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. 88092166 SUPER X-FI (Stylized and/or with Design, see http://uspto.report/TM/88092166/mark.png) has been amended as follows:

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

In the Office Action dated December 10, 2018, the Examining Attorney refused registration of the applied-for mark in Classes 35 and 42 under Section 2(d) of the Trademark Act based on a likelihood of confusion with the mark in U.S. Registration No. 2575138 (the “Cited Registration” or “Cited Mark”).

In considering whether there is a likelihood of confusion, a number of factors are relevant, including the similarity of the marks, similarity of the goods or services, the similarity of the trade channels, the strength of the marks, and other factors.  As support for the refusal to register Applicant’s mark, the Examining Attorney states that the marks are similar because they share the same letters “X” and “FI.”  However, for the reasons discussed below, Applicant respectfully requests that the Examining Attorney withdraw the refusal to registration and allow the subject application to register.

A.        Applicant’s Services, as Amended, are Sufficiently Unrelated to the Services Covered by the Cited Registration Such That Confusion Would Not be Likely

Applicant’s amendment to the identification of services obviates any potential likelihood of confusion.  The identification of services has been narrowly tailored such that the applied-for services are no longer related, similar, or overlapping with the services covered by the Cited Registration.  Moreover, Applicant’s amendment makes clear that the applied-for services are intended for different prospective consumers, thereby further ensuring that the applied-for services are no longer similar or related to the services covered by the Cited Registration.  The respective services of the parties are clearly identified as specific and distinctive services that are intended for separate and different intended uses by clearly distinct relevant prospective consumers.  In light of this amendment, Applicant respectfully requests that the refusal to register be withdrawn.

