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. 79224588 J K ROWLING(Standard Characters, see http://uspto.report/TM/79224588/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Consent to Register by Warner Bros. Entertainment Inc., the applicant of serial no.s 87031083, 87031094, 87031121, 87031159, 87031197, 87031465, 87031490. has been attached.
Original PDF file:
evi_108171131165-20180705162135172812_._Consent_to_Register.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Motion picture films featuring comedy, drama, action, adventure and/or animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and/or animation; audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation; downloadable audio recordings featuring comedy, drama, action and adventure; downloadable audio-video recordings featuring comedy, drama, action and adventure and/or animation; apparatus for processing, recording, transmission or reproduction of sound, video, data and/or images; mouse pads; eyeglasses, sunglasses and cases therefore; downloadable computer software applications; downloadable software for use in playing online computer games, downloadable computer game software; computer game software for use on mobile and cellular phones; video and computer game programs; video game cartridges; computer and video game discs, cartridges, downloadable programs and software applications which are designed for hardware platforms, namely, game consoles and personal computers; computer game software for gaming machines including slot machines; computer software or firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines and video lottery terminals; computer software linking digitized video and audio media to a global computer information network; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the Internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment-related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the Internet; downloadable computer software for streaming audio-visual media content via the Internet; downloadable computer software for streaming and storing audio-visual media content; downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, strategy guides, magazines featuring characters from animated, action adventure, comedy and/or drama features, colouring books, children's activity books and magazines in the field of entertainment; cellular telephone accessories, namely, hands-free accessories, cellular telephone covers and cellular telephone face covers; encoded magnetic cards, namely, phone cards, credit cards, cash cards, debit cards and magnetic key cards; downloadable electronic books, magazines, newspapers; downloadable children's books; downloadable audio books; downloadable interactive electronic publications, interactive electronic books and interactive electronic children's books; decorative magnets
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Motion picture films featuring comedy, drama, action, adventure and/or animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and/or animation; Motion picture films featuring comedy, drama, action, adventure and animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and animation; audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation; audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure, and animation; downloadable audio recordings featuring comedy, drama, action and adventure; downloadable audio recording featuring comedy, drama, action and adventure; downloadable audio-video recordings featuring comedy, drama, action and adventure and/or animation; downloadable audio-video recording featuring comedy, drama, action and adventure and animation; apparatus for processing, recording, transmission or reproduction of sound, video, data and/or images; mouse pads; eyeglasses, sunglasses and cases therefor; eyeglasses, sunglasses and cases therefore; downloadable computer software applications for watching movies and reading children's books; downloadable computer software applications; downloadable software for use in playing online computer games; downloadable software for use in playing online computer games, downloadable computer game software; downloadable computer game software; computer game software for use on mobile and cellular phones; video and computer game programs; video game software and computer game programs; video game cartridges; computer and video game discs, cartridges, downloadable programs and software applications which are designed for hardware platforms, namely, game consoles and personal computers; computer and video game discs and cartridges; downloadable programs and software applications for watching movies, reading children's books which are designed for hardware platforms, namely, game consoles and personal computers; computer software or firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines and video lottery terminals; computer game software for gaming machines including slot machines; computer software linking digitized video and audio media to a global computer information network; computer software and firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines and video lottery terminals; computer software for linking digitized video and audio media to a global computer information network; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment-related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the Internet; downloadable computer software for streaming audio-visual media content via the Internet; downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, strategy guides, magazines featuring characters from animated, action adventure, comedy and/or drama features, colouring books, children's activity books and magazines in the field of entertainment; downloadable computer software for streaming and storing audio-visual media content; cellular telephone accessories, namely, hands-free accessories, cellular telephone covers and cellular telephone face covers; downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and drama features, comic books, children's books, strategy guides and magazines featuring characters from animated, action adventure, comedy and drama features, colouring books, children's activity books and magazines in the field of entertainment; encoded magnetic cards, namely, phone cards, credit cards, cash cards, debit cards and magnetic key cards; cellular telephone accessories, namely, hands-free kits; downloadable electronic books, magazines, newspapers; cellular telephone covers and cellular telephone face covers; downloadable electronic books, magazines, and newspapers in the field of action, adventure and/or animation; downloadable audio books; downloadable children's books; downloadable interactive electronic publications, interactive electronic books and interactive electronic children's books; downloadable and recorded (on CD) audio books in the nature of short stories, novels; decorative magnets; downloadable interactive electronic publications in the nature of interactive magazines in the field of action, adventure and/or animation; downloadable interactive electronic books in the fields of action, adventure and/or animation; and downloadable interactive electronic children's books; decorative magnets.Class 009 for Motion picture films featuring comedy, drama, action, adventure and animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and animation; audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure, and animation; downloadable audio recording featuring comedy, drama, action and adventure; downloadable audio-video recording featuring comedy, drama, action and adventure and animation; mouse pads; eyeglasses, sunglasses and cases therefor; downloadable computer software applications for watching movies and reading children's books; downloadable software for use in playing online computer games; downloadable computer game software; computer game software for use on mobile and cellular phones; video game software and computer game programs; video game cartridges; computer and video game discs and cartridges; downloadable programs and software applications for watching movies, reading children's books which are designed for hardware platforms, namely, game consoles and personal computers; computer game software for gaming machines including slot machines; computer software and firmware for games of chance on any computerized platform, including dedicated gaming consoles, video based slot machines, reel based slot machines and video lottery terminals; computer software for linking digitized video and audio media to a global computer information network; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment-related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the Internet; downloadable computer software for streaming audio-visual media content via the Internet; downloadable computer software for streaming and storing audio-visual media content; downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and drama features, comic books, children's books, strategy guides and magazines featuring characters from animated, action adventure, comedy and drama features, colouring books, children's activity books and magazines in the field of entertainment; cellular telephone accessories, namely, hands-free kits; cellular telephone covers and cellular telephone face covers; downloadable electronic books, magazines, and newspapers in the field of action, adventure and/or animation; downloadable children's books; downloadable and recorded (on CD) audio books in the nature of short stories, novels; downloadable interactive electronic publications in the nature of interactive magazines in the field of action, adventure and/or animation; downloadable interactive electronic books in the fields of action, adventure and/or animation; and downloadable interactive electronic children's books; decorative magnets.

