads and calendars, greetings cards; writing implements; postersClass 016 for Children's books; printed matter and printed publications, namely, books and booklets in the field of animals; manuals in the field of animal care; printed instructional and teaching materials in the field of animal care; general feature magazines; comic magazines, children's magazines; catalogues in the field of animals; programmes, namely, souvenir programs in the field of theatre performance; photographs; diaries, notepads and calendars, greetings cards; writing implements; posters
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Production of television and radio advertising; advertising services; business administration and business management services; production, organisation, management, operation and supervision of trade fairs and shows; organisation, operation and supervision of loyalty and incentive schemes; retail services connected with the sale of films and programmes for television and radio, data recordings including video, audio, still, and moving images and texts, computer software, educational software, electronic and video games, instructional and teaching apparatus and instruments, cinematographic and photographic films, sound and video recordings, computer software for use in downloading, storing, reproducing and organising audio, still and moving images and data, CDs, CDIs, CD ROMS, DVDs, discs, cassettes and other data carriers, books, printed matter, manuals, printed publications, instructional and teaching materials, magazines, catalogues, programmes and photographs, diaries, notepads and calendars, greetings cards, writing implements, posters, articles of clothing, t-shirts, rainwear, footwear, headwear, neckwear, gloves, mittens, nightwear, swimwear, underwear, articles of outer-clothing, shirts, sweaters, jumpers, trousers, pants, jeans, tops, scarves and ponchos
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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: Production of television and radio advertising; advertising services; business administration and business management services; production, organisation, management, operation and supervision of trade fairs and shows; customer loyalty services for commercial, promotional and/or advertising purposes; organisation, operation and supervision of loyalty and incentive schemes; incentive award programs to promote the sale of products and services of others; retail services connected with the sale of films and programmes for television and radio, data recordings including video, audio, still, and moving images and texts, computer software, educational software, electronic and video games, instructional and teaching apparatus and instruments, cinematographic and photographic films, sound and video recordings, computer software for use in downloading, storing, reproducing and organising audio, still and moving images and data, CDs, CDIs, CD ROMS, DVDs, discs, cassettes and other data carriers, books, printed matter, manuals, printed publications, instructional and teaching materials, magazines, catalogues, programmes and photographs, diaries, notepads and calendars, greetings cards, writing implements, posters, articles of clothing, t-shirts, rainwear, footwear, headwear, neckwear, gloves, mittens, nightwear, swimwear, underwear, articles of outer-clothing, shirts, sweaters, jumpers, trousers, pants, jeans, tops, scarves and ponchos; retail store services and online retail store services, both featuring films and programmes for television and radio, data recordings including video, audio, still, and moving images and texts, computer software, educational software, electronic and video games, instructional and teaching apparatus and instruments, cinematographic and photographic films, sound and video recordings, computer software for use in downloading, storing, reproducing and organising audio, still and moving images and data, CDs, CDIs, CD ROMS, DVDs, discs, cassettes and other data carriers, books, printed matter, manuals, printed publications, instructional and teaching materials, magazines, catalogues, programmes and photographs, diaries, notepads and calendars, greetings cards, writing implements, posters, articles of clothing, t-shirts, rainwear, footwear, headwear, neckwear, gloves, mittens, nightwear, swimwear, underwear, articles of outer-clothing, shirts, sweaters, jumpers, trousers, pants, jeans, tops, scarves and ponchos; Loyalty program payment processing services; providing tuition assistance services in the nature of educational scholarships to those with financial need; providing information to potential college, university and trade school students relating to tuition, scholarships, financial opportunities, and tuition assistanceClass 035 for Production of television and radio advertising; advertising services; business administration and business management services; customer loyalty services for commercial, promotional and/or advertising purposes; incentive award programs to promote the sale of products and services of others; retail store services and online retail store services, both featuring films and programmes for television and radio, data recordings including video, audio, still, and moving images and texts, computer software, educational software, electronic and video games, instructional and teaching apparatus and instruments, cinematographic and photographic films, sound and video recordings, computer software for use in downloading, storing, reproducing and organising audio, still and moving images and data, CDs, CDIs, CD ROMS, DVDs, discs, cassettes and other data carriers, books, printed matter, manuals, printed publications, instructional and teaching materials, magazines, catalogues, programmes and photographs, diaries, notepads and calendars, greetings cards, writing implements, posters, articles of clothing, t-shirts, rainwear, footwear, headwear, neckwear, gloves, mittens, nightwear, swimwear, underwear, articles of outer-clothing, shirts, sweaters, jumpers, trousers, pants, jeans, tops, scarves and ponchos; Loyalty program payment processing services; providing tuition assistance services in the nature of educational scholarships to those with financial need; providing information to potential college, university and trade school students relating to tuition, scholarships, financial opportunities, and tuition assistance
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Broadcasting services; radio and television broadcasting and transmission services; telecommunications; communications by fibre optic networks, electronic mail
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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: Broadcasting services; Broadcasting services, namely, video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others; radio and television broadcasting and transmission services; telecommunications; telecommunications, namely, providing telecommunications access services; communications by fibre optic networks, electronic mail; communications by fibre optic networks; transmission of electronic mail; promotion, for others, of musical eventsClass 038 for Broadcasting services, namely, video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others; radio and television broadcasting and transmission services; telecommunications, namely, providing telecommunications access services; communications by fibre optic networks; transmission of electronic mail; promotion, for others, of musical events
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, music and live music entertainment; organisation, promotion, presentation, production and management of musical events, shows, stage events and theatrical performances; live performances; cultural performances; provision of education, training, tuition; entertainment; production, presentation and distribution of audio, video, still and moving images and data; production, presentation, distribution and syndication and rental of radio and television programmes, radio, cable, satellite and internet programmes, sound recordings and video recordings; production, organisation, management, operation and supervision of conferences, seminars, exhibitions, trade shows, festivals, entertainment, music and live music, theatrical performances, cultural performances and organisation
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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: Entertainment services, music and live music entertainment; Entertainment services in the nature of an ongoing show featuring animation and children's entertainment broadcast over television, satellite, audio, and video media; organisation, promotion, presentation, production and management of musical events, shows, stage events and theatrical performances; live music performances by musical bands; live performances; organisation, presentation, production of musical events, shows, stage events and theatrical performances; cultural performances; entertainment services, namely, live dance, magic, music, comedy performances; provision of education, training, tuition; organization of cultural performances; entertainment; provision of education, namely, seminars and classes in the field of music and dance; production, presentation and distribution of audio, video, still and moving images and data; providing training in the field of animation; production, presentation and distribution of audio, video, still and moving images; production, organisation, management, operation and supervision of conferences, seminars, exhibitions, trade shows, festivals, entertainment, music and live music, theatrical performances, cultural performances and organisation; production, presentation, distribution and syndication and rental of radio and television programmes, radio, cable, satellite and internet programmes, sound recordings and video recordingsClass 041 for Entertainment services in the nature of an ongoing show featuring animation and children's entertainment broadcast over television, satellite, audio, and video media; live music performances by musical bands; organisation, presentation, production of musical events, shows, stage events and theatrical performances; entertainment services, namely, live dance, magic, music, comedy performances; organization of cultural performances; provision of education, namely, seminars and classes in the field of music and dance; providing training in the field of animation; production, presentation and distribution of audio, video, still and moving images; production, presentation, distribution and syndication and rental of radio and television programmes, radio, cable, satellite and internet programmes, sound recordings and video recordings
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000329899 registered 06/22/2018 with a renewal date of __________ and an expiration date of 03/23/2028 ], 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 applicant's current attorney information: Jess M. Collen. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      US
The docket/reference number is Y317.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com

