TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 11/30/2023)

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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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 11/30/2023)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88719395 MSCHF(Standard Characters, see http://uspto.report/TM/88719395/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 041 for (Based on Use in Commerce) (Based on Intent to Use) providing a website offering entertainment in the form of featuring novelty and humorous goods

Applicant proposes to amend the following:

Current:
Class 035 for (Based on Use in Commerce) Online retail store services featuring novelty and humorous goods; online store featuring non-downloadable software for playing games; online retail store featuring a wide variety of novelty and humorous goods and software; online retail stores selling shoes, rubber chickens, and pipes; providing online ordering services via a website featuring novelty and humorous gifts and game software for download
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 09/10/2016 and first used in commerce at least as early as 09/10/2016 , and is now in use in such commerce.


Proposed:
Class 035 for (Based on Use in Commerce) Online retail store services featuring novelty and humorous goods; online store featuring non-downloadable software for playing games; online retail store featuring a wide variety of novelty and humorous goods and software; online retail stores selling shoes, rubber chickens, and pipes; providing online ordering services via a website featuring novelty and humorous gifts and game software for download
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 09/10/2016 and first used in commerce at least as early as 09/10/2016 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of Specimen 1 is a screenshot taken from http://jesus.shoes/ on 12/17/2020. Specimen 1 is the intro screen before you are shown the shoes in the screenshot in Specimen 2, that makes it more clear the shoes are a MSCHF product. Specimen 2 is a screenshot taken from http://jesus.shoes/ on 10/09/2019 Specimen 3 is a screenshot taken from http://timesnewerroman.com/ on 12/17/2020. Specimen 3 is the intro screen before you are shown the product in the screenshot in Specimens 4 and 5, that makes it more clear it is a MSCHF product. Specimens 4 and 5 are screenshots taken from http://timesnewerroman.com/ on 10/09/2019.
"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:
SPU0-26038000ac00b4d07148 9b88464a1b-20201217185018 218117_._Specimen_1.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-26038000ac00b4d07148 9b88464a1b-20201217185018 218117_._Specimen_2.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-26038000ac00b4d07148 9b88464a1b-20201217185018 218117_._Specimen_3.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-26038000ac00b4d07148 9b88464a1b-20201217185018 218117_._Specimen_4.pdf
Converted PDF file(s) ( 3 pages) Specimen File1Specimen File2Specimen File3
Original PDF file:
SPU0-26038000ac00b4d07148 9b88464a1b-20201217185018 218117_._Specimen_5.pdf
Converted PDF file(s) ( 3 pages) Specimen File1Specimen File2Specimen File3
Correspondence Information (current):
      Stephen McArthur
      PRIMARY EMAIL FOR CORRESPONDENCE: stephen@smcarthurlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Stephen McArthur
      PRIMARY EMAIL FOR CORRESPONDENCE: stephen@smcarthurlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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: /Stephen McArthur/      Date: 12/17/2020
Signatory's Name: Stephen McArthur
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 3236394455


Request for Reconsideration Signature
Signature: /Stephen McArthur/     Date: 12/17/2020
Signatory's Name: Stephen McArthur
Signatory's Position: Attorney of record, California Bar Member

Signatory's Phone Number: 3236394455

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Stephen McArthur
   THE MCARTHUR LAW FIRM, PC
   
   9465 WILSHIRE BLVD #300
   BEVERLY HILLS, California 90212
Mailing Address:    Stephen McArthur
   THE MCARTHUR LAW FIRM, PC
   9465 WILSHIRE BLVD #300
   BEVERLY HILLS, California 90212
        
Serial Number: 88719395
Internet Transmission Date: Thu Dec 17 19:04:52 ET 2020
TEAS Stamp: USPTO/RFR-XXXX:XXXX:XXXX:XXXX:XXXX:XXX:X
XX:XXXX-20201217190452978585-88719395-75
0b72de052ce9ac5c144d6752873f62b0f9defc14
d784c3e9eae675725ed167f-N/A-N/A-20201217
185018218117