Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

---

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79291900 HMS CORE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7929190 0/large) has been amended as follows:

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

Applicant has amended the identification of goods and services and requests that the citations be withdrawn in light of the amendments.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Smartglasses (data processing apparatus); smartwatches (data processing apparatus); computer hardware; computer memory devices; integrated circuit cards [smart cards]; tablet computers; notebook computers; computer programs, recorded; computer software applications, downloadable; humanoid robots with artificial intelligence; security tokens [encryption devices]; computer software platforms, recorded or downloadable; computer software, recorded; smartphone software applications, downloadable; computer operating programs, recorded; liquid crystal display [LCD] screens; electronic pen; video image printer; computer stylus; face recognition device; scales; smartphones; network communication equipment; microphones; cabinets for loudspeakers; headsets; virtual reality headsets; dashboard cameras; set top box; loudspeakers; sound transmitting apparatus; camcorders; monitoring apparatus, other than for medical purposes; video monitor; security surveillance robots; wearable video display monitors; television apparatus; cameras [photography]; selfie lenses; biochips; infrared detectors; air analysis apparatus; laboratory robots; teaching robots; optical lenses; materials for electricity mains [wires, cables]; USB cables; USB cables for cellphones; electronic key fobs being remote control apparatus; video screens; integrated circuits; electronic chips; touch screens; electric plugs; electric sockets; sensors; digital locks; central alarms; batteries, electric; battery chargers; mobile power (rechargeable battery); encoded id cards; digital signal processors; electronic access control systems for interlocking doors; electronic publications, downloadable; chips [integrated circuits]; printed circuit boards; central processing unit (CPU) for information, data, sounds and images processing; processors [central processing units]
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: Smartglasses (data processing apparatus); Data processing apparatus, namely, smartglasses; smartwatches (data processing apparatus); Data processing apparatus, smartwatches; computer hardware; computer memory devices; integrated circuit cards [smart cards]; blank integrated circuit cards in the nature of smart cards; tablet computers; notebook computers; computer programs, recorded; computer software applications, downloadable; downloadable computer software applications for mobile service framework; humanoid robots with artificial intelligence; security tokens [encryption devices]; security token hardware; computer software platforms, recorded or downloadable; recorded or downloadable computer software platforms featuring software for mobile service framework; computer software, recorded; recorded computer software for mobile service framework; smartphone software applications, downloadable; downloadable smartphone software applications for mobile service framework; computer operating programs, recorded; liquid crystal display [LCD] screens; liquid crystal display (LCD) screens; electronic pen; video image printer; video and photo printer; computer stylus; face recognition device; face recognition device in the nature of biometric identification apparatus; scales; smartphones; network communication equipment; network communication equipment, namely, network equipment in the field of wideband communications; microphones; cabinets for loudspeakers; headsets; headsets for use with mobile phones, telephones and computers; virtual reality headsets; dashboard cameras; set top box; loudspeakers; sound transmitting apparatus; camcorders; monitoring apparatus, other than for medical purposes; monitoring apparatus, other than for medical purposes, namely, wireless controllers to monitor and control the functioning of other electronic devices; video monitor; security surveillance robots; wearable video display monitors; television apparatus; television apparatus, namely, televisions; cameras [photography]; Photographic cameras; selfie lenses; selfie lenses, namely, lenses specially adapted for cameras; biochips; biochips for research or scientific purposes; infrared detectors; air analysis apparatus; laboratory robots; teaching robots; optical lenses; materials for electricity mains [wires, cables]; materials for electricity mains, namely, electric wires and cables; USB cables; USB cables for cellphones; electronic key fobs being remote control apparatus; video screens; integrated circuits; electronic chips; electronic chips in the nature of electronic chips for the manufacture of integrated circuits; touch screens; electric plugs; electric sockets; sensors; sensors, namely, temperature sensors, pressure sensors, motion sensors; digital locks; digital door locks; central alarms; central alarms in the nature of anti-intrusion alarms; batteries, electric; battery chargers; mobile power (rechargeable battery); rechargeable battery for mobile phones; encoded id cards; encoded identity cards; digital signal processors; electronic access control systems for interlocking doors; electronic publications, downloadable; downloadable electronic publications in the nature of newsletters in the field of telecommunications; chips [integrated circuits]; integrated circuit chips for operating mobile phones; printed circuit boards; central processing unit (CPU) for information, data, sounds and images processing; processors [central processing units]; central processing unitsClass 009 for Data processing apparatus, namely, smartglasses; Data processing apparatus, smartwatches; computer hardware; computer memory devices; blank integrated circuit cards in the nature of smart cards; tablet computers; notebook computers; computer programs, recorded; downloadable computer software applications for mobile service framework; humanoid robots with artificial intelligence; security token hardware; recorded or downloadable computer software platforms featuring software for mobile service framework; recorded computer software for mobile service framework; downloadable smartphone software applications for mobile service framework; computer operating programs, recorded; liquid crystal display (LCD) screens; electronic pen; video and photo printer; computer stylus; face recognition device in the nature of biometric identification apparatus; scales; smartphones; network communication equipment, namely, network equipment in the field of wideband communications; microphones; cabinets for loudspeakers; headsets for use with mobile phones, telephones and computers; virtual reality headsets; dashboard cameras; set top box; loudspeakers; sound transmitting apparatus; camcorders; monitoring apparatus, other than for medical purposes, namely, wireless controllers to monitor and control the functioning of other electronic devices; video monitor; security surveillance robots; wearable video display monitors; television apparatus, namely, televisions; Photographic cameras; selfie lenses, namely, lenses specially adapted for cameras; biochips for research or scientific purposes; infrared detectors; air analysis apparatus; laboratory robots; teaching robots; optical lenses; materials for electricity mains, namely, electric wires and cables; USB cables; USB cables for cellphones; electronic key fobs being remote control apparatus; video screens; integrated circuits; electronic chips in the nature of electronic chips for the manufacture of integrated circuits; touch screens; electric plugs; electric sockets; sensors, namely, temperature sensors, pressure sensors, motion sensors; digital door locks; central alarms in the nature of anti-intrusion alarms; batteries, electric; battery chargers; rechargeable battery for mobile phones; encoded identity cards; digital signal processors; electronic access control systems for interlocking doors; downloadable electronic publications in the nature of newsletters in the field of telecommunications; integrated circuit chips for operating mobile phones; printed circuit boards; central processing unit (CPU) for information, data, sounds and images processing; central processing units

