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 07/31/2017)

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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 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85106141 ORANGE (Stylized and/or with Design, see ) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising; business promotion; business management; business administration; organization and management of business incentive and loyalty schemes; business information services; administrative processing of purchase orders within the framework of services provided by mail-order companies; business networking, namely, arranging of business introductions; business research and survey services; business forecasting services; provision of clerical and secretarial services; news and current affairs clippings and information services; arranging and conducting of exhibitions for business purposes; retail store services, namely, the bringing together, for the benefit of others, of a variety of telecommunications, computing, electronic and electrical goods, parts, fittings and accessories for the aforesaid goods, data cards, security devices and equipment, clothing, footwear, headgear, accessories, textiles, household linen goods, luggage and bags, printed materials and stationery, gift items, toys, games and sports equipment, jewelry, horological instruments, household equipment and utensils, furniture and furnishings, cosmetics and personal care products, general pharmacy products, cleaning products, healthcare products, human foods and grocery products, beverages, enabling customers to conveniently view and purchase these goods, accessible on-line, by telephone, facsimile, mail order and high street stores; auctioneering provided on the Internet; business administration services for the processing of sales made on the Internet; advertising services for the promotion of e-commerce; provision of information and advice on the supplying and promoting of commodities and selection and display of goods; provision of consumer product information and advice to the prospective purchasers of commodities and goods; compilation of advertisements for use as web pages on the Internet; compilation of business directories for publishing on the Internet; provision of space on websites for advertising goods and services; database management and data processing services; telephone answering and message handling services; operation of telephone call centers; data management and electronic stocktaking services; charitable services, namely, business management and administration for others; charitable services, namely, organizing and conducting volunteer programs and community service projects
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Community registration number 9059569 registered 11/08/2010 with a renewal date of __________ and an expiration date of 04/27/2020 ], and translation thereof, if appropriate. 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. 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. 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 on or in connection with the identified goods/services, and 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.

Proposed: Class 035 for Advertising; business promotion; business management; business administration; organization and management of business incentive and loyalty schemes; business information services; administrative processing of purchase orders within the framework of services provided by mail-order companies; business networking, namely, arranging of business introductions; business research and survey services; business forecasting services; provision of clerical and secretarial services; news and current affairs clippings and information services; arranging and conducting of exhibitions for business purposes; retail store services, namely, the bringing together, for the benefit of others, of a variety of telecommunications, computing, electronic and electrical goods, parts, fittings and accessories for the aforesaid goods, data cards, security devices and equipment, clothing, footwear, headgear, accessories, textiles, household linen goods, luggage and bags, printed materials and stationery, gift items, toys, games and sports equipment, jewelry, horological instruments, household equipment and utensils, furniture and furnishings, cosmetics and personal care products, general pharmacy products, cleaning products, healthcare products, human foods and grocery products, beverages, enabling customers to conveniently view and purchase these goods, accessible on-line, by telephone, facsimile, mail order and high street stores; auctioneering provided on the Internet; business administration services for the processing of sales made on the Internet; advertising services for the promotion of e-commerce; provision of information and advice on the supplying and promoting of commodities and selection and display of goods; provision of consumer product information and advice to the prospective purchasers of commodities and goods; compilation of advertisements for use as web pages on the Internet; compilation of business directories for publishing on the Internet; provision of space on websites for advertising goods and services; database management and data processing services; telephone answering and message handling services; operation of telephone call centers; data management and electronic stocktaking services; charitable services, namely, business management and administration for others; charitable services, namely, organizing and conducting volunteer programs and community service projects
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Community registration number 9059569 registered 11/08/2010 with a renewal date of __________ and an expiration date of 04/27/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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. 