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. 87945181 TOSHIBA (Stylized and/or with Design, see http://uspto.report/TM/87945181/mark.png) has been amended as follows:

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

This response is submitted in reply to the Office Action issued October 2, 2018.  The Office Action requested amendments to the goods and services identifications and a copy of the foreign registration and English translation pursuant to Section 44.

 

GOODS AND SERVICES IDENTIFICATIONS

 

In response to the request to amend the goods and services identifications, Applicant thanks the Examining Attorney for her guidance.  Applicant is submitting through the online response form a revised description of the goods and services.  In most cases, the revised description adopts the language kindly suggested by the Examining Attorney.  However, Applicant proposes some alternative language in connection with some items that differs somewhat from the Examining Attorney’s proposed language, but which Applicant believes meets the requirements for clarity.

FOREIGN REGISTRATION/BASIS FOR APPLICATION

 

The Examining Attorney also noted that the application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application with intent to perfect under Section 44(e).  Applicant wishes to maintain both filing bases at this time.  Applicant’s Japanese trademark application, on which the 44(d) priority claim is based, registered under Japanese Trademark Reg. No. 6105058 on December 7, 2018.  Applicant is submitting herewith a copy of the Japanese registration and its English translation signed by the translator.

CONCLUSION

 

Applicant notes that the Examining Attorney has searched the Office records and found no prior registered or pending mark that would bar registration of Applicant’s mark under Section 2(d). Upon submission of this response, it is therefore believed that this application will be in condition for publication once the Japanese registration is made of record. Such action is respectfully requested.     

