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) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 88381914 |
LAW OFFICE ASSIGNED | LAW OFFICE 109 |
MARK SECTION | |
MARK | http://uspto.report/TM/88381914/mark.png |
LITERAL ELEMENT | UNO |
STANDARD CHARACTERS | YES |
USPTO-GENERATED IMAGE | YES |
MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) | |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE RESPONSE TO OFFICE ACTION
In re: Trademark Application of: Mattel, Inc. 333 Continental Boulevard El Segundo, California 90245-5012 Serial No.: 88/381914 Filing Date: April 11, 2019 Class: 25 Mark: UNO
Trademark Law Office: 109 Examining Attorney: Tracy Cross
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
Sir:
This is in response to the Office Action mailed June 21, 2019.
RESPONSE
The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), alleging that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Number 1928784 for UNO, as to be likely to cause confusion, to cause mistake, or to deceive. Applicant respectfully disagrees.
Applicant has amended the ID to include the wording “ALL SOLD IN CONNECTION WITH THE UNO BRAND CARD GAME” in accordance with a prior settlement agreement with the cited party.
In view of the above, Applicant respectfully requests the Examining Attorney withdraw the refusal to register made under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) and to pass this application to publication. Upon publication the owner of the cited registration will have the opportunity to object, should it believe that the registration of our mark will harm their registration, which was not previously the case.
Respectfully submitted, |
|
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 025 |
DESCRIPTION | |
CLOTHING, NAMELY, TOPS, BOTTOMS, SHIRTS, PANTS, UNDERWEAR, SLEEPWEAR, BATHING SUITS, JACKETS, SOCKS; HEADWEAR; FOOTWEAR | |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 025 |
TRACKED TEXT DESCRIPTION | |
CLOTHING, NAMELY, TOPS, BOTTOMS, SHIRTS, PANTS, UNDERWEAR, SLEEPWEAR, BATHING SUITS, JACKETS, SOCKS; HEADWEAR; FOOTWEAR; ALL SOLD IN CONNECTION WITH THE UNO BRAND CARD GAME | |
FINAL DESCRIPTION | |
CLOTHING, NAMELY, TOPS, BOTTOMS, SHIRTS, PANTS, UNDERWEAR, SLEEPWEAR, BATHING SUITS, JACKETS, SOCKS; HEADWEAR; FOOTWEAR; ALL SOLD IN CONNECTION WITH THE UNO BRAND CARD GAME | |
FILING BASIS | Section 1(b) |
ATTORNEY SECTION (current) | |
NAME | MICHAEL MOORE |
ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
YEAR OF ADMISSION | NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
FIRM NAME | MATTEL, INC. |
INTERNAL ADDRESS | TWR 15-1 |
STREET | 333 CONTINENTAL BOULEVARD |
CITY | EL SEGUNDO |
STATE | California |
POSTAL CODE | 90245 |
COUNTRY | US |
PHONE | 310-252-2000 |
USPTO@MATTEL.COM | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
ATTORNEY SECTION (proposed) | |
NAME | MICHAEL MOORE |
ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
YEAR OF ADMISSION | XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
FIRM NAME | MATTEL, INC. |
INTERNAL ADDRESS | TWR 15-1 |
STREET | 333 CONTINENTAL BOULEVARD |
CITY | EL SEGUNDO |
STATE | California |
POSTAL CODE | 90245 |
COUNTRY | United States |
PHONE | 310-252-2000 |
USPTO@MATTEL.COM | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
OTHER APPOINTED ATTORNEY | TARA HART-NOVA, RIE MIYAKE |
CORRESPONDENCE SECTION (current) | |
NAME | MICHAEL MOORE |
FIRM NAME | MATTEL, INC. |
INTERNAL ADDRESS | TWR 15-1 |
STREET | 333 CONTINENTAL BOULEVARD |
CITY | EL SEGUNDO |
STATE | California |
POSTAL CODE | 90245 |
COUNTRY | US |
PHONE | 310-252-2000 |
USPTO@MATTEL.COM | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
CORRESPONDENCE SECTION (proposed) | |
NAME | MICHAEL MOORE |
FIRM NAME | MATTEL, INC. |
INTERNAL ADDRESS | TWR 15-1 |
STREET | 333 CONTINENTAL BOULEVARD |
CITY | EL SEGUNDO |
STATE | California |
POSTAL CODE | 90245 |
COUNTRY | United States |
PHONE | 310-252-2000 |
USPTO@MATTEL.COM | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
SIGNATURE SECTION | |
RESPONSE SIGNATURE | /mcm/ |
SIGNATORY'S NAME | MICHAEL MOORE |
SIGNATORY'S POSITION | ATTORNEY OF RECORD, CA BAR MEMBER |
SIGNATORY'S PHONE NUMBER | 310-252-2000 |
DATE SIGNED | 10/01/2019 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Wed Oct 02 10:13:35 EDT 2019 |
TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20191002101335823669-8838 1914-610f53484b4275ee6439 d3a7908150bd14ebdd1877efb 9e0c3d62c67ae23dafe1f-N/A -N/A-20191001163703890368 |
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) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
RESPONSE TO OFFICE ACTION
In re: Trademark Application of:
Mattel, Inc.
333 Continental Boulevard
El Segundo, California 90245-5012
Serial No.: 88/381914
Filing Date: April 11, 2019
Class: 25
Mark: UNO
Trademark Law Office: 109
Examining Attorney: Tracy Cross
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Sir:
This is in response to the Office Action mailed June 21, 2019.
RESPONSE
The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), alleging that Applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration Number 1928784 for UNO, as to be likely to cause confusion, to cause mistake, or to deceive. Applicant respectfully disagrees.
Applicant has amended the ID to include the wording “ALL SOLD IN CONNECTION WITH THE UNO BRAND CARD GAME” in accordance with a prior settlement agreement with the cited party.
In view of the above, Applicant respectfully requests the Examining Attorney withdraw the refusal to register made under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) and to pass this application to publication. Upon publication the owner of the cited registration will have the opportunity to object, should it believe that the registration of our mark will harm their registration, which was not previously the case.
Respectfully submitted,