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. 88719395 MSCHF(Standard Characters, see http://uspto.report/TM/88719395/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for online retail store services featuring novelty and humorous goods; online store featuring humorous downloadable software and non-downloadable software; online retail store featuring a wide variety of novelty and humorous goods and software; online retails store selling shoes, rubber chickens, pipes
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:

Tracked Text Description: Online retail store services featuring novelty and humorous goods; online store featuring humorous downloadable software and non-downloadable software; online store featuring non-downloadable software for playing games; online retail store featuring a wide variety of novelty and humorous goods and software; online retails store selling shoes, rubber chickens, pipes; 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 downloadClass 035 for 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 proposes to amend the following:

Current:
Class 041 for providing a website featuring novelty and humorous goods for sale and software for download; providing humorous websites that offer entertainment, novelty goods, software, and unique experiences
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:

Tracked Text Description: providing a website featuring novelty and humorous goods for sale and software for download; providing a website offering entertainment in the form of featuring novelty and humorous goods; providing humorous websites that offer entertainment, novelty goods, software, and unique experiencesClass 041 for providing a website offering entertainment in the form of featuring novelty and humorous goods
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 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 041. The specimen(s) submitted consists of Attached is the specimen image was submitted with the original application, but did not load. It shows the MSCHF website offering entertaimment in the manner of a novelty/humerous good in the form of a Jesus' Shoes as a "relic" bearing a cruxicix and holy water in the bottom of the shoe against a renaissance painting background..
"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].
Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: MSCHF PRODUCT STUDIO, INC, a corporation of Delaware, having an address of
      395 Wythe Ave
      Brooklyn, New York 11249
      United States

Proposed: MSCHF PRODUCT STUDIO, INC, a corporation of Delaware, having an address of
      395 Wythe Ave
      Brooklyn, New York 11249
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
The original specimen is proper for the Class 35 and 41 services because pages 1 and 2 show the product for sale as "Times NEWER Roman", which is a parody of Times New Roman, followed by "Made by MSCHF, the creators of Tabagotchi, Away Mode, Man Eating Food", which the consumer would recognize as other humerous products and services.

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: 09/13/2020
Signatory's Name: Stephen McArthur
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 3236394455


Response Signature
Signature: /Stephen McArthur/     Date: 09/13/2020
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.

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: Sun Sep 13 20:17:49 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20200913201749988793-88719395-
7509fc2cb4cc6f9d27a11fb9a8a2b943f234b787
38f5b7289221f627b6d4f1f7d8-N/A-N/A-20200
913195844067655