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. 86852646 20TH CENTURY FOX (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86852646/large) has been amended as follows:

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

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:  Twentieth Century Fox Film Corporation

 

Application Serial No.:  86852646

 

Filing Date:  December 17, 2015

 

Mark:   20th CENTURY FOX (Stylized) and Design

 

Examining Attorney:  Laurie Mayes, Esq.

 

Law Office:  101

 

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APPLICANT’S RESPONSE TO OFFICE ACTION

 

Applicant Twentieth Century Fox Film Corporation (“Applicant”), by and through its attorneys, respectfully submits this Response to Office Action in connection with Application Serial No. 86852646 (the “Application”).  Applicant is responding to the Priority Action dated January 19, 2016 (the “Office Action”). 

 

Applicant responds as follows to the one issue raised by the Office Action:

 

Identification of Services

 

The Office Action states that certain wording in the Application’s identification of services is deemed to be indefinite and in need of further clarification, or reclassification.  Applicant hereby provides the additional detail requested by the Examining Attorney and/or deletes the objected items, and amends the identification to read as follows:

 

Computer programming services; computer services, namely, providing on-line news and information regarding scientific information in the field of environmental protection, computer animation services, namely, animation design services, computer graphics services, data encryption services; providing on-line searchable computer databases regarding scientific information in the field of environmental protection; hosting of digital content on the Internet; application service provider featuring software to enable uploading, posting, showing, displaying, sharing or otherwise providing electronic media or information over the Internet or other communications network; design and development of computer hardware and software; website services, namely, hosting and designing websites for others, providing a website allowing users to upload and download music and to purchase downloadable music, providing a website that features technology that enables the secure exchange of information by users, providing a website featuring technology that enables users to upload and share user-generated videos on a wide variety of topics and subjects.

 

In addition, the Examining Attorney states that the type of directories in the item “providing on-line directories” must be clarified and properly classified.  The Examining Attorney suggested “providing on-line directories, namely, online commercial information directories on the Internet” in Class 35.  Pursuant to TMEP §1402.08, Applicant requests to delete the objected item “providing on-line directories” from the Application and to move the suggested item “providing on-line directories, namely, online commercial information directories on the Internet” to Applicant’s co-pending application in Class 35 for the identical mark, Application Serial No. 86852634.

 

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Applicant respectfully submits that it has now satisfactorily resolved the one issue raised in the Office Action.  Accordingly, Applicant respectfully requests that, with the above amendments, the Application should now be approved for publication.

 

The Examining Attorney is invited to contact the undersigned with any remaining questions or concerns.

 

Respectfully submitted,

/Curtis Krechevsky/

 

Curtis Krechevsky

Cantor Colburn LLP

 

Attorneys for Applicant Twentieth Century Fox Film Corporation

Our Ref:  FEG3430TUS

 

Curtis Krechevsky, Esq.

Cantor Colburn LLP

20 Church Street

22^nd Floor

Hartford, Connecticut  06103-3207  U.S.A.

 

Phone:  860-286-2929

Fax:  860-286-0115

Email:  TM-CT@cantorcolburn.com

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services; computer services in the field of providing on-line news and information via the Internet; providing on-line directories, databases, and search engines; hosting of digital content on the Internet; on-line journals and blogs; application service provider; hosting of digital content on the Internet; design and development of computer hardware and software; website services
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.

Proposed:
Tracked Text Description: Computer services; Computer programming services; computer services in the field of providing on-line news and information via the Internet; computer services, namely, providing on-line news and information regarding scientific information in the field of environmental protection, computer animation services, namely, animation design services, computer graphics services, data encryption services; providing on-line directories, databases, and search engines; providing on-line searchable computer databases regarding scientific information in the field of environmental protection; hosting of digital content on the Internet; on-line journals and blogs; application service provider featuring software to enable uploading, posting, showing, displaying, sharing or otherwise providing electronic media or information over the Internet or other communications network; application service provider; design and development of computer hardware and software; hosting of digital content on the Internet; website services, namely, hosting and designing websites for others, providing a website allowing users to upload and download music and to purchase downloadable music, providing a website that features technology that enables the secure exchange of information by users, providing a website featuring technology that enables users to upload and share user-generated videos on a wide variety of topics and subjects; website servicesClass 042 for Computer programming services; computer services, namely, providing on-line news and information regarding scientific information in the field of environmental protection, computer animation services, namely, animation design services, computer graphics services, data encryption services; providing on-line searchable computer databases regarding scientific information in the field of environmental protection; hosting of digital content on the Internet; application service provider featuring software to enable uploading, posting, showing, displaying, sharing or otherwise providing electronic media or information over the Internet or other communications network; design and development of computer hardware and software; website services, namely, hosting and designing websites for others, providing a website allowing users to upload and download music and to purchase downloadable music, providing a website that features technology that enables the secure exchange of information by users, providing a website featuring technology that enables users to upload and share user-generated videos on a wide variety of topics and subjects
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.

SIGNATURE(S)
Response Signature
Signature: /Curtis Krechevsky/     Date: 04/05/2016
Signatory's Name: Curtis Krechevsky
Signatory's Position: Attorney of Record; Massachusetts State Bar Member

Signatory's Phone Number: (860) 286-2929

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: 86852646
Internet Transmission Date: Tue Apr 05 15:12:37 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201604051512374638
90-86852646-5502a84c20b113b36b81e01865d3
f69c3d1c082e8e26451497ac7c41d10575e72-N/
A-N/A-20160331104916363334