Response to Office Action

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

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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. 90016810 DISNEY ENCANTO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9001681 0/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Amendments and Remarks are attached as a pdf file to preserve the formatting of the image and the text.

EVIDENCE
Evidence has been attached: Amendments and Remarks; Exhibit A - Petition for Cancellation; Exhibit B - Institution Order
Original PDF file:
evi_742208179-20210123072 058250430_._arks_for_DISN EY_ENCANTO_Stylized_in_Cl ass_25__1282251xD1162_.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_742208179-20210123072 058250430_._Exhibit_A_-_P etition_for_Cancellation_ _1282070xD1162_.pdf
Converted PDF file(s) ( 21 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21
Original PDF file:
evi_742208179-20210123072 058250430_._Exhibit_B_-_I nstitution_Order__1282072 xD1162_.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 025 for Clothing, footwear and headwear
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.


Proposed:

Tracked Text Description: Clothing, footwear and headwear; Clothing, namely, aprons, beachwear, belts, bottoms, cloth bibs, coats, costumes for use in role-playing games, beach cover-ups, dresses, ear muffs, gowns, gloves, Halloween costumes, hosiery, infantwear, jackets, leotards, lingerie, loungewear, mittens, overalls, pants, ponchos, rainwear, scarves, shirts, shorts, skirts, sleepwear, socks, suits, sweaters, sweatshirts, swimwear, ties, tops, underwear, wrist bands; footwear; headwearClass 025 for Clothing, namely, aprons, beachwear, belts, bottoms, cloth bibs, coats, costumes for use in role-playing games, beach cover-ups, dresses, ear muffs, gowns, gloves, Halloween costumes, hosiery, infantwear, jackets, leotards, lingerie, loungewear, mittens, overalls, pants, ponchos, rainwear, scarves, shirts, shorts, skirts, sleepwear, socks, suits, sweaters, sweatshirts, swimwear, ties, tops, underwear, wrist bands; footwear; headwear
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


ADDITIONAL STATEMENTS
Translation
The English translation of ENCANTO in the mark is CHARM.

Correspondence Information (current):
      Steven Plotkin
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@disney.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@kelly-ip.com; allison.kipp@kelly-ip.com
Correspondence Information (proposed):
      Steven Plotkin
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@disney.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@kelly-ip.com; allison.kipp@kelly-ip.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)
Response Signature
Signature: /Linda McLeod/     Date: 01/24/2021
Signatory's Name: Linda K. McLeod
Signatory's Position: Associate Attorney for Applicant, D.C. Bar Member

Signatory's Phone Number: 202-808-3570 Signature method: Sent to third party for signature

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:    Steven Plotkin
   THE WALT DISNEY COMPANY
   IP DEPARTMENT - TRADEMARK GROUP
   500 SOUTH BUENA VISTA STREET
   BURBANK, California 91521
Mailing Address:    Steven Plotkin
   THE WALT DISNEY COMPANY
   IP DEPARTMENT - TRADEMARK GROUP
   500 SOUTH BUENA VISTA STREET
   BURBANK, California 91521
        
Serial Number: 90016810
Internet Transmission Date: Mon Jan 25 06:16:12 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20210125061612757
939-90016810-76071c0aa10b878673cafa1b564
a5936c7977d8505d03d169d15f69aeae04f58-N/
A-N/A-20210123072058250430