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. 90218647 FREE BRITNEY(Standard Characters, see http://uspto.report/TM/90218647/mark.png) has been amended as follows:

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

The Applicant's Mark is not likely to be refused with the cited registrations, as the use of the additional term "FREE" renders the mark completely different in appearance and sound than the cited registrations. Moreover, the application has a completely different connotation and commercial impression than the cited registrations. Specifically, the application's commercial impression relates to the support of a social justice movement, whereby consumers may purchase goods in support thereof. The cited registrations bear no such connotation; specifically, the cited registrations do not relate to, nor do they purport to show any relationship or connection with, a social justice movement similar to that promoted and/or branded by the application. For such reason, the application and the cited registrations are two entirely different marks and should be allowed to co-exist in the marketplace independent of the other. Moreover, there is no false association between the cited registration and Britney Spears. Reasonable consumers are fully aware that Britney Spears has no affiliation with the "Free Britney" social justice movement, as it was started completely independent from Britney Spears and as a showing of third-party support. Britney Spears does not sell goods or services branded "FREE BRITNEY," and it is clear from the term itself - specifically, the fact that the mark is meant to serve as an actionable phrase directed from one to another, and not as a self-identifying term - that Britner Spears is not the source of goods and services provided under the mark. Therefore, Britney Spears is not actually connected to or affiliated with applicant's mark.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for Pictures; Posters; Stickers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/13/2020 and first used in commerce at least as early as 09/16/2020 , and is now in use in such commerce.


Proposed:
Class 016 for Pictures; Posters; Stickers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/13/2020 and first used in commerce at least as early as 09/16/2020 , and is now in use in such commerce.

"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
Specimen File2


Webpage URL: http://freebritney.shop/
Webpage Date of Access: 08/18/2021

Applicant proposes to amend the following:

Current:
Class 025 for Coats; Footwear; Headwear; Sweatshirts; Undergarments; Bottoms as clothing; Hoodies; Tops as clothing
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/13/2020 and first used in commerce at least as early as 09/16/2020 , and is now in use in such commerce.


Proposed:
Class 025 for Coats; Footwear; Headwear; Sweatshirts; Undergarments; Bottoms as clothing; Hoodies; Tops as clothing
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/13/2020 and first used in commerce at least as early as 09/16/2020 , and is now in use in such commerce.

"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
Specimen File2


Webpage URL: http://freebritney.shop/
Webpage Date of Access: 08/18/2021

The owner's/holder's proposed attorney information: Darren Heitner. Darren Heitner of Heitner Legal, P.L.L.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      215 Hendricks Isle
      Fort Lauderdale, Florida 33301
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
      The phone number is 9545586999.
      The email address is darren@heitnerlegal.com

Darren Heitner 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):
      KUCHAR, BRYAN
      PRIMARY EMAIL FOR CORRESPONDENCE: Bryankuchar@yahoo.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): notifications@trademarkengine.com
Correspondence Information (proposed):
      Darren Heitner
      PRIMARY EMAIL FOR CORRESPONDENCE: darren@heitnerlegal.com
      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)
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: /Darren Heitner/      Date: 08/18/2021
Signatory's Name: Darren Heitner
Signatory's Position: Attorney of Record, Florida Bar Member
Signatory's Phone Number: 9545586999

Signature method: Signed directly within the form

Response Signature
Signature: /Darren Heitner/     Date: 08/18/2021
Signatory's Name: Darren Heitner
Signatory's Position: Attorney of Record, Florida Bar Member

Signatory's Phone Number: 9545586999 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:    KUCHAR, BRYAN
   
   
   921 MYRTLE STREET NORTHEAST, 10
   ATLANTA, Georgia 30309
Mailing Address:    Darren Heitner
   Heitner Legal, P.L.L.C.
   215 Hendricks Isle
   Fort Lauderdale, Florida 33301
        
Serial Number: 90218647
Internet Transmission Date: Wed Aug 18 12:14:39 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20210818121439832080-90218647-
7813315ae87c8e85945c4293f2af2fe98867e86c
56ffc92e1deb231793a63dc5e-N/A-N/A-202108
18114626062802