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. 90254585 AXIE INFINITY (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9025458 5/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Amplifiers; Headphones; Audio-receivers and video-receivers; Bags adapted for laptops; Battery chargers; Cables, electric; Cell phone straps; Computer peripheral devices; Downloadable computer game software; Electric wires; Interactive touch screen terminals; Interfaces for computers; Recorded computer game software; Recorded computer operating programs; Recorded computer software platforms for application development, web hosting, and database management; Telephones incorporating intercommunication systems
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Hong Kong application number 305415200 filed 10/12/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 009 for Amplifiers; Headphones; Audio-receivers and video-receivers; Bags adapted for laptops; Battery chargers; Cables, electric; Cell phone straps; Computer peripheral devices; Downloadable computer game software; Electric wires; Interactive touch screen terminals; Interfaces for computers; Recorded computer game software; Recorded computer operating programs; Recorded computer software platforms for application development, web hosting, and database management; Telephones incorporating intercommunication systems
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Hong Kong application number 305415200 filed 10/12/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Hong Kong registration number 305415200 registered 10/12/2020 with a renewal date of 10/11/2030 and an expiration date of 10/11/2030 ], 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:
FRU0-1-112201160123-01061 1492_._TM_Reg_Cert_HK.305 415200__TM130401_.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

ADDITIONAL STATEMENTS
Color Claim
The color(s) orange, blue, purple and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of the stylized wording "AXIE INFINITY" with the wording "AXIE" in various shades of orange and outlined in dark orange. The letter "X" has an orange drop coming from the top of the right side of the letter. The dot in the letter "I" in "AXIE" is formed by a blue diamond, with blue and purple shading inside and outlined in dark blue. The inside of the diamond contains a blue and white infinity symbol. The wording "INFINITY" appears below "AXIE" in various shades of blue.
Correspondence Information (current):
      TONY HOM
      PRIMARY EMAIL FOR CORRESPONDENCE: tonyhom@live.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): info@accoladeip.com

The docket/reference number is ACC-TM130396.
Correspondence Information (proposed):
      Tony Hom
      PRIMARY EMAIL FOR CORRESPONDENCE: tonyhom@live.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ustm@accoladeip.com

The docket/reference number is ACC-TM130396.

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: /h/      Date: 04/27/2021
Signatory's Name: Tony Hom
Signatory's Position: Attorney of Record, New York bar member
Signatory's Phone Number: 9175880481

Signature method: Signed directly within the form

Response Signature
Signature: /h/     Date: 04/27/2021
Signatory's Name: Tony Hom
Signatory's Position: Attorney of Record, New York bar member

Signatory's Phone Number: 9175880481 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:    TONY HOM
   ACCOLADE IP LIMITED
   
   81 70TH ST
   BROOKLYN, New York 11209
Mailing Address:    Tony Hom
   ACCOLADE IP LIMITED
   81 70TH ST
   BROOKLYN, New York 11209
        
Serial Number: 90254585
Internet Transmission Date: Tue Apr 27 09:15:24 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021042709152424
3846-90254585-7809f9fd502210d9c497b1b37d
eb9abdd79bb79b9ff8e56ef98235a25d079c35f-
N/A-N/A-20210427091421109384