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. 88053809 SONY (Stylized and/or with Design, see http://uspto.report/TM/88053809/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Distribution for others in the field of blank optical discs and pre-recorded optical discs featuring sound, video and data, namely, fulfilling and managing orders received from customers, order fulfillment services and receiving and putaway processing and order picking as related to order fulfillment services, warehousing in the nature of operating a distribution center or warehousing facility containing distribution inventory and inventory management, shipping and transportation management, namely, shipment processing, preparing shipping documents and invoices, arranging the transportation of goods for others, providing transportation documents for others, transportation logistics management in the field of blank optical discs, and pre-recorded optical discs featuring sound, video and data, providing customer service management for others, invoicing, and management and processing of returned blank optical discs and pre-recorded optical discs featuring sound, video and data; business consultancy services for and by use of the Internet; retail services or wholesale services for electrical machinery and apparatuses; retail services or wholesale services for optical discs
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Distribution for others in the field of blank optical discs and pre-recorded optical discs featuring sound, video and data, namely, fulfilling and managing orders received from customers, order fulfillment services and receiving and putaway processing and order picking as related to order fulfillment services, warehousing in the nature of operating a distribution center or warehousing facility containing distribution inventory and inventory management, shipping and transportation management, namely, shipment processing, preparing shipping documents and invoices, arranging the transportation of goods for others, providing transportation documents for others, transportation logistics management in the field of blank optical discs, and pre-recorded optical discs featuring sound, video and data, providing customer service management for others, invoicing, and management and processing of returned blank optical discs and pre-recorded optical discs featuring sound, video and data; Distribution for others in the field of blank optical discs and pre-recorded optical discs featuring sound, video and data, namely, fulfilling and processing orders received from customers, order fulfillment services including receiving and putaway processing, inventory management in the nature of operating a distribution center or warehousing facility containing distribution inventory and inventory management, shipping and transportation management, namely, shipment processing, preparing shipping documents and invoices, arranging the transportation of goods for others, providing transportation documents for others, transportation logistics management in the field of blank optical discs, and pre-recorded optical discs featuring sound, video and data; business consultancy services for and by use of the Internet; providing customer service management for others, invoicing, and return management in the nature of management and processing of returned blank optical discs and pre-recorded optical discs featuring sound, video and data; retail services or wholesale services for electrical machinery and apparatuses; business consultancy services via the internet; retail services or wholesale services for optical discs; retail services and wholesale store services featuring optical discsClass 035 for Distribution for others in the field of blank optical discs and pre-recorded optical discs featuring sound, video and data, namely, fulfilling and processing orders received from customers, order fulfillment services including receiving and putaway processing, inventory management in the nature of operating a distribution center or warehousing facility containing distribution inventory and inventory management, shipping and transportation management, namely, shipment processing, preparing shipping documents and invoices, arranging the transportation of goods for others, providing transportation documents for others, transportation logistics management in the field of blank optical discs, and pre-recorded optical discs featuring sound, video and data; providing customer service management for others, invoicing, and return management in the nature of management and processing of returned blank optical discs and pre-recorded optical discs featuring sound, video and data; business consultancy services via the internet; retail services and wholesale store services featuring optical discs
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Transport, delivery, packaging, and storage of optical discs; packaging services, namely, packaging of optical discs and repackaging of optical discs to the order and specification of others
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed: Class 039 for Transport, delivery, packaging, and storage of optical discs; packaging services, namely, packaging of optical discs and repackaging of optical discs to the order and specification of others
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Audio mastering; film mastering services; record mastering; video mastering services; optical disc mastering services; production of master optical discs recorded with music and video; providing downloadable streaming, and wireless entertainment content in the nature of audiovisual works, motion pictures, trailers, television programming, music, and games by means of an interactive global computer and communications networks; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; providing on-line videos, not downloadable; providing films, not downloadable, via video-on-demand transmission services; providing on-line music, not downloadable; entertainment services, namely, an ongoing multimedia program distributed via various platforms across multiple forms of transmission media; entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media; digital video, audio, and multimedia publishing services; multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; providing electronic publications; providing on-line computer games
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Audio mastering; film mastering services; record mastering; video mastering services; optical disc mastering services; video and audio mastering of optical discs; production of master optical discs recorded with music and video; providing downloadable streaming, and wireless entertainment content in the nature of audiovisual works, motion pictures, trailers, television programming, music, and games by means of an interactive global computer and communications networks; providing non-downloadable entertainment content in the nature of audiovisual works, namely, motion pictures, movie trailers, television programs, music, and games by means of an interactive global computer and communications networks; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; providing on-line videos, not downloadable; providing on-line videos, not downloadable featuring audio-visual works, movies, television programming, music and games; providing films, not downloadable, via video-on-demand transmission services; providing on-line videos featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns, not downloadable; providing films featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns, not downloadable, via video-on-demand transmission services; entertainment services, namely, an ongoing multimedia program distributed via various platforms across multiple forms of transmission media; providing on-line music, not downloadable; entertainment services, namely, an ongoing multimedia program featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns distributed via various platforms across multiple forms of transmission media; entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media; digital video, audio, and multimedia publishing services; providing electronic publications; multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; providing electronic publications, namely, electronic magazine, newsletter and brochures in the field of entertainment; providing on-line computer gamesClass 041 for Audio mastering; film mastering services; record mastering; video mastering services; video and audio mastering of optical discs; production of master optical discs recorded with music and video; providing non-downloadable entertainment content in the nature of audiovisual works, namely, motion pictures, movie trailers, television programs, music, and games by means of an interactive global computer and communications networks; entertainment services, namely, providing non-downloadable prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; providing on-line videos, not downloadable featuring audio-visual works, movies, television programming, music and games; providing on-line videos featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns, not downloadable; providing films featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns, not downloadable, via video-on-demand transmission services; providing on-line music, not downloadable; entertainment services, namely, an ongoing multimedia program featuring action, adventure, animation, anime, biography, classics, comedy, crime, documentary, drama, faith, family, fantasy, film-noir, games, history, horror, international, musicals, music, mystery, romance, science fiction, sports, television programs, thrillers, war, and westerns distributed via various platforms across multiple forms of transmission media; entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media; digital video, audio, and multimedia publishing services; multimedia publishing of books, magazines, journals, software, games, music, and electronic publications; providing electronic publications, namely, electronic magazine, newsletter and brochures in the field of entertainment; providing on-line computer games
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 038 for Streaming of audio and video material, namely, audiovisual works, motion pictures, trailers, television programming, music, and games via the internet
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /Robert B.G. Horowitz/      Date: 03/11/2019
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant
Signatory's Phone Number: 212 589-4200


Response Signature
Signature: /Robert B.G. Horowitz/     Date: 03/11/2019
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 212 589-4200

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.

        
RAM Sale Number: 88053809
RAM Accounting Date: 03/12/2019
        
Serial Number: 88053809
Internet Transmission Date: Mon Mar 11 17:01:32 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019031117013212
7488-88053809-6204384901a848e2aae7bcf89b
6b5f0d2981dbd884499488c6ea87aaf54361086-
DA-4381-20190311164629776056