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. 90372850 LIGHTYEAR(Standard Characters, see http://uspto.report/TM/90372850/mark.png) has been amended as follows:

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

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

EVIDENCE
Evidence has been attached: Amendment and Remarks
Original PDF file:
evi_742208179-20210817111 641569157_._ndment_and_Re marks_for_LIGHTYEAR_in_Cl ass_16__1389787xD1162_.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 016 for Paper and paper articles; cardboard and cardboard articles; printed matter; publications; books; photographs; portraits; paintings; photo-engravings; stationery; office and school supplies; school supply kits; temporary tattoo transfers; foam stamps; party bags; plastic sandwich bags; shopping bags, plastic name badges
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: Paper and paper articles; Paper; cardboard and cardboard articles; cardboard; printed matter; address books; publications; almanacs; books; appointment books; art prints; arts and craft paint kits; autograph books; baby books; baseball cards; office and school supplies; binders; school supply kits; bookends; bookmarks; foam stamps; a series of fiction books; party bags; printed books, magazines, newsletters and periodicals, featuring stories, games and activities for children; bumper stickers; shopping bags, plastic name badges; calendars; Christmas cards; chalk; children's activity books; coasters made of paper; coin albums; coloring books; printed children's coloring pages; comic books; printed comic strips; coupon books; crayons; decals; decorative paper centerpieces; diaries; drawing rulers; dry erase writing boards and writing surfaces; envelopes; erasers; foam stamps, namely, marking stamps and stamp pads; flash cards; gift wrapping paper; globes; greeting cards; guest books; general feature magazines; maps; memo pads; modeling clay; newspapers; notebooks; paintings; paper flags; paper cake decorations; paper gift cards; paper party decorations; paper napkins; paper party bags; paperweights; paper gift wrap bows; paper pennants; paper place mats; pen or pencil holders; pencil sharpeners; pen and pencil cases and boxes; photograph albums; photographs; photo-engravings; pictorial prints; picture books; plastic party goodie bags; plastic name badges; plastic sandwich bags; portraits; postcards; posters; printed awards; printed certificates; printed invitations; printed menus; recipe books; rubber stamps; school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue and book marks; score cards; stamp albums; staplers; stationery; stickers; collectible trading cards; temporary tattoo transfers; writing implements; children's interactive educational booksClass 016 for Paper; cardboard; address books; almanacs; appointment books; art prints; arts and craft paint kits; autograph books; baby books; baseball cards; binders; bookends; bookmarks; a series of fiction books; printed books, magazines, newsletters and periodicals, featuring stories, games and activities for children; bumper stickers; calendars; Christmas cards; chalk; children's activity books; coasters made of paper; coin albums; coloring books; printed children's coloring pages; comic books; printed comic strips; coupon books; crayons; decals; decorative paper centerpieces; diaries; drawing rulers; dry erase writing boards and writing surfaces; envelopes; erasers; foam stamps, namely, marking stamps and stamp pads; flash cards; gift wrapping paper; globes; greeting cards; guest books; general feature magazines; maps; memo pads; modeling clay; newspapers; notebooks; paintings; paper flags; paper cake decorations; paper gift cards; paper party decorations; paper napkins; paper party bags; paperweights; paper gift wrap bows; paper pennants; paper place mats; pen or pencil holders; pencil sharpeners; pen and pencil cases and boxes; photograph albums; photographs; photo-engravings; pictorial prints; picture books; plastic party goodie bags; plastic name badges; plastic sandwich bags; portraits; postcards; posters; printed awards; printed certificates; printed invitations; printed menus; recipe books; rubber stamps; school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue and book marks; score cards; stamp albums; staplers; stationery; stickers; collectible trading cards; temporary tattoo transfers; writing implements; children's interactive educational books
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

Correspondence Information (current):
      Steven Plotkin
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@disney.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): allison.kipp@kelly-ip.com; docketing@kelly-ip.com
Correspondence Information (proposed):
      Steven Plotkin
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@disney.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): allison.kipp@kelly-ip.com; docketing@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: 08/17/2021
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: 90372850
Internet Transmission Date: Tue Aug 17 11:40:01 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20210817114001561
818-90372850-781628238981475d6e6f5408d6f
2db5c2ceff857c8a3dc1eda649efd35a1bb782-N
/A-N/A-20210817111641569157