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for telecommunication machines and apparatus; television receivers (TV sets); accessories for television receivers (TV sets); optical disc players; optical disc recorders; accessories for optical disc players; accessories for optical disc recorders; digital video players; digital video recorders; DVD players; DVD recorders; accessories for DVD players; accessories for DVD recorders; visual display units; accessories for visual display units; video screens; display monitors; display screens; electronic notice boards; digital signs; accessories for digital signs; digital signage monitors; digital signage display panels; audio devices that connects to television sets, optical disc players, optical disc recorders, DVD players, DVD recorders, or hard disk drive recorders for the primary purpose of amplifying audio signals; amplifiers; hard disk drives; hard disk drive recorders; accessories for hard disk drive recorders; computer hardware; computer software; computer programs, recorded; computer programs (downloadable software); computer network hubs; computer hardware and software for use in connecting, managing, controlling, monitoring and enabling communication among IoT (Internet of Things) devices over a network; computer hardware and software for use in controlling home automation; home automation remote control devices for use with the IoT (Internet of Things) devices for home security systems; computer hardware and software for providing personal assistant; electrical adapters; AC adaptors; battery chargers; batteries and cells; accumulators, electric; parts and accessories for telecommunication machines and apparatus; aerials; antennas; cabinets for telecommunication apparatus; loudspeakers; stands and racks for telecommunication machines and apparatus; hangers of metal for television receivers (TV sets); headphones; earphones; microphones; remote controls; remote controls for televisions; remote controls for optical disc players; remote controls for optical disc recorders; remote controls for DVD players; remote controls for DVD recorders; remote controls for hard disk drive recorders; 3D spectacles; 3D transmitters; computer network adapters
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[ Japan application number 2018-025424 filed 03/02/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: telecommunication machines and apparatus; telecommunication machines and apparatus, namely, telecommunication exchangers, cables, transmitters, television tuners; television receivers (TV sets); television receivers for TV sets; accessories for television receivers (TV sets); accessories for television receivers in the nature of rotating base for television sets; optical disc players; optical disc recorders; optical disc recorders for audio, video and computer data; accessories for optical disc players; accessories for optical disc recorders; digital video players; digital video recorders; DVD players; DVD recorders; accessories for DVD players; visual display units, namely, electronic display screens, remote controls, security control panels, wireless controllers to monitor and control the functioning of other electronic devices; accessories for DVD recorders; video screens; visual display units; wearable video display monitors; accessories for visual display units; voice display monitors; liquid crystal display monitors; display monitors; organic electro-luminescence display monitors; display screens; flat panel display screens; electronic notice boards; digital signs; accessories for digital signs; digital signage monitors; digital signage display panels; audio devices that connects to television sets, optical disc players, optical disc recorders for audio, video and computer data, DVD players, DVD recorders, or hard disk drive recorders, all of the foregoing for the primary purpose of amplifying audio signals; audio devices that connects to television sets, optical disc players, optical disc recorders, DVD players, DVD recorders, or hard disk drive recorders for the primary purpose of amplifying audio signals; amplifiers; hard disk drives; hard disk drive recorders; computer hardware; accessories for hard disk drive recorders; computer software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; computer operating programs, recorded; computer software; downloadable computer software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; computer programs, recorded; computer network hubs; computer programs (downloadable software); computer hardware and software for use in connecting, managing, controlling, monitoring and enabling communication among IoT (Internet of Things) devices over a network; computer hardware and software for use in controlling home automation; home automation remote controls for use with the IoT (Internet of Things) devices for home security systems; computer hardware and software for providing a personal assistant; home automation remote control devices for use with the IoT (Internet of Things) devices for home security systems; electrical adapters; computer hardware and software for providing personal assistant; AC adaptors; battery chargers; batteries and dry cells; accumulators, electric; batteries and cells; aerials; antennas; parts and accessories for telecommunication machines and apparatus; cabinets for telecommunication apparatus; loudspeakers; stands and racks for telecommunication machines and apparatus; hangers of metal for television receivers in the nature of mounts for television receivers; headphones; earphones; hangers of metal for television receivers (TV sets); microphones; remote controls for television tuners, digital signs; remote controls for televisions; remote controls for optical disc players; remote controls; remote controls for optical disc recorders; remote controls for DVD players; remote controls for DVD recorders; remote controls for hard disk drive recorders; 3D spectacles; 3D transmitters in the nature of 3D image transmitters; computer network adapters; 3D transmittersClass 009 for telecommunication machines and apparatus, namely, telecommunication exchangers, cables, transmitters, television tuners; television receivers for TV sets; accessories for television receivers in the nature of rotating base for television sets; optical disc players; optical disc recorders for audio, video and computer data; accessories for optical disc players; digital video players; digital video recorders; DVD players; DVD recorders; accessories for DVD players; visual display units, namely, electronic display screens, remote controls, security control panels, wireless controllers to monitor and control the functioning of other electronic devices; video screens; wearable video display monitors; voice display monitors; liquid crystal display monitors; organic electro-luminescence display monitors; flat panel display screens; electronic notice boards; digital signs; digital signage monitors; digital signage display panels; audio devices that connects to television sets, optical disc players, optical disc recorders for audio, video and computer data, DVD players, DVD recorders, or hard disk drive recorders, all of the foregoing for the primary purpose of amplifying audio signals; amplifiers; hard disk drives; hard disk drive recorders; computer hardware; computer software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; computer operating programs, recorded; downloadable computer