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. 90487796 MALUMA(Standard Characters, see http://uspto.report/TM/90487796/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Audio recordings featuring music and artistic performances; CD's, pre-recorded compact discs; Audio tapes featuring music; Audio and video recordings featuring music and artistic performances; Compact discs featuring music; Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting music and artistic performances; Digital music downloadable from the Internet; Downloadable multimedia file containing artwork relating to music and artistic performances; Downloadable multimedia file containing audio relating to music and artistic performances; Downloadable multimedia file containing text relating to music and artistic performances; Downloadable multimedia file containing video relating to music and artistic performances; Downloadable music files; Downloadable musical sound recordings; Downloadable ring tones, graphics and music via a global computer network and wireless devices; Downloadable video recordings featuring music and artistic performances; Electronic sheet music, downloadable; Musical recordings; Musical sound recordings; Musical video recordings; Phonograph records featuring music; Pre-recorded CDs featuring music; Pre-recorded CDs, video tapes, laser disks and DVDs featuring music and artistic performances; Pre-recorded digital video discs featuring music; Pre-recorded DVDs featuring music; Pre-recorded electronic media devices featuring music; Pre-recorded flash drives featuring music; Series of musical sound recordings; Sound recordings featuring music and artistic performances; Video recordings featuring music and artistic performances
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 08/07/2012 and first used in commerce at least as early as 08/07/2012 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Audio recordings featuring music and artistic performances; CD's, pre-recorded compact discs; CDs, namely, pre-recorded compact discs featuring music; Audio tapes featuring music; Audio and video recordings featuring music and artistic performances; Compact discs featuring music; Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting music and artistic performances; Digital music downloadable from the Internet; Downloadable multimedia file containing artwork relating to music and artistic performances; Downloadable multimedia file containing audio relating to music and artistic performances; Downloadable multimedia file containing text relating to music and artistic performances; Downloadable multimedia file containing video relating to music and artistic performances; Downloadable music files; Downloadable musical sound recordings; Downloadable ring tones, graphics and music via a global computer network and wireless devices; Downloadable video recordings featuring music and artistic performances; Electronic sheet music, downloadable; Musical recordings; Musical sound recordings; Musical video recordings; Phonograph records featuring music; Pre-recorded CDs featuring music; Pre-recorded CDs, video tapes, laser disks and DVDs featuring music and artistic performances; Pre-recorded digital video discs featuring music; Pre-recorded DVDs featuring music; Pre-recorded electronic media devices featuring music; Pre-recorded flash drives featuring music; Series of musical sound recordings; Sound recordings featuring music and artistic performances; Video recordings featuring music and artistic performances; Video recordings featuring music and artistic performances.Class 009 for Audio recordings featuring music and artistic performances; CDs, namely, pre-recorded compact discs featuring music; Audio tapes featuring music; Audio and video recordings featuring music and artistic performances; Compact discs featuring music; Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring and promoting music and artistic performances; Digital music downloadable from the Internet; Downloadable multimedia file containing artwork relating to music and artistic performances; Downloadable multimedia file containing audio relating to music and artistic performances; Downloadable multimedia file containing text relating to music and artistic performances; Downloadable multimedia file containing video relating to music and artistic performances; Downloadable music files; Downloadable musical sound recordings; Downloadable ring tones, graphics and music via a global computer network and wireless devices; Downloadable video recordings featuring music and artistic performances; Electronic sheet music, downloadable; Musical recordings; Musical sound recordings; Musical video recordings; Phonograph records featuring music; Pre-recorded CDs featuring music; Pre-recorded CDs, video tapes, laser disks and DVDs featuring music and artistic performances; Pre-recorded digital video discs featuring music; Pre-recorded DVDs featuring music; Pre-recorded electronic media devices featuring music; Pre-recorded flash drives featuring music; Series of musical sound recordings; Sound recordings featuring music and artistic performances; Video recordings featuring music and artistic performances.
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 08/07/2012 and first used in commerce at least as early as 08/07/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of The specimen consists of Applicant's website..
"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].
Original PDF file:
SPU1-2-67224253242-202202 09164328584960_._Specimen _-_MALUMA__009_.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2


Webpage URL: http://www.shopmaluma.com/dept/music?cp=101977_110878
Webpage Date of Access: 02/09/2022

Applicant proposes to amend the following:

Current:
Class 014 for Jewelry; Jewelry cases; Jewelry chains; Jewelry watches; Bracelets; Brooches; Diamond jewelry; Gemstone jewelry; Rings; Watches, clocks, jewelry and imitation jewelry
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: Jewelry; Jewelry cases; Jewelry chains; Jewelry watches; Bracelets; Brooches; Brooches being jewelry; Diamond jewelry; Gemstone jewelry; Rings; Watches, clocks, jewelry and imitation jewelry; Watches, clocks, jewelry and imitation jewelry.Class 014 for Jewelry; Jewelry cases; Jewelry chains; Jewelry watches; Bracelets; Brooches being jewelry; Diamond jewelry; Gemstone jewelry; Rings; Watches, clocks, jewelry and imitation jewelry.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 025 for Apparel, casual clothing, boys clothing, clothing for sports, women's clothing, men's clothing, ready to wear clothing, shirts, shirts and short-sleeved shirts, shorts, bike shorts, gym pants, athletic pants, athletic shirts, Hoodies, Jogging pants, hats, beanies, bodysuits for women
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 10/26/2017 and first used in commerce at least as early as 10/26/2017 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Apparel, casual clothing, boys clothing, clothing for sports, women's clothing, men's clothing, ready to wear clothing, shirts, shirts and short-sleeved shirts, shorts, bike shorts, gym pants, athletic pants, athletic shirts, Hoodies, Jogging pants, hats, beanies, bodysuits for women; Apparel, namely, shirts and pants; Casual clothing, namely, shirts and pants; Boy's clothing, namely, shirts and pants; Clothing for sports, namely, sports shirts and shorts; Women's clothing, namely, shirts, dresses, and pants; Men's clothing, namely, shirts and pants; Ready to wear clothing, namely, shirts and pants; Shirts; Shirts and short-sleeved shirts; Shorts; Bike shorts; Gym pants; Athletic pants; Athletic shirts; Hoodies; Jogging pants; Hats; Beanies; Bodysuits for women.Class 025 for Apparel, namely, shirts and pants; Casual clothing, namely, shirts and pants; Boy's clothing, namely, shirts and pants; Clothing for sports, namely, sports shirts and shorts; Women's clothing, namely, shirts, dresses, and pants; Men's clothing, namely, shirts and pants; Ready to wear clothing, namely, shirts and pants; Shirts; Shirts and short-sleeved shirts; Shorts; Bike shorts; Gym pants; Athletic pants; Athletic shirts; Hoodies; Jogging pants; Hats; Beanies; Bodysuits for women.
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 10/26/2017 and first used in commerce at least as early as 10/26/2017 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 025. The specimen(s) submitted consists of The specimen consists of Applicant's website..
"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].
Original PDF file:
SPU3-1-67224253242-202202 09164328584960_._Specimen _-_MALUMA__025__.pdf
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: http://www.shopmaluma.com/product/Y3CMML020/sunset-orange-premium-shorts?cp=null
Webpage Date of Access: 02/09/2022

ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Juan Luis Londoño Arias, whose consent(s) to register is made of record.

Original PDF file:
consent-67224253242-16432 8584_._Consent_-_MALUMA.pdf
Converted PDF file(s) ( 2 pages) Consent File1Consent File2

The owner's/holder's current attorney information: Aileen E. Vazquez Jimenez. Aileen E. Vazquez Jimenez of HOGLUND & PAMIAS, P.S.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      256 ELEANOR ROOSEVELT
      SAN JUAN, Puerto Rico 00918
      United States
The docket/reference number is ROYAL-0100.
      The phone number is 787-772-9200.
      The fax number is 787-772-9533.
      The email address is ip@hhoglund.com
Correspondence Information (current):
      AILEEN E. VAZQUEZ JIMENEZ
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@hhoglund.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): aileen@hhoglund.com; samuel@hhoglund.com; nahomy@hhoglund.com; joanne@hhoglund.com

The docket/reference number is ROYAL-0100.
Correspondence Information (proposed):
      Aileen E. Vazquez Jimenez
      PRIMARY EMAIL FOR CORRESPONDENCE: ip@hhoglund.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): aileen@hhoglund.com; samuel@hhoglund.com; nahomy@hhoglund.com; joanne@hhoglund.com

The docket/reference number is ROYAL-0100.

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: /Aileen E. Vazquez Jimenez/      Date: 02/10/2022
Signatory's Name: Aileen E. Vazquez Jimenez
Signatory's Position: Attorney of Record, Puerto Rico Bar Member
Signatory's Phone Number: 7877729200

Signature method: Signed directly within the form

Response Signature
Signature: /Aileen E. Vazquez Jimenez/     Date: 02/10/2022
Signatory's Name: Aileen E. Vazquez Jimenez
Signatory's Position: Attorney of Record, Puerto Rico Bar Member

Signatory's Phone Number: 7877729200 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:    AILEEN E. VAZQUEZ JIMENEZ
   HOGLUND & PAMIAS, P.S.C.
   
   256 ELEANOR ROOSEVELT
   SAN JUAN, Puerto Rico 00918
Mailing Address:    Aileen E. Vazquez Jimenez
   HOGLUND & PAMIAS, P.S.C.
   256 ELEANOR ROOSEVELT
   SAN JUAN, Puerto Rico 00918
        
Serial Number: 90487796
Internet Transmission Date: Thu Feb 10 10:50:50 ET 2022
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202202101050500
08477-90487796-800bcaa7de7454523e0fbe7c9
8dca97ccb68ebfc7c4d45aea297bd2116b131a87
-N/A-N/A-20220210104325743063