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. 88769320 CHRISTIAN GREY COLLECTION(Standard Characters, see http://uspto.report/TM/88769320/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Personal sexual lubricants; personal sexual lubricants, namely, sprays, creams and gels
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 005 for Personal sexual lubricants; personal sexual lubricants, namely, sprays, creams and gels
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 010 for Adult sexual stimulation aids, namely, benwa balls, love eggs, anal beads, nipple suckers, paddles, vibrators, massage apparatus, artificial penises, artificial vaginas, penis rings, nipple clamps, dildos, dongs, butt plugs, penis sleeves, penis extensions, harnesses and love dolls; condoms
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 010 for Adult sexual stimulation aids, namely, benwa balls, love eggs, anal beads, nipple suckers, paddles, vibrators, massage apparatus, artificial penises, artificial vaginas, penis rings, nipple clamps, dildos, dongs, butt plugs, penis sleeves, penis extensions, harnesses and love dolls; condoms
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 014 for Jewellery, necklaces, earrings and bracelets; costume jewelry; imitation jewelry; leather and imitation leather key chains
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 014 for Jewellery, necklaces, earrings and bracelets; costume jewelry; imitation jewelry; leather and imitation leather key chains
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 018 for Goods made from leather and imitation leather, namely, pocketbooks, tote bags, backpacks, luggage, cosmetic bags sold empty, key cases; trunks and traveling bags; handbags, rucksacks, purses, wallets, holdalls, leather cord, leather straps; umbrellas; whips
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Goods made from leather and imitation leather, namely, pocketbooks, tote bags, backpacks, luggage, cosmetic bags sold empty, key cases; trunks and traveling bags; trunks being luggage and traveling bags; handbags, rucksacks, purses, wallets, holdalls, leather cord, leather straps; umbrellas; whipsClass 018 for Goods made from leather and imitation leather, namely, pocketbooks, tote bags, backpacks, luggage, cosmetic bags sold empty, key cases; trunks being luggage and traveling bags; handbags, rucksacks, purses, wallets, holdalls, leather cord, leather straps; umbrellas; whips
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 022 for Ropes
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 022 for Ropes
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 011172509 registered 01/16/2013 with a renewal date of __________ and an expiration date of 09/07/2022 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Fifty Shades Limited, a corporation of United Kingdom, having an address of
      Russell House, 140 High Street
      Edgware, Middlesex, HA87LW
      United Kingdom

Proposed: Fifty Shades Limited, a corporation of United Kingdom, having an address of
      Russell House, 140 High Street
      Edgware, Middlesex, HA87LW
      United Kingdom
      Email Address: XXXX

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


Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.


The owner's/holder's current attorney information: Diane Donnelly. Diane Donnelly of VON MALTITZ, DERENBERG, KUNIN, JANSSEN & GIORDANO, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      60 EAST 42ND STREET, SUITE 1948
      NEW YORK, New York 10165
      United States
The docket/reference number is 8894.
      The phone number is 212-661-1400.
      The fax number is 212 370 1819.
      The email address is ddonnelly@vonmaltitz.com

The owner's/holder's proposed attorney information: Diane Donnelly. Other appointed attorneys are Ronald S. Kadden. Diane Donnelly of VON MALTITZ, DERENBERG, KUNIN, JANSSEN & GIORDANO, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      60 EAST 42ND STREET, SUITE 1948
      NEW YORK, New York 10165
      United States
The docket/reference number is 8894.
      The phone number is 212-661-1400.
      The fax number is 212 370 1819.
      The email address is ddonnelly@vonmaltitz.com

Diane Donnelly 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.Correspondence Information (current):
      DIANE DONNELLY
      PRIMARY EMAIL FOR CORRESPONDENCE: ddonnelly@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 8894.
Correspondence Information (proposed):
      Diane Donnelly
      PRIMARY EMAIL FOR CORRESPONDENCE: ddonnelly@vonmaltitz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 8894.

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)
Response Signature
Signature: /Diane Donnelly/     Date: 06/13/2020
Signatory's Name: Diane Donnelly
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 212-661-1400

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:    DIANE DONNELLY
   VON MALTITZ, DERENBERG, KUNIN, JANSSEN & GIORDANO
   
   60 EAST 42ND STREET, SUITE 1948
   NEW YORK, New York 10165
Mailing Address:    Diane Donnelly
   VON MALTITZ, DERENBERG, KUNIN, JANSSEN & GIORDANO
   60 EAST 42ND STREET, SUITE 1948
   NEW YORK, New York 10165
        
Serial Number: 88769320
Internet Transmission Date: Sat Jun 13 18:01:05 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20200613180105447
115-88769320-71028eff348f7dc6d574b9a5458
282d2d3ea2012d16e893769efe31bd6b87d7-N/A
-N/A-20200613174908637933