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)

---

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. 87938477 MEITU (Stylized and/or with Design, see http://uspto.report/TM/87938477/mark.png) has been amended as follows:

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

The Examining Attorney has issued a likelihood of confusion refusal of applicant’s mark MEITU in connection with class 035, namely, “dvertising planning; Advertising services; Commercial administration of the licensing of the goods and services of others; Commercial information and advice for consumers in the choice of products and services; Compilation of information into computer databases; Computerized on-line ordering featuring general consumer merchandise; Design of advertising materials; Import-export agency services; Marketing services; Marketing in the framework of software publishing; Pay per click advertising; Production of advertising matter and commercials; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; Providing business information via a web site; Provision of an on-line marketplace for buyers and sellers of goods and services; Rental of advertising space on web sites; Rental of advertising time on communication media; Sales promotion for others; Search engine optimization for sales promotion; Talent management services for actors and models; Updating and maintenance of data in computer databases; Web site traffic optimization; Wholesale and retail store services featuring cell phones, cell phone parts, cell phone accessories, cell phone batteries, cell phone chargers, and cell phone cases; Wholesale and retail store services featuring computers, computer hardware, computer peripherals and computer accessories; Business management of performing artists; On-line advertising on a computer network; On-line retail store services featuring a wide variety of consumer goods of others.”

 

The Examining Attorney cites the following marks:

 

Reg. No. 5013870 – “Compilation of information into computer databases; updating and maintenance of data in computer databases; provision of an on-line marketplace for buyers and sellers of goods and services; Export and import agencies; Sales promotion; Business management and enterprise organization consultancy; Marketing services; personnel management consultancy; sponsorship search”

 

Reg. No. 4944357 – “On-line retail store services featuring a wide variety of consumer goods of others; On-line retail store services featuring hand-made art and gifts”

 

Reg No. 4919502 – “Compilation of information into computer databases; updating and maintenance of data in computer databases; provision of an on-line marketplace for buyers and sellers of goods and services; Export and import agencies; Sales promotion; Business management and enterprise organization consultancy; Marketing services; personnel management consultancy; sponsorship search”

 

Reg. No. 4910049 – (the relevant goods) “Computer application software for mobile phones, namely, software for use in database management, use in electronic storage of data; Computer e-commerce software to allow users to perform electronic business transactions via a global computer network; Electronic publications, namely, e-zines featuring recommendations of hotels, restaurants, movies, traveling, cosmetology and hairdressing recorded on computer media”

 

Regarding the first three registrations, the Examining Attorney argues that the services are highly related and partially identical to applicant’s services because each includes “online retail store, shopping, or marketplace services,” and the “ancillary business and marketing services” provided in connection therewith.

 

The Examining Attorney also argues that a finding of likelihood of confusion as to any good or services in a class must be found for the entire class.

 

This later statement suggests that there are services in applicant’s class 035 that are not related to the services of the cited registrations.  However, the Examining Attorney has not specified them.

 

Therefore, applicant attempts to amend the services to delete services relating to “online retail store, shopping, or marketplace services,” and the “ancillary business and marketing services” provided in connection therewith.

 

 

Regarding U.S. Reg. No. 4910049, the Examiner argues that the goods are for performing e-commerce software electronic business transactions and could be a component or means of access for the described online retail store services.

 

In response, applicant amends class 035 as follows:

 

“Commercial administration of the licensing of the goods and services of others; Commercial information and advice for consumers in the choice of products and services; Design of advertising materials; Talent management services for actors and models; Business management of performing artists.”

 

As amended applicant’s services do not involve “online retail store, shopping, or marketplace services.”

 

Where an overlap of goods/services in dual use registrations is de minimis, the evidence suggests that the goods/services are not related.  In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063-1064 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (C.C.P.A. 1982)) (the very small number of such dual use registrations does nothing to counter Coors’ showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark).

 

 

According to a search of the USPTO database, there are 41,768 third-party use-based registrations that identify any of the following services: “Compilation of information into computer databases; updating and maintenance of data in computer databases; provision of an on-line marketplace for buyers and sellers of goods and services; Export and import agencies; Sales promotion; Business management and enterprise organization consultancy; Marketing services; personnel management consultancy; sponsorship search.”  See attached.

 

None of these registrations also identify “Commercial administration of the licensing of the goods and services of others.”  See attached.

 

Only 10 of these registrations also identify “commercial information and advice for consumers in the choice of products and services.” See attached.

 

Only 395 of these registrations also identify “design of advertising materials,” or .9%.  See attached.

 

None of these registrations identify “Talent management services for actors and models.” See attached.

 

Only 83 of these registrations also identify “business management of performing artists,” or .1%.  See attached.

 

Based on these TESS results, applicant’s remaining services are not related to the services of the registrant, and confusion is not likely.

