TEAS Response to Suspension Inquiry

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1822 (Rev 10/2011)

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

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1822 (Rev 10/2011)

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

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 86623555 TES (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86623555/large) has been amended as follows:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration submitted herewith covers, IF the Section 44(e) basis is accepted for those goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Taiwan registration number 01749690 registered 01/16/2016, with a renewal date of __________ and an expiration date of 01/15/2026, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_19235139129-154922824_._TES-15001-02-TMTW__9_-issued_certificate__01749690-ENG_.pdf
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FR_19235139129-154922824_._TES-15001-02-TMTW__9__Issued_certificate_01749690-TW_.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Comment(s)/Remark(s):

             In response to the Suspension Inquiry dated November 25, 2015, the following documentation, amendments and remarks are respectfully submitted in connection with the above-identified application.

DOCUMENTATION

            Copy of Taiwanese Registration Nos. 01749690 and 01731641, as well as an English translation thereof.

IN THE APPLICATION

Please amend the bases of the application as follows:

 

--Delete the basis under Section 1(b);

Add the basis under Section 44(d); and

Add the basis under Section 44(e).--

 REMARKS

Applicant thanks the Trademark Attorney for the very thorough consideration given the present application.

FOREIGN REGISTRATION

            A true copy of the Taiwanese registration under Registration Nos.: 01749690 and 01731641, and an English translation thereof have been submitted.  The Taiwanese registrations will be in full force and effect until September 30, 2025 and January 15, 2026. 

ELECTION OF BASES

            Therefore, Applicant has amended the bases of the present application.  Entry of the amended bases into the official record is respectfully requested.CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer hardware; POS (point-of-sale) computer software; computer firmware for use with point-of-service touch controllers; Computer terminal; Liquid crystal display; Computer touch screens; Internet devices, namely, POS (point of sale) devices; tablet computers; Computer application software for mobile phones, namely, software for use in database management used for point of sale systems, self-service point intelligence systems, and catering information systems, not for downloading and reading online electronic publications or storing electronic information and data or for teaching purposes or education, career planning purposes; Data processing equipment; Interfaces for computers; Bar code scanner; Electronic data recorders; Optoelectronic measuring devices for creating touch or gesture-sensitive surfaces that interact with computer and other technology systems; Calculator; Cash registers; Automated billing machines for processing accounting information; Wireless POS (point of service) devices; Wireless POS (point of service) machines; Software for Point of Sale Systems; Hardware for Point of Sale System; Software for self-service point intelligence systems; Hardware for self-service point intelligence systems; Software for catering information systems; hardware for catering information systems, all the above goods are not used for education, teaching, career planning purposes
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: 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 asserts a claim of priority based on [Taiwan application number 104004050 filed 01/23/2015]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 009 for Computer hardware; POS (point-of-sale) computer software; computer firmware for use with point-of-service touch controllers; Computer terminal; Liquid crystal display; Computer touch screens; Internet devices, namely, POS (point of sale) devices; tablet computers; Computer application software for mobile phones, namely, software for use in database management used for point of sale systems, self-service point intelligence systems, and catering information systems, not for downloading and reading online electronic publications or storing electronic information and data or for teaching purposes or education, career planning purposes; Data processing equipment; Interfaces for computers; Bar code scanner; Electronic data recorders; Optoelectronic measuring devices for creating touch or gesture-sensitive surfaces that interact with computer and other technology systems; Calculator; Cash registers; Automated billing machines for processing accounting information; Wireless POS (point of service) devices; Wireless POS (point of service) machines; Software for Point of Sale Systems; Hardware for Point of Sale System; Software for self-service point intelligence systems; Hardware for self-service point intelligence systems; Software for catering information systems; hardware for catering information systems, all the above goods are not used for education, teaching, career planning purposes
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Taiwan application number 104004050 filed 01/23/2015]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Taiwan registration number 01749690 registered 01/16/2016 with a renewal date of __________ and an expiration date of 01/15/2026 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-19235139129-154922824_._TES-15001-02-TMTW__9_-issued_certificate__01749690-ENG_.pdf
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-19235139129-154922824_._TES-15001-02-TMTW__9__Issued_certificate_01749690-TW_.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising; Search engine optimization; Marketing; Product promotion service for others; Presentation of goods on communication media, for retail purposes; On-line advertising on a computer network; Price comparison and business evaluation of various products; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Statistical service, namely, statistical evaluations of marketing data; Drawing up of statements of accounts; Accounting services; Market study and analysis of market studies; Business management consultancy; Advisory services for business management; Inventory management; Commercial information agencies; Opinion polling; Market research; Publicity material rental; Rental of advertising space; Rental of cash registers; Office equipment rental; Commercial information and advice for consumers; Retail and wholesale store services, including online, featuring electronic materials, telecommunication devices, electronic appliances, photographic equipment, machinery, computer hardware, computer software, and computer accessories; Rental of vending machines
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: 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 asserts a claim of priority based on [Taiwan application number 104004049 filed 01/23/2015]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 035 for Advertising; Search engine optimization; Marketing; Product promotion service for others; Presentation of goods on communication media, for retail purposes; On-line advertising on a computer network; Price comparison and business evaluation of various products; Systemization of information into computer databases; Updating and maintenance of data in computer databases; Statistical service, namely, statistical evaluations of marketing data; Drawing up of statements of accounts; Accounting services; Market study and analysis of market studies; Business management consultancy; Advisory services for business management; Inventory management; Commercial information agencies; Opinion polling; Market research; Publicity material rental; Rental of advertising space; Rental of cash registers; Office equipment rental; Commercial information and advice for consumers; Retail and wholesale store services, including online, featuring electronic materials, telecommunication devices, electronic appliances, photographic equipment, machinery, computer hardware, computer software, and computer accessories; Rental of vending machines
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Taiwan application number 104004049 filed 01/23/2015]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Taiwan registration number 01731641 registered 10/01/2015 with a renewal date of __________ and an expiration date of 09/30/2025 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU1-19235139129-154922824_._TES-15001-01-TMTW__35_-issued_certificate_01731641-ENG_.pdf
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU1-19235139129-154922824_._TES-15001-01-TMTW__35_-Issued_certificate_01731641-TW_.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3


ADDITIONAL STATEMENTS
Miscellaneous Statement
CONCLUSION It is believed that the present application should be in condition for publication. An earlier Notice of Publication is requested. Please charge any fees or credit any overpayment pursuant to 37 C.F.R. § 2.6 to Deposit Account No. 02-2448.

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. §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. §1051(a) or AAU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the application or AAU filing date; 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/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: for a trademark or service mark application, the applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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 of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /James M. Slattery/    Date: 10/26/2016
Signatory's Name: James M. Slattery
Signatory's Position: Attorney of Record, VA Bar Member
Signatory's Phone Number: (703) 205-8000

Response Suspension Inquiry Signature
Signature: /James M. Slattery/     Date: 10/27/2016
Signatory's Name: James M. Slattery
Signatory's Position: Atty VA Bar
Signatory's Phone Number: 7032058000

        
Serial Number: 86623555
Internet Transmission Date: Thu Oct 27 15:48:17 EDT 2016
TEAS Stamp: USPTO/RSI-XXX.XX.XXX.XXX-201610271548177
06059-86623555-57040a7ef9618e5e933fc86b4
752571dcddbceb41c5cb425511c07ed236b3bea0
-N/A-N/A-20161026154922824393