TEAS Request Reconsideration after FOA

PTO Form 1960 (Rev 9/2007)

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

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PTO Form 1960 (Rev 9/2007)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 85785725 ITV (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/85785725/large) has been amended as follows:

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

ITV Rights Limited (“Applicant”) hereby responds to the March 20, 2015 Final Office Action (“Final Office Action”).  The Examining Attorney objected to the Application based on Registration Nos. 2879305 and 4181171.  Applicant has filed petitions to cancel both registrations under 15 U.S.C. § 1064.  As such, Applicant respectfully requests that the Examining Attorney suspend further action on the present application until the termination of the cancellation proceedings.  Applicant reserves the right to submit arguments at a later time.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Cinematographic and photographic films featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; sound and video recordings featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; audio tapes and video tapes recordings featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; apparatus for recording and reproducing sound or images; records, compact and video discs, tapes, cassettes, cartridges, cards all bearing or for use in bearing sound recordings, video recordings, data, images, graphics, text, programs or information; memory carriers, interactive compact discs, CD-ROMs and DVDs featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; smart phones and software relating thereto; WAP phones and software relating thereto; structural parts and fittings for all the aforesaid goods; computer games; Computer game software; Children's educational software; computer software for entertainment purposes for use in personal computers, laptop computers, personal digital assistants, televisions, MP3 players, smart telephones, tablet computers in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing children's games, electronic children's books, children's entertainment, and children's educational software; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing computer games, electronic books, and videos
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(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number __________ filed 11/20/2012]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Cinematographic and photographic films featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; Cinematographic and photographic films featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; sound and video recordings featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; sound and video recordings featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; audio tapes and video tapes recordings featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; audio tapes and video tapes recordings featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; blank magnetic data carriers; recording discs; blank recording discs; apparatus for recording and reproducing sound or images; records, compact and video discs, tapes, cassettes, cartridges, cards all bearing or for use in bearing sound recordings, video recordings, data, images, graphics, text, programs or information; memory carriers, namely, interactive compact discs, CD-ROMs and DVDs featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; memory carriers, interactive compact discs, CD-ROMs and DVDs featuring dramas, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; smart phones and downloadable software application for downloading DVR recorded content for viewing; smart phones and software relating thereto; WAP phones and downloadable software for downloading DVR recorded content for viewing; WAP phones and software relating thereto; computer games; structural parts and fittings for all the aforesaid goods; computer game software; children's educational software; computer software for entertainment purposes for use in personal computers, laptop computers, personal digital assistants, televisions, MP3 players, smart telephones, tablet computers for searching, viewing, and downloading media content in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing children's games, accessing electronic children's books, children's entertainment, and children's educational software; computer software for entertainment purposes for use in personal computers, laptop computers, personal digital assistants, televisions, MP3 players, smart telephones, tablet computers in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing computer games and accessing electronic books, and videos; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing children's games, electronic children's books, children's entertainment, and children's educational software; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing computer games, electronic books, and videosClass 009 for Cinematographic and photographic films featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; sound and video recordings featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; audio tapes and video tapes recordings featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers; blank recording discs; apparatus for recording and reproducing sound or images; memory carriers, namely, interactive compact discs, CD-ROMs and DVDs featuring dramas, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual programs featuring history, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; smart phones and downloadable software application for downloading DVR recorded content for viewing; WAP phones and downloadable software for downloading DVR recorded content for viewing; computer games; computer game software; children's educational software; computer software for entertainment purposes for use in personal computers, laptop computers, personal digital assistants, televisions, MP3 players, smart telephones, tablet computers for searching, viewing, and downloading media content in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing children's games, accessing electronic children's books, children's entertainment, and children's educational software; computer application software for mobile phones and hand held computer devices, namely, software for accessing and playing computer games and accessing electronic books, and videos
