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. 86837226 LIBRA(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86837226/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 LIBRA mark is refused registration because of a likelihood of confusion with the following:

Reg. No.	Mark	Relevant Goods
1592807	LIBRA	Computer programs and instruction manuals sold therewith, for use in engineering applications
2142987	LIBRA	audio editors; sound mixing consoles and parts therefor; all for use in the professional audio industry
2352649	LIBRA	electronic components for security systems; namely, electromechnical controls for use in entrance access, burglar alarms, and fire detection alarms; security alarm sensors and smoke detectors
3257997	LIBRA	Remote controlled motion picture camera mounts
3257998	LIBRA (design)	Remote controlled motion picture camera mounts
4097624	LIBRATONE	Electric and electronic apparatus, instruments and equipment for use in connection with the recording, transmission, reproduction, reception, control, operating and amplification of sound or images, namely, loudspeakers, loudspeaker systems, stereo tuners, amplifiers, DVD and compact disc players and recorders, microphones and sound mixers; analogue and digital products for audio room correction, namely, distribution amplifiers for audio and video signals; audio and signal processing apparatus, namely, digital signal processors; audio electronic components, namely, surround sound systems; parts and fittings for all the aforesaid goods, namely, headphones, subwoofers, remote control units for loudspeakers, loudspeaker systems and amplifiers, aerials, converters and television decoders; computer hardware and application software for the recording, transmission, reproduction, reception, control, operating and amplification of sound or images over loudspeakers and loudspeaker units/systems, tuners, amplifiers, DVD and compact disc players, microphones and sound mixers; electric and electronic apparatus, instruments and equipment, namely, loudspeakers for computers, laptops, handheld computers, telephones, portable telephones, mobile digital electronic devices for the sending and receiving of telephone calls, e-mails, video, music and other digital data, and for MP3 and other digital format audio and video players
4546615	LIBRA EORZEA	Computer game software; video game software; sound recordings in the form of optical discs, magnetic discs and semiconductor ROMs all featuring music and fictional stories; audio visual recordings in the form of optical discs, magnetic discs and semiconductor ROMs all featuring music and animated fictional stories; prerecorded compact discs featuring music; prerecorded video discs featuring music and animated fictional stories; mouse pads; straps for cellular phones; downloadable musical sound recordings; downloadable ring tones for mobile phones; downloadable image files containing artworks, texts, graphics and photographs; downloadable wallpaper graphics for mobile phones; downloadable electronic publications in the nature of magazines, journals and newsletters in the field of computer games and video games

Applicant respectfully disagrees, but to advance prosecution of the application applicant has amended the application herein to delete from the identification of goods those goods that may be considered to be related to registrants' goods or the goods in the prior pending application. Applicant respectfully submits that the goods remaining in the application are sufficiently unrelated to those in the cited registrations and prior pending applications to avoid a likelihood of confusion. The parties' goods, as amended, are not of a type that consumers reasonably may expect to emanate from a single source under the same mark. The parties' goods will travel through different channels of trade and their marks will not be encountered by consumers at the same time under circumstances where confusion reasonably may occur, thus the goods, as amended, are unrelated and there is no likelihood of confusion. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1371, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012) (affirming the Board’s dismissal of opposer’s likelihood-of-confusion claim, noting “there is nothing in the record to suggest that a purchaser of test preparation materials who also purchases a luxury handbag would consider the goods to emanate from the same source” though both were offered under the COACH mark); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in the plumbing field to be such different goods and services that confusion as to their source is unlikely even if they are offered under the same marks); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by).

Specifically regarding Reg. Nos. 4097624 (LIBRATONE) and 4546615 (LIBRA EORZEA), there further is no likelihood of confusion because of the dissimilarities between the marks in sight, sound, and meaning when considered in their entirety. Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See, e.g., Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB’s holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase “City Bank” is frequently used in the banking industry and that ”CAPITAL” is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks). In the present case, the marks convey significantly different commercial impressions due to the addition of –TONE and –EORZEA, respectively, to registrants’ marks.

