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

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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. 79319218 SF (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7931921 8/large) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: Response to Office Action
Original PDF file:
evi_155190176-20220708114 559938126_._Response_to_N ONFINAL_OFFICE_ACTION__SF _Design_-_7.8.22__003_.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Recorded and unrecorded audio, video and data media of all kinds, included in this class [other than unexposed photographic films], in particular audio and video films, DVDs and other digital recording media; recorded content; apparatus for recording, transmitting or reproduction of sounds, images or data; data processing equipment; computers; computer software (recorded or downloadable); application software, mobile apps (software), namely, applications for smartphones, tablet PCs, e-readers and other mobile or stationary IT apparatus [downloadable]; electronic publications, downloadable; downloadable audio files, music files and image files; chatbot computer software for stimulating conversations
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: Recorded and unrecorded audio, video and data media of all kinds, included in this class [other than unexposed photographic films], in particular audio and video films, DVDs and other digital recording media; Recorded and unrecorded audio, video and data media, unexposed photographic films, exposed cinematographic films, blank DVDs, pre-recorded DVDs featuring information and instruction in the field of sexual wellness and the operation of adult sexual stimulation aids, blank digital storage media, downloadable pre-recorded digital media in the nature of downloadable audio and video files featuring information and instruction in the field of sexual wellness and the operation of adult sexual stimulation aids; recorded content; apparatus for recording, transmitting or reproduction of sounds, images or data; data processing equipment; computers; recorded and downloadable computer software for the remote control and operation of adult sexual stimulation aids, marital aids, vibrators, masturbators and massage apparatus and for transmitting or streaming sounds or video messages and for communicating with users of hand held electronic devices, and augmented reality software for use in mobile devices; computer software (recorded or downloadable); downloadable computer application software and mobile application software, namely computer software applications for smartphones, tablet PCs, e-readers and other mobile or stationary IT apparatus for providing information and instruction in the field of sexual wellness and the operation of adult sexual stimulation aids, and for the remote control and operation of adult sexual stimulation aids, marital aids, vibrators, masturbators, massage apparatus, and tactile stimulation devices, and for transmitting or streaming sounds or video messages and for communicating with users of hand held electronic devices, and augmented reality software for use in mobile devices; application software, mobile apps (software), namely, applications for smartphones, tablet PCs, e-readers and other mobile or stationary IT apparatus [downloadable]; electronic publications, downloadable in the nature of informational articles in the field of sexual wellness; electronic publications, downloadable; downloadable audio files, misic files and image files; downloadable audio files, music files and image files; chatbot computer software for stimulating conversationsClass 009 for Recorded and unrecorded audio, video and data media, unexposed photographic films, exposed cinematographic films, blank DVDs, pre-recorded DVDs featuring information and instruction in the field of sexual wellness and the operation of adult sexual stimulation aids, blank digital storage media, downloadable pre-recorded digital media in the nature of downloadable audio and video files featuring information and instruction in the field of sexual wellness and the operation of adult sexual stimulation aids; apparatus for recording, transmitting or reproduction of sounds, images or data; data processing equipment; computers; recorded and downloadable computer software for the remote control and operation of adult sexual stimulation aids, marital aids, vibrators, masturbators and massage apparatus and for transmitting or streaming sounds or video messages and for communicating with users of hand held electronic devices, and augmented reality software for use in mobile devices; downloadable computer application software and mobile application software, namely computer software applications for smartphones, tablet PCs, e-readers and other mobile or stationary IT apparatus for providing information and instruction in the field of sexual wellness and the operation of adult sexual stimulation aids, and for the remote control and operation of adult sexual stimulation aids, marital aids, vibrators, masturbators, massage apparatus, and tactile stimulation devices, and for transmitting or streaming sounds or video messages and for communicating with users of hand held electronic devices, and augmented reality software for use in mobile devices; electronic publications, downloadable in the nature of informational articles in the field of sexual wellness; downloadable audio files, misic files and image files; chatbot computer software for stimulating conversations

