Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85174041 has been amended as follows:

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

Registration No. 3187580 is owned by the applicant.  Accordingly, the refusal under Section 2(d) should be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electronic publications (downloadable), publications in computer readable form, publications in machine readable form
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Electronic publications (downloadable), publications in computer readable form, publications in machine readable form; Downloadable electronic publications, namely, newsletters, journals, books, in the field of business and financial matters; electronic publications in computer readable form, namely, newsletters, journals, books in the field of business and financial affairs recorded on computer media; electronic publications in machine readable form, namely, newsletters, journals, books in the field of business and financial matters recorded on computer mediaClass 009 for Downloadable electronic publications, namely, newsletters, journals, books, in the field of business and financial matters; electronic publications in computer readable form, namely, newsletters, journals, books in the field of business and financial affairs recorded on computer media; electronic publications in machine readable form, namely, newsletters, journals, books in the field of business and financial matters recorded on computer media
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Printed publications, periodic publications, printed reports, printed matter relating to finance, financial documents, financial newsletters
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Printed publications, periodic publications, printed reports, printed matter relating to finance, financial documents, financial newsletters; Printed publications, namely, newsletters, journals and books in the field of business and financial matters; periodic publications, namely, periodicals in the field of business and financial matters; printed reports featuring business and financial mattersClass 016 for Printed publications, namely, newsletters, journals and books in the field of business and financial matters; periodic publications, namely, periodicals in the field of business and financial matters; printed reports featuring business and financial matters
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial services; investment services; financial consultancy services; financial management services; fund investments; capital investments; mutual funds; financial information; stock exchange quotations; insurance information; financial evaluation; charitable collections, fund raising; provision of information relating to property market/real estate; pricing information services; investment information services; stock broking information services; provision of information relating to shares, accounts; provision of information relating to real estate/property; computerised financial information relating to commodities, securities; computerised financial services for retail businesses; provision of information relating to rates of exchange; property (real estate-) appraisal services; property (real estate-) brokerage services; property (real estate-) consultancy services; property (real estate-) evaluation services; property (real estate-) finance services; property (real estate-) investment services; property (real estate-) management services; commercial property investment services; estate management services relating to real estate and property; financial services relating to the acquisition and sale of property; collection of credit sales; collection of payment; administration of shares; brokerage of shares; computerised information services relating to shares; management of shares; financial information relating to shares; recording of inter parties transactions in respect of shares; trading of shares; automated banking services relating to charge card/credit card transactions; computerized information services relating to banking matters; information services relating to banking; all the foregoing provided in print or on-line from a computer database or the global communications network; provision of financial news
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Financial services; Financial services, namely, financial planning, financial research, financial management, financial consultation; investment services; investment services, namely, mutual fund investment; financial consultancy services; financial management services; fund investments; capital investments; mutual funds; mutual funds, namely, mutual fund distribution and establishing mutual funds for others; financial information; stock exchange quotations; insurance information; financial evaluation; financial evaluation for insurance purposes; charitable collections, fund raising; charitable collections in the nature of fundraising; provision of information relating to property market/real estate; provision of information relating to the real estate property market in the field of real estate vlaues; pricing information services; pricing information services, namely, quotation of stock market prices; investment information services; stock broking information services; information about stock broking services; provision of information relating to shares, accounts; provision of information relating to shares prices, and corporate savings account services; provision of information relating to real estate/property; provision of information relating to real estate and real property in the field of evaluation of real property; computerised financial information relating to commodities, securities; computerized financial information relating to commodities and securities; computerised financial services for retail businesses; computerized financial services for retail businesses; provision of information relating to rates of exchange; provision of financial information relating to rates of