Webpage URL: None Provided
Webpage Date of Access: None Provided


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:

Current:
Class 035 for Presentation of goods on communication media, for retail purposes; advertising; online advertising on a computer network; price comparison services; business information; commercial information and advice for consumers [consumer advice shop]; business management assistance; provision of an online marketplace for buyers and sellers of goods and services; sales promotion for others; marketing; providing marketing information; purchasing alcoholic beverages for others (purchasing goods for other companies); providing marketing consulting in the social media field; outsourcing services for merchandising for others; import and export agency services; search engine optimization for sales promotion; data search in computer files for others; book-keeping; business auditing; account auditing; merger and acquisition accounting services; providing accounting services for others; consultation and information about accounting; marketing in the framework of software publishing
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: Presentation of goods on communication media, for retail purposes; advertising; advertising services; online advertising on a computer network; price comparison services; business information; providing business information; commercial information and advice for consumers [consumer advice shop]; providing commercial information and advice for consumers; business management assistance; provision of an online marketplace for buyers and sellers of goods and services; sales promotion for others; marketing; marketing services; providing marketing information; purchasing alcoholic beverages for others (purchasing goods for other companies); procurement, namely, purchasing alcoholic beverages for others; providing marketing consulting in the social media field; outsourcing services for merchandising for others; import and export agency services; search engine optimization for sales promotion; data search in computer files for others; data search in computer files for others in the nature of computer file management and compilation and systemization of data into computer databases; book-keeping; book-keeping in the nature of business records management; business auditing; account auditing; merger and acquisition accounting services; providing accounting services for others; consultation and information about accounting; consultation services and providing information about accounting; marketing in the framework of software publishingClass 035 for Presentation of goods on communication media, for retail purposes; advertising services; online advertising on a computer network; price comparison services; providing business information; providing commercial information and advice for consumers; business management assistance; provision of an online marketplace for buyers and sellers of goods and services; sales promotion for others; marketing services; providing marketing information; procurement, namely, purchasing alcoholic beverages for others; providing marketing consulting in the social media field; outsourcing services for merchandising for others; import and export agency services; search engine optimization for sales promotion; data search in computer files for others in the nature of computer file management and compilation and systemization of data into computer databases; book-keeping in the nature of business records management; business auditing; account auditing; merger and acquisition accounting services; providing accounting services for others; consultation services and providing information about accounting; marketing in the framework of software publishing

Webpage URL: None Provided
Webpage Date of Access: None Provided


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:

Current:
Class 036 for Insurance brokerage; insurance information; currency trading; online real-time currency trading; bill payment service; providing securities market information; financing services; securities brokerage; financial information; electronic funds transfer; financial analysis; financial management; financial consultancy; online banking; providing financial information via a web site; providing rebates at participating establishments of others through use of a membership card; processing of debit card payments; credit services; e-banking (internet banking) with the help of a global computer network; money order services; electronic check acceptance services; processing of credit card payments; apartment house management; real estate management; trust services
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: Insurance brokerage; insurance information; currency trading; online real-time currency trading; bill payment service; providing securities market information; financing services; securities brokerage; financial information; electronic funds transfer; financial analysis; financial management; financial consultancy; online banking; providing financial information via a web site; providing rebates at participating establishments of others through use of a membership card; processing of debit card payments; credit services; credit services, namely, credit card payment processing services; e-banking (internet banking) with the help of a global computer network; online banking with the help of a global computer network; money order services; electronic check acceptance services; processing of credit card payments; apartment house management; real estate management; real estate management services; trust services; trust services, namely, investment and trust company servicesClass 036 for Insurance brokerage; insurance information; currency trading; online real-time currency trading; bill payment service; providing securities market information; financing services; securities brokerage; financial information; electronic funds transfer; financial analysis; financial management; financial consultancy; online banking; providing financial information via a web site; providing rebates at participating establishments of others through use of a membership card; processing of debit card payments; credit services, namely, credit card payment processing services; online banking with the help of a global computer network; money order services; electronic check acceptance services; processing of credit card payments; apartment house management; real estate management services; trust services, namely, investment and trust company services

Webpage URL: None Provided
Webpage Date of Access: None Provided


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:

Current:
Class 041 for Training in the field of communication technologies; teaching; instruction services; training services provided via simulators; providing online educational information; organization of competitions [education or entertainment]; arranging and conducting of colloquiums; arranging and conducting of symposiums; arranging and conducting of conferences; arranging and conducting of concerts; arranging and conducting of in-person educational forums; online publication of electronic books and journals; providing online electronic publications, not downloadable; providing amusement arcade services; preparation of subtitles for the film production; production of radio and television programmes; providing online music, not downloadable; providing online videos, not downloadable; providing films, not downloadable, via video-on-demand services; providing television programs, not downloadable, via video-on-demand services; providing recreation facilities; entertainment information; game services provided online from a computer network; conducting fitness classes; audiovisual recording service; providing entertainment information via a web site; entertainment services; conducting guided tours; ticket agency services [entertainment]; television entertainment; news reporters services
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: Training in the field of communication technologies; teaching; teaching in the field of telecommunications; instruction services; instruction services, namely, conducting classes and seminars in the field of telecommunications; training services provided via simulators; training services in the field of telecommunications provided via simulators; providing online educational information; providing online information about telecommunications; organization of competitions [education or entertainment]; educational and entertainment services, namely, organization of competitions in the field of telecommunications; arranging and conducting of colloquiums; arranging and conducting of educational colloquiums; arranging and conducting of symposiums; arranging and conducting of educational symposiums; arranging and conducting of conferences; arranging and conducting of educational conferences; arranging and conducting of concerts; arranging and conducting of in-person educational forums; arranging and conducting of in-person educational forums in the field of telecommunications; online publication of electronic books and journals; providing online electronic publications, not downloadable; providing online non-downloadable electronic publications in the nature of newsletters in the field of telecommunications; providing amusement arcade services; preparation of subtitles for the film production; preparation of subtitles for films; production of radio and television programmes; providing online music, not downloadable; providing online videos, not downloadable; providing online non-downloadable videos in the field of telecommunications; providing films, not downloadable, via video-on-demand services; providing television programs, not downloadable, via video-on-demand services; providing recreation facilities; entertainment information; game services provided online from a computer network; game services, namely, providing online games from a computer network; conducting fitness classes; audiovisual recording service; audiovisual recording services; providing entertainment information via a web site; entertainment services; conducting; conducting guided tours; news reporters services; ticket agency services [entertainment]; television entertainmentClass 041 for Training in the field of communication technologies; teaching in the field of telecommunications; instruction services, namely, conducting classes and seminars in the field of telecommunications; training services in the field of telecommunications provided via simulators; providing online information about telecommunications; educational and entertainment services, namely, organization of competitions in the field of telecommunications; arranging and conducting of educational colloquiums; arranging and conducting of educational symposiums; arranging and conducting of educational conferences; arranging and conducting of concerts; arranging and conducting of in-person educational forums in the field of telecommunications; online publication of electronic books and journals; providing online non-downloadable electronic publications in the nature of newsletters in the field of telecommunications; providing amusement arcade services; preparation of subtitles for films; production of radio and television programmes; providing online music, not downloadable; providing online non-downloadable videos in the field of telecommunications; providing films, not downloadable, via video-on-demand services; providing television programs, not downloadable, via video-on-demand services; providing recreation facilities; entertainment information; game services, namely, providing online games from a computer network; conducting fitness classes; audiovisual recording services; providing entertainment information via a web site; conducting; news reporters services