B.        Conclusion

In view of the foregoing, there is no likelihood of confusion between the concurrent use of Applicant’s mark and the Registrant’s mark.  Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the refusal to register under Section 2(d) of the Trademark Act 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 035 for Advertising and promotional services; Digital advertising services; Advertising via electronic media and specifically the internet; Advertising by transmission of on-line publicity for third parties through electronic communications networks; On-line advertising and marketing services; Pay per click advertising; Direct mail advertising, including on-line; On-line advertising on a computer network; Marketing services; Promotion of goods and services for others; Dissemination of advertisements; Targeting and reporting services relating to Internet services; Rental of advertising space on the internet; Selling advertising space on web pages; Online service for connecting social network users with businesses for the purpose of matching consumers with providers of goods and services; Online advertising network matching services for connecting advertisers to websites; Online retail store services featuring entertainment and educational content; On-line retail services featuring pre-recorded videos; Layout services for advertising purposes; Marketing research and analysis in the field of music publishing; Marketing research and analysis; Opinion polling of consumers and professionals in the field of music publishing, including on-line on a global computer network; Opinion polling; Demonstration of audio-related hardware and software; Demonstration of consumer electronic goods; Retail services relating to customization of consumer electronic hardware
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[ Singapore application number 40201816501Y filed 08/17/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Advertising and promotional services; Digital advertising services; Advertising via electronic media and specifically the internet; Advertising by transmission of on-line publicity for third parties through electronic communications networks; On-line advertising and marketing services; Pay per click advertising; Direct mail advertising, including on-line; On-line advertising on a computer network; Marketing services; Promotion of goods and services for others; Dissemination of advertisements; Targeting and reporting services relating to Internet services; Targeting and reporting services relating to Internet services, namely, targeted internet marketing services; Rental of advertising space on the internet; Selling advertising space on web pages; Leasing of advertising space on web pages; Online service for connecting social network users with businesses for the purpose of matching consumers with providers of goods and services; Online advertising network matching services for connecting advertisers to websites; Online retail store services featuring entertainment and educational content; On-line retail services featuring pre-recorded videos; On-line retail store services featuring pre-recorded videos; Layout services for advertising purposes; Marketing research and analysis in the field of music publishing; Marketing research and analysis; Opinion polling of consumers and professionals in the field of music publishing, including on-line on a global computer network; Market opinion polling of consumers and professionals in the field of music publishing, including on-line on a global computer network; Opinion polling; Market opinion polling; Demonstration of audio-related hardware and software; Demonstration of consumer electronic goods; Retail services relating to customization of consumer electronic hardware; Retail store services featuring customized consumer electronic hardwareClass 035 for Advertising and promotional services; Digital advertising services; Advertising via electronic media and specifically the internet; Advertising by transmission of on-line publicity for third parties through electronic communications networks; On-line advertising and marketing services; Pay per click advertising; Direct mail advertising, including on-line; On-line advertising on a computer network; Marketing services; Promotion of goods and services for others; Dissemination of advertisements; Targeting and reporting services relating to Internet services, namely, targeted internet marketing services; Rental of advertising space on the internet; Leasing of advertising space on web pages; Online service for connecting social network users with businesses for the purpose of matching consumers with providers of goods and services; Online advertising network matching services for connecting advertisers to websites; Online retail store services featuring entertainment and educational content; On-line retail store services featuring pre-recorded videos; Layout services for advertising purposes; Marketing research and analysis in the field of music publishing; Marketing research and analysis; Market opinion polling of consumers and professionals in the field of music publishing, including on-line on a global computer network; Market opinion polling; Demonstration of audio-related hardware and software; Demonstration of consumer electronic goods; Retail store services featuring customized consumer electronic hardware
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 [ Singapore application number 40201816501Y filed 08/17/2018]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunication services, namely, transmission of advertising communications via digital communications networks; Data transmission services over telecommunications networks; Telecommunication of information services (including web pages); Information services relating to telecommunications; Connecting Internet web sites into an advertising network; Telecommunication services, namely, transmission and streaming of voice, data, images, audio, video, real-time news, entertainment content, or information by means of telecommunications networks, wireless communication networks, and the internet; Digital network telecommunications services; Providing an online community forum for users to share and stream information, audio, video, real-time news, entertainment content, or information, to form virtual communities, and to engage in social networking; Providing online forums; Audio and video transmission services; Streaming of audio and visual content; Audio and visual broadcasting; Transmission and delivery of audio and visual content; Delivery of messages and data by electronic transmission; Delivery of digital audio and/or video by telecommunications; Transmission of voice, data, images, signals, images, messages and information; Transmission of sound, video and information; Transmission of data, messages and information; Transmission of data, audio, video and multimedia files including downloadable files and files streamed over a global computer network; Electronic transmission and streaming of digital media content for others; Transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet; Broadcasting audio and video content over global computer networks; Broadcasting of audiovisual and multimedia content via the Internet; Broadcasting audio and video content over global computer networks, video-on-demand transmission services, pay-per-view video and audio transmission services; Providing access to online, non-downloadable software for the transmission, storage and playback of audio and video content; Providing access to multimedia content online; Digital audio broadcasting and podcasting services; Communications via a global computer network or the internet; Providing an Internet website portal and podcasts in the fields of music and radio; Provision of access to content, websites and portals; Internet broadcasting services; Radio broadcasting; Providing on-line access to music databases; Providing access to digital music websites on the Internet
