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. 97132870 BORED APE YACHT CLUB(Standard Characters, see http://uspto.report/TM/97132870/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for non-fungible tokens (NFTs); downloadable art image files authenticated by non-fungible tokens; downloadable computer software in the nature of non-fungible tokens; non-fungible tokens used with blockchain technology, namely, downloadable image and multimedia files containing artwork; downloadable digital art
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 04/23/2021 and first used in commerce at least as early as 04/23/2021 , and is now in use in such commerce.


Proposed:

Tracked Text Description: non-fungible tokens (NFTs); Downloadable computer game software for use on mobile and cellular phones; downloadable art image files authenticated by non-fungible tokens; downloadable game software; downloadable computer software in the nature of non-fungible tokens; Downloadable image files containing artwork, memes, pictures, and trading cards authenticated by non-fungible tokens (NFTs); non-fungible tokens used with blockchain technology, namely, downloadable image and multimedia files containing artwork; downloadable image files containing artwork authenticated by non-fungible tokens (NFTs); downloadable digital art; downloadable computer software for managing and conducting electronic transactions in the field of non-fungible tokens (NFTs); downloadable image and multimedia files containing digitally-generated artwork authenticated by non-fungible tokens (NFTs) utilizing blockchain technology; downloadable digital art images authenticated by non-fungible tokens (NFTs)Class 009 for Downloadable computer game software for use on mobile and cellular phones; downloadable game software; Downloadable image files containing artwork, memes, pictures, and trading cards authenticated by non-fungible tokens (NFTs); downloadable image files containing artwork authenticated by non-fungible tokens (NFTs); downloadable computer software for managing and conducting electronic transactions in the field of non-fungible tokens (NFTs); downloadable image and multimedia files containing digitally-generated artwork authenticated by non-fungible tokens (NFTs) utilizing blockchain technology; downloadable digital art images authenticated by non-fungible tokens (NFTs)
Deleted Filing Basis: 1(a)
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 042 for Non-downloadable virtual goods, namely, non-fungible tokens; non-downloadable virtual goods, namely, a collectible series of non-fungible tokens; non-downloadable virtual goods, namely, a collectible series of images as embodied in non-fungible tokens; non-downloadable virtual goods, namely, non-fungible tokens used with blockchain technology; non-downloadable virtual goods, namely, non-fungible tokens used with a distributed ledger; non-downloadable virtual goods, namely, digital collectible images using non-fungible tokens and blockchain technology; authentication and certification of data relating to non-fungible tokens via blockchain
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 04/23/2021 and first used in commerce at least as early as 04/23/2021 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Non-downloadable virtual goods, namely, non-fungible tokens; Authentication and validation of data in the field of financial and digital transactions authenticated by non-fungible tokens (NFTs) using blockchain technology; non-downloadable virtual goods, namely, a collectible series of non-fungible tokens; non-downloadable virtual goods, namely, a collectible series of images as embodied in non-fungible tokens; non-downloadable virtual goods, namely, non-fungible tokens used with blockchain technology; non-downloadable virtual goods, namely, non-fungible tokens used with a distributed ledger; non-downloadable virtual goods, namely, digital collectible images using non-fungible tokens and blockchain technology; authentication and certification of data relating to non-fungible tokens via blockchainClass 042 for Authentication and validation of data in the field of financial and digital transactions authenticated by non-fungible tokens (NFTs) using blockchain technology
Deleted Filing Basis: 1(a)
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 hereby adds the following class of goods/services to the application:
New: Class 035 for Retail store services featuring virtual goods, namely, jewelry, imitation jewelry, watches, keychains, key rings, printed publications, books, game cards, magazines, pictures, posters, stationery, trading cards, bags, backpacks, luggage, wallets, blankets, bedspreads, clothing, hats, headwear, jackets, jerseys, pants, shirts, t-shirts, sweaters, sweatshirts, shoes, scarves, sneakers, socks, rugs, carpets, mats, toys, games, playthings, toy figurines, plush toys, action figures, balls, basketballs, playing cards, trading cards, skateboards, skateboard decks, gaming devices, amusement game machines, decorations for christmas trees, body-building apparatus, exercise machines, beer, energy drinks, non-alcoholic beverages, soft drinks, alcoholic beverages, wine, liquor, spirits, liqueurs and cocktails authenticated by non-fungible tokens (NFTs) for use in online virtual worlds; Provision of an online marketplace for buyers and sellers of downloadable digital art images authenticated by non-fungible tokens (NFTs)
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 hereby adds the following class of goods/services to the application:
New: Class 041 for Entertainment services, namely, providing online non-downloadable virtual goods, namely, jewelry, imitation jewelry, watches, keychains, key rings, printed publications, books, game cards, magazines, pictures, posters, stationery, trading cards, bags, backpacks, luggage, wallets, blankets, bedspreads, clothing, hats, headwear, jackets, jerseys, pants, shirts, t-shirts, sweaters, sweatshirts, shoes, scarves, sneakers, socks, rugs, carpets, mats, toys, games, playthings, toy figurines, plush toys, action figures, balls, basketballs, playing cards, trading cards, skateboards, skateboard decks, gaming devices, amusement game machines, decorations for christmas trees, body-building apparatus, exercise machines, beer, energy drinks, non-alcoholic beverages, soft drinks, alcoholic beverages, wine, liquor, spirits, liqueurs and cocktails authenticated by non-fungible tokens for use in virtual environments created for entertainment purposes; Entertainment services, namely, providing online nondownloadable virtual goods, namely, jewelry, imitation jewelry, watches, keychains, key rings, printed publications, books, game cards, magazines, pictures, posters, stationery, trading cards, bags, backpacks, luggage, wallets, blankets, bedspreads, clothing, hats, headwear, jackets, jerseys, pants, shirts, t-shirts, sweaters, sweatshirts, shoes, scarves, sneakers, socks, rugs, carpets, mats, toys, games, playthings, toy figurines, plush toys, action figures, balls, basketballs, playing cards, trading cards, skateboards, skateboard decks, gaming devices, amusement game machines, decorations for christmas trees, body-building apparatus, exercise machines, beer, energy drinks, non-alcoholic beverages, soft drinks, alcoholic beverages, wine, liquor, spirits, liqueurs and cocktails in the nature of a collectible series authenticated by non-fungible tokens for use in virtual environments created for entertainment purposes; Entertainment services, namely, providing online nondownloadable virtual goods, namely, jewelry, imitation jewelry, watches, keychains, key rings, printed publications, books, game cards, magazines, pictures, posters, stationery, trading cards, bags, backpacks, luggage, wallets, blankets, bedspreads, clothing, hats, headwear, jackets, jerseys, pants, shirts, t-shirts, sweaters, sweatshirts, shoes, scarves, sneakers, socks, rugs, carpets, mats, toys, games, playthings, toy figurines, plush toys, action figures, balls, basketballs, playing cards, trading cards, skateboards, skateboard decks, gaming devices, amusement game machines, decorations for christmas trees, body-building apparatus, exercise machines, beer, energy drinks, non-alcoholic beverages, soft drinks, alcoholic beverages, wine, liquor, spirits, liqueurs and cocktails in the nature of a collectible series of images authenticated by non-fungible tokens for use in virtual environments created for entertainment purposes; Entertainment services, namely providing online nondownloadable virtual goods, namely, jewelry, imitation jewelry, watches, keychains, key rings, printed publications, books, game cards, magazines, pictures, posters, stationery, trading cards, bags, backpacks, luggage, wallets, blankets, bedspreads, clothing, hats, headwear, jackets, jerseys, pants, shirts, t-shirts, sweaters, sweatshirts, shoes, scarves, sneakers, socks, rugs, carpets, mats, toys, games, playthings, toy figurines, plush toys, action figures, balls, basketballs, playing cards, trading cards, skateboards, skateboard decks, gaming devices, amusement game machines, decorations for christmas trees, body-building apparatus, exercise machines, beer, energy drinks, non-alcoholic beverages, soft drinks, alcoholic beverages, wine, liquor, spirits, liqueurs and cocktails authenticated by non-fungible tokens utilizing blockchain technology for use in virtual environments created for entertainment purposes; Entertainment services, namely providing online non-downloadable virtual goods, namely, jewelry, imitation jewelry, watches, keychains, key rings, printed publications, books, game cards, magazines, pictures, posters, stationery, trading cards, bags, backpacks, luggage, wallets, blankets, bedspreads, clothing, hats, headwear, jackets, jerseys, pants, shirts, t-shirts, sweaters, sweatshirts, shoes, scarves, sneakers, socks, rugs, carpets, mats, toys, games, playthings, toy figurines, plush toys, action figures, balls, basketballs, playing cards, trading cards, skateboards, skateboard decks, gaming devices, amusement game machines, decorations for christmas trees, body-building apparatus, exercise machines, beer, energy drinks, non-alcoholic beverages, soft drinks, alcoholic beverages, wine, liquor, spirits, liqueurs and cocktails authenticated by non-fungible tokens utilizing distributed ledger technology (DLT) for use in virtual environments created for entertainment purposes; Entertainment services, namely, providing online non-downloadable virtual goods, namely, digital collectible artwork and digitally-generated images authenticated by non-fungible tokens utilizing blockchain technology for use in virtual environments created for entertainment purposes
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


