PTO- 1957 |
Approved for use through 11/30/2023. OMB 0651-0050 |
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88937682 |
LAW OFFICE ASSIGNED |
LAW OFFICE 114 |
MARK SECTION |
MARK |
mark |
LITERAL ELEMENT |
TOMB RAIDER |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
GOODS AND/OR SERVICES SECTION (014) (current) |
INTERNATIONAL CLASS |
014 |
DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Jewellery; key chains; jewellery chains; pendants; watches; brooches; lapel pins |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
GOODS AND/OR SERVICES SECTION (014) (proposed) |
INTERNATIONAL CLASS |
014 |
TRACKED TEXT DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Jewellery; key chains;
jewellery chains; pendants; watches; brooches being jewellery; brooches; lapel pins; (Based on Intent to Use) key chains |
FINAL DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Jewellery; jewellery chains; pendants; watches; brooches being jewellery; lapel pins; (Based
on Intent to Use) key chains |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU0-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00003157371_ 9785906.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0002.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0003.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0004.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (018) (current) |
INTERNATIONAL CLASS |
018 |
DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Luggage; bags; cosmetic bags; wallets; purses; messenger bags; fanny packs; key cases;
shoulder belts; umbrellas |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
GOODS AND/OR SERVICES SECTION (018) (proposed) |
INTERNATIONAL CLASS |
018 |
TRACKED TEXT DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Luggage; bags; bags, namely, gym bags, sports bags, textile shopping bags, travelling bags, handbags, holdalls, rucksacks, backpacks, briefcases, music cases, satchels, holdalls,
rucksacks; cosmetic bags; cosmetic bags sold empty; wallets; purses; messenger bags; fanny packs; key cases; shoulder belts;
leather shoulder belts; umbrellas |
FINAL DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Luggage; bags, namely, gym bags, sports bags, textile shopping bags, travelling bags,
handbags, holdalls, rucksacks, backpacks, briefcases, music cases, satchels, holdalls, rucksacks; cosmetic bags sold empty; wallets; purses; messenger bags; fanny packs; key cases; leather shoulder
belts; umbrellas |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU1-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00003157371_ 9785906.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0005.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0006.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0007.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (025) (current) |
INTERNATIONAL CLASS |
025 |
DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Clothing, namely, trousers, t-shirts, sweatshirts, jumpers, polo-shirts, casual and leisure
jackets, shirts, shorts, socks, underwear, swimwear, nightwear; headgear, namely, hats and caps; costumes; belts; (Based on Intent to Use) shoes and boots |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
GOODS AND/OR SERVICES SECTION (025) (proposed) |
INTERNATIONAL CLASS |
025 |
TRACKED TEXT DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Clothing, namely, trousers, t-shirts, sweatshirts, jumpers, polo-shirts,
casual and leisure jackets, shirts, shorts, socks, underwear, swimwear, nightwear; headgear, namely, hats and caps; heawgear, namely, hats and caps; costumes; Halloween costumes; masquerade
costumes; belts; (Based on Intent to Use) shoes and boots |
FINAL DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Clothing, namely, trousers, t-shirts, sweatshirts, jumpers, polo-shirts, casual and leisure
jackets, shirts, shorts, socks, underwear, swimwear, nightwear; heawgear, namely, hats and caps; Halloween costumes; masquerade costumes; belts; (Based on Intent to Use) shoes and boots |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU2-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00002128255_ 9785879.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0008.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0009.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0010.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
GOODS AND/OR SERVICES SECTION (041) (current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Entertainment services, namely, providing on-line computer games and providing on-line
non-downloadable computer game software; computer game services provided remotely by means of the internet; (Based on Intent to Use) Entertainment services, namely, production and direction of
feature films, TV films and TV series; production of video gaming related multimedia programs and distribution by means of television broadcasting and via the Internet; publishing of computer game
publications, namely, books featuring computer games and computer game software; music publishing; film production, other than advertising films; television entertainment, namely, provision of
graphic, visual and literary content for feature films, TV films and TV series including the creation of story lines and character development; information and advisory services in the field of
computer game entertainment and publishing |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
GOODS AND/OR SERVICES SECTION (041) (proposed) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
(Based on 44(e)) (Based on Intent to Use) Entertainment services, namely, providing on-line computer games and providing on-line
non-downloadable computer game software; computer game services provided remotely by means of the internet; (Based on Intent to Use) Entertainment services, namely, production and direction of
feature films, TV films and TV series; production of video gaming related multimedia programs and distribution by means of television broadcasting and via the Internet; publishing of computer game
publications, namely, books featuring computer games and computer game software; music publishing; film production, other than advertising films; television entertainment, namely, provision of
