PTO Form 1957 (Rev 9/2005)

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

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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. 85904898 21ST CENTURY FOX(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85904898) has been amended as follows:

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

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:  Twentieth Century Fox Film Corporation

 

Application Serial No.:  85904898

 

Filing Date:  April 15, 2013

 

Mark:  21ST CENTURY FOX

 

Examining Attorney:  Mark Sparacino, Esq.

 

Law Office:  103

 

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APPLICANT’S RESPONSE TO OFFICE ACTION

 

Applicant Twentieth Century Fox Film Corporation (“Applicant”), by and through its attorneys, respectfully submits this Response to Office Action (the “Response”) regarding Application Serial No. 85904898 (the “Application”).  Applicant is responding to the Office Action dated July 18, 2013 (the “Office Action”).  Applicant responds to each of the issues identified in the Office Action as follows:

 

1.  Ownership of Prior Registrations

 

Applicant hereby amends the Application to include the requested claim of prior federal registrations, and adopts the wording suggested by the Examining Attorney:

 

Applicant is the owner of U.S. Registration Nos. 3550265, 3550261, and 3990686.

 

2.  Identification of Goods

 

The Office Action states that certain wording in the Class 9 identification is deemed to be indefinite and in need of further clarification.  Applicant has adopted much of the amended wording suggested by the Examining Attorney, and has also provided the additional detail requested.  Applicant hereby amends the Class 9 identification of goods as follows:

 

Pre-recorded audio-visual content, namely motion picture films, DVDs, CDs, all featuring action adventure, comedy, drama and children’s entertainment; downloadable audio and video recordings featuring action adventure, comedy, drama and children’s entertainment; downloadable motion pictures, television shows and video recordings, all in the field of action adventure, comedy, drama and children’s entertainment; downloadable ring tones, graphics, computer desktop wallpaper, games and music via a global computer network and wireless devices; computer game software and video game software; mobile applications, namely, software for use in distribution of digital video, video files, video games, and multimedia content; downloadable electronic publications, namely, newsletters, magazines, journals and books in the field of action adventure, comedy, drama and children’s entertainment; downloadable software for use in distribution of digital video, video files, video games, and multimedia content.

 

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Applicant respectfully submits that it has now satisfactorily resolved all of the outstanding issues raised in the Office Action.  Accordingly, Applicant respectfully requests that, with the above amendments, the Application should now be approved for publication.

 

The Examining Attorney is invited to contact the undersigned with any remaining questions or concerns.

 

Respectfully submitted,

/Curtis Krechevsky/

 

Curtis Krechevsky

Cantor Colburn LLP

 

Attorneys for Applicant Twentieth Century Fox Film Corporation

Our Ref:  FEG2466TUS

 

Curtis Krechevsky, Esq.

Cantor Colburn LLP

20 Church Street

22^nd Floor

Hartford, Connecticut  06103-3207  U.S.A.

Phone:  860-286-2929

Fax:  860-286-0115

Email:  TM-CT@cantorcolburn.com

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Pre-recorded audio-visual content, namely motion picture films, DVDs, CDs; downloadable audio and video recordings; downloadable motion pictures, television shows and video recordings; downloadable ring tones, graphics, computer desktop wallpaper, games and music via a global computer network and wireless devices; computer games and video games; mobile applications; downloadable electronic publications; downloadable software
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: Pre-recorded audio-visual content, namely motion picture films, DVDs, CDs; Pre-recorded audio-visual content, namely motion picture films, DVDs, CDs, all featuring action adventure, comedy, drama and children's entertainment; downloadable audio and video recordings; downloadable audio and video recordings featuring action adventure, comedy, drama and children's entertainment; downloadable motion pictures, television shows and video recordings; downloadable motion pictures, television shows and video recordings, all in the field of action adventure, comedy, drama and children's entertainment; downloadable ring tones, graphics, computer desktop wallpaper, games and music via a global computer network and wireless devices; computer games and video games; computer game software and video game software; mobile applications; mobile applications, namely, software for use in distribution of digital video, video files, video games, and multimedia content; downloadable electronic publications; downloadable electronic publications, namely, newsletters, magazines, journals and books in the field of action adventure, comedy, drama and children's entertainment; downloadable software; downloadable software for use in distribution of digital video, video files, video games, and multimedia content.Class 009 for Pre-recorded audio-visual content, namely motion picture films, DVDs, CDs, all featuring action adventure, comedy, drama and children's entertainment; downloadable audio and video recordings featuring action adventure, comedy, drama and children's entertainment; downloadable motion pictures, television shows and video recordings, all in the field of action adventure, comedy, drama and children's entertainment; downloadable ring tones, graphics, computer desktop wallpaper, games and music via a global computer network and wireless devices; computer game software and video game software; mobile applications, namely, software for use in distribution of digital video, video files, video games, and multimedia content; downloadable electronic publications, namely, newsletters, magazines, journals and books in the field of action adventure, comedy, drama and children's entertainment; downloadable software for use in distribution of digital video, video files, video games, and multimedia content.
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
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3550265, 3550261, and 3990686.


SIGNATURE(S)
Response Signature
Signature: /Curtis Krechevsky/     Date: 11/06/2013
Signatory's Name: Curtis Krechevsky
Signatory's Position: Attorney of Record, Massachusetts State Bar Member

Signatory's Phone Number: 860-286-2929

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: 85904898
Internet Transmission Date: Wed Nov 06 11:55:21 EST 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201311061155217660
67-85904898-500a1e85e695185f2cd4a33aeb68
da18a6e39cba9f2ad983f59b58be0e8ee3cb1-N/
A-N/A-20131106114644800531