Response to Office Action

SATURN

Media-Saturn-Holding GmbH

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 87251332
LAW OFFICE ASSIGNED LAW OFFICE 102
MARK SECTION
MARK http://uspto.report/TM/87251332/mark.png
LITERAL ELEMENT SATURN
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 035
DESCRIPTION
Whole sale and retail store services featuring apparatus for receiving, recording, transmitting and reproducing of sounds images and electronically processed data, computer hardware and software, downloadable files, photographic equipment, film and optical equipment, blank and pre-recorded electronic data carriers, and computer and video games; business operation, business administration and office functions for companies which operate in large markets; procuring of contracts for the purchase and sale of goods and services; all foregoing services for third persons via electronic data networks and the Internet; and order placement services, namely, telephone order-taking services for others, order fulfillment services, and electronic processing of orders for others
FILING BASIS Section 1(b)
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 005147401
       FOREIGN REGISTRATION
       COUNTRY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
01/09/2008
       FOREIGN EXPIRATION DATE 06/20/2026
       DATE FOREIGN REGISTRATION
       RENEWED
        (if applicable)
01/18/2016
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 035
DESCRIPTION
Whole sale and retail store services featuring apparatus for receiving, recording, transmitting and reproducing of sounds images and electronically processed data, computer hardware and software, downloadable files, photographic equipment, film and optical equipment, blank and pre-recorded electronic data carriers, and computer and video games; business operation, business administration and office functions for companies which operate in large markets; procuring of contracts for the purchase and sale of goods and services; all foregoing services for third persons via electronic data networks and the Internet; and order placement services, namely, telephone order-taking services for others, order fulfillment services, and electronic processing of orders for others
FILING BASIS Section 44(d)
       FOREIGN APPLICATION COUNTRY
       INTENT TO
       PERFECT 44(d)
At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
DELETED FILING BASIS 1(b)
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 005147401
       FOREIGN REGISTRATION
       COUNTRY
European Union Trademark - EUTM
       FOREIGN REGISTRATION
       DATE
01/09/2008
       FOREIGN EXPIRATION DATE 06/20/2026
       DATE FOREIGN REGISTRATION
       RENEWED
        (if applicable)
01/18/2016
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU0-381121538-152330534_._EUTM-005147401_SATURN.pdf
       CONVERTED PDF FILE(S)
       (20 pages)
\\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0002.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0003.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0004.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0005.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0006.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0007.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0008.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0009.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0010.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0011.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0012.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0013.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0014.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0015.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0016.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0017.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0018.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0019.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0020.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\872\513\87251332\xml4\ROA0021.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
SIGNATURE SECTION
RESPONSE SIGNATURE /Ryan Fox/
SIGNATORY'S NAME Ryan Fox
SIGNATORY'S POSITION Associate Attorney, California bar member
SIGNATORY'S PHONE NUMBER 4153921960
DATE SIGNED 09/06/2017
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Sep 06 20:47:23 EDT 2017
TEAS STAMP USPTO/ROA-XX.XXX.XX.XX-20
170906204723157976-872513
32-510473e44a3a2cc416ffc3
5673f58cf8a7785e3fbedcd27
7763247489d68f9-N/A-N/A-2
0170906203923771260



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. 87251332 SATURN(Standard Characters, see http://uspto.report/TM/87251332/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Whole sale and retail store services featuring apparatus for receiving, recording, transmitting and reproducing of sounds images and electronically processed data, computer hardware and software, downloadable files, photographic equipment, film and optical equipment, blank and pre-recorded electronic data carriers, and computer and video games; business operation, business administration and office functions for companies which operate in large markets; procuring of contracts for the purchase and sale of goods and services; all foregoing services for third persons via electronic data networks and the Internet; and order placement services, namely, telephone order-taking services for others, order fulfillment services, and electronic processing of orders for others
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 005147401 registered 01/09/2008 with a renewal date of 01/18/2016 and an expiration date of 06/20/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 035 for Whole sale and retail store services featuring apparatus for receiving, recording, transmitting and reproducing of sounds images and electronically processed data, computer hardware and software, downloadable files, photographic equipment, film and optical equipment, blank and pre-recorded electronic data carriers, and computer and video games; business operation, business administration and office functions for companies which operate in large markets; procuring of contracts for the purchase and sale of goods and services; all foregoing services for third persons via electronic data networks and the Internet; and order placement services, namely, telephone order-taking services for others, order fulfillment services, and electronic processing of orders for others
Deleted Filing Basis: 1(b)
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 [ European Union Trademark - EUTM application number __________ filed __________ ]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 005147401 registered 01/09/2008 with a renewal date of 01/18/2016 and an expiration date of 06/20/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-381121538-152330534_._EUTM-005147401_SATURN.pdf
Converted PDF file(s) ( 20 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
Foreign Registration-18
Foreign Registration-19
Foreign Registration-20

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.

SIGNATURE(S)
Response Signature
Signature: /Ryan Fox/     Date: 09/06/2017
Signatory's Name: Ryan Fox
Signatory's Position: Associate Attorney, California bar member

Signatory's Phone Number: 4153921960

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: 87251332
Internet Transmission Date: Wed Sep 06 20:47:23 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20170906204723157
976-87251332-510473e44a3a2cc416ffc35673f
58cf8a7785e3fbedcd277763247489d68f9-N/A-
N/A-20170906203923771260


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