graphic, visual and literary content for feature films, TV films and TV series including the creation of story lines and character development; information and advisory services in the field of
computer game entertainment and publishing |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(e) |
FOREIGN REGISTRATION NUMBER |
UK0000315737 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United Kingdom |
FOREIGN REGISTRATION
DATE |
03/31/2016 |
FOREIGN EXPIRATION DATE |
03/31/2026 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU3-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00002128255_ 9785879.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0011.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0012.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0013.JPG |
STANDARD CHARACTERS
OR EQUIVALENT |
YES |
ADDITIONAL STATEMENTS SECTION |
MISCELLANEOUS STATEMENT |
The Examining Attorney takes the position that "wallets" are outside the scope of the U.K. registration and therefore cannot be covered under
the Section 44(e) basis. However, as shown in the attached dictionary definition, the word "purses" in the U.K. registration includes "wallets" as used in the subject application. The dictionary
definition specifically states that the British English definition of "purse" is "a very small bag that people, especially women, keep their money in", and is followed by a regional note: "in AM,
usually use wallet". Accordingly, Applicant requests that the Examining Attorney accept "wallets" as a synonym of "purses" in the U.K. registration. The Examining Attorney has require amendment of
certain wording in Class 41. However, in each case, several registrations (including registrations owned by Applicant) have recently issued with such wording, as shown below: "Computer game services
provided remotely by means of the internet": included in Reg. Nos. 6072181, 6089256, 5796990 and others. "Publishing of computer game publications, namely, books featuring computer games and computer
game software": included in Reg. Nos. 6072181, 6089256, 5796990 and others. "television entertainment, namely, provision of graphic, visual and literary content for feature films, TV films and TV
series including the creation of story lines and character development" included in Reg. Nos. 6072181, 6089256, 5796990 and others. "information and advisory services in the field of computer game
entertainment and publishing": 6072181, 5796990, 5782142 and others. A copy set of TESS printouts for these registrations is attached. Applicant requests that the Examining Attorney accept the
wording as-is, consistent with the wording accepted in the referenced registrations. |
MISCELLANEOUS FILE NAME(S) |
ORIGINAL PDF FILE |
mis-5023464202-2021021815
0441318235_._Purse_defini tion_and_meaning___Collin s_English_Dictionary.pdf |
CONVERTED PDF FILE(S)
(11 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0014.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0015.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0016.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0017.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0018.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0019.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0020.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0021.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0022.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0023.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0024.JPG |
ORIGINAL PDF FILE |
mis-5023464202-2021021815
0441318235_._Trademark_El ectronic_Search_System__T ESS__6072181_et_al_.pdf |
CONVERTED PDF FILE(S)
(8 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0025.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0026.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0027.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0028.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0029.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0030.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0031.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\376\88937682\xml8\ ROA0032.JPG |
CORRESPONDENCE INFORMATION (current) |
NAME |
Laura J. Winston |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@offitkurman.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
lwinston@offitkurman.com; alison.pratt@offitkurman.com |
DOCKET/REFERENCE NUMBER |
2450015.0173 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Laura J. Winston |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@offitkurman.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
lwinston@offitkurman.com; alison.pratt@offitkurman.com |
DOCKET/REFERENCE NUMBER |
2450015.0173 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Laura J. Winston/ |
SIGNATORY'S NAME |
Laura J. Winston |
SIGNATORY'S POSITION |
Attorney of record, New York bar member |
SIGNATORY'S PHONE NUMBER |
3475898536 |
DATE SIGNED |
02/18/2021 |
ROLE OF AUTHORIZED SIGNATORY |
Authorized U.S.-Licensed Attorney |
SIGNATURE METHOD |
Signed directly within the form |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Feb 18 15:41:49 ET 2021 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XXX-2
0210218154149601973-88937
682-7705d1407dd392f8d6285
72a39443ec35141b5d99b6b9e
ec418ffa72a9aac22293-N/A-
N/A-20210218150441318235 |
PTO- 1957 |
Approved for use through 11/30/2023. OMB 0651-0050 |
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88937682 TOMB RAIDER(Standard Characters, see http://uspto.report/TM/88937682/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 014 for (Based on 44(e)) (Based on Intent to Use) Jewellery; key chains; jewellery chains; pendants; watches; brooches; lapel pins
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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: (Based on 44(e)) (Based on Intent to Use) Jewellery;
key chains;
jewellery
chains;
pendants;
watches;
brooches being jewellery;
brooches;
lapel pins;
(Based on Intent to Use) key chainsClass 014 for (Based on 44(e)) (Based on Intent to Use) Jewellery; jewellery chains;
pendants; watches; brooches being jewellery; lapel pins; (Based on Intent to Use) key chains
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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.
