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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87628828 APPLE(Standard Characters, see http://uspto.report/TM/87628828/mark.png) has been amended as follows:

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

Please see attached Remarks.

EVIDENCE
Evidence in the nature of Remarks has been attached.
Original PDF file:
evi_68966749-20180622173021982664_._ice_Action_Response_text_for_APPLE_and_Apple_Logo_in_Class_9.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computers; computer hardware; handheld computers; tablet computers; telecommunications apparatus and instruments; telephones; mobile telephones; smartphones; wireless communication devices for the transmission of voice, data, images, audio, video, and multimedia content; network communication apparatus; handheld digital electronic devices capable of providing access to the internet and for the sending, receiving, and storing telephone calls, electronic mail, and other digital data; wearable computer hardware; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and storing of telephone calls, electronic mail, and other digital data; smartwatches; wearable activity trackers; electronic book readers; computer software; computer software for setting up, configuring, operating and controlling computers, computer peripherals, mobile devices, mobile telephones, smartwatches, wearable devices, earphones, headphones, set top boxes, audio and video players and recorders, home theatre systems, and entertainment systems; application development software; computer game software; downloadable pre-recorded audio, video and multimedia content; computer peripheral devices; peripheral devices for computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; wearable peripherals for use with computers, mobile telephones, mobile electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; biometric identification and authentication apparatus; accelerometers; altimeters; distance measuring apparatus; distance recording apparatus; pedometers; monitors, display screens, virtual and augmented reality displays and controllers; optical goods; optical apparatus and instruments; cameras; flashes for cameras; keyboards, mice, mouse pads, printers, disk drives, and hard drives; sound recording and reproducing apparatus; digital audio and video players and recorders; audio speakers; audio amplifiers and receivers; voice recording and voice recognition apparatus; earphones; headphones; microphones; set top boxes; radios; radio transmitters and receivers; global positioning systems (GPS devices); navigational instruments; remote controls for controlling computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, televisions, set top boxes, speakers, amplifiers, home theatre systems, and entertainment systems; wearable devices for controlling computers, mobile telephones, mobile electronic devices, smart watches, earphones, headphones, audio and video players and recorders, televisions, set top boxes, speakers, amplifiers, home theatre systems, and entertainment systems; data storage apparatus; batteries; battery chargers; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, and adapters for use with computers, mobile telephones, handheld computers, computer peripherals, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, and set top boxes; interactive touchscreens; interfaces for computers, computer screens, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, televisions, set top boxes, and audio and video players and recorders; parts and accessories for computers, computer peripherals, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, televisions, and set top boxes; covers, bags, cases, sleeves, straps and lanyards for computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; electronic agendas; dictating machines; measuring apparatus; remote controls
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: Computers; computer hardware; computer hardware in the nature of consumer electronic devices; handheld computers; telecommunications apparatus and instruments; tablet computers; telecommunications apparatus and instruments, namely, wireless receivers in the form of jewelry, and speakers, microphones, and headsets for use with mobile phones; telephones; mobile telephones; smartphones; network communication apparatus; wireless communication devices for the transmission of voice, data, images, audio, video, and multimedia content; network communication apparatus, namely, mobile and wearable digital electronic devices for the sending and receiving of text, data, audio, image, and video files across networks; wearable computer hardware; handheld digital electronic devices capable of providing access to the internet and for the sending, receiving, and storing telephone calls, electronic mail, and other digital data; wearable computer hardware in the nature of wearable computers and consumer electronic devices; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and storing of telephone calls, electronic mail, and other digital data; smartwatches; wearable activity trackers; computer software; electronic book readers; computer software, namely, a full line of computer software for business, home, education, entertainment, wellness, and developer use; computer software for collecting data for medical research; computer software for collecting, analyzing, and reporting data on physiological health; downloadable pre-recorded audio, video and multimedia content; computer software for setting up, configuring, operating and controlling computers, computer peripherals, mobile devices, mobile telephones, smartwatches, wearable devices, earphones, headphones, set top boxes, audio and video players and recorders, home theatre systems, and entertainment systems; application development software; computer game software; downloadable audio files and multimedia files featuring musical, video, and audio-video entertainment; computer peripheral devices; computer peripheral devices, namely, input devices for computers and handheld mobile digital electronic devices; peripheral devices for computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; wearable peripherals for use with computers, mobile telephones, mobile electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; biometric identification and authentication apparatus; accelerometers; altimeters; optical goods; distance measuring apparatus; optical apparatus and instruments; distance recording apparatus; pedometers; monitors, display screens, virtual and augmented reality displays and controllers; optical goods, namely, optical disc drives, optical scanners, and optical readers; cameras; flashes for cameras; keyboards, mice, mouse pads, printers, disk drives, and hard drives; sound recording and reproducing apparatus; voice recording and voice recognition apparatus; digital audio and video players and recorders; audio speakers; audio amplifiers and receivers; digital voice recorders and electronic voice recognition apparatus; earphones; headphones; microphones; set top boxes; navigational instruments; radios; radio transmitters and receivers; global positioning systems (GPS devices); data storage apparatus; electric navigational instruments; electronic navigational and positioning apparatus and instruments; remote controls for controlling computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, televisions, set top boxes, speakers, amplifiers, home theatre systems, and entertainment systems; wearable devices for controlling computers, mobile telephones, mobile electronic devices, smart watches, earphones, headphones, audio and video players and recorders, televisions, set top boxes, speakers, amplifiers, home theatre systems, and entertainment systems; data storage apparatus in the nature of computer hardware, consumer electronic devices, computer hardware for data backup, computer memory hardware, mobile and wearable digital electronic devices for the storage of text, data, audio, image, and video files, set top boxes, and blank computer storage media; batteries; parts and accessories for computers, computer peripherals, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, televisions, and set top boxes; battery chargers; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, and adapters for use with computers, mobile telephones, handheld computers, computer peripherals, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, and set top boxes; interactive touchscreens; interfaces for computers, computer screens, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, televisions, set top boxes, and audio and video players and recorders; covers, bags, cases, sleeves, straps and lanyards for computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; remote controls; electronic agendas; dictating machines; measuring apparatus; remote controls for computers, smartwatches, mobile phones, portable and handheld digital electronic devices, televisions, set top boxes, audio, video, and media players, game players, entertainment systems, home theater systems, video monitors, home appliances, and consumer electronic devices and displaysClass 009 for Computers; computer hardware; computer hardware in the nature of consumer electronic devices; handheld computers; tablet computers; telecommunications apparatus and instruments, namely, wireless receivers in the form of jewelry, and speakers, microphones, and headsets for use with mobile phones; telephones; mobile telephones; smartphones; wireless communication devices for the transmission of voice, data, images, audio, video, and multimedia content; network communication apparatus, namely, mobile and wearable digital electronic devices for the sending and receiving of text, data, audio, image, and video files across networks; handheld digital electronic devices capable of providing access to the internet and for the sending, receiving, and storing telephone calls, electronic mail, and other digital data; wearable computer hardware in the nature of wearable computers and consumer electronic devices; wearable digital electronic devices capable of providing access to the internet, for sending, receiving and storing of telephone calls, electronic mail, and other digital data; smartwatches; wearable activity trackers; electronic book readers; computer software, namely, a full line of computer software for business, home, education, entertainment, wellness, and developer use; computer software for collecting data for medical research; computer software for collecting, analyzing, and reporting data on physiological health; computer software for setting up, configuring, operating and controlling computers, computer peripherals, mobile devices, mobile telephones, smartwatches, wearable devices, earphones, headphones, set top boxes, audio and video players and recorders, home theatre systems, and entertainment systems; application development software; computer game software; downloadable audio files and multimedia files featuring musical, video, and audio-video entertainment; computer peripheral devices; computer peripheral devices, namely, input devices for computers and handheld mobile digital electronic devices; peripheral devices for computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; wearable peripherals for use with computers, mobile telephones, mobile electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; biometric identification and authentication apparatus; accelerometers; altimeters; distance measuring apparatus; distance recording apparatus; pedometers; monitors, display screens, virtual and augmented reality displays and controllers; optical goods, namely, optical disc drives, optical scanners, and optical readers; cameras; flashes for cameras; keyboards, mice, mouse pads, printers, disk drives, and hard drives; sound recording and reproducing apparatus; digital audio and video players and recorders; audio speakers; audio amplifiers and receivers; digital voice recorders and electronic voice recognition apparatus; earphones; headphones; microphones; set top boxes; radios; radio transmitters and receivers; global positioning systems (GPS devices); electric navigational instruments; electronic navigational and positioning apparatus and instruments; remote controls for controlling computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, televisions, set top boxes, speakers, amplifiers, home theatre systems, and entertainment systems; wearable devices for controlling computers, mobile telephones, mobile electronic devices, smart watches, earphones, headphones, audio and video players and recorders, televisions, set top boxes, speakers, amplifiers, home theatre systems, and entertainment systems; data storage apparatus in the nature of computer hardware, consumer electronic devices, computer hardware for data backup, computer memory hardware, mobile and wearable digital electronic devices for the storage of text, data, audio, image, and video files, set top boxes, and blank computer storage media; batteries; battery chargers; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, and adapters for use with computers, mobile telephones, handheld computers, computer peripherals, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, audio and video players and recorders, and set top boxes; interactive touchscreens; interfaces for computers, computer screens, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, televisions, set top boxes, and audio and video players and recorders; covers, bags, cases, sleeves, straps and lanyards for computers, mobile telephones, mobile electronic devices, wearable electronic devices, smartwatches, earphones, headphones, set top boxes, and audio and video players and recorders; electronic agendas; dictating machines; measuring apparatus; remote controls for computers, smartwatches, mobile phones, portable and handheld digital electronic devices, televisions, set top boxes, audio, video, and media players, game players, entertainment systems, home theater systems, video monitors, home appliances, and consumer electronic devices and displays
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 [ Jamaica application number 72198 filed 03/30/2017]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Karen Marie Kitterman/     Date: 06/22/2018
Signatory's Name: Karen Marie Kitterman
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 669-227-7171

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: 87628828
Internet Transmission Date: Fri Jun 22 19:46:00 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201806221946002490
73-87628828-61053fd2218ec5e4d9aa662158ca
7b33104ac6fb9b03143c432a809a16c5a8ad-N/A
-N/A-20180622173021982664