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. 90177141 MAFIA(Standard Characters, see http://uspto.report/TM/90177141/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Jewelry and watches, jewelry cases
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: Jewelry and watches, jewelry cases; Eyewear, namely, eyeglass frames, eyeglasses, sunglass frames, sunglasses; eyeglass and sunglass casesClass 009 for Eyewear, namely, eyeglass frames, eyeglasses, sunglass frames, sunglasses; eyeglass and sunglass cases
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


Applicant proposes to amend the following:

Current:
Class 014 for Eyewear, namely, eyeglass frames, eyeglasses, sunglass frames, sunglasses, eyeglass and sunglass cases
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: Eyewear, namely, eyeglass frames, eyeglasses, sunglass frames, sunglasses, eyeglass and sunglass cases; watchesClass 014 for watches
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
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 3974730, 4213366, and 4480695.


Significance of wording, letter(s), or numeral(s)
MAFIA appearing in the mark means or signifies or is a term of art for Male And Female International Apparel in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application.


Miscellaneous Statement
For International class 14, the goods jewelry and jewelry cases have been deleted. Also, the identification of goods has been amended. In response to refusal for likelihood of confusion with registration number 3181631 and 4284634, where the mark is metal mafia, the term metal mafia is merely descriptive for jewelry only, and not for watches. Additionally, the applicant seeks registration of the mark MAFIA in standard characters. The mark MAFIA is a stand alone word with a very unique significance in wording as noted previously in this response, which also sets it apart from any likelihood of confusion with registration number 3181631 and 4284634 respectively.

Correspondence Information (current):
      MAFIA APPAREL INC
      PRIMARY EMAIL FOR CORRESPONDENCE: davinachi@yahoo.es
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Mafia Apparel Inc
      PRIMARY EMAIL FOR CORRESPONDENCE: davinachi@yahoo.es
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /David Osegueda/     Date: 07/07/2021
Signatory's Name: David Osegueda
Signatory's Position: President
Signature method: Signed directly within the form

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

Mailing Address:    MAFIA APPAREL INC
   
   170
   27720 AVENUE SCOTT
   VALENCIA, California 91355
Mailing Address:    Mafia Apparel Inc
   170
   27720 Avenue Scott
   Valencia, California 91355
        
Serial Number: 90177141
Internet Transmission Date: Wed Jul 07 14:35:50 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXX-20210707143550843020-90177141-7
80f11acb5fa4642614c1d8af245dc4b7c9c35e0e
46faf168852c516cf65d4-N/A-N/A-2021070713
4049079163