TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88114530 JDX(Standard Characters, see http://uspto.report/TM/88114530/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 038 for Telecommunication services, namely, transmission of voice, audio, images, data, graphics, images, and video by means of telecommunications networks, wireless communication networks, and the Internet; communication services, namely, transmission of voice, audio, images, data, graphics, images, and video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; radio broadcasting; television broadcasting; broadcasting over the internet; wireless transmission and broadcasting of television programmes; broadcasting of cable television programmes; broadcasting of cable television; video subscription television and radio broadcasting and transmission; computer network communications; transmission and reception of data and information, namely, SMS messaging services, namely, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; message collection and transmission services; transmission, broadcasts and reception of sound, data or images by computer, cable, electronic mail, television or satellite means; receiving and exchanging information, messages, text, sound, images and data; electronic mail services; satellite transmission; broadcast of information by means of television; communication of information by television; provision of access to an electronic online network for information retrieval; pay per view television transmission services; video on demand transmissions; advisory and consultancy services relating to the aforementioned services; podcasting services; webcasting services; receiving and exchanging information, messages, text, sound, images and data; rental, leasing or hire of apparatus, installations or components for use in relation to the provision of telecommunication and broadcasting services; information, advice and consultancy in relation to the foregoing
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000325633 registered 12/15/2017 with a renewal date of 09/13/2027 and an expiration date of 09/13/2027 ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Telecommunication services, namely, transmission of voice, audio, images, data, graphics, images, and video by means of telecommunications networks, wireless communication networks, and the Internet; communication services, namely, transmission of voice, audio, images, data, graphics, images, and video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; radio broadcasting; television broadcasting; broadcasting over the internet; wireless transmission and broadcasting of television programmes; broadcasting of cable television programmes; broadcasting of cable television; video subscription television and radio broadcasting and transmission; computer network communications; computer network communication services, namely, providing private and secure real time electronic communication over a computer network; transmission and reception of data and information, namely, SMS messaging services, namely, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; message collection and transmission services; transmission, broadcasts and reception of sound, data or images by computer, cable, electronic mail, television or satellite means; receiving and exchanging information, messages, text, sound, images and data; electronic mail services; satellite transmission; broadcast of information by means of television; communication of information by television; provision of access to an electronic online network for information retrieval; pay per view television transmission services; video on demand transmissions; advisory and consultancy services relating to the aforementioned services; podcasting services; webcasting services; receiving and exchanging information, messages, text, sound, images and data; rental, leasing or hire of apparatus, installations or components for use in relation to the provision of telecommunication and broadcasting services; information, advice and consultancy in relation to the foregoingClass 038 for Telecommunication services, namely, transmission of voice, audio, images, data, graphics, images, and video by means of telecommunications networks, wireless communication networks, and the Internet; communication services, namely, transmission of voice, audio, images, data, graphics, images, and video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; radio broadcasting; television broadcasting; broadcasting over the internet; wireless transmission and broadcasting of television programmes; broadcasting of cable television programmes; broadcasting of cable television; video subscription television and radio broadcasting and transmission; computer network communication services, namely, providing private and secure real time electronic communication over a computer network; transmission and reception of data and information, namely, SMS messaging services, namely, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; message collection and transmission services; transmission, broadcasts and reception of sound, data or images by computer, cable, electronic mail, television or satellite means; receiving and exchanging information, messages, text, sound, images and data; electronic mail services; satellite transmission; broadcast of information by means of television; communication of information by television; provision of access to an electronic online network for information retrieval; pay per view television transmission services; video on demand transmissions; advisory and consultancy services relating to the aforementioned services; podcasting services; webcasting services; receiving and exchanging information, messages, text, sound, images and data; rental, leasing or hire of apparatus, installations or components for use in relation to the provision of telecommunication and broadcasting services; information, advice and consultancy in relation to the foregoing
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000325633 registered 12/15/2017 with a renewal date of 09/13/2027 and an expiration date of 09/13/2027 ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

Applicant proposes to amend the following:

