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. 88143841 FORMULA 1(Standard Characters, see http://uspto.report/TM/88143841/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design and development of computers and software; scientific and technological services and research and design relating thereto; industrial analysis and research services; leasing of computers and computer software; installation, research and update of computer software for the electronic exchange of data and telecommunication networks for third parties; creation and maintenance of database software and applications; creating, maintaining and hosting internet web sites and of wireless electronic communication networks; electronic storage of data; electronic storage; installing and maintenance of computer software; providing temporary use of non- downloadable computer software to enable users to create and share text, documents, images, photos, videos, maps and roadmaps; temporary provision of non-downloadable computer software online; temporary provision of non-downloadable computer software online allowing users to access programs with audio content, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and programs in connection with entertainment; recovery of computer data; services of a computer software consultant; computer software design and development services; graphic arts designing; computer services that provide online web pages created according to customer needs and that offer user-specific information, including search engines and online web connections with news, information on sports; computer services that provide online web pages created according to the needs of customers and providing certain information to the user, including search engines and online web links to news, weather information, sports; computer services, namely, creating websites featuring an on- line community for registered users to participate in discussions, get feedback, form virtual communities, and engage in social networking on-line; services provided by an application service provider (asp) featuring computer software for use in connection with subscription services for online music, software allowing users to play and program music and audio, video, text and multimedia content in connection with entertainment, and computer software featuring recordings of musical sounds, text, audio, video and multimedia content in connection with entertainment
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Benelux registration number 1036826 registered 08/08/2018 with a renewal date of __________ and an expiration date of 08/07/2028 ], 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: Design and development of computers and software; scientific and technological services and research and design relating thereto; scientific and technological services, namely, scientific research, analysis, testing in the field of auto racing and research and design relating thereto; industrial analysis and research services; industrial design and computer systems analysis in the field of auto racing; leasing of computers and computer software; installation, research and update of computer software for the electronic exchange of data and telecommunication networks for third parties; installation, research, and upgrading of computer software for the electronic exchange of data and telecommunication networks for third parties; creation and maintenance of database software and applications; creation and maintenance of database software and software applications; creating, maintaining and hosting internet web sites and of wireless electronic communication networks; electronic storage of data; electronic storage; electronic data storage; installing and maintenance of computer software; providing temporary use of non- downloadable computer software to enable users to create and share text, documents, images, photos, videos, maps and roadmaps; temporary provision of non-downloadable computer software online; temporary provision of online non-downloadable computer software allowing users to access programs with audio content, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and programs in connection with entertainment; temporary provision of non-downloadable computer software online allowing users to access programs with audio content, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and programs in connection with entertainment; recovery of computer data; services of a computer software consultant; computer software design and development services; graphic arts designing; computer services, namely, hosting an interactive website that provides online web pages according to the needs of customers and provides user-specific information in the nature of auto racing, search engines, and online web site connections with news and information on sports; computer services that provide online web pages created according to customer needs and that offer user-specific information, including search engines and online web connections with news, information on sports; computer services, namely, hosting an interactive website that provides online web pages featuring search engines and online web links to news, weather information, sports; computer services that provide online web pages created according to the needs of customers and providing certain information to the user, including search engines and online web links to news, weather information, sports; computer services, namely, creating websites featuring an on- line community for registered users to participate in discussions, get feedback, form virtual communities, and engage in social networking on-line; application service provider (asp) featuring computer software for use in connection with subscription services for online music, software allowing users to play and program music and audio, video, text and multimedia content in connection with entertainment, and computer software featuring recordings of musical sounds, text, audio, video and multimedia content in connection with entertainment; services provided by an application service provider (asp) featuring computer software for use in connection with subscription services for online music, software allowing users to play and program music and audio, video, text and multimedia content in connection with entertainment, and computer software featuring recordings of musical sounds, text, audio, video and multimedia content in connection with entertainmentClass 042 for Design and development of computers and software; scientific and technological services, namely, scientific research, analysis, testing in the field of auto racing and research and design relating thereto; industrial design and computer systems analysis in the field of auto racing; leasing of computers and computer software; installation, research, and upgrading of computer software for the electronic exchange of data and telecommunication networks for third parties; creation and maintenance of database software and software applications; creating, maintaining and hosting internet web sites and of wireless electronic communication networks; electronic storage of data; electronic data storage; installing and maintenance of computer software; providing temporary use of non- downloadable computer software to enable users to create and share text, documents, images, photos, videos, maps and roadmaps; temporary provision of online non-downloadable computer software allowing users to access programs with audio content, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and programs in connection with entertainment; recovery of computer data; services of a computer software consultant; computer software design and development services; graphic arts designing; computer services, namely, hosting an interactive website that provides online web pages according to the needs of customers and provides user-specific information in the nature of auto racing, search engines, and online web site connections with news and information on sports; computer services, namely, hosting an interactive website that provides online web pages featuring search engines and online web links to news, weather information, sports; computer services, namely, creating websites featuring an on- line community for registered users to participate in discussions, get feedback, form virtual communities, and engage in social networking on-line; application service provider (asp) featuring computer software for use in connection with subscription services for online music, software allowing users to play and program music and audio, video, text and multimedia content in connection with entertainment, and computer software featuring recordings of musical sounds, text, audio, video and multimedia content in connection with entertainment
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Benelux registration number 1036826 registered 08/08/2018 with a renewal date of __________ and an expiration date of 08/07/2028 ], 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.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Formula One Licensing B.V., a corporation of Netherlands, having an address of
      Beursplein 37
      Rotterdam, 3011AA
      Netherlands

Proposed: Formula One Licensing B.V., besloten vennootschap (b.v.) legally organized under the laws of Netherlands, having an address of
      Beursplein 37
      Rotterdam, 3011AA
      Netherlands

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_38104128234-134002587_._FORMULA_1__word_mark__-_Class_42_-_Signature_-_88143841.pdf
Converted PDF file(s) (9 pages)
Signature File1
Signature File2
Signature File3
Signature File4
Signature File5
Signature File6
Signature File7
Signature File8
Signature File9
Signatory's Name: Sacha Woodward Hill
Signatory's Position: Director
Signatory's Phone Number: 2127758700


Response Signature
Signature: /Jill K. Tomlinson/     Date: 03/15/2019
Signatory's Name: Jill K. Tomlinson
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 2127758700

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: 88143841
Internet Transmission Date: Fri Mar 15 17:45:21 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201903151745219
53916-88143841-620e7b5ea84dcdae85e4135d5
915b2ac809c0a5599842547f61c5c4298517cc-N
/A-N/A-20190312163326119763