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: YUGA LABS, INC., a corporation of Delaware, having an address of

            1430 S. DIXIE HWY      STE. 105 1075
      CORAL GABLES, Florida 33146-3108
      United States

Proposed: YUGA LABS, INC., a corporation of Delaware, having an address of
      1430 S. DIXIE HWY
      STE. 105 1075
      CORAL GABLES, Florida 33146-3108
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CLUB apart from the mark as shown.

Correspondence Information (current):
      Mark A. Jansen
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@fenwick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 39048-00070.
Correspondence Information (proposed):
      Mark A. Jansen
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@fenwick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 39048-00070.

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).

FEE(S)
Fee(s) in the amount of $700 is being submitted.

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: /alongobucco/      Date: 09/22/2022
Signatory's Name: Anne Marie Longobucco
Signatory's Position: Attorney of Record, New York bar member
Signatory's Phone Number: 12124302741

Signature method: Sent to third party for signature

Response Signature
Signature: /alongobucco/     Date: 09/22/2022
Signatory's Name: Anne Marie Longobucco
Signatory's Position: Attorney of Record, N.Y. Bar Member

Signatory's Phone Number: 12124302741 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:    Mark A. Jansen
   Fenwick & West LLP
   
   801 California Street
   Mountain View, California 94041
Mailing Address:    Mark A. Jansen
   Fenwick & West LLP
   801 California Street
   Mountain View, California 94041
        
PAYMENT: 97132870
PAYMENT DATE: 09/22/2022
        
Serial Number: 97132870
Internet Transmission Date: Thu Sep 22 11:57:44 ET 2022
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202209221157449
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aa85223f8728c3664e94ef3a6626732e2c1267ec
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