Current:
Class 041 for entertainment; entertainment services provided via a website; organisation of competitions and awards; arranging and conducting competitions; arranging and conducting award ceremonies; presentation of awards for achievement; education and training services; arranging and conducting courses, conferences, exhibitions, events and seminars; organising, conducting, production of shows, events, displays, and parties; organisation and production of music events; organisation and production of live music concerts; organisation of events for cultural, entertainment and sporting purposes; organisation of sporting competitions and sports events; ticket and event booking services; concert ticket reservation services; television entertainment services; production and distribution of television programmes; radio entertainment services; production and distribution of radio programmes and radio programming; interactive information relating to education, entertainment, sporting and cultural activities provided on-line from computer databases or the Internet; provision of information relating to education, entertainment, sporting and cultural activities for accessing via communication and computer networks production services; publishing services; publication of printed matter, periodical publications, printed publications, books and magazines; publication of printed matter; publication of material which can be accessed from databases or from the Internet; radio entertainment services provided via a website; provision of information relating to entertainment, sporting and cultural activities for accessing by means of software applications; provision of music entertainment; provision of music and music entertainment for accessing by means of software applications; provision of radio broadcasts for accessing by means of software applications; provision of radio entertainment services for accessing by means of software applications; provision of competitions for accessing by means of software applications; television programming; information, advice and consultancy in relation to the foregoing
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(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [__________ registration number UK0000325633 registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: entertainment; Entertainment, namely, conducting and organizing contests, sweepstakes, social entertainment events, fashion and music events, and events for cultural purposes; entertainment services provided via a website; entertainment services provided via a website namely, conducting and organizing contests, sweepstakes, social entertainment events, fashion and music events, social entertainment events, and events for cultural proposes; organisation of competitions and awards; organisation of competitions in the fields of fashion, music, entertainment news; arranging and conducting competitions; arranging and conducting sweepstakes competitions; arranging and conducting award ceremonies; arranging and conducting courses, conferences, exhibitions, events and seminars for cultural, fashion, entertainment and sporting purposes; presentation of awards for achievement; organising, conducting, production of shows, events, displays, and parties for cultural, fashion, entertainment and sporting purposes; education and training services; organisation of events for cultural, entertainment and sporting purposes; arranging and conducting courses, conferences, exhibitions, events and seminars; organisation of sporting competitions and sports events; organising, conducting, production of shows, events, displays, and parties; ticket and event booking services; organisation and production of music events; concert ticket reservation services; organisation and production of live music concerts; production and distribution of radio programmes and radio programming; interactive information relating to education, entertainment, sporting and cultural activities provided on-line from computer databases or the Internet; provision of information relating to the organization of educational, entertainment, sporting and cultural exhibitions via communication and computer networks; Digital video, audio, and multimedia publishing services; publication of printed matter namely, periodical publications and printed publications, namely, books and magazines in the fields of fashion, music, entertainment news; television entertainment services; publication of material which can be accessed from databases or from the Internet, namely, articles and magazines in the fields of fashion, music, entertainment news; production and distribution of television programmes; providing non-downloadable access to sweepstakes competitions; radio entertainment services; information, advice and consultancy in relation to the foregoing; provision of information relating to education, entertainment, sporting and cultural activities for accessing via communication and computer networks production services; publishing services; publication of printed matter, periodical publications, printed publications, books and magazines; publication of printed matter; publication of material which can be accessed from databases or from the Internet; radio entertainment services provided via a website; provision of information relating to entertainment, sporting and cultural activities for accessing by means of software applications; provision of music entertainment; provision of music and music entertainment for accessing by means of software applications; provision of radio broadcasts for accessing by means of software applications; provision of radio entertainment services for accessing by means of software applications; provision of competitions for accessing by means of software applications; television programmingClass 041 for Entertainment, namely, conducting and organizing contests, sweepstakes, social entertainment events, fashion and music events, and events for cultural purposes; entertainment services provided via a website namely, conducting and organizing contests, sweepstakes, social entertainment events, fashion and music events, social entertainment events, and events for cultural proposes; organisation of competitions in the fields of fashion, music, entertainment news; arranging and conducting sweepstakes competitions; arranging and conducting courses, conferences, exhibitions, events and seminars for cultural, fashion, entertainment and sporting purposes; organising, conducting, production of shows, events, displays, and parties for cultural, fashion, entertainment and sporting purposes; organisation of events for cultural, entertainment and sporting purposes; organisation of sporting competitions and sports events; ticket and event booking services; concert ticket reservation services; production and distribution of radio programmes and radio programming; interactive information relating to education, entertainment, sporting and cultural activities provided on-line from computer databases or the Internet; provision of information relating to the organization of educational, entertainment, sporting and cultural exhibitions via communication and computer networks; Digital video, audio, and multimedia publishing services; publication of printed matter namely, periodical publications and printed publications, namely, books and magazines in the fields of fashion, music, entertainment news; publication of material which can be accessed from databases or from the Internet, namely, articles and magazines in the fields of fashion, music, entertainment news; providing non-downloadable access to sweepstakes competitions; information, advice and consultancy in relation to the foregoing
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [__________ registration number UK0000325633 registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate, before the application may proceed to registration. For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users on or in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: JD Sports Fashion Plc a(n) public limited company (plc), legally organized under the laws of United Kingdom, having an address of

            Hollinsbrook Way      Pilsworth, Bury
      Lancashire, BL9 9RR
      United Kingdom

Proposed: JD Sports Fashion Plc, public limited company (plc) legally organized under the laws of United Kingdom, having an address of
      Hollinsbrook Way
      Pilsworth, Bury
      Lancashire, BL9 9RR
      United Kingdom
      Email Address: XXXX
Correspondence Information (current):
      David A.W. Wong
      PRIMARY EMAIL FOR CORRESPONDENCE: dwong@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com; cbrinson@btlaw.com; kfennessy@btlaw.com

The docket/reference number is 76691-286267.
Correspondence Information (proposed):
      David A.W. Wong
      PRIMARY EMAIL FOR CORRESPONDENCE: dwong@btlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMINDocket@btlaw.com; cbrinson@btlaw.com; kfennessy@btlaw.com

The docket/reference number is 76691-286267.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /kfennessy/     Date: 04/28/2020
Signatory's Name: Kathleen S. Fennessy
Signatory's Position: Attorney, Barnes & Thornburg LLP, Indiana Bar Member

Signatory's Phone Number: 3172361313

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    David A.W. Wong
   BARNES & THORNBURG LLP
   
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
Mailing Address:    David A.W. Wong
   BARNES & THORNBURG LLP
   11 SOUTH MERIDIAN STREET
   INDIANAPOLIS, Indiana 46204-3535
        
Serial Number: 88114530
Internet Transmission Date: Tue Apr 28 13:02:48 ET 2020
TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XX-2020042813024848
8989-88114530-710d2254a1a48b613cfb3abf67
53ba7cb6448b6eac9fa41b74d40df5599e525-N/
A-N/A-20200428125825341831