The applicants proposed attorney information: Jess M. Collen. Other appointed attorneys are Audra Kemp. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      United States
The docket/reference number is Y317.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com

Jess M. Collen 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: JESS M. COLLEN. JESS M. COLLEN of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      US
The docket/reference number is Y317.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com; tmcollen@collenip.com

The applicants proposed correspondence information: Jess M. Collen. Jess M. Collen of COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C., is located at

      THE HOLYOKE-MANHATTAN BUILDING
      80 SOUTH HIGHLAND AVENUE
      OSSINING, New York 10562
      United States
The docket/reference number is Y317.

The phone number is 914-941-5668.

The fax number is (914) 941-6091.

The email address is trademark@collenip.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_711254634-143022380_._Y317_executed_Declaration_in_Support_of_Application_190312.PDF
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: [signed]
Signatory's Position: Owner

Response Signature
Signature: /audra kemp/     Date: 11/08/2019
Signatory's Name: Audra Kemp
Signatory's Position: Senior Associate Attorney, Collen IP, NY State Bar member

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:    JESS M. COLLEN
   COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C.
   THE HOLYOKE-MANHATTAN BUILDING
   80 SOUTH HIGHLAND AVENUE
   OSSINING, New York 10562
Mailing Address:    Jess M. Collen
   COLLEN IP, INTELLECTUAL PROPERTY LAW, P.C.
   THE HOLYOKE-MANHATTAN BUILDING
   80 SOUTH HIGHLAND AVENUE
   OSSINING, New York 10562
        
Serial Number: 88303680
Internet Transmission Date: Fri Nov 08 14:55:17 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191108145517554
138-88303680-700d59b177542684e2ab08713da
eaac6d60b2278b8f31e98e2c5421ea09fce8547-
N/A-N/A-20191108143022380624