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. 78716760 CLARO (Stylized and/or with Design, see http://uspto.report/TM/78716760/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: CLARO (Stylized and/or with Design, see http://uspto.report/TM/78716760/mark.png)
Proposed: CLARO (Stylized and/or with Design, see mark)
The color(s) red and white is/are claimed as a feature of the mark.
The mark consists of the word "claro" with an arbitrary design appearing in three-dimensional in red and white.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Telephone apparatus, telephone peripherals and accessories, namely, call processors, fax machines, intercoms, mobile phones, modems, pagers, telephone answering machines, two-way radios, video conferencing phones, cameras and screens, telephone cases, telephone chargers, mobile telephone batteries
Original Filing Basis:
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 03/09/2011 and first used in commerce at least as early as 03/09/2011 , 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[ Paraguay application number 15834 filed 06/03/2005]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Telephone apparatus, telephone peripherals and accessories, namely, call processors, fax machines, intercoms, mobile phones, modems, pagers, telephone answering machines, two-way radios, video conferencing phones, cameras and screens, telephone cases, telephone chargers, mobile telephone batteries; Telephone apparatus, telephone peripherals and accessories, namely, call processors in the nature of digital signal processors, fax machines, intercoms, mobile phones, modems, pagers, telephone answering machines, two-way radios, video conferencing phones, cameras and video screens, telephone cases, telephone chargers, mobile telephone batteriesClass 009 for Telephone apparatus, telephone peripherals and accessories, namely, call processors in the nature of digital signal processors, fax machines, intercoms, mobile phones, modems, pagers, telephone answering machines, two-way radios, video conferencing phones, cameras and video screens, telephone cases, telephone chargers, mobile telephone batteries
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 03/09/2011 and first used in commerce at least as early as 03/09/2011 , 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 [ Paraguay application number 15834 filed 06/03/2005]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Telecommunications network design and planning; monitoring telephone calls from subscribers and notifying emergency facilities, telephone answering services
Original Filing Basis:
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 03/09/2011 and first used in commerce at least as early as 03/09/2011 , 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[ Paraguay application number 15834 filed 06/03/2005]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Telecommunications network design and planning; monitoring telephone calls from subscribers and notifying emergency facilities, telephone answering services; monitoring telephone calls from subscribers and notifying emergency facilitiesClass 042 for Telecommunications network design and planning; monitoring telephone calls from subscribers and notifying emergency facilities
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 03/09/2011 and first used in commerce at least as early as 03/09/2011 , 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 [ Paraguay application number 15834 filed 06/03/2005]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Applicant would like the Section 44(e) basis to be deleted from the application so the application will proceed forward based solely on Section 1(a).


SIGNATURE(S)
Response Signature
Signature: /Sandy Chiu/     Date: 03/28/2018
Signatory's Name: Sandy Chiu
Signatory's Position: Associate Attorney, Greenberg Traurig, P.A., Florida bar member

Signatory's Phone Number: 3055790558

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 78716760
Internet Transmission Date: Wed Mar 28 09:30:39 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20180328093039427
948-78716760-5105e548540625d389b8107cc2f
b48796e701443a773c04d5f775aadb88105b3a-N
/A-N/A-20180328081827807677