Response to Office Action

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 1957 (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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86765672 GPAY(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86765672/large) has been amended as follows:

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

Applicant thanks the examining attorney for the thorough consideration given the present application.

2(d) Likelihood of Confusion: Applicant's GPAY mark is refused registration under section 2(d) because of a likelihood of confusion with the mark GPAY in US Reg. No. 3731797 ("the '797 registration") for use with “bill payment services.” Upon further review, applicant notes that the '797 registration issued December 29, 2009, and that registrant failed to file a Section 8 Affidavit of Continued Use by May 29, 2016, which is the end of the 6-month grace period for doing so. As a result, the '797 registration should be canceled and no longer relied upon as grounds for refusing registration of applicant's GPAY mark.

In view of the foregoing, reconsideration and withdrawal of the 2(d) likelihood of confusion 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 Smart phones; Mobile phones; Portable communications apparatus; Electronic handheld units for the wireless receipt, storage and/or transmission of data and messages; Electronic wearable units for the wireless receipt, storage and/or transmission of data and messages; Monitors to measure, monitor, record, and transmit physiological and biometric data such as heart rate, pulse, body temperature, perspiration, blood pressure, sleep patterns, time, distance, pace, calories burned, and other fitness measurements; Head-mounted video display apparatus; Wearable mobile phones; Wearable smart phones; Wearable computers; Wearable computer peripheral devices; Wearable telecommunication apparatus; Wearable electric audio and visual apparatus and instruments; Wearable portable media players; Wearable monitors; Remote control apparatus; Computers; Laptop computers; Tablet computers; Monitors for computer; Headsets; Electronic publications, downloadable; Application software; Software interfaces with multi health devices to record health conditions; Television receivers; Universal serial bus drives; Portable hard disk drives; Apparatus for recording, transmission or reproduction of sound or images; Network monitoring cameras, namely, for surveillance; Digital signage; Digital color printers; Scanners; Mouses for computer; Car speaker; Projectors
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 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 402015004328 filed 06/11/2015]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Smart phones; Mobile phones; Portable communications apparatus; Portable communication apparatus, namely, handsets, walkie-talkies, satellite telephones, personal digital assistants and portable multimedia players; Electronic handheld units for the wireless receipt, storage and/or transmission of data and messages; Electronic wearable units for the wireless receipt, storage and/or transmission of data and messages; Monitors to measure, monitor, record, and transmit physiological and biometric data such as heart rate, pulse, body temperature, perspiration, blood pressure, sleep patterns, time, distance, pace, calories burned, and other fitness measurements; Monitors, not for medical use, to measure, monitor, record, and transmit physiological and biometric data such as heart rate, pulse, body temperature, perspiration, blood pressure, sleep patterns, time, distance, pace, calories burned, and other fitness measurements; Head-mounted video display apparatus; Head-mounted video displays; Wearable mobile phones; Wearable smart phones; wearable computers; Wearable computer peripheral devices; Wearable telecommunication apparatus; Wearable telecommunication apparatus, namely, wearable walkie-talkies and satellite telephones; Wearable electric audio and visual apparatus and instruments; Wearable electric audio and visual apparatus and instruments, namely, wearable audio amplifiers, audio mixers and audio speakers; Wearable portable media players; Wearable monitors; Wearable monitors, namely, wearable computer monitors and wearable digital signage monitors; Remote control apparatus; Remote control apparatus for radios, televisions and stereos; Computers; Laptop computers; Tablet computers; Monitors for computer; Monitors for computers; Headsets; Headsets for cellular phones and portable media players; Electronic publications, downloadable; electronic publications, downloadable, in the nature of magazines in the field of computers; Application software; Application software for operating communication devices; Software interfaces with multi health devices to record health conditions; Software interfaces for use in connection with multi health devices to record health conditions; Television Receivers; Universal serial bus drives; Portable hard disk drives; Portable hard disk drives for computers; Apparatus for recording, transmission or reproduction of sound or images; Network monitoring cameras, namely, for surveillance; Network monitoring cameras for surveillance; Digital signage; Electronic displays, namely, digital signage; Digital color printers; Scanners; Mouses for computer; Mouses for computers; Car speaker; Car speakers; ProjectorsClass 009 for Smart phones; Mobile phones; Portable communication apparatus, namely, handsets, walkie-talkies, satellite telephones, personal digital assistants and portable multimedia players; Electronic handheld units for the wireless receipt, storage and/or transmission of data and messages; Electronic wearable units for the wireless receipt, storage and/or transmission of data and messages; Monitors, not for medical use, to measure, monitor, record, and transmit physiological and biometric data such as heart rate, pulse, body temperature, perspiration, blood pressure, sleep patterns, time, distance, pace, calories burned, and other fitness measurements; Head-mounted video displays; Wearable mobile phones; Wearable smart phones; wearable computers; Wearable computer