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Printed matter, newspapers, periodical publications; books; colouring books; stationery; comic books, children's books; magazines featuring characters from animated, action adventure, comedy and/or drama features; children's activity books; stationery, writing paper, envelopes, notebooks, diaries, note cards, greeting cards, trading cards; lithographs; pens, pencils, cases therefor, erasers, crayons, markers, coloured pencils, painting sets, chalk and chalkboards; decals, heat transfers; posters; mounted and/or unmounted photographs; book covers, book marks, calendars, gift wrapping paper; paper party decorations, namely, paper napkins, paper place mats, crepe paper, invitations, paper table cloths, paper cake decorations; printed transfers for embroidery or fabric appliqués; printed patterns for costumes, pyjamas, sweatshirts and t-shirts
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Printed matter, newspapers, periodical publications; Newspapers, periodical publications all in the field of literature; books; books in the field of action, adventure and/or animation; colouring books; stationery; stationery, comic books, children's books; comic books, children's books; magazines featuring characters from animated, action adventure, comedy and drama features; magazines featuring characters from animated, action adventure, comedy and/or drama features; children's activity books; writing paper; stationery, writing paper, envelopes, notebooks, diaries, note cards, greeting cards, trading cards; envelopes; notebooks; pens, pencils, cases therefor, erasers, crayons, markers, coloured pencils, painting sets, chalk and chalkboards; diaries; decals, heat transfers; note cards; posters; greeting cards,; trading cards; book covers, book marks, calendars, gift wrapping paper; lithographs; paper party decorations, namely, paper napkins, paper place mats, crepe paper, invitations, paper table cloths, paper cake decorations; pens, pencils, and cases therefor; printed transfers for embroidery or fabric appliqués; erasers; printed patterns for costumes, pyjamas, sweatshirts and t-shirts; crayons; markers; coloured pencils; painting sets for children; chalk and chalkboards; decals, heat transfer paper, posters; mounted and/or unmounted photographs; book covers; book marks; calendars; gift wrapping paper; paper party decorations, namely, paper napkins, paper place mats, crepe paper, printed invitations, paper table cloths, paper cake decorations; printed transfers for embroidery or fabric appliques; printed patterns for making clothes in the nature of costumes, pyjamas, sweatshirts and t-shirts.Class 016 for Newspapers, periodical publications all in the field of literature; books in the field of action, adventure and/or animation; colouring books; stationery, comic books, children's books; magazines featuring characters from animated, action adventure, comedy and drama features; children's activity books; writing paper; envelopes; notebooks; diaries; note cards; greeting cards,; trading cards; lithographs; pens, pencils, and cases therefor; erasers; crayons; markers; coloured pencils; painting sets for children; chalk and chalkboards; decals, heat transfer paper, posters; mounted and/or unmounted photographs; book covers; book marks; calendars; gift wrapping paper; paper party decorations, namely, paper napkins, paper place mats, crepe paper, printed invitations, paper table cloths, paper cake decorations; printed transfers for embroidery or fabric appliques; printed patterns for making clothes in the nature of costumes, pyjamas, sweatshirts and t-shirts.

