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. 88419777 TOY BIZ(Standard Characters, see http://uspto.report/TM/88419777/mark.png) has been amended as follows:

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

The Amendments and Remarks are attached as a pdf file to preserve the formatting of the text.

EVIDENCE
Evidence in the nature of Amendments and Remarks has been attached.
Original PDF file:
evi_703417252-20200102160300219373_._and_Remarks_for_TOY_BIZ_word_mark_in_Class_9__1099670xD1162_.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; digital media; audio books; audio and visual recordings; video game software; computer programs and software; downloadable electronic publications; downloadable game software; downloadable mobile applications; consumer electronics and accessories therefor; eyeglasses and sunglasses and accessories therefor; binoculars; decorative magnets; graduated rulers; microphones; helmets; flotation vests; protective face masks not for medical purposes; snorkels; swimming goggles; swim masks
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; digital media; digital media, namely, pre-recorded downloadable audio and video recordings, CDs, DVDs, high definition digital discs, mp3 files and mp4 files featuring live-action entertainment, animated entertainment, music and stories; audio books; audio books featuring fiction or audio books featuring non-fiction; audio and visual recordings; downloadable ringtones featuring music and other sounds, via a global computer network and wireless communication devices; video game software; audio and visual recordings featuring live-action entertainment, animated entertainment, music, stories, and games; computer programs and software; musical recordings; downloadable electronic publications; downloadable electronic publications in the nature of comic books, comic magazines and stories in illustrated form; downloadable game software; downloadable computer game software; downloadable mobile applications; downloadable mobile applications for viewing, playing, and purchasing animated entertainment and electronic games; consumer electronics and accessories therefor; downloadable video game software; eyeglasses and sunglasses and accessories therefor; computer software for the administration of learning activities; encoded electronic chip cards containing music, stories, dramatic performances, non-dramatic performances, and learning activities; computer hardware and computer peripheral devices; mouse pads; wrist and arm rests for use with computers; helmets; calculators; cell phone battery chargers; electronic personal organizers; cameras; digital cameras; optical, digital versatile, and compact disc players and recorders for audio, video, and computer data; radios; audio speakers; digital photo frames; headphones; earphones; ear buds; walkie-talkies; telephones; headsets for cellular telephones; adapters for cellular telephones in the nature of power adapters; batteries for cellular telephones; cell phone cases; face plates for cellular telephones; eyeglasses; sunglasses; eyeglass and sunglass cases; binoculars; decorative magnets; graduated rulers; microphones; protective covers and cases for tablet computers; radio frequency authentication device in the nature of identification tag readers and radio frequency transmitter; smart watches; fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, mobile computers, and tablet computers; video projectors; video projector with wireless connection capability for use with wireless communication devices; karaoke machines; bicycle helmets; flotation vests; protective face masks not for medical purposes; protective helmets for sports; snorkels; swimming goggles; swim masksClass 009 for Apparatus for recording, transmission, processing, and reproduction of sound, images, or data; digital media, namely, pre-recorded downloadable audio and video recordings, CDs, DVDs, high definition digital discs, mp3 files and mp4 files featuring live-action entertainment, animated entertainment, music and stories; audio books featuring fiction or audio books featuring non-fiction; downloadable ringtones featuring music and other sounds, via a global computer network and wireless communication devices; audio and visual recordings featuring live-action entertainment, animated entertainment, music, stories, and games; musical recordings; downloadable electronic publications in the nature of comic books, comic magazines and stories in illustrated form; downloadable computer game software; downloadable mobile applications for viewing, playing, and purchasing animated entertainment and electronic games; downloadable video game software; computer software for the administration of learning activities; encoded electronic chip cards containing music, stories, dramatic performances, non-dramatic performances, and learning activities; computer hardware and computer peripheral devices; mouse pads; wrist and arm rests for use with computers; calculators; cell phone battery chargers; electronic personal organizers; cameras; digital cameras; optical, digital versatile, and compact disc players and recorders for audio, video, and computer data; radios; audio speakers; digital photo frames; headphones; earphones; ear buds; walkie-talkies; telephones; headsets for cellular telephones; adapters for cellular telephones in the nature of power adapters; batteries for cellular telephones; cell phone cases; face plates for cellular telephones; eyeglasses; sunglasses; eyeglass and sunglass cases; binoculars; decorative magnets; graduated rulers; microphones; protective covers and cases for tablet computers; radio frequency authentication device in the nature of identification tag readers and radio frequency transmitter; smart watches; fitted plastic films known as skins for covering and protecting electronic apparatus, namely, mobile phones, portable music players, mobile computers, and tablet computers; video projectors; video projector with wireless connection capability for use with wireless communication devices; karaoke machines; bicycle helmets; flotation vests; protective face masks not for medical purposes; protective helmets for sports; snorkels; swimming goggles; swim masks
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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant agrees to enter a partial disclaimer of the word "TOY" as to "games" as follows: No claim is made to the exclusive right to TOY apart from the mark as shown as to: "downloadable computer game software; downloadable mobile applications for viewing, playing, and purchasing electronic games; downloadable video game software."


SIGNATURE(S)
Response Signature
Signature: /Linda McLeod/     Date: 01/03/2020
Signatory's Name: Linda K. McLeod
Signatory's Position: Associate Attorney of Record, D.C. Bar Member

Signatory's Phone Number: 202-808-3570

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: 88419777
Internet Transmission Date: Sat Jan 04 09:10:50 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20200104091050729
278-88419777-70075a857f75d6cfcf0188920f3
11d8ec27130ec6a6bb95cfc2a7ba2db2ca656-N/
A-N/A-20200103062424135085