Original PDF file:
FRU0-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00003157371_ 9785906.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1Foreign Registration-2Foreign Registration-3
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 (Based on 44(e)) (Based on Intent to Use) Luggage; bags; cosmetic bags; wallets; purses; messenger bags; fanny packs; key cases; shoulder belts; umbrellas
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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: (Based on 44(e)) (Based on Intent to Use) Luggage;
bags;
bags, namely,
gym bags, sports bags, textile shopping bags, travelling bags, handbags, holdalls, rucksacks, backpacks, briefcases, music cases, satchels, holdalls, rucksacks;
cosmetic bags;
cosmetic bags sold empty;
wallets;
purses;
messenger
bags;
fanny packs;
key cases;
shoulder belts;
leather shoulder
belts;
umbrellasClass 018 for (Based on 44(e)) (Based on Intent to Use) Luggage; bags, namely, gym bags, sports bags, textile shopping bags, travelling bags,
handbags, holdalls, rucksacks, backpacks, briefcases, music cases, satchels, holdalls, rucksacks; cosmetic bags sold empty; wallets; purses; messenger bags; fanny packs; key cases; leather shoulder
belts; umbrellas
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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.
Original PDF file:
FRU1-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00003157371_ 9785906.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1Foreign Registration-2Foreign Registration-3
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 025 for (Based on 44(e)) (Based on Intent to Use) Clothing, namely, trousers, t-shirts, sweatshirts, jumpers, polo-shirts, casual and leisure jackets, shirts, shorts, socks, underwear,
swimwear, nightwear; headgear, namely, hats and caps; costumes; belts; (Based on Intent to Use) shoes and boots
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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: (Based on 44(e)) (Based on Intent to Use) Clothing, namely, trousers, t-shirts, sweatshirts, jumpers, polo-shirts, casual and leisure jackets,
shirts, shorts, socks, underwear, swimwear, nightwear;
headgear, namely, hats and caps;
heawgear, namely, hats and
caps;
costumes;
Halloween costumes;
masquerade costumes;
belts;
(Based on Intent to Use) shoes and bootsClass 025 for (Based on 44(e)) (Based on Intent to Use) Clothing, namely, trousers, t-shirts, sweatshirts,
jumpers, polo-shirts, casual and leisure jackets, shirts, shorts, socks, underwear, swimwear, nightwear; heawgear, namely, hats and caps; Halloween costumes; masquerade costumes; belts; (Based on
Intent to Use) shoes and boots
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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.
Original PDF file:
FRU2-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00002128255_ 9785879.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1Foreign Registration-2Foreign Registration-3
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 041 for (Based on 44(e)) (Based on Intent to Use) Entertainment services, namely, providing on-line computer games and providing on-line non-downloadable computer game software; computer game
services provided remotely by means of the internet; (Based on Intent to Use) Entertainment services, namely, production and direction of feature films, TV films and TV series; production of video
gaming related multimedia programs and distribution by means of television broadcasting and via the Internet; publishing of computer game publications, namely, books featuring computer games and
computer game software; music publishing; film production, other than advertising films; television entertainment, namely, provision of graphic, visual and literary content for feature films, TV
films and TV series including the creation of story lines and character development; information and advisory services in the field of computer game entertainment and publishing
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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 041 for (Based on 44(e)) (Based on Intent to Use) Entertainment services, namely, providing on-line computer games and providing on-line non-downloadable computer game software; computer game
services provided remotely by means of the internet; (Based on Intent to Use) Entertainment services, namely, production and direction of feature films, TV films and TV series; production of video
gaming related multimedia programs and distribution by means of television broadcasting and via the Internet; publishing of computer game publications, namely, books featuring computer games and
computer game software; music publishing; film production, other than advertising films; television entertainment, namely, provision of graphic, visual and literary content for feature films, TV
films and TV series including the creation of story lines and character development; information and advisory services in the field of computer game entertainment and publishing
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000315737 registered
03/31/2016 with a renewal date of __________ and an expiration date of 03/31/2026 ], 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.
