PTO- 1960 |
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 |
Request for Reconsideration after Final Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88980884 |
LAW OFFICE ASSIGNED |
LAW OFFICE 114 |
MARK SECTION |
MARK |
mark |
LITERAL ELEMENT |
CATS VS PICKLES |
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. |
ARGUMENT(S) |
October 20, 2021 COMMISSIONER FOR TRADEMARKS Attn: Examining Attorney McCauley P.O. Box 1451 Alexandria, Virginia 22313-1451 RE: APPLICANT: Cepia
LLC APP SERIAL NO.: 88980884 FILED: June 27, 2019 MARK: CATS VS PICKLES EXAMINER: Brendan McCauley TRADEMARK LAW OFFICE: 114 OFFICE ACTION DATED: June 24, 2021 RESPONSE TO OFFICE ACTION Dear
Examining Attorney Brendan McCauley: Thank you for your helpful phone call in June regarding this matter. This letter is in response and in opposition to the Office Action dated 4/24/21, regarding
the FINAL Office Action for Application for Trademark Serial Number 88980884?CATS VS PICKLES. In that Office Action you indicated refusal of the application under: 1. SPECIMEN REFUSAL ? INTERNATIONAL
CLASS 9 ONLY. Please find my modifications to the application below. 1. Substitute Specimen and accompanying this argument The new specimen accompanying this argument should satisfy the Office?s
requirement that the specimen includes ?a means for ordering the goods such as a ?shopping cart? button/link?? That specimen depicts the product properly listed in: Class 009: Entertainment software,
namely, downloadable game software, downloadable mobile applications in the nature of downloadable interactive game software (or indicate entertainment function of software, e.g., editing photos,
making restaurant reservations, etc., and, if software is content- or field-specific, the content or field of use), downloadable video game software, game apps for use with electronics, namely,
downloadable electronic game software, International Class 9.? Kind regards, /Robert Maher/ Robert Maher Attorney for Applicant 20 S. Sarah St St. Louis, MO 63108 314-325-7800
bob@ippartnerspc.com |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
JPG FILE(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\808\88980884\xml9 \ RFR0002.JPG |
ORIGINAL PDF FILE |
evi_26001700ff90dea080654
97081dc7af1-2021102014373 3836097_._2021_06-24_CEPI _OAR_-_CvP_88980884_Rej.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\808\88980884\xml9\ RFR0003.JPG |
|
\\TICRS\EXPORT18\IMAGEOUT 18\889\808\88980884\xml9\ RFR0004.JPG |
DESCRIPTION OF EVIDENCE FILE |
The evidence attached is a screenshot of the cats vs pickles application available for download at the apple app store. |
GOODS AND/OR SERVICES SECTION (009) (current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Entertainment software, namely, downloadable game software, downloadable mobile applications in the nature of downloadable interactive
game software, downloadable video game software, and game apps for use with electronics, namely, downloadable electronic game software |
FIRST USE ANYWHERE DATE |
At least as early as 12/01/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 01/23/2020 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (009) (proposed) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Entertainment software, namely, downloadable game software, downloadable mobile applications in the nature of downloadable interactive
game software, downloadable video game software, and game apps for use with electronics, namely, downloadable electronic game software |
FIRST USE ANYWHERE DATE |
DELETED |
FIRST USE IN COMMERCE DATE |
DELETED |
STATEMENT TYPE |
"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
FILE NAME(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\889\808\88980884\xml9 \ RFR0005.JPG |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (028) (current) |
INTERNATIONAL CLASS |
028 |
DESCRIPTION |
Dolls; dolls, namely, toy doll figures, toy doll figurines, toy doll collectible figures, plush dolls, and bean-filled stuffed doll
characters; Christmas tree ornaments |
FIRST USE ANYWHERE DATE |
At least as early as 10/01/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 05/29/2020 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (028) (proposed) |
INTERNATIONAL CLASS |
028 |
DESCRIPTION |
Dolls; dolls, namely, toy doll figures, toy doll figurines, toy doll collectible figures, plush dolls, and bean-filled stuffed doll
characters; Christmas tree ornaments |
FIRST USE ANYWHERE DATE |
At least as early as 10/01/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 05/29/2020 |
WEBPAGE URL |
None Provided |
WEBPAGE DATE OF ACCESS |
None Provided |
FILING BASIS |
Section 1(b) |
CORRESPONDENCE INFORMATION (current) |
NAME |
Robert Maher |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademark@ippartnerspc.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
trademark@ippartnerspc.com; bob@ippartnerspc.com |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Robert Maher |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademark@ippartnerspc.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
trademark@ippartnerspc.com; bob@ippartnerspc.com |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Robert Maher/ |
SIGNATORY'S NAME |
Robert Maher |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
8043076361 |
DATE SIGNED |
10/20/2021 |
SIGNATURE METHOD |
Signed directly within the form |
RESPONSE SIGNATURE |
/Robert Maher/ |
SIGNATORY'S NAME |
Robert Maher |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
8043076361 |
DATE SIGNED |
10/20/2021 |
ROLE OF AUTHORIZED SIGNATORY |
Authorized U.S.-Licensed Attorney |
SIGNATURE METHOD |
Signed directly within the form |
CONCURRENT APPEAL NOTICE FILED |
NO |
FILING INFORMATION SECTION |
SUBMIT DATE |
Wed Oct 20 15:20:01 ET 2021 |
TEAS STAMP |
USPTO/RFR-XXXX:XXXX:XXXX:
XXXX:XXXX:XXXX:XXXX:XXXX-
20211020152001255538-8898
0884-781c430a838135b632cc
b3172f3bfa9c9d57765e315a6
3129f65c5b68dff0f5cd6f-N/
A-N/A-2021102014373383609
7 |
PTO- 1960 |
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 |
Request for Reconsideration after Final Action
To the Commissioner for Trademarks:
Application serial no.