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 025 for Clothing; footwear; headgear; T-shirts, sweatshirts, shirts, trousers, shorts, skirts, blouses, dresses, jackets, coats, sleepwear, underwear, swimwear, jumpers, hats, caps, baseball caps, headbands; scarves, woolly hats and gloves; shoes, training shoes, sandals, boots and slippers; belts for wear
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Clothing; Clothing, namely, T-shirts, sweatshirts, shirts, trousers, shorts, skirts, blouses, dresses, jackets, coats, sleepwear, underwear, swimwear, jumpers, hats, caps being headwear, baseball caps, headbands; footwear; headgear; headgear in the nature of headwear; T-shirts, sweatshirts, shirts, trousers, shorts, skirts, blouses, dresses, jackets, coats, sleepwear, underwear, swimwear, jumpers, hats, caps, baseball caps, headbands; scarves, woolly hats and gloves; shoes, training shoes, sandals, boots and slippers; belts for wear.; belts for wearClass 025 for Clothing, namely, T-shirts, sweatshirts, shirts, trousers, shorts, skirts, blouses, dresses, jackets, coats, sleepwear, underwear, swimwear, jumpers, hats, caps being headwear, baseball caps, headbands; footwear; headgear in the nature of headwear; scarves, woolly hats and gloves; shoes, training shoes, sandals, boots and slippers; belts for wear.

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Games, toys and playthings; video game apparatus; games consoles; controllers for games consoles; gymnastic and sporting articles; playing cards; board games; card games; hand-held electronic games; decorations for Christmas trees; jigsaw puzzles and other manipulative puzzles
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Games, toys and playthings; Games, toys and playthings, namely, plush toys, wind-up toys, bath tub toys , action figures and accessories therefor, flying discs, toy snow globes, ride-on toys, dolls and doll accessories; video game apparatus; games consoles; , namely, controller for game consoles; games consoles namely video games consoles, hand-held games consoles; gymnastic and sporting articles; controllers for games consoles; playing cards; board games; card games; hand-held electronic games; hand-held units for playing electronic games; decorations for Christmas trees; jigsaw puzzles and other manipulative puzzles; jigsaw puzzles and other manipulative puzzles.Class 028 for Games, toys and playthings, namely, plush toys, wind-up toys, bath tub toys , action figures and accessories therefor, flying discs, toy snow globes, ride-on toys, dolls and doll accessories; video game apparatus;, namely, controller for game consoles ; games consoles namely video games consoles, hand-held games consoles; controllers for games consoles; playing cards; board games; card games; hand-held units for playing electronic games; decorations for Christmas trees; jigsaw puzzles and other manipulative puzzles.

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Intellectual property licensing services; management of intellectual property rights; online social networking services; social networking services provided via the Internet and other electronic communications networks; social networking provided via a website on the Internet; Internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Intellectual property licensing services; management of intellectual property rights; management of intellectual property rights, namely, licensing of intellectual property; online social networking services; social networking services provided via the Internet and other electronic communications networks; online social networking services, namely, social networking services provided via the internet and other electronic communications networks; social networking provided via a website on the internet; Internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials; Internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials.Class 045 for Intellectual property licensing services; management of intellectual property rights, namely, licensing of intellectual property; online social networking services; online social networking services, namely, social networking services provided via the internet and other electronic communications networks; social networking provided via a website on the internet; Internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials.

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Johanna Schmitt of Kirkland & Ellis LLP, having an address of
601 Lexington Avenue New York, New York 10022
United States
trademarks@kirkland.com
The attorney docket/reference number is 23957-03 .
The Other Appointed Attorney(s): Jordan Romanoff.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
J A Kemp
14 South Square,
Gray's Inn
London WC1R 5JJ
GB

Proposed:
Johanna Schmitt of Kirkland & Ellis LLP, having an address of
601 Lexington Avenue New York, New York 10022
United States
trademarks@kirkland.com;jordan.romanoff@kirkland.com; jeff.nicholas@kirkland.com; johanna.schmitt@kirkland.com
The docket/reference number is 23957-03 .



ADDITIONAL STATEMENTS
Name(s), Portrait(s), Signature(s) of individual(s)
The name(s), portrait(s), and/or signature(s) shown in the mark identifies Joanna Rowling, whose consent(s) to register is made of record.

Original PDF file:
consent-108171131165-162135172_._79_224_588_Consent.pdf
Converted PDF file(s) ( 1 page)
Consent File1

SIGNATURE(S)
Response Signature
Signature: /Johanna Schmitt/     Date: 07/06/2018
Signatory's Name: Johanna Schmitt
Signatory's Position: Attorney

Signatory's Phone Number: 212 446 4800

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.

Mailing Address:    Johanna Schmitt
   Kirkland & Ellis LLP
   601 Lexington Avenue
   New York, New York 10022
        
Serial Number: 79224588
Internet Transmission Date: Fri Jul 06 13:21:08 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20180706132108
484985-79224588-610aef9f1597ab82899f4c9b
078fe452bc7c32a5642cb755f68f17d764f1fabe
de-N/A-N/A-20180706125616391796