EVIDENCE
Evidence in the nature of TESS search results has been attached.
Original PDF file:
evi_10911224163-20190227075754917230_._Meitu_evid1.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_10911224163-20190227075754917230_._Meitu_evid2.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_10911224163-20190227075754917230_._Meitu_evid3.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_10911224163-20190227075754917230_._Meitu_evid4.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_10911224163-20190227075754917230_._Meitu_evid5.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_10911224163-20190227075754917230_._Meitu_evid6.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising planning; Advertising services; Commercial administration of the licensing of the goods and services of others; Commercial information and advice for consumers in the choice of products and services; Compilation of information into computer databases; Computerized on-line ordering featuring general consumer merchandise; Design of advertising materials; Import-export agency services; Marketing services; Marketing in the framework of software publishing; Pay per click advertising; Production of advertising matter and commercials; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; Providing business information via a web site; Provision of an on-line marketplace for buyers and sellers of goods and services; Rental of advertising space on web sites; Rental of advertising time on communication media; Sales promotion for others; Search engine optimization for sales promotion; Talent management services for actors and models; Updating and maintenance of data in computer databases; Web site traffic optimization; Wholesale and retail store services featuring cell phones, cell phone parts, cell phone accessories, cell phone batteries, cell phone chargers, and cell phone cases; Wholesale and retail store services featuring computers, computer hardware, computer peripherals and computer accessories; Business management of performing artists; On-line advertising on a computer network; On-line retail store services featuring a wide variety of consumer goods of others
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[ Hong Kong application number 304510881 filed 04/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Advertising planning; Commercial administration of the licensing of the goods and services of others; Advertising services; Commercial information and advice for consumers in the choice of products and services; Design of advertising materials; Talent management services for actors and models; Compilation of information into computer databases; Business management of performing artists; Computerized on-line ordering featuring general consumer merchandise; Import-export agency services; Marketing services; Marketing in the framework of software publishing; Pay per click advertising; Production of advertising matter and commercials; Promoting the goods and services of others by means of operating an on-line shopping mall with links to the retail web sites of others; Providing business information via a web site; Provision of an on-line marketplace for buyers and sellers of goods and services; Rental of advertising space on web sites; Rental of advertising time on communication media; Sales promotion for others; Search engine optimization for sales promotion; Updating and maintenance of data in computer databases; Web site traffic optimization; Wholesale and retail store services featuring cell phones, cell phone parts, cell phone accessories, cell phone batteries, cell phone chargers, and cell phone cases; Wholesale and retail store services featuring computers, computer hardware, computer peripherals and computer accessories; On-line advertising on a computer network; On-line retail store services featuring a wide variety of consumer goods of othersClass 035 for Commercial administration of the licensing of the goods and services of others; Commercial information and advice for consumers in the choice of products and services; Design of advertising materials; Talent management services for actors and models; Business management of performing artists
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 [ Hong Kong application number 304510881 filed 04/30/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Taiwan registration number 01963320 registered 01/01/2019 with a renewal date of __________ and an expiration date of 12/31/2028 ], 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:
FRU0-10911224163-075754917_._Taiwan_trademark_Certificate_No._107026752.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU0-10911224163-075754917_._Translation_of_Taiwan_trademark_Certificate_No.__107026752.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Burglar alarm installation and repair; Clock and watch repair or maintenance; Installation, maintenance and repair of computer hardware; Installation, maintenance and repair of cell phone related hardware; Motor vehicle maintenance and repair; Office machines and equipment installation, maintenance and repair; Providing information related to the installation, maintenance and repair of cell phones; Repair or maintenance of photographic machines and apparatus; Repair or maintenance of video frequency machines and apparatus; Telephone installation and repair; Vehicle battery charging; Vehicle breakdown repair services
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[ Hong Kong application number 304510881 filed 04/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 037 for Burglar alarm installation and repair; Clock and watch repair or maintenance; Installation, maintenance and repair of computer hardware; Installation, maintenance and repair of cell phone related hardware; Motor vehicle maintenance and repair; Office machines and equipment installation, maintenance and repair; Providing information related to the installation, maintenance and repair of cell phones; Repair or maintenance of photographic machines and apparatus; Repair or maintenance of video frequency machines and apparatus; Telephone installation and repair; Vehicle battery charging; Vehicle breakdown repair services
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 [ Hong Kong application number 304510881 filed 04/30/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Taiwan registration number 01963320 registered 01/01/2019 with a renewal date of __________ and an expiration date of 12/31/2028 ], 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:
FRU1-10911224163-075754917_._Taiwan_trademark_Certificate_No._107026752.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2
Original PDF file:
FRU1-10911224163-075754917_._Translation_of_Taiwan_trademark_Certificate_No.__107026752.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant has a bona fide and effective industrial or commercial establishment in Taiwan


SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /john alumit/      Date: 02/27/2019
Signatory's Name: John Alumit
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 8182444861


Response Signature
Signature: /john alumit/     Date: 02/27/2019
Signatory's Name: John Alumit
Signatory's Position: Attorney of Record, California bar member

Signatory's Phone Number: 818-244-4861

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: 87938477
Internet Transmission Date: Wed Feb 27 08:13:58 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201902270813584
07530-87938477-620e3a148e82f58a3220bdee3
af0764f9a2e98451bdf2e72a969fe4129ac4155d
1-N/A-N/A-20190227075754917230