88980884 CATS VS PICKLES(Standard Characters, see http://uspto.report/TM/88980884/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
October 20, 2021 COMMISSIONER FOR TRADEMARKS Attn: Examining Attorney McCauley P.O. Box 1451 Alexandria, Virginia 22313-1451 RE: APPLICANT: Cepia LLC APP SERIAL NO.: 88980884 FILED: June 27, 2019
MARK: CATS VS PICKLES EXAMINER: Brendan McCauley TRADEMARK LAW OFFICE: 114 OFFICE ACTION DATED: June 24, 2021 RESPONSE TO OFFICE ACTION Dear Examining Attorney Brendan McCauley: Thank you for your
helpful phone call in June regarding this matter. This letter is in response and in opposition to the Office Action dated 4/24/21, regarding the FINAL Office Action for Application for Trademark
Serial Number 88980884?CATS VS PICKLES. In that Office Action you indicated refusal of the application under: 1. SPECIMEN REFUSAL ? INTERNATIONAL CLASS 9 ONLY. Please find my modifications to the
application below. 1. Substitute Specimen and accompanying this argument The new specimen accompanying this argument should satisfy the Office?s requirement that the specimen includes ?a means for
ordering the goods such as a ?shopping cart? button/link?? That specimen depicts the product properly listed in: Class 009: Entertainment software, namely, downloadable game software, downloadable
mobile applications in the nature of downloadable interactive game software (or indicate entertainment function of software, e.g., editing photos, making restaurant reservations, etc., and, if
software is content- or field-specific, the content or field of use), downloadable video game software, game apps for use with electronics, namely, downloadable electronic game software,
International Class 9.? Kind regards, /Robert Maher/ Robert Maher Attorney for Applicant 20 S. Sarah St St. Louis, MO 63108 314-325-7800 bob@ippartnerspc.com
EVIDENCE
Evidence has been attached: The evidence attached is a screenshot of the cats vs pickles application available for download at the apple app store.
JPG file(s):Evidence-1
Original PDF file:
evi_26001700ff90dea080654
97081dc7af1-2021102014373 3836097_._2021_06-24_CEPI _OAR_-_CvP_88980884_Rej.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1Evidence-2
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 009 for Entertainment software, namely, downloadable game software, downloadable mobile applications in the nature of downloadable interactive game software, downloadable video game software,
and game apps for use with electronics, namely, downloadable electronic game software
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.
In International Class 009, the mark was first used at least as early as 12/01/2019 and first used in commerce at least as early as 01/23/2020.
Proposed:
Class 009 for Entertainment software, namely, downloadable game software, downloadable mobile applications in the nature of downloadable interactive game software, downloadable video game software,
and game apps for use with electronics, namely, downloadable electronic game software
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.
In International Class 009, the mark was first used at least as early as 00/00/0000 . and first used in commerce at least as early as 00/00/0000 .
"
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
Webpage URL: None Provided
Webpage Date of Access: None Provided
Applicant proposes to amend the following:
Current:
Class 028 for Dolls; dolls, namely, toy doll figures, toy doll figurines, toy doll collectible figures, plush dolls, and bean-filled stuffed doll characters; Christmas tree ornaments
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.
In International Class 028, the mark was first used at least as early as 10/01/2019 and first used in commerce at least as early as 05/29/2020.
Proposed:
Class 028 for Dolls; dolls, namely, toy doll figures, toy doll figurines, toy doll collectible figures, plush dolls, and bean-filled stuffed doll characters; Christmas tree ornaments
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.
In International Class 028, the mark was first used at least as early as 10/01/2019 . and first used in commerce at least as early as 05/29/2020 .
Webpage URL: None Provided
Webpage Date of Access: None Provided
Correspondence Information (current):
Robert Maher
PRIMARY EMAIL FOR CORRESPONDENCE: trademark@ippartnerspc.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademark@ippartnerspc.com; bob@ippartnerspc.com
Correspondence Information (proposed):
Robert Maher
PRIMARY EMAIL FOR CORRESPONDENCE: trademark@ippartnerspc.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): trademark@ippartnerspc.com; bob@ippartnerspc.com
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: /Robert Maher/ Date: 10/20/2021
Signatory's Name: Robert Maher
Signatory's Position: Attorney of Record
Signatory's Phone Number: 8043076361
Signature method: Signed directly within the form
Request for Reconsideration Signature
Signature: /Robert Maher/ Date: 10/20/2021
Signatory's Name: Robert Maher
Signatory's Position: Attorney of Record
Signatory's Phone Number: 8043076361 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.
The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.
Mailing Address: Robert Maher
INTELLECTUAL PROPERTY PARTNERS P.C.
20 S. SARAH STREET
SAINT LOUIS, Missouri 63108
Mailing Address: Robert Maher
INTELLECTUAL PROPERTY PARTNERS P.C.
20 S. SARAH STREET
SAINT LOUIS, Missouri 63108
Serial Number: 88980884
Internet Transmission Date: Wed Oct 20 15:20:01 ET 2021
TEAS Stamp: USPTO/RFR-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20211020152001255538-88980884-
781c430a838135b632ccb3172f3bfa9c9d57765e
315a63129f65c5b68dff0f5cd6f-N/A-N/A-2021
1020143733836097