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

---

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. 90341002 VSHOJO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9034100 2/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Talent agency services; employment talent agencies; talent agencies for virtual talent, virtual entertainers, vtubers and vtube industry service providers; branding services, namely, consulting, development, management of brands for others in the field of virtual entertainment; brand imagery consulting services for others in the field of virtual entertainment; brand development and evaluation services in the field of virtual entertainment; brand consulting services, namely, brand development and social media strategy consultancy focusing on helping clients create and extend their brand strategies in the fields of virtual entertainment; talent agency services, namely, securing endorsement and sponsorship opportunities from corporate and other third party entities for virtual entertainers
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 09/09/2020 and first used in commerce at least as early as 11/24/2020 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Talent agency services; employment talent agencies; Employment services in the nature of talent casting in the field(s) of {specify, e.g., commercials,¶
music, films}; talent agencies for virtual talent, virtual entertainers, vtubers and vtube industry service providers; Talent agencies for virtual talent, virtual entertainers, and virtual industry service providers; branding services, namely, consulting, development, management of brands for others in the field of virtual entertainment; Branding¶
services, namely, consulting, development, management of brands for others in the field of virtual entertainment; brand imagery consulting services for others in the field of virtual entertainment; brand development and evaluation services in the field of virtual entertainment; brand consulting services, namely, brand development and social media strategy consultancy focusing on helping clients create and extend their brand strategies in the fields of virtual entertainment; Talent agency services, namely, securing endorsement and sponsorship opportunities from corporate and other third party entities for virtual entertainersClass 035 for Talent agency services; Employment services in the nature of talent casting in the field(s) of {specify, e.g., commercials, music, films}; Talent agencies for virtual talent, virtual entertainers, and virtual industry service providers; Branding services, namely, consulting, development, management of brands for others in the field of virtual entertainment; brand imagery consulting services for others in the field of virtual entertainment; brand development and evaluation services in the field of virtual entertainment; brand consulting services, namely, brand development and social media strategy consultancy focusing on helping clients create and extend their brand strategies in the fields of virtual entertainment; Talent agency services, namely, securing endorsement and sponsorship opportunities from corporate and other third party entities for virtual entertainers
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 09/09/2020 and first used in commerce at least as early as 11/24/2020 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of Screenshots of owner's website, owner's twitch channel, owner's facebook page and the "virtual youtuber fandom" wiki page showing the mark used in connection with the goods and services.
"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
Specimen File3
Specimen File4
Specimen File5


Webpage URL: http://virtualyoutuber.fandom.com/wiki/VShojo
Webpage Date of Access: 05/13/2021
Webpage URL: http://www.vshojo.com/faqs/
Webpage Date of Access: 05/13/2021
Webpage URL: http://www.facebook.com/VShojo/
Webpage Date of Access: 11/24/2020
Webpage URL: http://www.twitch.tv/team/vshojo
Webpage Date of Access: 11/24/2020

Applicant proposes to amend the following:

Current:
Class 041 for Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text in the field of virtual adult entertainment via a global computer network. Entertainment services, namely, providing non-downloadable anime, videos, movies, television series, user-generated content, audio content, and other multimedia entertainment content featuring virtual talent via the Internet and other communications networks; providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information, comments, reviews, recommendations relating to vtuber and anime, videos, movies, television series and other multimedia materials; Online digital video, audio and multimedia entertainment live broadcasting services
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 09/09/2020 and first used in commerce at least as early as 11/24/2020 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text in the field of virtual adult entertainment via a global computer network. Entertainment services, namely, providing non-downloadable anime, videos, movies, television series, user-generated content, audio content, and other multimedia entertainment content featuring virtual talent via the Internet and other communications networks; Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and¶
text in the field of virtual adult entertainment via a global computer network; providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information, comments, reviews, recommendations relating to vtuber and anime, videos, movies, television series and other multimedia materials; Entertainment services, namely, providing¶
non-downloadable computer animation videos in the nature of anime, videos, movies, an ongoing television series, audio¶
recordings, and other multimedia entertainment content in the nature of interactive streaming audiovisual works featuring virtual talent adult entertainment via the Internet and other communications networks; Online digital video, audio and multimedia entertainment live broadcasting services; Providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information in the field of virtual reality videos and computer generated animation in the nature of anime, videos, movies, television series and other multimedia materials all featuring adult entertainment, and also featuring user-added comments, reviews, recommendations; Entertainment services in the nature of live visual and audio performances by virtual talent.Class 041 for Entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text in the field of virtual adult entertainment via a global computer network; Entertainment services, namely, providing non-downloadable computer animation videos in the nature of anime, videos, movies, an ongoing television series, audio recordings, and other multimedia entertainment content in the nature of interactive streaming audiovisual works featuring virtual talent adult entertainment via the Internet and other communications networks; Providing entertainment services via the Internet and other communications networks in the nature of websites featuring a wide variety of non-downloadable adult interest entertainment information in the field of virtual reality videos and computer generated animation in the nature of anime, videos, movies, television series and other multimedia materials all featuring adult entertainment, and also featuring user-added comments, reviews, recommendations; Entertainment services in the nature of live visual and audio performances by virtual talent.
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 09/09/2020 and first used in commerce at least as early as 11/24/2020 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 041. The specimen(s) submitted consists of Owner's website, owner's facebook page, owner's twitch channel, virtual youtuber fandom wiki page, and owner's youtube channel.
"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
Specimen File3
Specimen File4
Specimen File5


Webpage URL: http://virtualyoutuber.fandom.com/wiki/VShojo
Webpage Date of Access: 05/13/2021
Webpage URL: http://www.facebook.com/VShojo/
Webpage Date of Access: 11/24/2020
Webpage URL: http://www.vshojo.com/
Webpage Date of Access: 11/24/2020
Webpage URL: http://www.twitch.tv/team/vshojo
Webpage Date of Access: 11/24/2020
Webpage URL: http://www.youtube.com/c/vshojo
Webpage Date of Access: 05/13/2021

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

Description of mark
The mark consists of The mark consists of a capital "V" in fuchsia outlined in white and the word "SHOJO" in white outlined in fuchsia, both in front of a thin, horizontal rectangle in fuchsia outlined in white. The gray background is not claimed as a feature of the mark.
Correspondence Information (current):
      MICHELE K. ROBICHAUX
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@odinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): brandon@odinlaw.com

The docket/reference number is 00681.
Correspondence Information (proposed):
      Michele K. Robichaux
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@odinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): brandon@odinlaw.com

The docket/reference number is 00681.

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: /Michele K. Robichaux/      Date: 05/13/2021
Signatory's Name: Michele K. Robichaux
Signatory's Position: Attorney of Record, California Bar Member
Signatory's Phone Number: 9198130090

Signature method: Signed directly within the form

Response Signature
Signature: /Michele K. Robichaux/     Date: 05/13/2021
Signatory's Name: Michele K. Robichaux
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 9198130090 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:    MICHELE K. ROBICHAUX
   ODIN LAW AND MEDIA
   5171 GLENWOOD AVE #103
   5171 GLENWOOD AVE #103
   RALEIGH, North Carolina 27612
Mailing Address:    Michele K. Robichaux
   ODIN LAW AND MEDIA
   5171 GLENWOOD AVE #103
   5171 GLENWOOD AVE #103
   RALEIGH, North Carolina 27612
        
Serial Number: 90341002
Internet Transmission Date: Thu May 13 12:23:19 ET 2021
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20210513122319944
718-90341002-780285aae3cafdd2d71acf07471
69358660579a37ecc4f12bcc5863d1c156763cc-
N/A-N/A-20210513115332223727