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. 90573144 THE ROYALTY FAMILY (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9057314 4/large) has been amended as follows:

EVIDENCE
Evidence has been attached: Attached is a copy of the Instant Response in paper form (.pdf).
Original PDF file:
evi_26038000b201981d59d4d 68a5b0b2901-2022051012145 8100135_._go_-_Response_t o_the_Non-Final_OA_-_to_P TO_10-May-22_-_FINAL.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 041 for Entertainment services in the nature of production of multimedia entertainment content

Applicant proposes to amend the following:

Current:
Class 035 for On-line advertising and marketing 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 04/12/2017 and first used in commerce at least as early as 04/12/2017 , and is now in use in such commerce.


Proposed:
Class 035 for On-line advertising and marketing 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 04/12/2017 and first used in commerce at least as early as 04/12/2017 , 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 Exhibit A, is a copy of THE ROYALTY FAMILY w/ Logo Mark content video entitled ?We turned our backyard into a trampoline park? page on Applicant?s THE ROYALTY FAMILY YouTube channel. Furthermore, the content video has currently been viewed 2,570,260 times and the video was sponsored by TYLENOL® Cold medicine. Exhibit B shows THE ROYALTY FAMILY YouTube channel as the source of the advertisement and also shows a direct point-of-sale link from THE ROYLATY FAMILY video to the Tylenol Cold product(s). Accordingly, Applicant asserts that Exhibit A and Exhibit B show Applicant?s programs as the source of advertising for third-parties..
"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:
SPU0-26038000b201981d59d4 d68a5b0b2901-202205101214 58100135_._Ex._A_-_THE_RO YALTY_FAMILY_w_Logo_-_spe cimen_for_IC_035.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-26038000b201981d59d4 d68a5b0b2901-202205101214 58100135_._TY_FAMILY_W_Lo go_-_specimen_showing_Tyl enol_sponsoring_video.pdf
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: www.youtube.com
Webpage Date of Access: 12/09/2021
Webpage URL: www.youtube.com
Webpage Date of Access: 05/08/2022

Applicant proposes to amend the following:

Current:
Class 038 for Electronic transmission and streaming of digital media content for others via global and local computer networks
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 04/12/2017 and first used in commerce at least as early as 04/12/2017 , and is now in use in such commerce.


Proposed:
Class 038 for Electronic transmission and streaming of digital media content for others via global and local computer networks
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 04/12/2017 and first used in commerce at least as early as 04/12/2017 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 038. The specimen(s) submitted consists of Exhibit C, is a copy of THE ROYALTY FAMILY w/ Logo Mark content video entitled ?Going Back to KINDERGARTEN For a Day!? page on Applicant?s THE ROYALTY FAMILY YouTube channel. Furthermore, the content video has currently been viewed 44,476,528 times and the comments / ?chat room? includes over 829K ?likes? / comments. Clearly, Exhibit C shows an ?online bulletin board? or ?chat room? associated with the video content..
"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:
SPU1-26038000b201981d59d4 d68a5b0b2901-202205101214 58100135_._Ex._C_-_THE_RO YALTY_FAMILY_w_Logo_-_spe cimen_for_IC_038.pdf
Converted PDF file(s) ( 1 page) Specimen File1


Webpage URL: www.youtube.com
Webpage Date of Access: 12/09/2021
Correspondence Information (current):
      Shane M. Popp
      PRIMARY EMAIL FOR CORRESPONDENCE: spopp@losmp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): smp@smplogicsystems.com

The docket/reference number is 2000-001.03-.
Correspondence Information (proposed):
      Shane M. Popp
      PRIMARY EMAIL FOR CORRESPONDENCE: spopp@losmp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): smp@smplogicsystems.com

The docket/reference number is 2000-001.03-.

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: /shanempopp/      Date: 05/10/2022
Signatory's Name: Shane M. Popp
Signatory's Position: Attorney
Signature method: Signed directly within the form

Response Signature
Signature: /shanempopp/     Date: 05/10/2022
Signatory's Name: Shane M. Popp
Signatory's Position: Attorney

Signatory's Phone Number: 310-930-6051 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:    Shane M. Popp
   LOSMP
   ATTN: THE ROYALTY FAMILY
   3460 BARRY AVENUE
   LOS ANGELES, California 90066
Mailing Address:    Shane M. Popp
   LOSMP
   ATTN: THE ROYALTY FAMILY
   3460 BARRY AVENUE
   LOS ANGELES, California 90066
        
Serial Number: 90573144
Internet Transmission Date: Tue May 10 12:22:08 ET 2022
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXXX:
XXXX:XXXX-20220510122208878646-90573144-
800e265cb97a0972bcdf82e9c1c6593d8b81da25
e8c351c073f2b37e7683cec5-N/A-N/A-2022051
0121458100135