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 on or in connection with the identified goods/services, and 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services, namely, developing, arranging and conducting educational conferences, programs, seminars and workshops and providing courses of instruction in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment; entertainment services, namely, conducting contests, participation in motor racing events, yacht racing events, golf, tennis, football, snowboarding, cricket, ballooning, sailing, snowboarding, surfing, windsurfing, and cycling events and provision of information and advice thereon; entertainment services, namely, providing a website featuring non music related multi- media materials and provision of information and advice thereon; entertainment services, namely, providing on-line reviews of films, books, computer games, sporting events and provision of information and advice thereon; entertainment services namely, organizing and conducting events for International awards in the areas of film, cinema and fictional literature; organizing community sporting, arts, and cultural events; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet or provided by other means; electronic games services provided from a computer database or by means of the Internet; video and audio equipment rental services; radio and television entertainment production; production of films, radio and television programs and of teleshopping television programs and webshopping Internet television programs; organizing of games and sporting competitions in the field of golf, tennis ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing; and provision of information and advice thereon; organizing of competitions in the form of poetry, literary awards and film awards; providing non-downloadable on-line documents, fact sheets, brochures, newsletters, magazines and reviews in the fields of sport, entertainment, education, information technology, art and culture, telecommunications and computing, health and wellbeing, personal fitness and leisure activities; publication of texts in electronic format or otherwise; publishing of non-music video and film in the form of tapes, CDs, DVDs, video tapes; organizing exhibitions for purposes of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, information technology purposes; conducting on-line exhibitions and displays and interactive exhibits in the field of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, information technology; news programming services for transmission across the Internet; arranging and conducting of conferences, seminars, symposia, tutorials, workshops, courses, conventions and exhibitions in the fields of reading skills, literature, the arts, films, art and culture, games, sports and leisure activities, health and wellbeing, personal fitness, information technology, computing, telecommunications and the environment. providing courses of instruction in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment provided on-line via a telecommunications link or computer network or provided by other means; translation services; art gallery services provided on-line via a telecommunications link; gambling services, games of chance; ticket reservation and booking services for entertainment, sporting and cultural events; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; providing a website featuring non-downloadable photographs, pictures, graphics, non-musical sound bytes, films, videos and audio-visual programs; photography services; charitable services, namely, academic mentoring; charitable services, namely, education and training in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment; provision of information and advice relating to all of the aforesaid services; none of the aforesaid services in connection with college level courses of instruction or college level sporting events
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. 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, and 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Educational services, namely, developing, arranging and conducting educational conferences, programs, seminars and workshops and providing courses of instruction in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment; entertainment services, namely, conducting contests, participation in motor racing events, yacht racing events, golf, tennis, football, snowboarding, cricket, ballooning, sailing, snowboarding, surfing, windsurfing, and cycling events and provision of information and advice thereon; entertainment services, namely, providing a website featuring non music related multi- media materials and provision of information and advice thereon; entertainment services, namely, providing a website featuring non-downloadable, non-music related multimedia entertainment content and providing information regarding the foregoing; entertainment services, namely, providing on-line reviews of films, books, computer games, sporting events and provision of information and advice thereon; entertainment services namely, organizing and conducting events for International awards in the areas of film, cinema and fictional literature; providing recognition and incentives by the way of international awards to demonstrate excellence in the fields of film, cinema and fictional literature; organizing community sporting, arts, and cultural events; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet or provided by other means; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet; electronic games services provided from a computer database or by means of the Internet; video and audio equipment rental services; radio and television entertainment production; production of films, radio and television programs and of teleshopping television programs and webshopping Internet television programs; organizing of games and sporting competitions in the field of golf, tennis ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing; organizing of games and sporting competitions in the field of golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, and provision of information and advice thereon; and provision of information and advice thereon; organizing of competitions in the form of poetry, literary awards and film awards; providing non-downloadable on-line documents, fact sheets, brochures, newsletters, magazines and reviews in the fields of sport, entertainment, education, information technology, art and culture, telecommunications and computing, health and wellbeing, personal fitness and leisure activities; publication of texts in electronic format or otherwise; publishing of non-music video and film in the form of tapes, CDs, DVDs, video tapes; organizing exhibitions in the fields of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, and information technology, all for educational and entertainment purposes; organizing exhibitions for purposes of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, information technology purposes; educational and entertainment services, namely, conducting on-line exhibitions and displays and interactive exhibits in the fields of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, and information technology; conducting on-line exhibitions and displays and interactive exhibits in the field of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, information technology; news programming services for transmission across the Internet; arranging and conducting of educational conferences, seminars, symposia, tutorials, workshops, courses, conventions and exhibitions in the fields of reading skills, literature, the arts, films, art and culture, games, sports and leisure activities, health and wellbeing, personal fitness, information