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. 88075739 BTS (Stylized and/or with Design, see http://uspto.report/TM/88075739/mark.png) has been amended as follows:

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

This is in response to the Office Action dated September 23, 2019 in connection with the above-referenced application.  The Examining Attorney has refused registration of the subject mark under Section 2(d) of the Trademark Act based on the mark BTS and BTS SPORT in U.S. Registration Nos. 5081617 and 5221040.

Applicant notes that the Examining Attorney has limited the refusal to register to only “headphones” and “ear buds” in Applicant’s description of goods.  Applicant has herein amended its description of goods to the following:

Class 9

Goggles, namely, swim goggles, diving goggles, snow goggles, safety goggles and goggles for sports; emergency and rescue apparatus, namely, fire-resistant child carriers, oxygen breathing units; batteries and battery chargers; apparatus for broadcasting, recording, transmission or reproduction of sound, data or images; CDs, namely, blank CDs and pre-recorded CDs featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; DVDs, namely, blank DVDs and pre-recorded DVDs featuring  music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; downloadable multimedia files containing artwork, text, audio, video, games, and Internet Web links relating to music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; mounting devices for cameras and monitors; protective industrial shoes; physical and chemical laboratory apparatus and instruments, namely, centrifuges, scientific instrumentation for measuring concentrations of chemicals in water, chemical vapor deposition apparatus for use in research; range finders for golf; Sunglasses; eyeglasses; swimming face masks; electrified fences; electricity measuring apparatus and instruments, namely, voltmeters, ampermeters and multimeters; electronic cables; blank record disks; electronic apparatus and instruments for recording and reproducing music, namely, audio and video recorders, processors, players, transmitters and receivers; covers for smartphones; computer programs and software recorded computer game software; downloadable game programs, provided from online; downloadable smart phone application software for use in database management, for use in electronic storage of data, for mobile games, for the recording, transmission and playback of music, sound and video, for accessing and managing entertainment databases over global networks; computer hardware and computer peripheral devices; integrated circuit chips for use in smart cards video game cartridges and cassettes; helmets, namely, motorcycle helmet, safety helmet, football helmet, and safety helmets; protective suits against accident or injury; phonograph records featuring music; downloadable music files; DVD featuring music and music performances; downloadable digital video recordings featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; electronic coupons downloaded from a global computer network; recorded animated cartoons on prerecorded CDs and DVDs; electronic publications, downloadable in the nature of books, magazines, newsletters, brochures and manuals featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events recorded on computer media

 

The specific goods highlighted by the Examining Attorney as causing the likelihood of confusion have been deleted from the application.  The remaining goods in the application are sufficiently different from those in the cited registration such that confusion as to the source of the goods would not be likely.

Based on the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register under Section 2(d) and suspend the subject application pending the submission of a photocopy of the corresponding foreign Certificate of Registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Goggles; emergency and rescue apparatus; batteries and battery chargers; apparatus for broadcasting, recording, transmission or reproduction of sound, data or images; CDs; DVDs; downloadable multimedia file; mounting devices for cameras and monitors; protective shoes; physical and chemical laboratory apparatus and instruments; range finders for golf; Sunglasses; eyeglasses; swimming face masks; electrified fences; electricity measuring apparatus and instruments; electronic cables; blank record disks; electronic apparatus and instruments for recording and/or reproducing music; ear phones; Headphones; covers for smartphones; computer programs and software recorded computer game software; downloadable game programs, provided from online; downloadable smart phone application (software); computer hardware and computer peripheral devices; integrated circuit chips for use in smart cards video game cartridges and cassettes; helmets; protective suits against accident or injury; phonograph records; downloadable music files; DVD featuring music and music performances; downloadable digital video recordings; electronic coupons; animated cartoons; electronic publications, downloadable
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.

