Response to Office Action

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. 86357241 C-THRU(Standard Characters, see http://uspto.report/TM/86357241/mark.png) has been amended as follows:

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

Applicant responds to the descriptiveness refusal by amending its application for registration on the Supplemental Register.  In order to qualify for registration on the Supplemental Register, Applicant inserts a Section 44(e) foreign registration filing basis.  Applicant notes that the Korean trademark application to register C-THRU in Classes 9 and 28 (Korean App. No. 70-2014-0000059) has been published for opposition.  Applicant expects that the Korean Intellectual Property Office (“KIPO”) will grant registration of the application in June 2015.  Applicant will submit a copy of the Korean Certificate of Registration for the mark as soon as KIPO issues it.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Mechanisms for coin-operated apparatus; Ticket dispensers; Digital cameras; OLED televisions; Apparatus for the recording/transmission/reproduction of sound and images; Smart phones with the function of access to telephone sets/hand-held computers/Personal Digital Assistants (PDAs)/electronic agendas/electronic notepads and internet/electronic mail/digital media etc.; OLED panels; OLED large-screen displays; Electronic agendas; Electronic indicator boards; Electric lighting notice boards; Wearable device; Electronic photoalbums
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[ Korea, South application number 70-2014-0000 filed 02/05/2014]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Mechanisms for coin-operated apparatus; Ticket dispensers; electronic ticket dispensers; Digital cameras; OLED televisions; Apparatus for the recording/transmission/reproduction of sound and images; Smart phones with the function of access to telephone sets/hand-held computers/Personal Digital Assistants (PDAs)/electronic agendas/electronic notepads and internet/electronic mail/digital media etc.; OLED panels; OLED large-screen displays; Electronic agendas; Electronic indicator boards; Electric lighting notice boards; Wearable device; wearable device, namely, wearable computer; Electronic photoalbumsClass 009 for Mechanisms for coin-operated apparatus; electronic ticket dispensers; Digital cameras; OLED televisions; Apparatus for the recording/transmission/reproduction of sound and images; Smart phones with the function of access to telephone sets/hand-held computers/Personal Digital Assistants (PDAs)/electronic agendas/electronic notepads and internet/electronic mail/digital media etc.; OLED panels; OLED large-screen displays; Electronic agendas; Electronic indicator boards; Electric lighting notice boards; wearable device, namely, wearable computer; Electronic photoalbums
Deleted Filing Basis: 1(b)
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 [ Korea, South application number 70-2014-0000 filed 02/05/2014]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Gaming machines for gambling; Slot machines (gaming machines); Computer games apparatus; Pachinkos; Portable games with liquid crystal displays; Portable games with organic light emitting diodes; Amusement machines for use with television receivers (TV sets)
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: Gaming machines for gambling; Slot machines (gaming machines); slot machines, namely, gaming machines; Computer games apparatus; computer games apparatus, namely, apparatus for electronic games adapted for use with an external display screen or monitor; Pachinkos; Portable games with liquid crystal displays; Portable games with organic light emitting diodes; Amusement machines for use with television receivers (TV sets); amusement machines, namely, electronic game units adapted for use with an external display screen or monitorClass 028 for Gaming machines for gambling; slot machines, namely, gaming machines; computer games apparatus, namely, apparatus for electronic games adapted for use with an external display screen or monitor; Pachinkos; Portable games with liquid crystal displays; Portable games with organic light emitting diodes; amusement machines, namely, electronic game units adapted for use with an external display screen or monitor
Deleted Filing Basis: 1(b)
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.

Signature: /Sang-Beom Han/      Date: 03/13/2015
Signatory's Name: Sang-Beom Han
Signatory's Position: CEO
Signatory's Phone Number: 202.739.5517


Response Signature
Signature: /Carole R. Klein/     Date: 03/13/2015
Signatory's Name: Carole R. Klein
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 202.739.5517

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: 86357241
Internet Transmission Date: Fri Mar 13 14:47:42 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XX.XXX.X-201503131447422536
61-86357241-530d09c2b9cb397ad8d4ce24bee1
19af467dd35073208c673024d6bc5c607f6dfb-N
/A-N/A-20150311200438916624