Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85687199 CI (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85687199) has been amended as follows:

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

1. Claim of Ownership of Prior Registration

Applicant is the owner of U.S. Registration No. 3932707

2. Amended Description of the Mark

The mark consists of the letters CI inside a shaded square with the left corner separated from the square into a broken off shaded triangle, representing a puzzle piece.

3. Description of Goods and Services

Applicant requests that the Examiner accept the current Class 9 description of goods, which mirrors the Class 9 description recently accepted by the Examiner in Serial Nos. 85/685034, 85/675378, 85/668361 and 85/671423.

Applicant requests that the Examiner accept the current Class 41 description of services, which mirrors the Class 41 descriptions in Reg. No. 85/440142 and Reg. No. 85/977553.

4. Trade Significance Inquiry

The Examiner asked whether the wording “CI” has any significance in the relevant trade or industry or as applied to the goods/services described in the application, or if such wording is a “term of art” within applicant’s industry. 
Applicant confirms that the wording “CI” does not have any significance in the relevant trade or industry or as applied to the goods/services described in the application, and such wording is not a “term of art” within applicant’s industry.  The wording “CI” refers to “Crime & Investigation,” which is the full name of Applicant’s network. 

5. Information Required

The Examiner has requested additional product information about the goods.  CI refers to “Crime & Investigation Network,” which is a cable network provided by Applicant, which it describes as “the ultimate destination for crime, investigation and mystery programming." The Crime & Investigation Network "opens the door to crime labs, police archives and the justice system, providing viewers with a behind-the-scenes look at criminal investigations, as well as in-depth explorations into the lives of infamous criminals.”  The network is available via cable television as well as other outlets such as satellite broadcast, webcasts, podcasts, downloadable series from the network, DVDs of series from the network, and similar goods.  The network also produces and distributes television programs and syndicates shows.  Applicant includes two pages from its website about the Crime & Investigation Network.

EVIDENCE
Evidence in the nature of two pages from website about the CRIME & INVESTIGATION network has been attached has been attached.
Original PDF file:
evi_209242957-162828477_._roa_85687199-_Evidence1.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_209242957-162828477_._roa_85687199-Evidence2.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Broadcasting services, namely, television broadcasting, video broadcasting, Internet broadcasting, cable broadcasting, digital broadcasting, satellite broadcasting and audio broadcasting; over-the-air, satellite and cable transmission services; electronic transmission of data via satellite link; electronic transmission of data and documents via computer networks; video-on-demand transmission services; wireless communication services, namely, transmission of television programs and motion pictures to mobile devices; providing online chat rooms and electronic bulletin boards for the electronic transmission of messages among users in the fields of broadcast entertainment, education, and general interest; broadband communication services, namely, satellite, cable, network transmission of sounds, images, signals and data
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: Broadcasting services, namely, television broadcasting, video broadcasting, Internet broadcasting, cable broadcasting, digital broadcasting, satellite broadcasting and audio broadcasting; Broadcasting services, namely, television broadcasting, video broadcasting, Internet broadcasting, cable television and radio broadcasting, digital broadcasting of radio and television, satellite broadcasting and audio broadcasting; over-the-air, satellite and cable transmission services; over-the air, satellite and cable radio and television transmission services; electronic transmission of data via satellite link; electronic transmission of data via satellite; electronic transmission of data and documents via computer networks; electronic transmission of data and documents via global and local computer networks; video-on-demand transmission services; wireless communication services, namely, transmission of television programs and motion pictures to mobile devices; providing online chat rooms and electronic bulletin boards for the electronic transmission of messages among users in the fields of broadcast entertainment, education, and general interest; broadband communications services, namely, satellite, cable television, and wireless network transmission of sounds, images, signals and data; broadband communication services, namely, satellite, cable, network transmission of sounds, images, signals and dataClass 038 for Broadcasting services, namely, television broadcasting, video broadcasting, Internet broadcasting, cable television and radio broadcasting, digital broadcasting of radio and television, satellite broadcasting and audio broadcasting; over-the air, satellite and cable radio and television transmission services; electronic transmission of data via satellite; electronic transmission of data and documents via global and local computer networks; video-on-demand transmission services; providing online chat rooms and electronic bulletin boards for the electronic transmission of messages among users in the fields of broadcast entertainment, education, and general interest; broadband communications services, namely, satellite, cable television, and wireless network transmission of sounds, images, signals and data
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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the letters CI inside a shaded square with the left corner separated from the square into a broken off shaded triangle, representing a puzzle piece.

Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3932707.


SIGNATURE(S)
Response Signature
Signature: /monica b. richman/     Date: 04/11/2013
Signatory's Name: Monica B. Richman
Signatory's Position: Attorney of record, NY Bar Member

Signatory's Phone Number: 212 768-5367

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.

        
Serial Number: 85687199
Internet Transmission Date: Thu Apr 11 16:52:19 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20130411165219251
804-85687199-5008ed6e9eebcfadf38d355ce56
e7b22c666476113d860389db44b77f75d3a4635-
N/A-N/A-20130411162828477815