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[ Korea, South application number 40-2018-0095 filed 07/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Goggles; Goggles, namely, swim goggles, diving goggles, snow goggles, safety goggles and goggles for sports; emergency and rescue apparatus; emergency and rescue apparatus, namely, fire-resistant child carriers, oxygen breathing units; batteries and battery chargers; apparatus for broadcasting, recording, transmission or reproduction of sound, data or images; CDs; CDs, namely, blank CDs and pre-recorded CDs featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; DVDs; DVDs, namely, blank DVDs and pre-recorded DVDs featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; downloadable multimedia file; downloadable multimedia files containing artwork, text, audio, video, games, and Internet Web links relating to music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; mounting devices for cameras and monitors; protective shoes; protective industrial shoes; physical and chemical laboratory apparatus and instruments; physical and chemical laboratory apparatus and instruments, namely, centrifuges, scientific instrumentation for measuring concentrations of chemicals in water, chemical vapor deposition apparatus for use in research; range finders for golf; Sunglasses; eyeglasses; swimming face masks; electrified fences; electricity measuring apparatus and instruments; electricity measuring apparatus and instruments, namely, voltmeters, ampermeters and multimeters; electronic cables; blank record disks; electronic apparatus and instruments for recording and/or reproducing music; electronic apparatus and instruments for recording and reproducing music, namely, audio and video recorders, processors, players, transmitters and receivers; ear phones; covers for smartphones; Headphones; computer programs and software recorded computer game software; downloadable game programs, provided from online; downloadable smart phone application software for use in database management, for use in electronic storage of data, for mobile games, for the recording, transmission and playback of music, sound and video, for accessing and managing entertainment databases over global networks; computer hardware and computer peripheral devices; downloadable smart phone application (software); integrated circuit chips for use in smart cards video game cartridges and cassettes; helmets, namely, motorcycle helmet, safety helmet, football helmet, and safety helmets; protective suits against accident or injury; helmets; phonograph records featuring music; downloadable music files; phonograph records; DVD featuring music and music performances; downloadable digital video recordings featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; electronic coupons downloaded from a global computer network; downloadable digital video recordings; recorded animated cartoons on prerecorded CDs and DVDs; electronic coupons; electronic publications, downloadable in the nature of books, magazines, newsletters, brochures and manuals featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events recorded on computer media; animated cartoons; electronic publications, downloadableClass 009 for Goggles, namely, swim goggles, diving goggles, snow goggles, safety goggles and goggles for sports; emergency and rescue apparatus, namely, fire-resistant child carriers, oxygen breathing units; batteries and battery chargers; apparatus for broadcasting, recording, transmission or reproduction of sound, data or images; CDs, namely, blank CDs and pre-recorded CDs featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; DVDs, namely, blank DVDs and pre-recorded DVDs featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; downloadable multimedia files containing artwork, text, audio, video, games, and Internet Web links relating to music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; mounting devices for cameras and monitors; protective industrial shoes; physical and chemical laboratory apparatus and instruments, namely, centrifuges, scientific instrumentation for measuring concentrations of chemicals in water, chemical vapor deposition apparatus for use in research; range finders for golf; Sunglasses; eyeglasses; swimming face masks; electrified fences; electricity measuring apparatus and instruments, namely, voltmeters, ampermeters and multimeters; electronic cables; blank record disks; electronic apparatus and instruments for recording and reproducing music, namely, audio and video recorders, processors, players, transmitters and receivers; covers for smartphones; computer programs and software recorded computer game software; downloadable game programs, provided from online; downloadable smart phone application software for use in database management, for use in electronic storage of data, for mobile games, for the recording, transmission and playback of music, sound and video, for accessing and managing entertainment databases over global networks; computer hardware and computer peripheral devices; integrated circuit chips for use in smart cards video game cartridges and cassettes; helmets, namely, motorcycle helmet, safety helmet, football helmet, and safety helmets; protective suits against accident or injury; phonograph records featuring music; downloadable music files; DVD featuring music and music performances; downloadable digital video recordings featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events; electronic coupons downloaded from a global computer network; recorded animated cartoons on prerecorded CDs and DVDs; electronic publications, downloadable in the nature of books, magazines, newsletters, brochures and manuals featuring music, dance, entertainment, musical bands, musical videos, movies, culture, and current events recorded on computer media
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Korea, South application number 40-2018-0095 filed 07/11/2018]. 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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The corresponding foreign application remains pending. Therefore, Applicant respectfully requests suspension of the subject application pending the submission of the foreign certificate of registration.


SIGNATURE(S)
Response Signature
Signature: /Richard Y. Kim/     Date: 03/21/2019
Signatory's Name: Richard Y. Kim
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202.756.8000

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: 88075739
Internet Transmission Date: Thu Mar 21 08:26:13 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190321082613
526280-88075739-620225e681a3e9215dd12eb2
62ca2a879e7d559e917a4f3f6beba242904fb9cd
4a-N/A-N/A-20190321082230580379