exchange; property (real estate-) appraisal services; real estate property appraisal services; property (real estate-) brokerage services; real estate property brokerage services; property (real estate-) consultancy services; real estate property consultancy services; property (real estate-) evaluation services; real estate property evaluation services; property (real estate-) finance services; real estate property financing services; property (real estate-) investment services; real estate property investment services; property (real estate-) management services; real estate rental property management services; commercial property investment services; estate management services relating to real estate and property; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property; financial services relating to the acquisition and sale of property, namely, real estate mortgage brokerage; collection of credit sales; collection of credit sales being credit recovery and collection services; collection of payment; collection of payment being rent; administration of shares; Financial administration of stock exchange trading of shares in financial markets; brokerage of shares; computerised information services relating to shares; computerized information services relating to share prices; management of shares; financial management of shares; financial information relating to shares; recording of inter parties transactions in respect of shares; Financial services, namely, the trading of shares; trading of shares; automated banking services relating to electronic charge card and credit card transactions; automated banking services relating to charge card/credit card transactions; computerized information services relating to banking matters; providing information about banking services; information services relating to banking; provision of financial news; all the foregoing provided in print or on-line from a computer database or the global communications networkClass 036 for Financial services, namely, financial planning, financial research, financial management, financial consultation; investment services, namely, mutual fund investment; financial consultancy services; financial management services; fund investments; capital investments; mutual funds, namely, mutual fund distribution and establishing mutual funds for others; financial information; stock exchange quotations; insurance information; financial evaluation for insurance purposes; charitable collections in the nature of fundraising; provision of information relating to the real estate property market in the field of real estate vlaues; pricing information services, namely, quotation of stock market prices; investment information services; information about stock broking services; provision of information relating to shares prices, and corporate savings account services; provision of information relating to real estate and real property in the field of evaluation of real property; computerized financial information relating to commodities and securities; computerized financial services for retail businesses; provision of financial information relating to rates of exchange; real estate property appraisal services; real estate property brokerage services; real estate property consultancy services; real estate property evaluation services; real estate property financing services; real estate property investment services; real estate rental property management services; commercial property investment services; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property, namely, real estate mortgage brokerage; collection of credit sales being credit recovery and collection services; collection of payment being rent; Financial administration of stock exchange trading of shares in financial markets; brokerage of shares; computerized information services relating to share prices; financial management of shares; financial information relating to shares; Financial services, namely, the trading of shares; automated banking services relating to electronic charge card and credit card transactions; computerized information services relating to banking matters; providing information about banking services; provision of financial news
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Audio and video broadcasting services over the Internet or other communications network, namely, uploading, posting, showing, displaying, tagging and electronically transmitting information, audio, and video clips; providing access to databases for information, audio, and video via website, online forums, chat rooms, discussion groups and blogs over the Internet; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing discussion services on-line; provision of news in relation to telecommunication services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Audio and video broadcasting services over the Internet or other communications network, namely, uploading, posting, showing, displaying, tagging and electronically transmitting information, audio, and video clips; Audio and video broadcasting services over the Internet or other communications network, namely, electronically transmitting information, audio, and video clips; providing access to databases for information, audio, and video via website, online forums, chat rooms, discussion groups and blogs over the Internet; providing access to databases that contain information, audio, and video material from websites, online forums, chat rooms, discussion groups and blogs over the Internet; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing discussion services on-line; providing discussion services in the nature of on-line forums for transmission of messages among computer users; provision of news in relation to telecommunication servicesClass 038 for Audio and video broadcasting services over the Internet or other communications network, namely, electronically transmitting information, audio, and video clips; providing access to databases that contain information, audio, and video material from websites, online forums, chat rooms, discussion groups and blogs over the Internet; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing discussion services in the nature of on-line forums for transmission of messages among computer users; provision of news in relation to telecommunication services