peripheral devices; Wearable telecommunication apparatus, namely, wearable walkie-talkies and satellite telephones; Wearable electric audio and visual apparatus and instruments, namely, wearable audio amplifiers, audio mixers and audio speakers; Wearable portable media players; Wearable monitors, namely, wearable computer monitors and wearable digital signage monitors; Remote control apparatus for radios, televisions and stereos; Computers; Laptop computers; Tablet computers; Monitors for computers; Headsets for cellular phones and portable media players; electronic publications, downloadable, in the nature of magazines in the field of computers; Application software for operating communication devices; Software interfaces for use in connection with multi health devices to record health conditions; Television Receivers; Universal serial bus drives; Portable hard disk drives for computers; Apparatus for recording, transmission or reproduction of sound or images; Network monitoring cameras for surveillance; Electronic displays, namely, digital signage; Digital color printers; Scanners; Mouses for computers; Car speakers; Projectors
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 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 402015004328 filed 06/11/2015]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 014 for Smart watches; Watches; Wrist watches; Watches with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Wrist bands with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Bracelets with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Rings for with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Ear rings with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Necklaces with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Jewelry with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Watches that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Watchbands that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; Watch chains; Watchbands; Electronic watches; Parts for watches; Necklaces of precious metal; Bracelets of Precious metal; Key rings for precious metal; Rings of Precious metal
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: Smart watches; Smart watches, namely, wristwatches featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information; Watches; Wrist watches; Watches with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Wrist bands with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Bracelets with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Rings for with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Ear rings with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Necklaces with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Jewelry with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Watches that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Watchbands that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; Watch chains; Watchbands; Electronic watches; Parts for watches; Necklaces of precious metal; Bracelets of Precious metal; Key rings for precious metal; Rings of Precious metalClass 014 for Smart watches, namely, wristwatches featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information; Watches; Wrist watches; Watches with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Wrist bands with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Bracelets with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Rings for with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Ear rings with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Necklaces with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Jewelry with the function of measurement/analysis/storage/transfer of the wearer's physiological/biological/activity data; Watches that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Watchbands that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Bracelets that communicate data to personal digital assistants, smart phones, tablet computer and personal computers through internet websites and other computer and electronic communication networks; Smart watches comprised primarily of a wristwatch also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; Watch chains; Watchbands; Electronic watches; Parts for watches; Necklaces of precious metal; Bracelets of Precious metal; Key rings for precious metal; Rings of Precious metal
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 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 [ __________ application number __________ filed __________ ]. 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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
CLARIFICATION OF FILING/REGISTRATION BASIS: Applicant responds that it intends to rely upon both the intent-to-use filing basis under Section 1(b), as well as the Section 44 basis. Applicant notes that the foreign registration has not yet issued, and requests that the application be suspended pending the completion of the prosecution of the Korean priority Application No. 40-2015-0043281. REMARKS: Applicant has amended its identification of goods as suggested in the Office Action, submitted argument in response to the 2(d) likelihood of confusion refusal, and and clarified the registration/filing basis herein. There being no other issues raised in the Office Action, applicant believes that the present application will be in condition for publication as soon as a basis is elected. An early Notice of Publication thereafter is respectfully requested. If the examining attorney has any questions concerning this application, the examining attorney is requested to contact Robert J. Kenney at (703) 205-8000 in the Washington, D.C. area.


SIGNATURE(S)
Response Signature
Signature: /Robert J. Kenney/     Date: 07/08/2016
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 703-205-8000

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.

        
Serial Number: 86765672
Internet Transmission Date: Fri Jul 08 14:05:50 EDT 2016
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2016070814055003
2577-86765672-550be7b5e1e9a17c58186c55de
a5cddd6cefea82587802826ff4c634612f8cd4-N
/A-N/A-20160708115326372511