Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77005757 has been amended as follows:

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

     In response to the Office action dated May 29, 2008, Applicant submits the attached substitute specimen for the Class 9 goods.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for CONTROL SOFTWARE FOR MANAGING, IDENTIFYING AND SELECTING MUSIC AND FOR CREATING MUSIC PLAYLISTS; SOFTWARE DEVELOPMENT KITS (SDK) FOR ADAPTING SUCH CONTROL SOFTWARE FOR USE WITH MP3 PLAYERS AND CD PLAYERS, AND FIRMWARE EMBEDDED IN THIRD PARTY CONSUMER PRODUCTS AND ENTERPRISE NETWORK SERVERS TO ENABLE SUCH CONTROL SOFTWARE
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

In International Class 009, the mark was first used at least as early as 10/31/2006 and first used in commerce at least as early as 11/30/2006.

Proposed: Class 009 for CONTROL SOFTWARE FOR MANAGING, IDENTIFYING AND SELECTING MUSIC AND FOR CREATING MUSIC PLAYLISTS; SOFTWARE DEVELOPMENT KITS (SDK) FOR ADAPTING SUCH CONTROL SOFTWARE FOR USE WITH MP3 PLAYERS AND CD PLAYERS, AND FIRMWARE EMBEDDED IN THIRD PARTY CONSUMER PRODUCTS AND ENTERPRISE NETWORK SERVERS TO ENABLE SUCH CONTROL SOFTWARE
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

In International Class 009, the mark was first used at least as early as 10/31/2006. and first used in commerce at least as early as 11/30/2006.

Applicant hereby submits a new specimen for Class 009. The specimen(s) submitted consists of Excerpt from a User Guide that is packaged with MP3 players that include the control software..
For an application based on 1(b), Intent-to-Use, "The substitute specimen(s) was in use in commerce prior to expiration of the filing deadline for filing a Statement of Use (SOU)."
Original PDF file:
SPU0-6421382130-153708869_._58495subpspec.pdf
Converted PDF file(s) (1 page)
Specimen File1

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Josephine E. Chang/      Date: 05/30/2008
Signatory's Name: Josephine E. Chang
Signatory's Position: Attorney of Record

Response Signature
Signature: /Josephine E. Chang/     Date: 05/30/2008
Signatory's Name: Josephine E. Chang
Signatory's Position: Attorney of Record

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77005757
Internet Transmission Date: Fri May 30 18:21:32 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2008053018213259
2237-77005757-4205cf55aa335d4767eb49d45e
1aeef2ac-N/A-N/A-20080530153708869587