TEAS Request Reconsideration after FOA

PTO Form 1960 (Rev 9/2007)

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

---

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. 86239782 ASAP(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86239782/large) has been amended as follows:

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

Office Action Response – For Online Submission

 

ASAP

 

U.S. Application Serial No. 86239782

0043603.00699

 

Office Action Response

 

(1)   Remarks

 

Applicant, Amazon Technologies, Inc., respectfully submits this Response to the final Office Action that issued on February 6, 2015 with respect to U.S. Trademark Application Serial No. 86/239,782. 

 

A.                 Likelihood of Confusion under section 2(d) regarding International Class 41.

 

The Examining Attorney has refused registration of the applied-for mark ASAP (“Applicant’s Mark”) in International Class 41 only for the services “[e]ntertainment services, namely, providing non-downloadable playback of audio and video recordings and multimedia content featuring image, text, audio, video, audiovisual, and data files via global communications network” under section 2(d) of the Lanham Act on the ground that there is a likelihood of confusion between Applicant’s Mark and U.S. Reg. No. 4,471,422 (for A$AP ROCKY) and U.S. Reg. No. 4,564,607 (for A$AP WORLDWIDE) (collectively, the “Cited Marks”).

 

Although Applicant respectfully disagrees with the Examining Attorney’s contention that there is a likelihood of confusion between Applicant’s Mark and the Cited Marks, Applicant is deleting its Class 41 services from its application in this Office Action Response.   Accordingly, since the Section 2(d) refusal only applied to Applicant’s Class 41 services and these services are now being deleted from the Application, Applicant respectfully submits that this Section 2(d) refusal should be removed.  

 

(2)   Amendments to Identifications

 

The Examining Attorney has also requested that Applicant clarify certain services in Classes 38 and 42.  As requested, Applicant submits the following amendments to its services descriptions per the Examining Attorney’s request:

 

International Class 9:

 

No changes (has been deemed acceptable).

 

International Class 38:

 

“Electronic data transmission; electronic transmission and streaming of digital media content for others via global and local networks; communication services for transmitting, accessing, receiving, downloading, streaming, broadcasting, mirroring and transferring electronic data and multimedia content, namely, voice, audio, visual images, data, books, photos, videos, text, documents, audiovisual works, multimedia works, literary works, files, and other electronic works, via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; wireless broadband communication services; providing an internet forum and online chat rooms for the transmission of messages among computer users concerning reviews, ratings and recommendations related to entertainment content featuring voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; telecommunications services, namely, providing access to online directories, databases, current events websites and blogs, and on-line reference materials in the entertainment and literary fields; providing access in the nature of providing telecommunication connectivity services to auxiliary devices or electronic devices for the transfer of images, messages, audio, visual, audiovisual and multimedia works among e-readers, mobile phones, smartphones, portable electronic devices, portable digital devices, or computers; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; providing online chat rooms and internet forums for the transmission of user-generated entertainment content featuring photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works; telecommunications services, namely, transmission of podcasts and of webcasts; transmission and distribution of electronic data and multimedia content featuring image, text, audio, video, audiovisual, music, and data files via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks”;

 

International Class 41:

 

Delete from application.

 

International Class 42:

 

“Computer services, namely providing temporary use of non-downloadable software tool for streaming and delivery of audio and video recordings and multimedia entertainment content featuring image, text, audio, video, audiovisual, music, and data files; computer services, namely providing temporary use of non-downloadable software tool for storage and playback of personalized audio and video recordings and multimedia content featuring image, text, audio, video, audiovisual, music, and data files; creating online communities for registered users for the sharing of messages and information among computer users concerning reviews, ratings and recommendations related to voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works; creating online communities for registered users that allows users to share photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works among computer users; storage of electronic data and digital multimedia content featuring image, text, audio, video, audiovisual, music, and data files”.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 041 for Entertainment services, namely, providing non-downloadable playback of audio and video recordings and multimedia content featuring image, text, audio, video, audiovisual, and data files via global communications network