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(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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 authorized users in connection with the identified goods/services, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number __________ filed 11/20/2012]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; printed matter, namely, printed periodicals, magazines, newspapers, newsletters, books, directories, supplements, pamphlets, note books, greeting cards, posters, pictures, and prints in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; monographs in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; photographs; booklets in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; calendars; diaries; magazines in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; posters; stationery; office requisites, namely, Spiral-bound notebooks, paper and plastic bags, labeling machines, lettering machines, envelope sealing machines, imprinters, and collators; pens; pencils; erasers; greetings cards; artists' materials, namely, stencils, brushes, crayons, markers, paper, painting pallets, artists pencils; paint brushes; postcards; stickers; instructional and teaching material, namely, printed teaching materials, course books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; Books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural events, arts, travel, environment, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; printed matter, namely, printed periodicals, magazines, newspapers, newsletters, books, directories, supplements, pamphlets, note books, greeting cards, posters, pictures, and prints in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; directories in the field of TV programs and TV production; monographs in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; printed matter, namely, printed periodicals, magazines, newspapers, newsletters, books, supplements, pamphlets in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, film, politics, cultural events, arts, travel, environment, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; monographs in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, politics, cultural events, arts, travel, environment, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; booklets in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; photographs; booklets in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, film, politics, cultural events, arts, travel, environment, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; calendars; magazines in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; diaries; magazines in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural events, arts, travel, environment, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; posters; stationery; office requisites, namely, Spiral-bound notebooks, paper and plastic bags, labeling machines, lettering machines, envelope sealing machines, imprinters, and collators; pens; pencils; erasers; greetings cards; artists' materials, namely, stencils, brushes, crayons, markers, paper, painting pallets, artists pencils; paint brushes; postcards; instructional and teaching material, namely, printed teaching materials, course books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, new media and featuring print news, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, provision of food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; stickers; instructional and teaching material, namely, printed teaching materials being course books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning servicesClass 016 for Books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural events, arts, travel, environment, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; directories in the field of TV programs and TV production; printed matter, namely, printed periodicals, magazines, newspapers, newsletters, books, supplements, pamphlets in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, film, politics, cultural events, arts, travel, environment, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; monographs in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, politics, cultural events, arts, travel, environment, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; photographs; booklets in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, film, politics, cultural events, arts, travel, environment, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; calendars; diaries; magazines in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural events, arts, travel, environment, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services; posters; stationery; office requisites, namely, Spiral-bound notebooks, paper and plastic bags, labeling machines, lettering machines, envelope sealing machines, imprinters, and collators; pens; pencils; erasers; greetings cards; artists' materials, namely, stencils, brushes, crayons, markers, paper, painting pallets, artists pencils; paint brushes; postcards; stickers; instructional and teaching material, namely, printed teaching materials being course books in the field of news, current affairs, broadcasting, advertising, marketing, public relations, publishing, music, comedy, video, film, politics, cultural events, arts, travel, environment, books, television, games, sports, science and scientific matters, industrial research, computers, information technology, computer programming, food and drink, restaurants, eateries, hotels, healthcare, beauty care, gardening, veterinary matters, agricultural matters and fashion, and life insurance, health insurance and disability insurance, annuities, investment and financial planning services
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.

