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. 97056646 AVATAR (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9705664 6/large) has been amended as follows:

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

Registration of the applied-for mark was refused under Trademark Section 2(d) because of a likelihood of confusion with the mark in U.S. Registration Nos. 2097619, 2155682, and 6161041.

Applicant intends to obtain consents to registration from the owners of the cited registrations but has not been able to do so as of today, the deadline for filing a response to office action. Applicant realizes that this inability to obtain said consent will lead to a final refusal and/or suspension of the application, in view of the numerous cited pending applications.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 025 for Clothing, namely, pants, t-shirts, caps, caps with visors, sweat shirts, hooded sweatshirts; all aforementioned goods included in class 25 only as merchandise for a music group
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: Clothing, namely, pants, t-shirts, caps, caps with visors, sweat shirts, hooded sweatshirts; Clothing, namely, pants, t-shirts, caps being headwear, caps with visors, sweat shirts, hooded sweatshirts; all aforementioned goods included in Class 25 only as merchandise for a music groupClass 025 for Clothing, namely, pants, t-shirts, caps being headwear, caps with visors, sweat shirts, hooded sweatshirts; all aforementioned goods included in Class 25 only as merchandise for a music group
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

Correspondence Information (current):
      THILO C. AGTHE
      PRIMARY EMAIL FOR CORRESPONDENCE: tm-group@wg-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): thilo.agthe@wg-law.com; maria.palmese@wg-law.com; linda.lecomte@wg-law.com

The docket/reference number is 5258-006.
Correspondence Information (proposed):
      Thilo C. Agthe
      PRIMARY EMAIL FOR CORRESPONDENCE: tm-group@wg-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): thilo.agthe@wg-law.com; maria.palmese@wg-law.com; linda.lecomte@wg-law.com

The docket/reference number is 5258-006.

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: /Thilo C. Agthe/     Date: 01/04/2023
Signatory's Name: Thilo C. Agthe
Signatory's Position: Attorney of Record

Signatory's Phone Number: 212-509-5050 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:    THILO C. AGTHE
   WUERSCH & GERING LLO
   
   100 WALL STREET, 10TH FLOOR
   NEW YORK, New York 10005
Mailing Address:    Thilo C. Agthe
   WUERSCH & GERING LLO
   100 WALL STREET, 10TH FLOOR
   NEW YORK, New York 10005
        
Serial Number: 97056646
Internet Transmission Date: Wed Jan 04 07:24:29 ET 2023
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202301040724291
45310-97056646-85044a537bcdd937fa9825944
0c2e7a90896564ef79bf65092a43e35d439c4db-
N/A-N/A-20230104072041311186