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[ Singapore application number 40201816501Y filed 08/17/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Telecommunication services, namely, transmission of advertising communications via digital communications networks; Data transmission services over telecommunications networks; Telecommunication of information services (including web pages); Telecommunication of information services, namely, transmission of voice, audio, visual images and data by information services networks; Information services relating to telecommunications; Connecting Internet web sites into an advertising network; Providing telecommunications connections to a global computer network, namely, connecting Internet web sites into an advertising network; Telecommunication services, namely, transmission and streaming of voice, data, images, audio, video, real-time news, entertainment content, or information by means of telecommunications networks, wireless communication networks, and the internet; Telecommunication services, namely, transmission and streaming of voice, data, images, audio, video, real-time news, entertainment content, and information by means of telecommunications networks, wireless communication networks, and the internet; Digital network telecommunications services; Providing an online community forum for users to share and stream information, audio, video, real-time news, entertainment content, or information, to form virtual communities, and to engage in social networking; Providing an online community forum for users to share and stream information, audio, video, real-time news, entertainment content, and information, to form virtual communities, and to engage in social networking; Providing online forums; Providing online forums for voice, music, audio recording and playback, musical entertainment, television, sound processing, sound tracks, sound effects, videos, and audio broadcasting and audio transmission; Audio and video transmission services; Streaming of audio and visual content; Streaming of audio and visual content on the internet; Audio and visual broadcasting; Audio and video broadcasting; Transmission and delivery of audio and visual content; Transmission and delivery of audio and visual content via the internet; Delivery of messages and data by electronic transmission; Delivery of digital audio and/or video by telecommunications; Delivery of digital audio and video by electronic transmission; Transmission of voice, data, images, signals, images, messages and information; Transmission of sound, video and information; Transmission of data, messages and information; Transmission of data, audio, video and multimedia files including downloadable files and files streamed over a global computer network; Electronic transmission and streaming of digital media content for others; Transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet; Broadcasting audio and video content over global computer networks; Broadcasting of audiovisual and multimedia content via the Internet; Broadcasting audio and video content over global computer networks, video-on-demand transmission services, pay-per-view video and audio transmission services; Providing access to online, non-downloadable software for the transmission, storage and playback of audio and video content; Providing telecommunication access to multimedia content online via the internet; Providing access to multimedia content online; Digital audio broadcasting and podcasting services; Communications in the nature of the transmission of messages via a global computer network or the internet; Communications via a global computer network or the internet; Provision of telecommunications access to content, websites and portals via the internet; Providing an Internet website portal and podcasts in the fields of music and radio; Internet broadcasting services; Provision of access to content, websites and portals; Radio broadcasting; Providing on-line telecommunications access to music databases via the internet; Providing access to digital music websites on the Internet; Providing on-line access to music databasesClass 038 for Telecommunication services, namely, transmission of advertising communications via digital communications networks; Data transmission services over telecommunications networks; Telecommunication of information services, namely, transmission of voice, audio, visual images and data by information services networks; Information services relating to telecommunications; Providing telecommunications connections to a global computer network, namely, connecting Internet web sites into an advertising network; Telecommunication services, namely, transmission and streaming of voice, data, images, audio, video, real-time news, entertainment content, and information by means of telecommunications networks, wireless communication networks, and the internet; Digital network telecommunications services; Providing an online community forum for users to share and stream information, audio, video, real-time news, entertainment content, and information, to form virtual communities, and to engage in social networking; Providing online forums for voice, music, audio recording and playback, musical entertainment, television, sound processing, sound tracks, sound effects, videos, and audio broadcasting and audio transmission; Audio and video transmission services; Streaming of audio and visual content on the internet; Audio and video broadcasting; Transmission and delivery of audio and visual content via the internet; Delivery of messages and data by electronic transmission; Delivery of digital audio and video by electronic transmission; Transmission of voice, data, images, signals, images, messages and information; Transmission of sound, video and information; Transmission of data, messages and information; Transmission of data, audio, video and multimedia files including downloadable files and files streamed over a global computer network; Electronic transmission and streaming of digital media content for others; Transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet; Broadcasting audio and video content over global computer networks; Broadcasting of audiovisual and multimedia content via the Internet; Broadcasting audio and video content over global computer networks, video-on-demand transmission services, pay-per-view video and audio transmission services; Providing telecommunication access to multimedia content online via the internet; Digital audio broadcasting and podcasting services; Communications in the nature of the transmission of messages via a global computer network or the internet; Provision of telecommunications access to content, websites and portals via the internet; Internet broadcasting services; Radio broadcasting; Providing on-line telecommunications access to music databases via the internet; Providing access to digital music websites on 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.