Applicant further submits that the absence of a likelihood of confusion is evidenced by the multiple registrations for marks that include LIBRA as part of the mark for goods that purportedly are related. These marks all have existed on the Principal Register with there being no likelihood of confusion, thus the addition of applicant's LIBRA mark to the Principal Register similarly will not create a likelihood of confusion. Concurrent use of the marks for an extended period of time creates a strong presumption there is no likelihood of confusion.  See, e.g., Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 82, 490, 212 U.S.P.Q. 246 (1^st Cir. 1981) (“[W]hen the marks have been in the same market, side by side, for a substantial period of time, there is a strong presumption that there is little likelihood of confusion.”); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 117, 92 U.S.P.Q.2d 1769 (2d Cir. 2009) (11 years of coexistence with no report of a single confused customer is evidence supporting a finding of no likely confusion.); Citigroup Inc. v. Capital City Bank Group, Inc., 94 U.S.P.Q.2d 1645, 1660, 2010 WL 595586 (T.T.A.B. 2010), aff’d, 637 F.3d 1344, 98 U.S.P.Q.2d 1253 (Fed. Cir. 2011) (Since there was a reasonable opportunity for confusion to occur, the lack of any reported instances weighed against a finding of likelihood of confusion.  No likelihood of confusion was found). If there is no likelihood of confusion among the LIBRA marks on the Principal Register, there likewise will be no likelihood of confusion between applicant's mark and registrants' marks.

In view of the foregoing, applicant respectfully requests withdrawal of the section 2(d) refusal and that its application be permitted to pass toward registration without being suspended pending the outcome of the prior pending applications.