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 Educational instruction; entertainment services; sporting and cultural activities; television entertainment, radio entertainment, entertainment on the internet; consultancy and information on entertainment, including on the internet; provision of non-downloadable games on the Internet; arranging of prize competitions and prize games for entertainment purposes; production of television films; videotape production; production of radio and television programmes; creation and publication of texts, other than publicity texts; publication and editing of printed matter, including in electronic form, other than for advertising purposes; photographic reporting; photography; providing online electronic publications, not downloadable; ticket agency services [entertainment]; production of shows; party planning [entertainment]; organization of competitions [education or entertainment]; organization of shows [impresario services]; arranging and conducting of conferences, congresses, seminars and workshops; coaching; singles coaching, namely, personal consultancy for single people in matters relating to partnerships; entertainment in the nature of recorded adult entertainment via telephone, audio or video messages; publication of printed matter relating to marriage and partnership counselling and agency and matchmaking 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: Educational instruction; Educational instruction in the field of sexual wellness and the operation of adult sexual stimulation aids; entertainment services; entertainment services, namely, providing a website and non-downloadable and videos featuring adult-themed videos; sporting and cultural activities; organizing community sporting and cultural events; television entertainment, radio entertainment, entertainment on the internet; television entertainment, radio entertainment, entertainment on the internet, namely, adult-themed videos distributed via various platforms across multiple forms of transmission media; consultancy and information on entertainment, including on the internet; entertainment information and consulting in the field of sexual wellness and the operation of adult sexual stimulation aids, including on the internet; provision of non-downloadable games on the Internet; arranging of prize competitions and prize games for entertainment purposes; production of television films; videotape production; production of radio and television programs; production of radio and television programmes; publication and editing of printed matter, including in electronic form, other than for advertising purposes; creation and publication of texts, other than publicity texts; photographic reporting photography, providing online electronic publications, not downloadable in the nature of informational articles in the field of sexual wellness; ticket agency services for entertainment events; photographic reporting; production of television shows; photography; entertainment services, namely, party planning organization in the field of instruction in the use of adult sexual stimulation aids; providing online electronic publications, not downloadable; arranging and conducting of educational conferences, congresses, seminars and workshops in the field of sexual wellness and the operation of adult sexual stimulation aids; ticket agency services [entertainment]; coaching in the field of sexual wellness and the operation of adult sexual stimulation aids; production of shows; life coaching services in the field of personal consultancy for single people in matters relating to partnerships; party planning [entertainment]; entertainment in the nature of providing non-downloadable recorded adult entertainment via telephone, audio or video messages; organization of competitions [education or entertainment]; publication of printed matter relating to marriage and partnership counselling and agency and matchmaking services; organization of shows [impresario services]; arranging and conducting of conferences, congresses, seminars and workshops; coaching; singles coaching, namely, personal consultancy for single people in matters relating to partnerships; entertainment in the nature of recorded adult entertainment via telephone, audio or video messagesClass 041 for Educational instruction in the field of sexual wellness and the operation of adult sexual stimulation aids; entertainment services, namely, providing a website and non-downloadable and videos featuring adult-themed videos; organizing community sporting and cultural events; television entertainment, radio entertainment, entertainment on the internet, namely, adult-themed videos distributed via various platforms across multiple forms of transmission media; entertainment information and consulting in the field of sexual wellness and the operation of adult sexual stimulation aids, including on the internet; provision of non-downloadable games on the Internet; production of television films; videotape production; production of radio and television programs; publication and editing of printed matter, including in electronic form, other than for advertising purposes; photographic reporting photography, providing online electronic publications, not downloadable in the nature of informational articles in the field of sexual wellness; ticket agency services for entertainment events; production of television shows; entertainment services, namely, party planning organization in the field of instruction in the use of adult sexual stimulation aids; arranging and conducting of educational conferences, congresses, seminars and workshops in the field of sexual wellness and the operation of adult sexual stimulation aids; coaching in the field of sexual wellness and the operation of adult sexual stimulation aids; life coaching services in the field of personal consultancy for single people in matters relating to partnerships; entertainment in the nature of providing non-downloadable recorded adult entertainment via telephone, audio or video messages; publication of printed matter relating to marriage and partnership counselling and agency and matchmaking 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 045 for Couple counselling and marriage bureaux; dating agency services, also in the nature of partnership analysis and personality tests, also via the internet; internet based dating, matchmaking and personal introduction services; online social networking services accessible by means of downloadable mobile applications; arranging introductions between unacquainted persons for recreational purposes; licensing of intellectual property; issuing licences for franchising concepts
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: Couple counselling and marriage bureaux; Couple counselling and marriage bureau, namely, marriage counseling; dating agency services, also in the nature of partnership analysis and personality tests, also via the internet; Internet based dating, matchmaking and personal introduction services; online social networking services accessible by means of downloadable mobile applications; arranging introductions between unacquainted persons for recreational purposes; licensing of intellectual property; issuing licences for franchising concepts; legal administration of licenses, namely, issuing licenses for franchising concepts.Class 045 for Couple counselling and marriage bureau, namely, marriage counseling; dating agency services, also in the nature of partnership analysis and personality tests, also via the internet; Internet based dating, matchmaking and personal introduction services; online social networking services accessible by means of downloadable mobile applications; arranging introductions between unacquainted persons for recreational purposes; licensing of intellectual property; legal administration of licenses, namely, issuing licenses for franchising concepts.

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: Triple A Finance GmbH & Co. KG a(n)       Email Address: XXXX

Proposed: Triple A Finance GmbH & Co. KG, gmbh & co. kg legally organized under the laws of Germany
      Email Address: XXXX

ADDITIONAL STATEMENTS
Color Claim
The color(s) purple, pink and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of the stylized wording "SF' in white where each letters is formed by a curved line and a circle, all on a background that faded from purple at the top to pink at the bottom.
Correspondence Information (current):
      Amanda H. Wilcox
      PRIMARY EMAIL FOR CORRESPONDENCE: tmTaftdocket@taftlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): awilcox@taftlaw.com; cnemecek@taftlaw.com

The docket/reference number is EIS06-GN123.
Correspondence Information (proposed):
      Amanda H. Wilcox
      PRIMARY EMAIL FOR CORRESPONDENCE: tmTaftdocket@taftlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): awilcox@taftlaw.com; cnemecek@taftlaw.com

The docket/reference number is EIS06-GN123.

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: /Amanda H. Wilcox/     Date: 07/08/2022
Signatory's Name: Amanda H. Wilcox
Signatory's Position: Attorney of Record - Ohio bar member

Signatory's Phone Number: 2162412838 Signature method: Sent to third party for signature

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:    Amanda H. Wilcox
   Taft Stettinius & Hollister LLP
   
   200 Public Square, Suite 3500
   Cleveland, Ohio 44114
Mailing Address:    Amanda H. Wilcox
   Taft Stettinius & Hollister LLP
   200 Public Square, Suite 3500
   Cleveland, Ohio 44114
        
Serial Number: 79319218
Internet Transmission Date: Fri Jul 08 12:20:32 ET 2022
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20220708122032375
188-79319218-800e63174c57f8a5dfde2d9ba65
c1e76c32fa8a93f6257b9676ee8bf8dca83afe4-
N/A-N/A-20220708114559938126