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 [ Singapore application number 40201816501Y filed 08/17/2018]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, the provision of streaming audio and audiovisual programs featuring entertainment; Providing non-downloadable films and television shows via video-on-demand transmission services; Entertainment services in the nature of live music, musical, other stage performances; Providing entertainment services in the nature of online games and websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; Providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series or movie; Providing entertainment information via a website; Entertainment services, namely, providing on-line computer, electronic and video games; Entertainment and educational services, including providing audio and visual content in the fields of entertainment and education; Providing information, reviews and recommendations in the field of entertainment and education; Entertainment, namely, providing streamed or downloadable music, film, tv-programs, audio books and games to users online; Providing information in the area of audio and video programming, providing information used in the selection and purchase of audio and video content; Entertainment services, namely, providing a website featuring musical performances, music videos, related film clips, photographs, and other multimedia materials in the fields of music and radio; Providing prerecorded music, information in the fields of music and radio, and commentary and articles about music and radio; Providing non-downloadable playback of music and providing prerecorded music according to consumer preferences; Publication of multimedia material online; Online interactive entertainment; Entertainment services such as providing non-downloadable playback of music, providing non-downloadable prerecorded music; Providing information in the field of music and commentary and articles about music; Providing an internet website portal in the field of music; Providing non-downloadable playback of music and providing prerecorded music according to consumer preferences
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[ Singapore application number 40201816501Y filed 08/17/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Entertainment services, namely, the provision of streaming audio and audiovisual programs featuring entertainment; Providing an Internet website portal and podcasts in the fields of music and radio; Providing non-downloadable films and television shows via video-on-demand transmission services; Entertainment services, namely, the provision of a continuing streaming audio and audiovisual programs about entertainment accessible by radio and television; Entertainment services in the nature of live music, musical, other stage performances; Providing online non-downloadable films and television shows in the field of entertainment via video-on-demand transmission services; Providing entertainment services in the nature of online games and websites featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; Entertainment services in the nature of live music, musical, theater, poetry performances; Providing online non-downloadable video clips and other multimedia digital content containing audio, video, artwork, and/or text from or related to an ongoing television series or movie; Providing entertainment services in the nature of online computer games featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; Providing online non-downloadable video clips, audio files, news articles, and photographs from or related to an ongoing television series or movie; Providing entertainment information via a website; Entertainment and educational services, including providing audio and visual content in the fields of entertainment and education; Entertainment services, namely, providing on-line computer, electronic and video games; Providing information, reviews and recommendations in the field of entertainment and education; Entertainment and educational services including providing audio and visual content in the fields of entertainment and education, namely, providing a website featuring online non-downloadable videos and podcasts in the fields of education and entertainment; Entertainment, namely, providing streamed or downloadable music, film, tv-programs, audio books and games to users online; Providing information, reviews and recommendations in the field of entertainment and education, namely, providing a web site featuring the ratings, reviews and recommendations of users on events and activities in the field of entertainment and education; Providing information in the area of audio and video programming, providing information used in the selection and purchase of audio and video content; Entertainment, namely, providing a website featuring streamed and non-downloadable music, films, tv programs, audio books, and games to users in the field of music; Entertainment services, namely, providing a website featuring musical performances, music videos, related film clips, photographs, and other multimedia materials in the fields of music and radio; Providing entertainment information in the area of audio and video programming, providing entertainment information used in the selection and purchase of audio and video content; Providing prerecorded music, information in the fields of music and radio, and commentary and articles about music and radio; Entertainment services, namely, providing a website featuring non-downloadable musical performance videos, music videos, film clips, and photographs, in the fields of music and radio; Providing non-downloadable playback of music and providing prerecorded music according to consumer preferences; Providing non-downloadable prerecorded music, information in the fields of music and radio, and commentary and articles about music and radio, all online via a global computer network; Publication of multimedia material online; Providing non-downloadable playback of music and providing non-downloadable prerecorded music according to consumer preferences, all online via a global computer network; Online interactive entertainment; Publication of magazines, books, and calendars online; Entertainment services such as providing non-downloadable playback of music, providing non-downloadable prerecorded music; Online interactive entertainment, namely, providing online interactive children's stories; Providing information in the field of music and commentary and articles about music; Entertainment services in the nature of providing a website featuring non-downloadable playback of music and non-downloadable prerecorded music; Providing a website featuring information in the field of music and commentary and articles about music; Providing non-downloadable playback of music and providing prerecorded music according to consumer preferences; Providing an internet website portal in the field of musicClass 041 for Providing an Internet website portal and podcasts in the fields of music and radio; Entertainment services, namely, the provision of a continuing streaming audio and audiovisual programs about entertainment accessible by radio and