Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86330273 FOO FIGHTERS(Standard Characters, see http://tsdr.gov.uspto.report/img/86330273/large) has been amended as follows:

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

REMARKS

The identifications of goods and services have been amended to overcome the various objections raised by the Examining Attorney.

Applicant also notes that it intends to divide off some of the goods in Class 9 and some of the services in Class 41 under separate cover.

With the above, Applicant submits that all questions are now answered, and requests that the applications move forward to publication for opposition purposes.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 038 for (Based on 1(b)) Entertainment services; providing a website featuring non-downloadable audiovisual recordings featuring music and musical entertainers; entertainment services, namely, a series of television programs featuring music and musical entertainers; production of television programs; production of webisodes and videos featuring music and musical entertainers; production of web-based television programs featuring music and musical entertainers; providing a website featuring non-downloadable television programs or segments of television programs featuring music and musical entertainers; online journals featuring music, musical entertainers, and related television shows; blogs featuring music-related and musical entertainer-related television shows

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for (Based on 1(a)) Entertainment services, namely, live performances by a musical group; providing online information about music and musical entertainers and images of musical entertainers; entertainment services, namely, providing non-downloadable audiovisual recordings featuring music and musical entertainers; providing temporary use of online non-downloadable audiovisual recordings featuring music and musical entertainers via the internet and mobile communication devices; entertainment services, namely, providing non-downloadable audio recordings featuring music and musical entertainers; providing temporary use of online non-downloadable audio recordings featuring music and musical entertainers via the internet and mobile communication devices; blogs featuring music and musical entertainers
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 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/03/1995 and first used in commerce at least as early as 03/03/1995 , and is now in use in such commerce.

Proposed:
Tracked Text Description: (Based on 1(a)) Entertainment services, namely, live performances by a musical group; providing online information about music and musical entertainers and images of musical entertainers; entertainment services, namely, providing non-downloadable audiovisual recordings featuring music and musical entertainers; providing temporary use of online non-downloadable audiovisual recordings featuring music and musical entertainers via the internet and mobile communication devices; entertainment services, namely, providing non-downloadable audio recordings featuring music and musical entertainers; providing temporary use of online non-downloadable audio recordings featuring music and musical entertainers via the internet and mobile communication devices; blogs featuring music and musical entertainers; (Based on 1(b)) Entertainment services, namely, providing a website featuring non-downloadable audiovisual recordings featuring music and musical entertainers; entertainment services, namely, a series of television programs featuring music and musical entertainers; production of television programs; production of webisodes and videos featuring music and musical entertainers; production of web-based television programs featuring music and musical entertainers; providing a website featuring non-downloadable television programs or segments of television programs featuring music and musical entertainers; online journals featuring music, musical entertainers, and related television shows; blogs featuring music-related and musical entertainer-related television showsClass 041 for (Based on 1(a)) Entertainment services, namely, live performances by a musical group; providing online information about music and musical entertainers and images of musical entertainers; entertainment services, namely, providing non-downloadable audiovisual recordings featuring music and musical entertainers; providing temporary use of online non-downloadable audiovisual recordings featuring music and musical entertainers via the internet and mobile communication devices; entertainment services, namely, providing non-downloadable audio recordings featuring music and musical entertainers; providing temporary use of online non-downloadable audio recordings featuring music and musical entertainers via the internet and mobile communication devices; blogs featuring music and musical entertainers; (Based on 1(b)) Entertainment services, namely, providing a website featuring non-downloadable audiovisual recordings featuring music and musical entertainers; entertainment services, namely, a series of television programs featuring music and musical entertainers; production of television programs; production of webisodes and videos featuring music and musical entertainers; production of web-based television programs featuring music and musical entertainers; providing a website featuring non-downloadable television programs or segments of television programs featuring music and musical entertainers; online journals featuring music, musical entertainers, and related television shows; blogs featuring music-related and musical entertainer-related television shows
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 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/03/1995 and first used in commerce at least as early as 03/03/1995 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /lea/     Date: 04/01/2015
Signatory's Name: Lawrence E. Apolzon
Signatory's Position: Attorney of Record, New York State Bar Member

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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: 86330273
Internet Transmission Date: Wed Apr 01 20:35:55 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20150401203555927
508-86330273-53042de373b1dbf447f4dda73a1
dfa82cdcdd533cf698fd8e3a3f2b76ff52637e58
-N/A-N/A-20150401130647579776