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. 86390778 WATCH (Stylized and/or with Design, see http://uspto.report/TM/86390778/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computers; computer peripheral devices; computer hardware; personal digital assistants; electronic organizers; electronic notepads; sound recording and reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; radios, radio transmitters, and receivers; earphones, headphones; audio speakers; microphones; audio components and accessories; network communication apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; apparatus for data storage; chips; cameras; batteries; computer software; computer and electronic games; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods
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[ Jamaica application number 65136 filed 07/24/2014]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computers; computer peripheral devices; computer hardware; personal digital assistants; electronic organizers; electronic personal organizers; electronic notepads; sound recording and reproducing apparatus; sound recording and sound reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; radios, radio transmitters, and receivers; earphones, headphones; earphones and headphones; audio speakers; microphones; audio components and accessories; audio components and accessories, namely, microphones and speakers sold as component features of computers; network communication apparatus; network communication apparatus, namely, mobile and wearable digital electronic devices for the sending and receiving of text, data, audio, image, and video files across networks; electronic communication equipment and instruments; electronic communication equipment and instruments, namely, mobile and wearable digital electronic devices for sending and receiving of text, data, audio, image, and video files; telecommunications apparatus and instruments; telecommunications apparatus and instruments, namely, speakers and microphones sold as component features of computers, headsets, mobile and wearable digital electronic devices for the sending and receiving of telephone calls, text messages, electronic mail, and other digital data, and for use in providing access to the internet; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; cables, namely, charging cables; apparatus for data storage; apparatus for data storage, namely, mobile and wearable digital electronic devices for the storage of text, data, audio, image, and video files; chips; computer chips; cameras; batteries; computer software; computer software for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; computer and electronic games; computer software for accessing, browsing and searching online databases; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; computer software and firmware, namely, operating system programs, database synchronization software, data synchronization programs, and application development computer software programs for personal and wearable wireless communication devices; computer equipment for use with all of the aforesaid goods; computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic wearable wireless communication devices from a data store on or associated with a personal computer or a server; electronic apparatus with multimedia functions for use with all of the aforesaid goods; software for the synchronization of data between a remote station or device and a fixed or remote station or device; electronic apparatus with interactive functions for use with all of the aforesaid goods; computer application software for use in connection with configuring and controlling wearable computer hardware and wearable computer peripherals; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; computer software for use in contactless transactions with retailers, merchants, and vendors via mobile devices used to process payments; covers, bags and cases adapted or shaped to contain all of the aforesaid goods; computer software for monitoring, processing, displaying, storing and transmitting data relating to a user's physical activity; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program; computer game software and electronic games software; electrical and electronic connectors, electric wires, battery chargers, docks, electronic docking stations, interfaces for computers, and adapters for use with all of the aforesaid goods; computer peripheral equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods, namely, mobile and wearable digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; electronic apparatus with interactive functions for use with all of the aforesaid goods, namely, pedometers, altimeters, scales and body weighing scales, multifunctional electronic devices for displaying, measuring, and transmitting information including, time, date, heart rate, global positioning, direction, distance, altitude, speed, steps taken, calories burned, navigational information, weather information, temperature, changes in heart rate, and activity level, sensors for scientific use to be worn by a human to gather human biometric data, mobile and wearable digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods, namely, microphones and speakers sold as component features of computers, power adapters and charging cables; covers, bags and cases specially adapted or shaped to contain all of the aforesaid goodsClass 009 for Computers; computer peripheral devices; computer hardware; personal digital assistants; electronic personal organizers; electronic notepads; sound recording and sound reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; radios, radio transmitters, and receivers; earphones and headphones; audio speakers; microphones; audio components and accessories, namely, microphones and speakers sold as component features of computers; network communication apparatus, namely, mobile and wearable digital electronic devices for the sending and receiving of text, data, audio, image, and video files across networks; electronic communication equipment and instruments, namely, mobile and wearable digital electronic devices for sending and receiving of text, data, audio, image, and video files; telecommunications apparatus and instruments, namely, speakers and microphones sold as component features of computers, headsets, mobile and wearable digital electronic devices for the sending and receiving of telephone calls, text messages, electronic mail, and other digital data, and for use in providing access to the internet; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables, namely, charging cables; apparatus for data storage, namely, mobile and wearable digital electronic devices for the storage of text, data, audio, image, and video files; computer chips; cameras; batteries; computer software for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; computer software for accessing, browsing and searching online databases; computer software and firmware, namely, operating system programs, database synchronization software, data synchronization programs, and application development computer software programs for personal and wearable wireless communication devices; computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic wearable wireless communication devices from a data store on or associated with a personal computer or a server; software for the synchronization of data between a remote station or device and a fixed or remote station or device; computer application software for use in connection with configuring and controlling wearable computer hardware and wearable computer peripherals; computer software for use in contactless transactions with retailers, merchants, and vendors via mobile devices used to process payments; computer software for monitoring, processing, displaying, storing and transmitting data relating to a user's physical activity; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program; computer game software and electronic games software; electrical and electronic connectors, electric wires, battery chargers, docks, electronic docking stations, interfaces for computers, and adapters for use with all of the aforesaid goods; computer peripheral equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods, namely, mobile and wearable digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; electronic apparatus with interactive functions for use with all of the aforesaid goods, namely, pedometers, altimeters, scales and body weighing scales, multifunctional electronic devices for displaying, measuring, and transmitting information including, time, date, heart rate, global positioning, direction, distance, altitude, speed, steps taken, calories burned, navigational information, weather information, temperature, changes in heart rate, and activity level, sensors for scientific use to be worn by a human to gather human biometric data, mobile and wearable digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods, namely, microphones and speakers sold as component features of computers, power adapters and charging cables; covers, bags and cases specially adapted or shaped to contain all of the aforesaid goods
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 [ Jamaica application number 65136 filed 07/24/2014]. 15 U.S.C.Section 1126(d), as amended.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use WATCH apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Thomas R. La Perle/     Date: 06/22/2015
Signatory's Name: Thomas R. La Perle
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 408-974-2385

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: 86390778
Internet Transmission Date: Mon Jun 22 13:54:44 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2015062213544454
7047-86390778-530faa6d3c9ca71fa8fcf63bd9
c7ef5a6ad166fc0407a317ebfc842875bb442b2b
-N/A-N/A-20150622135243227186