television; Providing online non-downloadable films and television shows in the field of entertainment via video-on-demand transmission services; Entertainment services in the nature of live music, musical, theater, poetry performances; Providing entertainment services in the nature of online computer games featuring a wide variety of general interest entertainment information relating to motion picture films, television show programs, musical videos, related film clips, photographs, and other multimedia materials; Providing online non-downloadable video clips, audio files, news articles, and photographs from or related to an ongoing television series or movie; Providing entertainment information via a website; Entertainment services, namely, providing on-line computer, electronic and video games; Entertainment and educational services including providing audio and visual content in the fields of entertainment and education, namely, providing a website featuring online non-downloadable videos and podcasts in the fields of education and entertainment; Providing information, reviews and recommendations in the field of entertainment and education, namely, providing a web site featuring the ratings, reviews and recommendations of users on events and activities in the field of entertainment and education; Entertainment, namely, providing a website featuring streamed and non-downloadable music, films, tv programs, audio books, and games to users in the field of music; Providing entertainment information in the area of audio and video programming, providing entertainment information used in the selection and purchase of audio and video content; Entertainment services, namely, providing a website featuring non-downloadable musical performance videos, music videos, film clips, and photographs, in the fields of music and radio; Providing non-downloadable prerecorded music, information in the fields of music and radio, and commentary and articles about music and radio, all online via a global computer network; Providing non-downloadable playback of music and providing non-downloadable prerecorded music according to consumer preferences, all online via a global computer network; Publication of magazines, books, and calendars online; Online interactive entertainment, namely, providing online interactive children's stories; Entertainment services in the nature of providing a website featuring non-downloadable playback of music and non-downloadable prerecorded music; Providing a website featuring information in the field of music and commentary and articles about music; Providing an internet website portal in the field of music
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 [ Singapore application number 40201816501Y filed 08/17/2018]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design and development of computer hardware and software; Providing software and firmware updates for computer applications; Hosting of data relating to the adaptation and setting of customizable headphones, earphones, and other consumer electronics; Hosting of data relating to customizable audio profiles; Hosting of data relating to real-ear, head, and torso measurements; Hosting of data relating to aural measurements; Technological services relating to customizing audio profiles using ear, head, and torso measurements; Technological services relating to real-ear, head and torso measurements; Technological services relating to aural measurements
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[ Singapore application number 40201816501Y filed 08/17/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing access to online, non-downloadable software for the transmission, storage and playback of audio and video content; Design and development of computer hardware and software; Hosting of data relating to the adaptation and setting of customizable headphones, earphones, and other consumer electronics; Providing software and firmware updates for computer applications; Hosting of data relating to customizable audio profiles; Hosting applications, software, and web sites featuring data relating to the adaptation and setting of customizable headphones, earphones, and other consumer electronics; Hosting of data relating to real-ear, head, and torso measurements; Hosting of applications, software, and web sites featuring data relating to customizable audio profiles; Hosting of data relating to aural measurements; Hosting of applications, software, and web sites featuring data relating to real-ear, head, and torso measurements; Technological services relating to customizing audio profiles using ear, head, and torso measurements; Hosting of applications, software, and web sites featuring data relating to aural measurements; Technological services relating to real-ear, head and torso measurements; Technological services, namely, providing temporary use of online non-downloadable software for customizing audio profiles using ear, head, and torso measurements; Technological services relating to aural measurements; Technological services, namely, providing temporary use of online non-downloadable software for recording and tracking real-ear, head and torso measurements; Technological services, namely, providing temporary use of online non-downloadable software for recording and tracking aural measurementsClass 042 for Providing access to online, non-downloadable software for the transmission, storage and playback of audio and video content; Design and development of computer hardware and software; Providing software and firmware updates for computer applications; Hosting applications, software, and web sites featuring data relating to the adaptation and setting of customizable headphones, earphones, and other consumer electronics; Hosting of applications, software, and web sites featuring data relating to customizable audio profiles; Hosting of applications, software, and web sites featuring data relating to real-ear, head, and torso measurements; Hosting of applications, software, and web sites featuring data relating to aural measurements; Technological services, namely, providing temporary use of online non-downloadable software for customizing audio profiles using ear, head, and torso measurements; Technological services, namely, providing temporary use of online non-downloadable software for recording and tracking real-ear, head and torso measurements; Technological services, namely, providing temporary use of online non-downloadable software for recording and tracking aural measurements
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 [ Singapore application number 40201816501Y filed 08/17/2018]. 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
Disclaimer
No claim is made to the exclusive right to use SUPER apart from the mark as shown.


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: 06/10/2019
Signatory's Name: Richard Y. Kim
Signatory's Position: Attorney of Record - D.C. 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: 88092166
Internet Transmission Date: Mon Jun 10 16:23:42 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190610162342
807951-88092166-620bdd4cf2b71bb27b7fd9e2
2c580bf8c37bc4419bd8ef321695c86c1e0fe112
173-N/A-N/A-20190610155246847478