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; Portable communications apparatus, namely, handsets, walkie-talkies, satellite telephones and Personal Digital Assistants; Display for mobile phones; Display modules for mobile phones; Semiconductor chips; Application processors; Wearable Smart phones; Tablet PC; Computer; Printers for use with computers; Portable computers; Notebook PC; Monitors (computer hardware); Monitors for commercial purpose; Digital Signage; Wearable Computer; Television receivers; Display for television receivers; Display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; Wireless headsets; Headset; Wireless headset for mobile phones; Ear phones; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Apparatus for the recording/transmission or reproduction of sound and images; Network attached Storage; Chargers for electric batteries for smart phones (Wireless chargeable); Liquid crystal protective film for smart phones; Smart phone rings; Power supplies for smart phones; DVD player; Blu ray player; Handheld media players; Handheld CD players; Mobile phones cases; Supporting speaker for mobile phones; Flip cover for mobile phones; Tablet computers cases; Flip cover for tablet computers; Batteries for mobile phones; Battery chargers for mobile phones; Supporting battery for mobile phones; Chargable batteries; Battery compensation chargers; Battery charge devices; Mouse(computer peripheral); Keyboards; USB; Universal serial bus (USB) Dongle (Wireless network adapters); Digital set top boxes; Digital cameras; Network surveillance cameras; Motion recognizing sensors; Gyro sensors using GPS functions; Motion detectors; Invader sensors; Privacy protection sensors; Alarm sensors for refrigerators; Alarm sensors for washing machines; Range sensor; Digital sensory devices; Object detecting sensors; Sensor controllers; Pressure sensors; Sensors for measuring instruments; Window opening and closing detecting sensors; Door opening and closing detecting sensors; Remote control apparatus; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons; Sensor station; Audio speakers; Digital door locks; Remote controls for controlling electronic products; Home network devices; Electronic security system for home network; Home automation device; Downloadable smart phone application (software); Interfaces and peripheral devices for computers; Cloud server; Server for home network system; Server for home automation; Digital audio interface apparatus; Wireless audio/video receivers; Wireless communication apparatus; Remote multi switches; Oscillation sensor devices; Air pollution measuring devices; Measuring and control devices for air conditioning technology; Air measuring apparatus; Dust measuring apparatus; Weight scales not for medical purposes; Measuring apparatus not for medical purposes; Automatic control apparatus and instruments; Light switches; Electric power distribution apparatus; Apparatus for improving power efficiency; Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; Lighting control apparatus; Apparatus for diagnosing electrical power installations; Apparatus for measuring/monitoring/analyzing electricity consumption; Electric wire and cable; Digital audio and video recorders and players; Speaker systems; Electric audio and visual apparatus and instruments; Handheld multimedia players; Modems; Wireless routers; Antennas for wireless communications apparatus; Remote air conditioning control devices; Telemetric apparatus and instruments; Remote control telemetering machines and apparatus; Mobile phones; Telecommunication machines and implements; Remote control apparatus for controlling lighting; Telecommunication converters; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software; Digital electronic controllers; Plugs; Sockets, plugs and other contacts (electric connectors); Solar cell wafer; Modules for photovoltaic power generation; Solar wafers; Solar batteries; Crystalline silicon solar power cells; Solar cell plates; Solar cell panels; Solar power panel for generation; Solar panels for electricity generation; Solar panels for the production of electricity; Inverter used in solar power generation; Accumulators for photovoltaic power; Electric control devices for heating and energy management; Computer hardware modules for use in internet of things electronic devices; Computer application software; Downloadable computer software applications; Operating system program for smart TV; Operating system program for smart phones; Multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; Application software for Televisions; Application software for smart phone; Computer programs for accessing, browsing and searching online databases; Computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; Computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; Computer software for the remote control of security apparatus; Computer software for the remote control of office machines and equipment; Computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; Computer software for the remote control of telephone sets and radiotelephony sets; Computer software and firmware used to allow electronic devices to share data and communicate with each other; Computer operating system software; Electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; Software for network and device security; Computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; Software for mobile device management
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 402015005486 filed 07/22/2015]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Smart phones; Portable communications apparatus, namely, handsets, walkie-talkies, satellite telephones and Personal Digital Assistants; Portable communications apparatus, namely, telephone handsets, walkie-talkies, satellite telephones and personal digital assistants; Display for mobile phones; LCD display for mobile phones; Display modules for mobile phones; LCD display modules for mobile phones; Semiconductor chips; Application processors; Mobile application processors; Wearable Smart phones; Tablet PC; Computer; Printers for use with computers; Portable computers; Notebook PC; Monitors (computer hardware); Computer monitors; Monitors for commercial purpose; Television monitors for commercial purpose; Digital Signage; Wearable Computer; Television receivers; Display for television receivers; Display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; Wireless headsets; Headset; Wireless headset for mobile phones; Ear phones; Computer network attached storage device; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Liquid crystal protective film for smart phones; Apparatus for the recording/transmission or reproduction of sound and images; Downloadable smart phone ringtones; Network attached Storage; Power supplies for smart phones; Chargers for electric batteries for smart phones (Wireless chargeable); Optical disc player; Blu ray player; Smart phone rings; Mobile phones cases; Flip cover for mobile phones; DVD player; Tablet computers cases; Flip cover for tablet computers; Handheld media players; Mouse being a computer peripheral; Handheld CD players; Keyboards; blank USB flash drives; Supporting speaker for mobile phones; Universal serial bus (USB) Dongles being wireless network adapters; Digital set top boxes; Gyro sensors using GPS functions; Motion detectors; Batteries for mobile phones; Invader sensors, namely, motion detectors; Battery chargers for mobile phones; Privacy protection sensors, namely, alarm sensors; Supporting battery for mobile phones; Alarm sensors for refrigerators; Chargable batteries; Alarm sensors for washing machines; Battery compensation chargers; Range finders; Battery charge devices; electronic devices which detect the presence of occupants and control the lighting system accordingly; Mouse(computer peripheral); object detecting sensor composed of chemical and heat sensors for the detection of explosives; Sensor controllers; USB; Pressure sensors; Universal serial bus (USB) Dongle (Wireless network adapters); Sensors being parts of gesture, temperature measuring instruments; Window opening and closing detecting sensors; Digital cameras; Door opening and closing detecting sensors; Network surveillance cameras; remote control starters for smart phones; Motion recognizing sensors; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons being parts for smart phones; Invader sensors; Sensor station in the nature of a motion detector control panel; Privacy protection sensors; Audio speakers; Digital door locks; Remote controls for controlling electronic products in the nature of televisions, stereos, microwave ovens, refrigerators; Range sensor; Home network devices, namely, virtual private network hardware; Digital sensory devices; Electronic