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Electronic data transmission; electronic transmission and streaming of digital media content for others via global and local networks; communication services, namely, transmitting, accessing, receiving, downloading, streaming, broadcasting, sharing, displaying, mirroring and transferring electronic data and multimedia content, namely, voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works, via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; wireless broadband communication services; providing an internet forum and online chat rooms for the transmission of messages among computer users concerning reviews, ratings and recommendations related to entertainment content featuring voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; telecommunications services, namely, providing access to online directories, databases, current events websites and blogs, and on-line reference materials in the entertainment and literary fields; providing access in the nature of providing telecommunication connectivity services to auxiliary devices or electronic devices for the transfer of images, messages, audio, visual, audiovisual and multimedia works among e-readers, mobile phones, smartphones, portable electronic devices, portable digital devices, or computers; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; providing online chat rooms and internet forums for the transmission of user-generated entertainment content featuring photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works; telecommunications services, namely, transmission of podcasts and of webcasts; transmission and distribution of electronic data and multimedia content featuring image, text, audio, video, audiovisual, music, and data files via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks
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: Electronic data transmission; electronic transmission and streaming of digital media content for others via global and local networks; communication services, namely, transmitting, accessing, receiving, downloading, streaming, broadcasting, sharing, displaying, mirroring and transferring electronic data and multimedia content, namely, voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works, via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; communication services for transmitting, accessing, receiving, downloading, streaming, broadcasting, mirroring and transferring electronic data and multimedia content, namely, voice, audio, visual images, data, books, photos, videos, text, documents, audiovisual works, multimedia works, literary works, files, and other electronic works, via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; wireless broadband communication services; providing an internet forum and online chat rooms for the transmission of messages among computer users concerning reviews, ratings and recommendations related to entertainment content featuring voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; telecommunications services, namely, providing access to online directories, databases, current events websites and blogs, and on-line reference materials in the entertainment and literary fields; providing access in the nature of providing telecommunication connectivity services to auxiliary devices or electronic devices for the transfer of images, messages, audio, visual, audiovisual and multimedia works among e-readers, mobile phones, smartphones, portable electronic devices, portable digital devices, or computers; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; providing online chat rooms and internet forums for the transmission of user-generated entertainment content featuring photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works; telecommunications services, namely, transmission of podcasts and of webcasts; transmission and distribution of electronic data and multimedia content featuring image, text, audio, video, audiovisual, music, and data files via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networksClass 038 for Electronic data transmission; electronic transmission and streaming of digital media content for others via global and local networks; communication services for transmitting, accessing, receiving, downloading, streaming, broadcasting, mirroring and transferring electronic data and multimedia content, namely, voice, audio, visual images, data, books, photos, videos, text, documents, audiovisual works, multimedia works, literary works, files, and other electronic works, via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; wireless broadband communication services; providing an internet forum and online chat rooms for the transmission of messages among computer users concerning reviews, ratings and recommendations related to entertainment content featuring voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks; telecommunications services, namely, providing access to online directories, databases, current events websites and blogs, and on-line reference materials in the entertainment and literary fields; providing access in the nature of providing telecommunication connectivity services to auxiliary devices or electronic devices for the transfer of images, messages, audio, visual, audiovisual and multimedia works among e-readers, mobile phones, smartphones, portable electronic devices, portable digital devices, or computers; streaming of audio, visual and audiovisual material via the Internet or other computer or communications network; providing online chat rooms and internet forums for the transmission of user-generated entertainment content featuring photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works; telecommunications services, namely, transmission of podcasts and of webcasts; transmission and distribution of electronic data and multimedia content featuring image, text, audio, video, audiovisual, music, and data files via telecommunications networks, wireless communication networks, the Internet, information services networks, and data networks
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services, namely providing temporary use of non-downloadable software tool for streaming and delivery of audio and video recordings and multimedia entertainment content featuring image, text, audio, video, audiovisual, music, and data files; computer services, namely providing temporary use of non-downloadable software tool for storage and playback of personalized audio and video recordings and multimedia content featuring image, text, audio, video, audiovisual, music, and data files; creating online communities for the transmission of messages and information among computer users concerning reviews, ratings and recommendations related to voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works; creating online communities for the transmission of photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works among computer users; storage of electronic data and digital multimedia content featuring image, text, audio, video, audiovisual, music, and data files
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: Computer services, namely providing temporary use of non-downloadable software tool for streaming and delivery of audio and video recordings and multimedia entertainment content featuring image, text, audio, video, audiovisual, music, and data files; computer services, namely providing temporary use of non-downloadable software tool for storage and playback of personalized audio and video recordings and multimedia content featuring image, text, audio, video, audiovisual, music, and data files; creating online communities for the transmission of messages and information among computer users concerning reviews, ratings and recommendations related to voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works; creating online communities for registered users for the sharing of messages and information among computer users concerning reviews, ratings and recommendations related to voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works; creating online communities for the transmission of photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works among computer users; creating online communities for registered users that allows users to share photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works among computer users; storage of electronic data and digital multimedia content featuring image, text, audio, video, audiovisual, music, and data filesClass 042 for Computer services, namely providing temporary use of non-downloadable software tool for streaming and delivery of audio and video recordings and multimedia entertainment content featuring image, text, audio, video, audiovisual, music, and data files; computer services, namely providing temporary use of non-downloadable software tool for storage and playback of personalized audio and video recordings and multimedia content featuring image, text, audio, video, audiovisual, music, and data files; creating online communities for registered users for the sharing of messages and information among computer users concerning reviews, ratings and recommendations related to voice, audio, visual images, data, books, photos, videos, text, documents, content, audiovisual works, multimedia works, literary works, files, and other electronic works; creating online communities for registered users that allows users to share photos, videos, text, and electronic works, namely, books, data, images, documents, content, visual works, audio works, audiovisual works, multimedia works, literary works, files, and other electronic works among computer users; storage of electronic data and digital multimedia content featuring image, text, audio, video, audiovisual, music, and data files
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.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /J. Robert LeBlanc/     Date: 08/03/2015
Signatory's Name: J. Robert LeBlanc
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 214-651-5106

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: 86239782
Internet Transmission Date: Mon Aug 03 18:15:24 EDT 2015
TEAS Stamp: USPTO/RFR-XXX.XX.XX.XXX-2015080318152496
6702-86239782-540d683abe017b29930343b86f
84850c675bbdcabef8520f75a18deec7e4f70dc5
-N/A-N/A-20150803180546886769