Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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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. 78518463 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

This responds to the Office Action dated January 27, 2006 ("Office Action") in connection with the above referenced application ("Application") that seeks federal registration of the above referenced mark ("Applicant's Mark"). 

 

REMARKS

 

Applicant is prosecuting this Application as a multiple-class application by adding International Class 43 as the other International Class of services that will bear Applicant’s Mark.  The amended description of Applicant’s services for International Class 41 is also provided below.

International Class 41: Centers for entertainment amusement in the nature of movies, night clubs and amusement arcades. 

           International Class 43: Centers for entertainment amusement in the nature of live music concerts, magic shows, visual and audio performances, musical and comedy shows, live performances by musical bands, interactive plays, how-to performances and demonstrations.

 

The above services are in compliance with 37 C.F.R. §2.71(a) and TMEP §1402.06 and a filing fee in the amount of $325.00 for Applicant’s International Class 43 Services is being charged. 

 

The substitute specimen that accompanied Applicant's previous response, as analyzed in the previous response, amply demonstrates Applicant's use of Applicant's Mark as a source-identifier for Applicant's International Class 41 Services. 

 

With respect to the specimens that accompany this response, they together amply demonstrate Applicant’s use of Applicant’s Mark as a source-identifier for Applicant’s International Class 43 Services.  They promote entertainment services under Applicant’s Mark.   These services, as indicated in the blueprint of Applicant’s premises, include centers for live music concerts and live performance by musical bands (at Hard Rock Live, for example), centers for magic shows, visual and audio performances, musical and comedy shows, interactive plays, and how-to performances and demonstrations (at I-Max, Daytona USA, and Arcade, for example).    These substitute specimens are accompanied by a signed declaration that verifies their use in connection with Applicant's Mark for Applicant's International Class 43 Services at least as early as November 17, 2004 (the filing date of the Application). 

 

Based on the foregoing, Applicant respectfully requests that the rejection be withdrawn.  It is therefore requested that the Application be passed on for registration on the Principal Register.

 

If the Examining Attorney has any questions regarding the Application, and especially this response, or if he believes that an interview will advance the Application, she is encouraged to contact the undersigned at the address, telephone number or e-mail address stated below.

Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Centers for entertainment and amusement in the nature of movies, live music concerts, night clubs, magic shows, visual and audio performances, musical and comedy shows, live performances by musical bands, interactive plays, amusement arcades, how to performances and demonstrations
Original Filing Basis: 1(a).
Proposed: Class 041 for Centers for entertainment amusement in the nature of movies, night clubs and amusement arcades
Filing Basis: 1(a).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 043 for Centers for entertainment amusement in the nature of live music concerts, magic shows, visual and audio performances, musical and comedy shows, live performances by musical bands, interactive plays, how-to performances and demonstrations
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 07/31/2003 and first used in commerce at least as early as 07/31/2003, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 043.
The specimen(s) submitted consists of advertisements.
For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application."
Specimen File1
Specimen File2

Fees
Fee(s) in the amount of $325 is being submitted.


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: /ph/      Date: 07/27/2006
Signatory's Name: Pearl Hsieh
Signatory's Position: Attorney

Response Signature
Signature: /ph/     Date: 07/27/2006
Signatory's Name: Pearl Hsieh
Signatory's Position: Attorney
        
RAM Sale Number: 1564
RAM Accounting Date: 07/27/2006
        
Serial Number: 78518463
Internet Transmission Date: Thu Jul 27 13:29:04 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20060727132904804
922-78518463-3401a73ba70529b6333dd281a5d
f3913f4-CC-1564-20060727130746258058