Webpage URL: None Provided
Webpage Date of Access: None Provided


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:

Current:
Class 042 for Technological research; research and development of new products for others; scientific research; conducting technical project studies; telecommunications technology consultancy; computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; computer system design; creating and maintaining web sites for others; conversion of computer programs and data, other than physical conversion; computer software consultancy; rental of web servers; providing search engines for the internet; web site design consultancy; information technology [IT] consultancy; electronic data storage; providing information relating to computer technology and programming via a web site; cloud computing; computer technology consultancy; computer security consultancy; development of drive and operating system software
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: Technological research; Technological research in the field of telecommunications; research and development of new products for others; scientific research; conducting technical project studies; conducting technical project studies, namely, the design and manufacture of telecommunications hardware; telecommunications technology consultancy; computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; computer system design; creating and maintaining web sites for others; conversion of computer programs and data, other than physical conversion; computer software consultancy; rental of web servers; providing search engines for the internet; web site design consultancy; information technology [IT] consultancy; information technology consultancy; electronic data storage; providing information relating to computer technology and programming via a web site; cloud computing; cloud computing featuring software for use in telecommunications and mobile service framework; computer technology consultancy; computer security consultancy; development of drive and operating system softwareClass 042 for Technological research in the field of telecommunications; research and development of new products for others; scientific research; conducting technical project studies, namely, the design and manufacture of telecommunications hardware; telecommunications technology consultancy; computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; computer system design; creating and maintaining web sites for others; conversion of computer programs and data, other than physical conversion; computer software consultancy; rental of web servers; providing search engines for the internet; web site design consultancy; information technology consultancy; electronic data storage; providing information relating to computer technology and programming via a web site; cloud computing featuring software for use in telecommunications and mobile service framework; computer technology consultancy; computer security consultancy; development of drive and operating system software

Webpage URL: None Provided
Webpage Date of Access: None Provided


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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: HUAWEI TECHNOLOGIES CO., LTD. a(n) Limited Company legally organized under the laws of China      Email Address: XXXX

Proposed: HUAWEI TECHNOLOGIES CO., LTD., Limited Company legally organized under the laws of China
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
The mark consists of standard characters without claim to any particular font style, size, or color.


The owner's/holder's current attorney information: Peter Sloane. Peter Sloane of Leason Ellis LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      One Barker Avenue, Fifth Floor
      White Plains, New York 10601
      United States
The docket/reference number is 04737/314929.
      The phone number is 914 821-9073.
      The fax number is 914 288-0023.
      The email address is tmdocket@leasonellis.com

The owner's/holder's proposed attorney information: Peter Sloane. Peter Sloane of Leason Ellis LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      One Barker Avenue, Fifth Floor
      White Plains, New York 10601
      United States
The docket/reference number is 04737/314929.
      The phone number is 914 821-9073.
      The fax number is 914 288-0023.
      The email address is tmdocket@leasonellis.com

Peter Sloane submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      Peter Sloane
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 04737/314929.
Correspondence Information (proposed):
      Peter Sloane
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@leasonellis.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 04737/314929.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /michelle levin/     Date: 04/01/2021
Signatory's Name: Michelle Levin
Signatory's Position: Attorney, NY Bar member, associate attorney of Leason Ellis

Signatory's Phone Number: 9148213073 Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Peter Sloane
   Leason Ellis LLP
   
   One Barker Avenue, Fifth Floor
   White Plains, New York 10601
Mailing Address:    Peter Sloane
   Leason Ellis LLP
   One Barker Avenue, Fifth Floor
   White Plains, New York 10601
        
Serial Number: 79291900
Internet Transmission Date: Thu Apr 01 20:09:04 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202104012009041764
27-79291900-77016eb10b4e9f59b3dc566b1384
7a22625dcf9b18ecde260679a29e5bdd8af37da-
N/A-N/A-20210401200349150538