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment; provision of news in relation to education, training, entertainment or sporting and cultural activities; news reporters services; library services provided by means of a computerized database containing information extracted by newspapers; information and advisory services relating to current events; publication of reviews and critiques; publication of electronic books and journals on-line; providing on-line electronic publications (not downloadable); electronic publishing services; web-based publication consisting primarily of periodic articles, news feeds, publication of text, audio, video and graphic works online featuring news, diaries, commentary, photos, poetry, mini-essays, project updates, non-fiction and fiction; preparation of news programmes for broadcasting; weblog or blog services; advisory, information and consultancy services relating to all the aforesaid
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Entertainment; Entertainment in the nature of on-going video programs in the field of news; provision of news in relation to education, training, entertainment or sporting and cultural activities; news reporters services; library services provided by means of a computerized database containing information extracted by newspapers; On-line library services, namely, providing electronic library services by means of a computerized database containing information extracted from newspapers via an on-line computer network; information and advisory services relating to current events; Information and advisory services relating to current events in the nature of providing news reporter services entailing news analysis and news commentary about current events; publication of reviews and critiques; publication of electronic books and journals on-line; providing on-line electronic publications (not downloadable); providing non-downloadable on-line electronic publications in the nature of journals and books in the field of business and finance; electronic publishing services; electronic publishing services, namely, publication of text and graphic works of others on-line featuring business and financial matters; web-based publication consisting primarily of periodic articles, news feeds, publication of text, audio, video and graphic works online featuring news, diaries, commentary, photos, poetry, mini-essays, project updates, non-fiction and fiction; non-downloadable web-based publication in the nature of journals consisting primarily of periodic articles; preparation of news programmes for broadcasting; providing news feeds as part of news reporters services; weblog or blog services; publication of text, audio, video and graphic works online featuring news, diaries, commentary, photos, poetry, mini-essays, project updates, non-fiction and fiction; production of television news programs for broadcasting; On-line journals, namely, weblogs and blogs featuring business and finance; advisory, information and consultancy services relating to all the aforesaidClass 041 for Entertainment in the nature of on-going video programs in the field of news; provision of news in relation to education, training, entertainment or sporting and cultural activities; news reporters services; On-line library services, namely, providing electronic library services by means of a computerized database containing information extracted from newspapers via an on-line computer network; Information and advisory services relating to current events in the nature of providing news reporter services entailing news analysis and news commentary about current events; publication of reviews and critiques; publication of electronic books and journals on-line; providing non-downloadable on-line electronic publications in the nature of journals and books in the field of business and finance; electronic publishing services, namely, publication of text and graphic works of others on-line featuring business and financial matters; non-downloadable web-based publication in the nature of journals consisting primarily of periodic articles; providing news feeds as part of news reporters services; publication of text, audio, video and graphic works online featuring news, diaries, commentary, photos, poetry, mini-essays, project updates, non-fiction and fiction; production of television news programs for broadcasting; On-line journals, namely, weblogs and blogs featuring business and finance; advisory, information and consultancy services relating to all the aforesaid
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
LAWRENCE E. ABELMAN
ABELMAN, FRAYNE & SCHWAB
666 3RD AVE
NEW YORK, NY 10017-4011

Proposed:
Lawrence E. Abelman of Abelman Frayne & Schwab, having an address of
10th Floor 666 Third Avenue New York, New York 10017
United States
fterranella@lawabel.com
2129499022
2129499190
The attorney docket/reference number is 875148.



ADDITIONAL STATEMENTS
Translation
The English translation of TEMASEK in the mark is WATER TOWN.

Claim of Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3187580.

Disclaimer
No claim is made to the exclusive right to use ANNUAL REPORT apart from the mark as shown.

SIGNATURE(S)
Response Signature
Signature: /ft/     Date: 08/05/2011
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for applicant, NY Bar Member

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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:    Lawrence E. Abelman
   Abelman Frayne & Schwab
   10th Floor
   666 Third Avenue
   New York, New York 10017
        
Serial Number: 85174041
Internet Transmission Date: Fri Aug 05 13:25:02 EDT 2011
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20110805132502307
280-85174041-4807fdcfb2cc59be6e5ae565b30
d462c47e-N/A-N/A-20110805131930928611