software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; computer network hubs; computer hardware and software for use in connecting, managing, controlling, monitoring and enabling communication among IoT (Internet of Things) devices over a network; computer hardware and software for use in controlling home automation; home automation remote controls for use with the IoT (Internet of Things) devices for home security systems; computer hardware and software for providing a personal assistant; electrical adapters; AC adaptors; battery chargers; batteries and dry cells; accumulators, electric; aerials; antennas; cabinets for telecommunication apparatus; loudspeakers; stands and racks for telecommunication machines and apparatus; hangers of metal for television receivers in the nature of mounts for television receivers; headphones; earphones; microphones; remote controls for television tuners, digital signs; remote controls for televisions; remote controls for optical disc players; remote controls for optical disc recorders; remote controls for DVD players; remote controls for DVD recorders; remote controls for hard disk drive recorders; 3D spectacles; 3D transmitters in the nature of 3D image transmitters; computer network adapters
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 [ Japan application number 2018-025424 filed 03/02/2018]. 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 [ Japan registration number 6105058 registered 12/07/2018 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU0-42851130-110552427_._JP_Reg._Cert._and_English_translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for compilation and systemization of information into computer databases
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[ Japan application number 2018-025424 filed 03/02/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 035 for compilation and systemization of information into computer databases
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 [ Japan application number 2018-025424 filed 03/02/2018]. 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 [ Japan registration number 6105058 registered 12/07/2018 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU1-42851130-110552427_._JP_Reg._Cert._and_English_translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for repair or maintenance of telecommunication machines and apparatus; repair of television sets; repair of optical disc players; repair of optical disc recorders; repair of DVD players; repair of DVD recorders; repair of hard disk drive recorders; repair or maintenance of electronic machines and apparatus; repair or maintenance of visual display units; repair or maintenance of digital signs; repair of computer hardware; repair of loudspeakers
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[ Japan application number 2018-025424 filed 03/02/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 037 for repair or maintenance of telecommunication machines and apparatus; repair of television sets; repair of optical disc players; repair of optical disc recorders; repair of DVD players; repair of DVD recorders; repair of hard disk drive recorders; repair or maintenance of electronic machines and apparatus; repair or maintenance of visual display units; repair or maintenance of digital signs; repair of computer hardware; repair of loudspeakers
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 [ Japan application number 2018-025424 filed 03/02/2018]. 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 [ Japan registration number 6105058 registered 12/07/2018 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU2-42851130-110552427_._JP_Reg._Cert._and_English_translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for providing information about television broadcasting and television programmes
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[ Japan application number 2018-025424 filed 03/02/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: providing information about television broadcasting and television programmes; providing information about television broadcasting and providing broadcasting of television programsClass 038 for providing information about television broadcasting and providing broadcasting of television programs
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 [ Japan application number 2018-025424 filed 03/02/2018]. 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 [ Japan registration number 6105058 registered 12/07/2018 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU3-42851130-110552427_._JP_Reg._Cert._and_English_translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for providing search engines for the internet; computer software design, computer programming, or maintenance of computer software; providing computer programs on data networks; providing temporary use of on-line non-downloadable software; cloud computing
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[ Japan application number 2018-025424 filed 03/02/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: providing search engines for the internet; computer software design, computer programming, or maintenance of computer software; providing computer programs on data networks; providing computer programs on data networks, namely, providing on-line non-downloadable software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; providing temporary use of on-line non-downloadable software; providing temporary use of on-line non-downloadable software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; cloud computing; computer services, namely, integration of public and private cloud computing environmentsClass 042 for providing search engines for the internet; computer software design, computer programming, or maintenance of computer software; providing computer programs on data networks, namely, providing on-line non-downloadable software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; providing temporary use of on-line non-downloadable software for use in recording, transmission or reproduction of sound or images, television sets, DVD players, DVD recorders, optical disc players, optical disc recorders and hard disc recorders, for organizing and viewing digital images and photographs, for interacting with cloud services, for viewing, recording, managing, reproducing, accessing, and storing television programs; computer services, namely, integration of public and private cloud computing environments
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 [ Japan application number 2018-025424 filed 03/02/2018]. 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 [ Japan registration number 6105058 registered 12/07/2018 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU4-42851130-110552427_._JP_Reg._Cert._and_English_translation.pdf
Converted PDF file(s) ( 5 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5

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: /helen hill minsker/     Date: 04/02/2019
Signatory's Name: Helen Hill Minsker
Signatory's Position: Attorney of record, Illinois and DC bar member

Signatory's Phone Number: 312-463-5000

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: 87945181
Internet Transmission Date: Tue Apr 02 11:33:27 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XX.XXX-201904021133278465
22-87945181-620d7b7e9b999b867523a83aabf3
4dbbcb08e7a6a239d7b6a2fbbbcd8ddb2a5499-N
/A-N/A-20190402110552427463