technology, computing, telecommunications and the environment; arranging and conducting of conferences, seminars, symposia, tutorials, workshops, courses, conventions and exhibitions in the fields of reading skills, literature, the arts, films, art and culture, games, sports and leisure activities, health and wellbeing, personal fitness, information technology, computing, telecommunications and the environment. providing courses of instruction in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment provided on-line via a telecommunications link or computer network or provided by other means; providing courses of instruction in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment provided on-line via a telecommunications link or computer network; translation services; art gallery services provided on-line via a telecommunications link; gambling services, providing games of chance via the Internet; gambling services, games of chance; ticket reservation and booking services for entertainment, sporting and cultural events; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; providing a website featuring non-downloadable photographs, pictures, graphics, non-musical sound bites, films, videos and audio-visual programs in the field of IT technology and telecommunications; providing a website featuring non-downloadable photographs, pictures, graphics, non-musical sound bytes, films, videos and audio-visual programs; photography services; charitable services, namely, academic mentoring; charitable services, namely, providing educational webinars, seminars, tutorials, and training in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment; charitable services, namely, education and training in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment; provision of information and advice relating to all of the aforesaid services; none of the aforesaid services in connection with college level courses of instruction or college level sporting events.; none of the aforesaid services in connection with college level courses of instruction or college level sporting eventsClass 041 for Educational services, namely, developing, arranging and conducting educational conferences, programs, seminars and workshops and providing courses of instruction in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment; entertainment services, namely, conducting contests, participation in motor racing events, yacht racing events, golf, tennis, football, snowboarding, cricket, ballooning, sailing, snowboarding, surfing, windsurfing, and cycling events and provision of information and advice thereon; entertainment services, namely, providing a website featuring non-downloadable, non-music related multimedia entertainment content and providing information regarding the foregoing; entertainment services, namely, providing on-line reviews of films, books, computer games, sporting events and provision of information and advice thereon; providing recognition and incentives by the way of international awards to demonstrate excellence in the fields of film, cinema and fictional literature; organizing community sporting, arts, and cultural events; information relating to education, entertainment, sporting and cultural events provided on-line from a computer database or the Internet; electronic games services provided from a computer database or by means of the Internet; video and audio equipment rental services; radio and television entertainment production; production of films, radio and television programs and of teleshopping television programs and webshopping Internet television programs; organizing of games and sporting competitions in the field of golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, and provision of information and advice thereon; organizing of competitions in the form of poetry, literary awards and film awards; providing non-downloadable on-line documents, fact sheets, brochures, newsletters, magazines and reviews in the fields of sport, entertainment, education, information technology, art and culture, telecommunications and computing, health and wellbeing, personal fitness and leisure activities; publication of texts in electronic format or otherwise; publishing of non-music video and film in the form of tapes, CDs, DVDs, video tapes; organizing exhibitions in the fields of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, and information technology, all for educational and entertainment purposes; educational and entertainment services, namely, conducting on-line exhibitions and displays and interactive exhibits in the fields of films, games, golf, tennis, ballooning, sailing, yachting, cycling, snowboarding, surfing, windsurfing, football, cricket, racing, motor racing, literature, health and wellbeing, telecommunications, computing, and information technology; news programming services for transmission across the Internet; arranging and conducting of educational conferences, seminars, symposia, tutorials, workshops, courses, conventions and exhibitions in the fields of reading skills, literature, the arts, films, art and culture, games, sports and leisure activities, health and wellbeing, personal fitness, information technology, computing, telecommunications and the environment; providing courses of instruction in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment provided on-line via a telecommunications link or computer network; translation services; gambling services, providing games of chance via the Internet; ticket reservation and booking services for entertainment, sporting and cultural events; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; providing a website featuring non-downloadable photographs, pictures, graphics, non-musical sound bites, films, videos and audio-visual programs in the field of IT technology and telecommunications; photography services; charitable services, namely, academic mentoring; charitable services, namely, providing educational webinars, seminars, tutorials, and training in the fields of reading skills, literature, the arts, health and wellbeing, information technology, telecommunications and the environment; provision of information and advice relating to all of the aforesaid services; none of the aforesaid services in connection with college level courses of instruction or college level sporting events.
Deleted Filing Basis: 1(b)
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.

Response Signature
Signature: /anna w manville/     Date: 02/25/2016
Signatory's Name: Anna W Manville
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 202-942-5163

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: 85106141
Internet Transmission Date: Thu Feb 25 18:34:34 EST 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.X.XX-20160225183434130
113-85106141-55064637966844fcb10a702f9d8
12eeaf698c61b518ed3135e3be7a714ade4b-N/A
-N/A-20160225182820810466