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)

---

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. 88303843 LIL BABY(Standard Characters, see http://uspto.report/TM/88303843/mark.png) has been amended as follows:

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

The Examiner has refused the registration of the applied-for-mark LIL BABY because of the alleged likelihood of confusion with the word mark "LILBABY" in U.S. Registration No. 4918823. However, U.S. Registration No. 4918823 has been cancelled. The Examiner contends that the applied-for-mark as used on the specimen of record is merely a decorative or ornamental feature of applicant's clothing and, thus, does not function as a trademark to indicate the source of applicant's clothing and to identify and distinguish applicant's clothing form others. Applicant proposes to amend the filing basis to intent to use under Section 1(b). The Examiner additionally argues that the specimens also fail to show the applied-for-mark in use in commerce in connection with any of the services specified in International Class 041 in the application. Trademark Act Sections 1 and 45, 15 U.S.C. ??1051, 1127;37 C.F.R. ??2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found, 123 USPQ2d 1869-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-35 (TTAB 2015); TMEP ??904, 904.07(a), 1301.04(d), (g)(i). Specifically, the applicant has submitted a specimen showing applied- for-mark on what appears to be the back of an album cover, which also lists the songs and artists featured on the album, in addition to a specimen appearing to advertise a downloadable digital album. However, nothing in the specimens refer to the applicant's live musical performance, website, or non-downloadable music playback services. Thus, applicant's specimens fail to make a direct association between the applied-for-mark and applicant's Class 041 services. In response, Applicant is submitting a different specimen for International Class 041 that (a) shows the mark in the drawing in actual use in commerce for the goods and services in the application, and (b) was in actual use in commerce at least as early as the filing date of the application. Lastly, the name "LIL BABY" in the mark identifies a particular living individual and Applicant submits the required statement and written consent.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for T-shirts
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/31/2018 and first used in commerce at least as early as 07/31/2018 , and is now in use in such commerce.

Proposed: Class 025 for T-shirts
Deleted Filing Basis: 1(a)
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services in the nature of live musical performances; Entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring musical performances, musical videos, and music; Entertainment services, namely, providing non-downloadable playback of music via global communications networks; Providing a website featuring non-downloadable videos in the field of music
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/31/2016 and first used in commerce at least as early as 07/31/2016 , and is now in use in such commerce.

Proposed: Class 041 for Entertainment services in the nature of live musical performances; Entertainment services, namely, providing a web site featuring photographic, video and prose presentations featuring musical performances, musical videos, and music; Entertainment services, namely, providing non-downloadable playback of music via global communications networks; Providing a website featuring non-downloadable videos in the field of music
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 07/31/2016 and first used in commerce at least as early as 07/31/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 041 . The specimen(s) submitted consists of pictures of flyers for live performances for the applied-for-mark for applicant's Class 041 services .
"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]. Specimen File1
Specimen File2

ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Dominique Jones, whose consent(s) to register is made of record.

Original PDF file:
consent-10886107146-125213968_._Signed_declaration.pdf
Converted PDF file(s) ( 1 page)
Consent File1

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: /uwonda carter scott/      Date: 10/30/2019
Signatory's Name: Uwonda Carter Scott
Signatory's Position: Attorney of record
Signatory's Phone Number: 404-753-4227


Response Signature
Signature: /uwonda carter scott/     Date: 10/30/2019
Signatory's Name: Uwonda Carter Scott
Signatory's Position: Attorney of record

Signatory's Phone Number: 404-753-4227

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.

        
Serial Number: 88303843
Internet Transmission Date: Wed Oct 30 13:28:47 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201910301328473
51828-88303843-7004eea2b491ad41f768fb4c6
7a9f642ee113ab733eb46eb6b6bb74ff9eb2a124
a-N/A-N/A-20191030125213968221