TEAS Request Reconsideration after FOA

PTO- 1960

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- 1960

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 97212947 CROCS(Standard Characters, see http://uspto.report/TM/97212947/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable digital media, namely, digital assets and digital collectibles in the form of downloadable multimedia files containing artwork, text, audio and video relating to footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of non-fungible tokens (NFTs); downloadable virtual goods, namely, downloadable computer software for creating virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online environments, using blockchain-based software technology and smart contracts; downloadable virtual goods, namely, computer programs featuring footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online virtual environments; downloadable computer software for creating, managing, storing, accessing, sending, receiving, exchanging, validating and selling digital assets, digital collectibles, digital tokens and 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.


Proposed:

Tracked Text Description: Downloadable digital media, namely, digital assets and digital collectibles in the form of downloadable multimedia files containing artwork, text, audio and video relating to footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of non-fungible tokens (NFTs); Downloadable digital media, namely, digital assets and digital collectibles in the form of downloadable multimedia files containing artwork, text, audio and video relating to featuring footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of nonfungible tokens (NFTs); downloadable virtual goods, namely, downloadable computer software for creating virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online environments, using blockchain-based software technology and smart contracts; downloadable virtual goods, namely, computer programs featuring footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online virtual environments; downloadable virtual goods, namely, downloadable computer programs featuring footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online virtual environments; downloadable computer software for creating, managing, storing, accessing, sending, receiving, exchanging, validating and selling digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)Class 009 for Downloadable digital media, namely, digital assets and digital collectibles in the form of downloadable multimedia files containing artwork, text, audio and video relating to featuring footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of nonfungible tokens (NFTs); downloadable virtual goods, namely, downloadable computer software for creating virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online environments, using blockchain-based software technology and smart contracts; downloadable virtual goods, namely, downloadable computer programs featuring footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online virtual environments; downloadable computer software for creating, managing, storing, accessing, sending, receiving, exchanging, validating and selling digital assets, digital collectibles, digital tokens and 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 proposes to amend the following:

Current:
Class 035 for Retail store services and online retail services featuring virtual goods, namely, footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories; provision of an online marketplace and registry for buyers and sellers of digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs); provision of online marketplace for buyers and sellers of downloadable digital assets and digital collectibles sold as 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.


Proposed:

Tracked Text Description: Retail store services and online retail services featuring virtual goods, namely, footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories; Retail store services and online retail store services featuring virtual goods, namely, footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories; provision of an online marketplace and registry for buyers and sellers of digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs); provision of online marketplace for buyers and sellers of downloadable digital assets and digital collectibles sold as non-fungible tokens (NFTs)Class 035 for Retail store services and online retail store services featuring virtual goods, namely, footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories
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 041 for Entertainment and amusement, namely, provision of online non-downloadable virtual goods, in particular virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, 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.


Proposed:

Tracked Text Description: Entertainment and amusement, namely, provision of online non-downloadable virtual goods, in particular virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in virtual environments created for entertainment purposes; Entertainment srvices, namely, provision of online non-downloadable virtual good in the nature of virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in virtual environments created for entertainment purposesClass 041 for Entertainment srvices, namely, provision of online non-downloadable virtual good in the nature of virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, 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


Applicant proposes to amend the following:

Current:
Class 042 for Providing temporary use of non-downloadable digital media, namely, digital assets and digital collectibles in the form of non-downloadable multimedia files containing artwork, text, audio and video relating to footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of non-fungible tokens (NFTs); providing temporary use of non-downloadable virtual goods, namely, non-downloadable computer software for creating virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories for use in online virtual environments, using blockchain-based software technology and smart contracts; providing temporary use of non-downloadable virtual goods, namely, computer programs featuring footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online virtual environments; providing temporary use of non-downloadable computer software for creating, managing, storing, accessing, sending, receiving, exchanging, validating and selling digital assets, digital collectibles, digital tokens and 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.


Proposed:

Tracked Text Description: Providing temporary use of non-downloadable digital media, namely, digital assets and digital collectibles in the form of non-downloadable multimedia files containing artwork, text, audio and video relating to footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of non-fungible tokens (NFTs); Providing temporary use of non-downloadable computer software for digital media, namely, digital assets and digital collectibles in the form of non-downloadable multimedia files containing artwork, text, audio and video relating to footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of non-fungible tokens (NFTs); providing temporary use of non-downloadable virtual goods, namely, non-downloadable computer software for creating virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories for use in online virtual environments, using blockchain-based software technology and smart contracts; providing temporary use of non-downloadable virtual goods, namely, computer programs featuring footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online virtual environments; providing temporary use of non-downloadable computer software for creating, managing, storing, accessing, sending, receiving, exchanging, validating and selling digital assets, digital collectibles, digital tokens and non-fungible tokens (NFTs)Class 042 for Providing temporary use of non-downloadable computer software for digital media, namely, digital assets and digital collectibles in the form of non-downloadable multimedia files containing artwork, text, audio and video relating to footwear, clothing, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, authenticated by digital tokens in the nature of non-fungible tokens (NFTs); providing temporary use of non-downloadable virtual goods, namely, non-downloadable computer software for creating virtual footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories for use in online virtual environments, using blockchain-based software technology and smart contracts; providing temporary use of non-downloadable virtual goods, namely, computer programs featuring footwear, clothing, bags, clothing accessories and charms for decorating footwear, clothing, bags and clothing accessories, for use in online virtual environments
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
      Benjamin S. Fernandez, Esquire
      PRIMARY EMAIL FOR CORRESPONDENCE: WHIPtrademark@wilmerhale.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): benjamin.fernandez@wilmerhale.com; barbara.barakat@wilmerhale.com; lori.roman@wilmerhale.com; janey.davidson@wilmerhale.com

The docket/reference number is 2200929.5581.

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)
Request for Reconsideration Signature
Signature: /barbara a. barakat/     Date: 04/04/2023
Signatory's Name: Barbara A. Barakat
Signatory's Position: Attorney of record

Signatory's Phone Number: 617 526 6154 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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Benjamin S. Fernandez, Esquire
   WILMER CUTLER PICKERING HALE AND DORR LLP
   
   60 STATE STREET
   BOSTON, Massachusetts 02109
Mailing Address:    Benjamin S. Fernandez, Esquire
   WILMER CUTLER PICKERING HALE AND DORR LLP
   60 STATE STREET
   BOSTON, Massachusetts 02109
        
Serial Number: 97212947
Internet Transmission Date: Tue Apr 04 16:03:11 ET 2023
TEAS Stamp: USPTO/RFR-XXX.XXX.XX.XXX-202304041603118
95926-97212947-8502ba225e451b88caa78b36e
2da6e2efdd83b5d9827f5bc88a0779cab18476a7
f-N/A-N/A-20230404155651342712