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. 88463760 BRUTUS(Standard Characters, see http://uspto.report/TM/88463760/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Adult sexual stimulation aids, namely, sex toys, vibrators, artificial penises, strap-on artificial penises, penis enlargers, penis rings, penis extenders and anal toys, namely, anal beads and butt plugs; massage apparatus; condoms
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18075301 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 010 for Adult sexual stimulation aids, namely, sex toys, vibrators, artificial penises, strap-on artificial penises, penis enlargers, penis rings, penis extenders and anal toys, namely, anal beads and butt plugs; massage apparatus; condoms
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18075301 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Mediation of trade business for third parties in connection with wholesale and retail services in the field of the purchase and sale, import and export of adult sexual stimulation aids, sex toys, vibrators, artificial penises, strap-on artificial penises, penis enlargers, penis rings, penis sleeves, penis extenders, vibrating rings, artificial vaginas, masturbators and sex machines, anal toys, anal beads, butt plugs, massage apparatus, lubricants, condoms, erotic clothing, lingerie and other sexual and erotic products; consulting services in the fields of erotic articles, clothing and erotic games; providing information online in the fields of erotic articles, clothing and erotic games
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 18075301 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Mediation of trade business for third parties in connection with wholesale and retail services in the field of the purchase and sale, import and export of adult sexual stimulation aids, sex toys, vibrators, artificial penises, strap-on artificial penises, penis enlargers, penis rings, penis sleeves, penis extenders, vibrating rings, artificial vaginas, masturbators and sex machines, anal toys, anal beads, butt plugs, massage apparatus, lubricants, condoms, erotic clothing, lingerie and other sexual and erotic products; consulting services in the fields of erotic articles, clothing and erotic games; business consulting services in the fields of erotic articles, clothing and erotic games; providing information online in the fields of erotic articles, clothing and erotic games; providing consumer information online in the fields of erotic articles, clothing and erotic gamesClass 035 for Mediation of trade business for third parties in connection with wholesale and retail services in the field of the purchase and sale, import and export of adult sexual stimulation aids, sex toys, vibrators, artificial penises, strap-on artificial penises, penis enlargers, penis rings, penis sleeves, penis extenders, vibrating rings, artificial vaginas, masturbators and sex machines, anal toys, anal beads, butt plugs, massage apparatus, lubricants, condoms, erotic clothing, lingerie and other sexual and erotic products; business consulting services in the fields of erotic articles, clothing and erotic games; providing consumer information online in the fields of erotic articles, clothing and erotic games
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 18075301 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Michael C. Cerrati. Michael C. Cerrati of BELZER PC, is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      US

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is mcerrati@belzerlaw.com

The applicants proposed attorney information: Michael C. Cerrati. Other appointed attorneys are Nathan Belzer, Kate Strain, Tracy Steen and John Posa. Michael C. Cerrati of BELZER PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      United States

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is mcerrati@belzerlaw.com

Michael C. Cerrati 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: MICHAEL C. CERRATI. MICHAEL C. CERRATI of BELZER PC, is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      US

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is mcerrati@belzerlaw.com

The applicants proposed correspondence information: Michael C. Cerrati. Michael C. Cerrati of BELZER PC, is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      United States

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is mcerrati@belzerlaw.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The foreign registration serving as the Section 44(e) basis for this application has not yet issued and, therefore, Applicant respectfully requests that this application be suspended until a copy of the foreign registration is available.


SIGNATURE(S)
Response Signature
Signature: /michael cerrati/     Date: 09/16/2019
Signatory's Name: Michael Cerrati
Signatory's Position: Attorney of Record, South Carolina Bar member

Signatory's Phone Number: 9122363001

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:    MICHAEL C. CERRATI
   BELZER PC
   
   2905 BULL STREET
   SAVANNAH, Georgia 31405
Mailing Address:    Michael C. Cerrati
   BELZER PC
   2905 BULL STREET
   SAVANNAH, Georgia 31405
        
Serial Number: 88463760
Internet Transmission Date: Mon Sep 16 11:34:04 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019091611340447
7899-88463760-610924a83a5d79f1fad2794a5d
131b050f6bc5a77b6a89ad1adfecf93c67654e0-
N/A-N/A-20190916112637493412