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment, namely, entertainment services in the form of television, radio, cable, satellite and programs in the field of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; entertainment services in the form of ongoing television programs, radio programs, cable programs, satellite programs and Internet programs in the field of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; production and presentation of television programs, television and internet shows, films, videos and DVDs; production and presentation of television, radio, cable, satellite and Internet programs; distribution and syndication of television, radio, cable, satellite and internet programs and motion picture films; rental of films, audio and video tapes and DVDs; educational services relating to entertainment, namely, conducting seminars, conferences and workshops in the field of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; providing information relating to entertainment and education in the fields of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; publishing, namely, publication of newspapers, magazines, comics, brochures, guides and books dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; organization, production and presentation of events for educational, cultural or entertainment purposes; organizing and conducting competitions, contests, games, game shows, quizzes, fun days, exhibitions, live entertainment shows, roadshows, staged events, raves, theatrical performances, music concerts, live performances and participation events; information and advisory services relating to any of the aforesaid services
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.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Entertainment, namely, entertainment services in the form of television, radio, cable, satellite and programs in the field of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; Entertainment, namely, production of television and radio programs accessible by radio, television and satellite in the field of drama, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual current events and historical events, documentaries, the weather, sports competitions, games shows, chat shows, variety, daytime soap operas, adult programming, cooking, food and drink, reality, charity events, finance, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fiction; entertainment services in the form of ongoing television programs, radio programs, cable programs, satellite programs and Internet programs in the field of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; entertainment services in the form of ongoing television programs, radio programs, cable television programs delivery by television, satellite and the Internet featuring drama, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual current events and historical events, documentaries, the weather, sports competitions, games shows, chat shows, variety, daytime soap operas, adult programming, cooking, food and drink, reality, charity events, finance, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fiction; production and presentation of television programs, television and internet shows, films, videos and DVDs; production of television and radio programs; production and presentation of television, radio, cable, satellite and Internet programs; film and video production; distribution and syndication of television, radio, cable, satellite and internet programs and motion picture films; product of DVD's featuring drama, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual featuring programs, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; television, radio program and motion picture film syndication; educational services relating to entertainment, namely, conducting seminars, conferences and workshops in the field of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; rental of films, audio and video tapes and DVDs; providing information relating to entertainment and education in the fields of dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs provided on-line from a computer database or the Internet or by communications satellite, microwave or other electronic, digital or analogue media; entertainment information; publishing, namely, publication of newspapers, magazines, comics, brochures, guides and books dramas, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual programs, documentaries, the weather, competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking, food and drink, reality television programs, films, culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; publishing newspapers, magazines, comic books, comics, brochures, and guidebooks; organization, production and presentation of events for educational, cultural or entertainment purposes; entertainment services, namely, conducting contests, production of quiz shows, organizing and conducting audience competitions, organizing exhibitions for educational, cultural, or entertainment purposes; organizing and conducting competitions, contests, games, game shows, quizzes, fun days, exhibitions, live entertainment shows, roadshows, staged events, raves, theatrical performances, music concerts, live performances and participation events; information and advisory services relating to any of the aforesaid servicesClass 041 for Entertainment, namely, production of television and radio programs accessible by radio, television and satellite in the field of drama, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual current events and historical events, documentaries, the weather, sports competitions, games shows, chat shows, variety, daytime soap operas, adult programming, cooking, food and drink, reality, charity events, finance, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fiction; entertainment services in the form of ongoing television programs, radio programs, cable television programs delivery by television, satellite and the Internet featuring drama, horror, musicals, sports, music, musical performances, educational programs, children's programs, factual current events and historical events, documentaries, the weather, sports competitions, games shows, chat shows, variety, daytime soap operas, adult programming, cooking, food and drink, reality, charity events, finance, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fiction; production of television and radio programs; film and video production; product of DVD's featuring drama, musicals, sports, music, musical performances, educational math, history, art, science, music, technology, spelling, and literature programs, children's programs, factual featuring programs, documentaries, the weather, sports competitions, games shows, chat shows, popular television programs, variety, daytime television programs, soap operas, adult programming, cooking shows featuring food and drink, reality television programs, films, pop culture, charity events, financial programs, home and garden, lifestyle and leisure, nature, science, science fiction, history, historical reenactments, travel, politics, confessionals and fictional programs; television, radio program and motion picture film syndication; rental of films, audio and video tapes and DVDs; entertainment information; publishing newspapers, magazines, comic books, comics, brochures, and guidebooks; entertainment services, namely, conducting contests, production of quiz shows, organizing and conducting audience competitions, organizing exhibitions for educational, cultural, or entertainment purposes; information and advisory services relating to any of the aforesaid services
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.

Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /cle1087/     Date: 09/17/2015
Signatory's Name: Connie L. Ellerbach
Signatory's Position: Attorney of record, CA bar member

Signatory's Phone Number: (650) 988-8500

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 85785725
Internet Transmission Date: Thu Sep 17 15:51:59 EDT 2015
TEAS Stamp: USPTO/RFR-X.XX.XXX.XXX-20150917155159884
900-85785725-540e4929dc7238bb9ed9b54f8f7
a57d334e9ced2ee67d5dc2c2c1b1d13aeaff8b9f
-N/A-N/A-20150917133715053781