Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88746482  (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8874648 2/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for computer software application for access to audio, video, and multimedia content; computer software application for access to music programming and playlist service
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 11/20/2019 and first used in commerce at least as early as 11/20/2019 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Jamaica application number 78125 filed 07/05/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: computer software application for access to audio, video, and multimedia content; Downloadable computer software application for accessing, browsing and searching online databases for audio, video, and multimedia content; computer software application for access to music programming and playlist service; downloadable computer software application for access to digital music programming and entertainment related musical playlist servicesClass 009 for Downloadable computer software application for accessing, browsing and searching online databases for audio, video, and multimedia content; downloadable computer software application for access to digital music programming and entertainment related musical playlist 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 11/20/2019 and first used in commerce at least as early as 11/20/2019 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Jamaica application number 78125 filed 07/05/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:

Current:
Class 038 for broadcast and transmission of streamed music, audio, video, and multimedia content by means of radio, television, internet, and satellite for business use; transmission and delivery of digital music via telecommunications networks, computer networks, the Internet, satellite, radio, and wireless communications 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 11/20/2019 and first used in commerce at least as early as 11/20/2019 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Jamaica application number 78125 filed 07/05/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: broadcast and transmission of streamed music, audio, video, and multimedia content by means of radio, television, internet, and satellite for business use; Broadcast and transmission of music, audio and video content by means of television and radio; transmission and delivery of digital music via telecommunications networks, computer networks, the Internet, satellite, radio, and wireless communications networks; streaming of digital and multimedia content in the nature of music, audio and video by means of the internet and satellite communications for business use; electronic transmission and delivery of digital music via telecommunication networks, computer networks, the internet and wireless communication networks; transmission of music via radio by means of satellite communicationsClass 038 for Broadcast and transmission of music, audio and video content by means of television and radio; streaming of digital and multimedia content in the nature of music, audio and video by means of the internet and satellite communications for business use; electronic transmission and delivery of digital music via telecommunication networks, computer networks, the internet and wireless communication networks; transmission of music via radio by means of satellite communications
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 11/20/2019 and first used in commerce at least as early as 11/20/2019 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Jamaica application number 78125 filed 07/05/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:

Current:
Class 041 for Production of programmed music and video displays for subscribers; audio and video recording and production services for others; music service, namely, providing specially programmed background non-downloadable music for retail establishments, public areas, and commercial establishments via telecommunications networks, computer networks, the Internet, satellite, radio, and wireless networks; musical, radio, television and video entertainment services, namely, custom arrangement and editing of music, audio and video programs; Custom music programming 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 11/20/2019 and first used in commerce at least as early as 11/20/2019 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Jamaica application number 78125 filed 07/05/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Production of programmed music and video displays for subscribers; Production of pre-programmed music and music videos for use in subscription based retail and/or commercial establishments; audio and video recording and production services for others; music service, namely, providing specially programmed background non-downloadable music for retail establishments, public areas, and commercial establishments via telecommunications networks, computer networks, the Internet, satellite, radio, and wireless networks; music service, namely, providing specially programmed background non- downloadable music; musical, radio, television and video entertainment services, namely, custom arrangement and editing of music, audio and video programs; entertainment services, namely, providing non-downloadable playback of music for retail establishments, public areas, and commercial establishments via telecommunications networks, computer networks, the Internet, satellite, radio, and wireless networks; Custom music programming services; providing customized music programs featuring playlists for use in retail establishments, public areas, and commercial establishments via the internetClass 041 for Production of pre-programmed music and music videos for use in subscription based retail and/or commercial establishments; audio and video recording and production services for others; music service, namely, providing specially programmed background non- downloadable music; entertainment services, namely, providing non-downloadable playback of music for retail establishments, public areas, and commercial establishments via telecommunications networks, computer networks, the Internet, satellite, radio, and wireless networks; providing customized music programs featuring playlists for use in retail establishments, public areas, and commercial establishments via the internet
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 11/20/2019 and first used in commerce at least as early as 11/20/2019 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Jamaica application number 78125 filed 07/05/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Apple Inc., a corporation of California, having an address of
      One Apple Park
      Cupertino, California 95014
      United States

Proposed: Apple Inc., a corporation of California, having an address of
      One Apple Park
      Cupertino, California 95014
      United States
      Email Address: XXXX
Correspondence Information (current):
      THOMAS R. LA PERLE
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@apple.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): keckhart@apple.com; vtom@apple.com
Correspondence Information (proposed):
      Thomas R. La Perle
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@apple.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): egiacoppo@apple.com; vtom@apple.com

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: /Erin Giacoppo/     Date: 03/24/2020
Signatory's Name: Erin Giacoppo
Signatory's Position: Attorney of record, California Bar member

Signatory's Phone Number: 408-862-0829

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:    THOMAS R. LA PERLE
   APPLE INC.
   MS: 169-3IPL
   ONE APPLE PARK WAY
   CUPERTINO, California 95014
Mailing Address:    Thomas R. La Perle
   APPLE INC.
   MS: 169-3IPL
   ONE APPLE PARK WAY
   CUPERTINO, California 95014
        
Serial Number: 88746482
Internet Transmission Date: Tue Mar 24 12:40:52 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXX:XXXX:XXXX:XX
XX:XXXX-20200324124052394840-88746482-71
091ddd2e483ca5c7dd65f62af732c46f5213b842
1fa6999c3dda79e7ed5dd774-N/A-N/A-2020032
4005603456824