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. 88490746 WEBTOON (Stylized and/or with Design, see http://uspto.report/TM/88490746/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 009 for Downloadable comic books, graphic novels, electronic cartoons; Downloadable software applications for viewing electronic cartoons provided on the internet for smartphones and tablet personal computers; Computer software for viewing electronic cartoons provided on the internet; Downloadable electronic books and magazines in the field of cartoons
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 05/21/2019 and first used in commerce at least as early as 05/21/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Downloadable comic books, graphic novels, electronic cartoons; Downloadable software applications for viewing electronic cartoons provided on the internet for smartphones and tablet personal computers; Computer software for viewing electronic cartoons provided on the internet; Downloadable computer software for viewing electronic cartoons provided on the internet; Downloadable electronic books and magazines in the field of cartoonsClass 009 for Downloadable comic books, graphic novels, electronic cartoons; Downloadable software applications for viewing electronic cartoons provided on the internet for smartphones and tablet personal computers; Downloadable computer software for viewing electronic cartoons provided on the internet; Downloadable electronic books and magazines in the field of cartoons
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 05/21/2019 and first used in commerce at least as early as 05/21/2019 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing online non-downloadable comic books; Providing on-line non-downloadable cartoon strips and comic books; Providing on-line non-downloadable cartoon strips and comic books available on mobile phones and tablet personal computers; On-line publication of non-downloadable electronic cartoon strips and comic books; Rental of non-downloadable electronic cartoon publications via the internet; Providing non-commercial, non-business ratings and review information and updates thereof by genre by analyzing the number of user clicks for online electronic cartoon publications, namely, books, magazines and journals via the internet; Providing online syndicated animated cartoons
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 05/21/2019 and first used in commerce at least as early as 05/21/2019 , and is now in use in such commerce.

Proposed: Class 041 for Providing online non-downloadable comic books; Providing on-line non-downloadable cartoon strips and comic books; Providing on-line non-downloadable cartoon strips and comic books available on mobile phones and tablet personal computers; On-line publication of non-downloadable electronic cartoon strips and comic books; Rental of non-downloadable electronic cartoon publications via the internet; Providing non-commercial, non-business ratings and review information and updates thereof by genre by analyzing the number of user clicks for online electronic cartoon publications, namely, books, magazines and journals via the internet; Providing online syndicated animated cartoons
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 05/21/2019 and first used in commerce at least as early as 05/21/2019 , 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 screenshots from website demonstrating use of mark with associated 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].
Original PDF file:
SPU2-401372501-20200128191913052392_._WEBTOON_class_41_specimen_1.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-401372501-20200128191913052392_._WEBTOON_class_41_specimen_2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-401372501-20200128191913052392_._WEBTOON_class_41_specimen_3.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-401372501-20200128191913052392_._WEBTOON_class_41_specimen_4.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

The applicant's current attorney information: Lindsay J. Hulley. Lindsay J. Hulley of RUTAN & TUCKER, LLP, is located at

      14TH FLOOR
      611 ANTON BOULEVARD
      COSTA MESA, California 92626
      US
The docket/reference number is 035403.0005T.

The phone number is 714-641-5100.

The email address is trademarks@rutan.com

The applicants proposed attorney information: Lindsay J. Hulley. Other appointed attorneys are All Attorneys in the Trademark Legal Department. Lindsay J. Hulley of RUTAN & TUCKER, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      14TH FLOOR
      611 ANTON BOULEVARD
      COSTA MESA, California 92626
      United States
The docket/reference number is 035403.0005T.

The phone number is 714-641-5100.

The email address is trademarks@rutan.com

Lindsay J. Hulley 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: LINDSAY J. HULLEY. LINDSAY J. HULLEY of RUTAN & TUCKER, LLP, is located at

      14TH FLOOR
      611 ANTON BOULEVARD
      COSTA MESA, California 92626
      US
The docket/reference number is 035403.0005T.

The phone number is 714-641-5100.

The email address is trademarks@rutan.com

The applicants proposed correspondence information: Lindsay J. Hulley. Lindsay J. Hulley of RUTAN & TUCKER, LLP, is located at

      14TH FLOOR
      611 ANTON BOULEVARD
      COSTA MESA, California 92626
      United States
The docket/reference number is 035403.0005T.

The phone number is 714-641-5100.

The email address is trademarks@rutan.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "WEBTOON" apart from the mark as shown.


Description of mark
The mark consists of the wording "WEBTOON" in capital letters all within a stylized polygonal speech box.

Miscellaneous Statement
In response to the class 38 specimen refusal, applicant responds as follows: Applicant provides all of the class 38 services itself, without out the aid of a third party provider or platform, directly via its online website and downloadable software application. Applicant respectfully submits that no additional specimen is required.


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: /Lindsay J. Hulley/      Date: 01/28/2020
Signatory's Name: Lindsay J. Hulley
Signatory's Position: Attorney of record
Signatory's Phone Number: 714-641-5100


Response Signature
Signature: /Lindsay J. Hulley/     Date: 01/28/2020
Signatory's Name: Lindsay J. Hulley
Signatory's Position: Attorney of record

Signatory's Phone Number: 714-641-5100

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:    LINDSAY J. HULLEY
   RUTAN & TUCKER, LLP
   14TH FLOOR
   611 ANTON BOULEVARD
   COSTA MESA, California 92626
Mailing Address:    Lindsay J. Hulley
   RUTAN & TUCKER, LLP
   14TH FLOOR
   611 ANTON BOULEVARD
   COSTA MESA, California 92626
        
Serial Number: 88490746
Internet Transmission Date: Tue Jan 28 19:26:50 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20200128192650644
987-88490746-700fc4d218ab8765c5d2660855b
2e97ab2c35129456613493bdec6ea36178909e-N
/A-N/A-20200128191913052392