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. 87808072 PARASITE EVE(Standard Characters, see http://uspto.report/TM/87808072/mark.png) has been amended as follows:

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

Applicant has amended and specified further its goods to obviate Likelihood of Confusion.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts; electronic memory devices; electronic control apparatus; programmed-data-carrying electronic circuits; wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards; video films
Original Filing Basis:
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[ Latvia application number M-17-1198 filed 08/25/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer hardware; computer software; Computer software, namely, downloadable computer software for word processing, computer software for document and database management, for application and database integration, for producing financial models, for use as a spreadsheet, for authorizing access to databases, for creating searchable databases of information and data, for use in customer relationship management (CRM), to automate data warehousing, and for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Communications software for connecting computer network users, global computer networks, computer software for controlling self-service terminals, for administration of computer networks, for wireless content delivery, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; electronic data processing equipment; Computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; computer networking and data communications equipment; Computer software, namely, computer software for encryption, computer software development tools, computer operating software, computer graphics software, computer game software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; computer components and parts; computer peripherals; electronic memory devices; electronic data processing apparatus; electronic control apparatus; computer networking and data communications equipment, namely, computer networking hardware, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs; programmed-data-carrying electronic circuits; Computer components and parts, namely, electronic components for computers; wires for communication; electronic computer memory devices; electronic control apparatus in the nature of electrical controlling devices and computer keyboard controllers; programmed-data-carrying; video films, namely, video recordings featuring art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law electronic circuits; electric wires for communication; electrodes; telephones; video films; aerials; batteries; micro processors; keyboardsClass 009 for Computer hardware; Computer software, namely, downloadable computer software for word processing, computer software for document and database management, for application and database integration, for producing financial models, for use as a spreadsheet, for authorizing access to databases, for creating searchable databases of information and data, for use in customer relationship management (CRM), to automate data warehousing, and for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Communications software for connecting computer network users, global computer networks, computer software for controlling self-service terminals, for administration of computer networks, for wireless content delivery, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; Computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software, namely, computer software for encryption, computer software development tools, computer operating software, computer graphics software, computer game software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; computer peripherals; electronic data processing apparatus; computer networking and data communications equipment, namely, computer networking hardware, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs; Computer components and parts, namely, electronic components for computers; electronic computer memory devices; electronic control apparatus in the nature of electrical controlling devices and computer keyboard controllers; programmed-data-carrying; video films, namely, video recordings featuring art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law electronic circuits; electric wires for communication; electrodes; telephones; aerials; batteries; micro processors; keyboards
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 [ Latvia application number M-17-1198 filed 08/25/2017]. 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 and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper; cardboard; printed publications; printed matter; computer printers (Inking ribbons for -); bookbinding materials; books; adhesives for stationery or household purposes; artists' paint brushes; music sheets; music scores; periodical magazines; photographs; stationery and educational supplies; typewriters; Instructional and teaching material (except apparatus); plastic materials for packaging; printing blocks
Original Filing Basis:
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[ Latvia application number M-17-1198 filed 08/25/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Paper; cardboard; printed publications; printed publications and printed matter, namely, printed certificates, booklets, coupons, lectures, leaflets, paper signs, manuals, curricula, newsletters, informational cards and brochures in the fields of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; printed matter; Inking Ribbons for computer printers; computer printers (Inking ribbons for -); bookbinding materials; books in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; books; adhesives for stationery or household purposes; artists' paint brushes; music sheets; printed music scores on sheets; music scores; periodical magazines in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; periodical magazines; photographs; stationery and educational supplies, namely, blank note books and school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue for stationery or household use and book marks; stationery and educational supplies; typewriters; printed instructional and teaching material, except apparatus, namely in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; Instructional and teaching material (except apparatus); plastic materials, namely, bags, bubble packs and films for packaging; plastic materials for packaging; printing blocksClass 016 for Paper; cardboard; printed publications and printed matter, namely, printed certificates, booklets, coupons, lectures, leaflets, paper signs, manuals, curricula, newsletters, informational cards and brochures in the fields of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; Inking Ribbons for computer printers; bookbinding materials; books in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; adhesives for stationery or household purposes; artists' paint brushes; music sheets; printed music scores on sheets; periodical magazines in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; photographs; stationery and educational supplies, namely, blank note books and school supply kits containing various combinations of selected school supplies, namely, writing instruments, pens, pencils, mechanical pencils, erasers, markers, crayons, highlighter pens, folders, notebooks, paper, protractors, paper clips, pencil sharpeners, writing grips, glue for stationery or household use and book marks; typewriters; printed instructional and teaching material, except apparatus, namely in the field of art, music and artistic performances, entertainment, fashion, sports, culture, general human interest, film production, languages, science and technology, law; plastic materials, namely, bags, bubble packs and films for packaging; printing blocks
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 [ Latvia application number M-17-1198 filed 08/25/2017]. 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 and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 028 for Games; playthings; gymnastic articles not included in other classes
Original Filing Basis:
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[ Latvia application number M-17-1198 filed 08/25/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Games; Games and playthings, namely, board games, dice games, tabletop games, action target games, party games, puzzles, playing cards and card games, mechanical toys, parlor games, stuffed toys, toy construction kits, toy vehicles? gymnastic and sporting articles not included in other classes, namely, springboards, appliances for gymnastics, athletic supporters, protective supports for shoulders and elbows, sleds, weight lifting belts, athletic tape, waist trimmer exercise belts; playthings; gymnastic articles not included in other classesClass 028 for Games and playthings, namely, board games, dice games, tabletop games, action target games, party games, puzzles, playing cards and card games, mechanical toys, parlor games, stuffed toys, toy construction kits, toy vehicles? gymnastic and sporting articles not included in other classes, namely, springboards, appliances for gymnastics, athletic supporters, protective supports for shoulders and elbows, sleds, weight lifting belts, athletic tape, waist trimmer exercise belts
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 [ Latvia application number M-17-1198 filed 08/25/2017]. 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 and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
JONATHAN G. MORTON
MORTON & ASSOCIATES LLP
246 WEST BROADWAY
NEW YORK
New York
US
10013

Proposed:
JONATHAN G. MORTON of Morton & Associates LLP, having an address of
246 West Broadway New York, New York 10013
United States
jgm@moas.com;trademark.desk@moas.com
212-468-5483
212-504-0888
The docket/reference number is 14582/2018 .



ADDITIONAL STATEMENTS
Miscellaneous Statement
Applciant is still awaiting for foreign registration certificate.


SIGNATURE(S)
Response Signature
Signature: /Jonathan G. Morton/     Date: 10/30/2018
Signatory's Name: Jonathan G. Morton
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-468-5483

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.

Mailing Address:    JONATHAN G. MORTON
   Morton & Associates LLP
   246 West Broadway
   New York, New York 10013
        
Serial Number: 87808072
Internet Transmission Date: Tue Oct 30 22:37:41 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2018103022374121
1393-87808072-610401f9396c4fc7a948e7c571
b034a963afb7b86ef8f288f2a7f2396eaed1ce-N
/A-N/A-20181029034401420646