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. 78943482 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:
This is in response to the Office Action dated December 12, 2006 in the above-referenced trademark application.

AMENDMENTS

1.    Identification of Services

Please revise the identification of services to read in its entirety as follows (additions underlined):

Class 35: Arranging and conducting trade shows, expositions and exhibitions in the fields of computers, computer software, online services, information technology, and consumer electronics.
Basis: 1(a)
First Use Date: 03/01/1981
First Use in Commerce Date: 03/01/1981

Class 41: Education and training services, namely, conducting classes, workshops, conferences and seminars in the field of computers, computer software, online services, information technology, internet website design, video products and consumer electronics; arranging of exhibitions, seminars and conferences; arranging professional workshop and training courses; computer education training services; training in the use and operation of computers and computer software; providing a website for the uploading, sharing, viewing and posting of photographs, digital images, movies, videos, online journals, namely web blogs in general interest fields, and other related multimedia entertainment materials over a global computer network; providing fitness and exercise facilities; physical fitness consultation and instruction; providing on-line publications in the nature of newsletters in the field of computers and education; providing information in the field of education via the Internet; providing information in the field of entertainment via the Internet concerning movies, music, videos, television, celebrities, sports, news, history, science, politics, comedy, children's entertainment, animation, culture, current events.  
Basis: 1(a)
First Use Date: 1981-03-01
First Use in Commerce Date: 1981-03-01

REMARKS

In the Office Action, the Examining Attorney raised certain objections to the identification of services.  Specifically, the Examining Attorney requested that the wording “arranging and conducting trade shows, expositions and exhibitions in the fields of computers, computer software, online services, information technology, and consumer electronics” be transferred to Class 35.  Applicant has complied with this request and provided dates of first use and first use in commerce for these services.  A Declaration and Class 35 specimen in support of this amendment are also submitted herewith, along with a payment in the amount of $375 for the additional class charge.

Also, the Examining Attorney objected to the wording "providing a website for the uploading, sharing, viewing and posting of ... online journals and weblogs and other multimedia entertainment materials over a global computer network" and requested amendment of this language to "providing a website for the uploading, sharing, viewing and posting of ... online journals, namely web blogs in the field of _______ and related multimedia entertainment materials."  Applicant submits that its services of interest constitute the provision of a website on which users can post blogs on whatever topics they desire, rather than blogs provided by applicant itself in a specific subject matter area.  Thus, in this context, applicant submits that the requested field limitation is inappropriate.  Instead, applicant believes that its proposed language concerning web blogs “in general interest fields” is sufficiently definite for registration.

Finally, the Examining Attorney deemed "providing information in the field of education and entertainment via the Internet" as overly broad.  However, applicant notes that “information about education” is listed in the Acceptable Identifications manual.  As a result, applicant submits that “providing information in the field of education via the Internet”, as a subset of “information about education”, should be acceptable.  With respect to the entertainment aspect of this identification, applicant has specified the subject matter as requested.

In view of the foregoing, applicant submits that the identifications of services, as amended, are sufficiently definite for registration.

CONCLUSION

Applicant believes that all the Examiner’s concerns with respect to the application have been resolved and that the application is in condition for publication.



Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Education and training services, namely, conducting classes, workshops, conferences and seminars in the field of computers, computer software, online services, information technology, internet website design, video products and consumer electronics; arranging of exhibitions, seminars and conferences; arranging professional workshop and training courses; computer education training services; training in the use and operation of computers and computer software; arranging and conducting trade shows, expositions and exhibitions in the fields of computers, computer software, online services, information technology, and consumer electronics; providing a website for the uploading, sharing, viewing and posting of photographs, digital images, movies, videos, online journals and weblogs and other multimedia entertainment materials over a global computer network; providing fitness and exercise facilities; Physical fitness consultation and instruction; providing on-line publications in the nature of newsletters in the field of computers and education; providing information in the field of education and entertainment via the Internet
Original Filing Basis: 1(a).
Proposed: Class 041 for Education and training services, namely, conducting classes, workshops, conferences and seminars in the field of computers, computer software, online services, information technology, internet website design, video products and consumer electronics; arranging of exhibitions, seminars and conferences; arranging professional workshop and training courses; computer education training services; training in the use and operation of computers and computer software; providing a website for the uploading, sharing, viewing and posting of photographs, digital images, movies, videos, online journals, namely web blogs in general interest fields, and other related multimedia entertainment materials over a global computer network; providing fitness and exercise facilities; Physical fitness consultation and instruction; providing on-line publications in the nature of newsletters in the field of computers and education; providing information in the field of education via the internet; providing information in the field of entertainment via the Internet concerning movies, music, videos, television, celebrities, sports, news, history, science, politics, comedy, children's entertainment, animation, culture, current events.
Filing Basis: 1(a).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 035 for Arranging and conducting trade shows, expositions and exhibitions in the fields of computers, computer software, online services, information technology, and consumer electronics.
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 03/01/1981 and first used in commerce at least as early as 03/01/1981, and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035.
The specimen(s) submitted consists of Specimen consists of screen capture of Applicants WWDC trade show website information..
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

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: /Thomas R. La Perle/      Date: 02/13/2007
Signatory's Name: Thomas R. La Perle
Signatory's Position: Senior Intellectual Property Counsel

Response Signature
Signature: /Thomas R. La Perle/     Date: 02/13/2007
Signatory's Name: Thomas R. La Perle
Signatory's Position: Senior Intellectual Property Counsel
        
RAM Sale Number: 172
RAM Accounting Date: 02/14/2007
        
Serial Number: 78943482
Internet Transmission Date: Tue Feb 13 14:32:29 EST 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007021314322938
0472-78943482-360636f7f5de934662b42b64cc
c7406a70-DA-172-20070213140626858956