Original PDF file:
FRU3-5023464202-150441318
_._Certified_copy_of_Regi stration_-_UK00002128255_ 9785879.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1Foreign Registration-2Foreign Registration-3
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.
ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examining Attorney takes the position that "wallets" are outside the scope of the U.K. registration and therefore cannot be covered under the Section 44(e) basis. However, as shown in the
attached dictionary definition, the word "purses" in the U.K. registration includes "wallets" as used in the subject application. The dictionary definition specifically states that the British
English definition of "purse" is "a very small bag that people, especially women, keep their money in", and is followed by a regional note: "in AM, usually use wallet". Accordingly, Applicant
requests that the Examining Attorney accept "wallets" as a synonym of "purses" in the U.K. registration. The Examining Attorney has require amendment of certain wording in Class 41. However, in each
case, several registrations (including registrations owned by Applicant) have recently issued with such wording, as shown below: "Computer game services provided remotely by means of the internet":
included in Reg. Nos. 6072181, 6089256, 5796990 and others. "Publishing of computer game publications, namely, books featuring computer games and computer game software": included in Reg. Nos.
6072181, 6089256, 5796990 and others. "television entertainment, namely, provision of graphic, visual and literary content for feature films, TV films and TV series including the creation of story
lines and character development" included in Reg. Nos. 6072181, 6089256, 5796990 and others. "information and advisory services in the field of computer game entertainment and publishing": 6072181,
5796990, 5782142 and others. A copy set of TESS printouts for these registrations is attached. Applicant requests that the Examining Attorney accept the wording as-is, consistent with the wording
accepted in the referenced registrations.
Original PDF file:
mis-5023464202-2021021815
0441318235_._Purse_defini tion_and_meaning___Collin s_English_Dictionary.pdf
Converted PDF file(s) ( 11 pages)
Miscellaneous File1Miscellaneous File2Miscellaneous File3Miscellaneous File4Miscellaneous
File5Miscellaneous File6Miscellaneous File7Miscellaneous File8Miscellaneous File9Miscellaneous
File10Miscellaneous File11
Original PDF file:
mis-5023464202-2021021815
0441318235_._Trademark_El ectronic_Search_System__T ESS__6072181_et_al_.pdf
Converted PDF file(s) ( 8 pages)
Miscellaneous File1Miscellaneous File2Miscellaneous File3Miscellaneous File4Miscellaneous
File5Miscellaneous File6Miscellaneous File7Miscellaneous File8
Correspondence Information (current):
Laura J. Winston
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@offitkurman.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lwinston@offitkurman.com; alison.pratt@offitkurman.com
The docket/reference number is 2450015.0173.
Correspondence Information (proposed):
Laura J. Winston
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@offitkurman.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lwinston@offitkurman.com; alison.pratt@offitkurman.com
The docket/reference number is 2450015.0173.
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: /Laura J. Winston/ Date: 02/18/2021
Signatory's Name: Laura J. Winston
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 3475898536 Signature method: Signed directly within the form
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: Laura J. Winston
OFFIT KURMAN, P.A.
590 Madison Ave., 6th Floor
New York, New York 10022
Mailing Address: Laura J. Winston
OFFIT KURMAN, P.A.
590 Madison Ave., 6th Floor
New York, New York 10022
Serial Number: 88937682
Internet Transmission Date: Thu Feb 18 15:41:49 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2021021815414960
1973-88937682-7705d1407dd392f8d628572a39
443ec35141b5d99b6b9eec418ffa72a9aac22293
-N/A-N/A-20210218150441318235