security system for home network comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; Object detecting sensors; Home automation device comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications; Interfaces and peripheral devices for computers; Cloud server; Sensors for measuring instruments; Server for home network system; Server for home automation; Digital audio interface apparatus, namely, audio-receivers; Remote control apparatus; Wireless communication apparatus, namely, wireless communication devices for voice, date or image transmission; Remote multi switches; Oscillation sensor devices, namely, sensors for detecting light, sound, motion; Multi-function touch buttons; Air pollution measuring devices; Sensor station; Measuring and control devices for air conditioning technology; Air quality measuring apparatus, namely, particle counters; Dust measuring apparatus, namely, particle counters; Remote controls for controlling electronic products; Weight scales not for medical purposes; Home network devices; Measuring apparatus not for medical purposes, namely, rain gauges, bevels, digitizers; Electronic security system for home network; Modems; Home automation device; Wireless routers; Downloadable smart phone application (software); Antennas for wireless communications apparatus; Remote air conditioning control devices; Telemetric apparatus and instruments, namely, wireless Internet devices which provide telematic services and have a cellular phone function; Remote control telemetering machines and apparatus; Mobile phones; Digital audio interface apparatus; Telecommunication machines and implements, namely, telecommunications transmitters; Wireless audio/video receivers; Telecommunication converters; Wireless communication apparatus; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Oscillation sensor devices; Computer software; Computer hardware modules for use in internet of things electronic devices; Air measuring apparatus; Dust measuring apparatus; Measuring apparatus not for medical purposes; Automatic control apparatus and instruments; Light switches; Electric power distribution apparatus; Apparatus for improving power efficiency; Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; Lighting control apparatus; Apparatus for diagnosing electrical power installations; Apparatus for measuring/monitoring/analyzing electricity consumption; Electric wire and cable; Digital audio and video recorders and players; Speaker systems; Electric audio and visual apparatus and instruments; Handheld multimedia players; Telemetric apparatus and instruments; Telecommunication machines and implements; Remote control apparatus for controlling lighting; Digital electronic controllers; Plugs; Sockets, plugs and other contacts (electric connectors); Solar cell wafer; Modules for photovoltaic power generation; Solar wafers; Solar batteries; Crystalline silicon solar power cells; Solar cell plates; Solar cell panels; Solar power panel for generation; Solar panels for electricity generation; Solar panels for the production of electricity; Inverter used in solar power generation; Accumulators for photovoltaic power; Electric control devices for heating and energy management; Computer application software; Downloadable computer software applications; Operating system program for smart TV; Operating system program for smart phones; Multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; Application software for Televisions; Application software for smart phone; Computer programs for accessing, browsing and searching online databases; Computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; Computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; Computer software for the remote control of security apparatus; Computer software for the remote control of office machines and equipment; Computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; Computer software for the remote control of telephone sets and radiotelephony sets; Computer software and firmware used to allow electronic devices to share data and communicate with each other; Computer operating system software; Electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; Software for network and device security; Computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; Software for mobile device managementClass 009 for Smart phones; Portable communications apparatus, namely, telephone handsets, walkie-talkies, satellite telephones and personal digital assistants; LCD display for mobile phones; LCD display modules for mobile phones; Semiconductor chips; Mobile application processors; Wearable Smart phones; Tablet PC; Computer; Printers for use with computers; Portable computers; Notebook PC; Computer monitors; Television monitors for commercial purpose; Digital Signage; Wearable Computer; Television receivers; Display for television receivers; Display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; Headset; Wireless headset for mobile phones; Ear phones; Computer network attached storage device; Liquid crystal protective film for smart phones; Downloadable smart phone ringtones; Power supplies for smart phones; Optical disc player; Blu ray player; Mobile phones cases; Flip cover for mobile phones; Tablet computers cases; Flip cover for tablet computers; Mouse being a computer peripheral; Keyboards; blank USB flash drives; Universal serial bus (USB) Dongles being wireless network adapters; Digital set top boxes; Gyro sensors using GPS functions; Motion detectors; Invader sensors, namely, motion detectors; Privacy protection sensors, namely, alarm sensors; Alarm sensors for refrigerators; Alarm sensors for washing machines; Range finders; electronic devices which detect the presence of occupants and control the lighting system accordingly; object detecting sensor composed of chemical and heat sensors for the detection of explosives; Sensor controllers; Pressure sensors; Sensors being parts of gesture, temperature measuring instruments; Window opening and closing detecting sensors; Door opening and closing detecting sensors; remote control starters for smart phones; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons being parts for smart phones; Sensor station in the nature of a motion detector control panel; Audio speakers; Digital door locks; Remote controls for controlling electronic products in the nature of televisions, stereos, microwave ovens, refrigerators; Home network devices, namely, virtual private network hardware; Electronic security system for home network comprising software and hardware for providing picture, video, alarm status, building plans, and other information to a remote station; Home automation device comprising wireless and wired controllers, controlled devices, and software for lighting, HVAC, security, safety and other home and office monitoring and control applications; Interfaces and peripheral devices for computers; Cloud server; Server for home network system; Server for home automation; Digital audio interface apparatus, namely, audio-receivers; Wireless communication apparatus, namely, wireless communication devices for voice, date or image transmission; Remote multi switches; Oscillation sensor devices, namely, sensors for detecting light, sound, motion; Air pollution measuring devices; Measuring and control devices for air conditioning technology; Air quality measuring apparatus, namely, particle counters; Dust measuring apparatus, namely, particle counters; Weight scales not for medical purposes; Measuring apparatus not for medical purposes, namely, rain gauges, bevels, digitizers; Modems; Wireless routers; Antennas for wireless communications apparatus; Remote air conditioning control devices; Telemetric apparatus and instruments, namely, wireless Internet devices which provide telematic services and have a cellular phone function; Remote control telemetering machines and apparatus; Mobile phones; Telecommunication machines and implements, namely, telecommunications transmitters; Telecommunication converters; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software; Computer hardware modules for use in internet of things electronic devices
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 402015005486 filed 07/22/2015]. 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.

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. 40-2015-0054860. REMARKS: Applicant has submitted argument in response to the 2(d) likelihood of confusion refusal, amended the identification of goods, 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: 09/26/2016
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: 86837226
Internet Transmission Date: Mon Sep 26 16:20:20 EDT 2016
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201609261620206
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