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. 86765672 GPAY(Standard Characters, see http://teas.gov.uspto.report/rsi/view/styles/No-Image-File.jpg) 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 Korea, South registration number 1202359 registered 09/12/2016, with a renewal date of __________ and an expiration date of 09/12/2026, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_19235139129-172922483_._2016-10-07_Korean_Reg.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Comment(s)/Remark(s):


PLEASE PROCEED TO DELETE THE 1(B) BASIS IF THE KOREAN REGISTRATION IS ACCEPTED AS THE NEW BASIS.






The foreign registration that is the basis of the U.S. application under Section 44(e) of the Trademark Act (15 U.S.C. Section 1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.
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 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
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 [Korea, South application number 402015004328 filed 06/11/2015]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 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: The applicant has 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 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 [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.

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 [ Korea, South registration number 1202359 registered 09/12/2016 with a renewal date of __________ and an expiration date of 09/12/2026 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-19235139129-172922483_._2016-10-07_Korean_Reg.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 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
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 [Korea, South application number 402015004328 filed 06/11/2015]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: 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; Jewelry, namely, 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; Jewelry, namely, 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: The applicant has 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 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 [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.

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 [ Korea, South registration number 1202359 registered 09/12/2016 with a renewal date of __________ and an expiration date of 09/12/2026 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU1-19235139129-172922483_._2016-10-07_Korean_Reg.pdf
Converted PDF file(s) (5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.


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: /Robert J. Kenney/    Date: 10/07/2016
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member
Signatory's Phone Number: (703)205-8000

Response Suspension Inquiry Signature
Signature: /Robert J. Kenney/     Date: 10/07/2016
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record; Virginia Bar Member
Signatory's Phone Number: (703) 205-8000

        
Serial Number: 86765672
Internet Transmission Date: Fri Oct 07 18:15:34 EDT 2016
TEAS Stamp: USPTO/RSI-XXX.XX.XXX.XXX-201610071815341
91370-86765672-5704f65c9157506d99a2f5a27
407018a5a704da51437bc3c24abc7dfa65fcda-N
/A-N/A-20161007172922483739