TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

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

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88205339 QN1(Standard Characters, see http://uspto.report/TM/88205339/mark.png) has been amended as follows:
FOREIGN APPLICATION(S)
The foreign application No(s). 2018-079235 has/have now abandoned. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.
Comment(s)/Remark(s):
Notwithstanding Applicant's underlying Japanese application is abandoned, Applicant wishes to amend the filing basis to Section 44(e) based upon EUTM RN 01789145 for the mark. Applicant notes that it has effective commercial establishments in Austria, Belgium, Bulgaria, Croatia, Czech Republic, Denmark, Finland, France, Germany, Greece, Hungary, Ireland, Latvia, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden. Applicant also wishes to amend the goods in this application to be those in its EUTM registration, which are "headphones; software for control and improve audio equipment sound quality; digital signal processing for use with headphones; integrated circuits for use with headphones." Moreover, Applicant requests that its Section 1(b) filing basis be deleted.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for televisions; loud speakers; earphones; headphones; software to control and improve audio equipment sound quality; computer programs for processing digital music files; digital voice signal processors; digital signal processors; integrated circuits; electronic machines, apparatus and their parts; personal digital assistants in the shape of a watch; smartphones; game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; game programs for arcade video game machines; phonograph records; downloadable music files; downloadable image files
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-079235 filed 06/15/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: televisions; headphones; loud speakers; software for control and improve audio equipment sound quality; earphones; digital signal processing for use with headphones; integrated circuits for use with headphones.; software to control and improve audio equipment sound quality; computer programs for processing digital music files; digital voice signal processors; digital signal processors; integrated circuits; electronic machines, apparatus and their parts; personal digital assistants in the shape of a watch; smartphones; game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; game programs for arcade video game machines; phonograph records; downloadable music files; downloadable image filesClass 009 for headphones; software for control and improve audio equipment sound quality; digital signal processing for use with headphones; integrated circuits for use with headphones.
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2018-079235 filed 06/15/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ European Union Trademark - EUTM registration number 017989145 registered 03/21/2019 with a renewal date of __________ and an expiration date of 11/22/2028 ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-3810515990-194851033 _._QN1_EUTM_REGISTRATION.pdf
Converted PDF file(s) (3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

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: Sony Corporation, a corporation of Japan, having an address of
      1-7-1 Konan, Minato-ku
      Tokyo,
      Japan
Proposed: Sony Corporation, a corporation of Japan, having an address of
      1-7-1 Konan, Minato-ku
      Tokyo, 108-0075
      Japan
      Email Address: XXXX

The owner's/holder's current attorney information: Robert B.G. Horowitz, Esq.. Robert B.G. Horowitz, Esq. of BAKER & HOSTETLER LLP, is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York
      United States
The docket/reference number is 41279.3131.

The phone number is 212-589-4200.

The fax number is 212 589-4201.

The email address is bhipdocket@bakerlaw.com

The owner's/holder's proposed attorney information: Robert B.G. Horowitz, Esq.. Other appointed attorneys are Lesley McCall Grossberg, Esq., Kevin M. Wallace, Esq., Lisa Bollinger Gehman, Esq.. Robert B.G. Horowitz, Esq. of BAKER & HOSTETLER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      United States
The docket/reference number is 41279.3131.

The phone number is 212-589-4200.

The fax number is 212 589-4201.

The email address is bhipdocket@bakerlaw.com

Robert B.G. Horowitz, Esq. submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      ROBERT B.G. HOROWITZ, ESQ.
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhorowitz@bakerlaw.com; jcupito@bakerlaw.com
Correspondence Information (proposed):
      Robert B.G. Horowitz, Esq.
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rhorowitz@bakerlaw.com; jcupito@bakerlaw.com

The docket/reference number is 41279.3131.

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

Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AAU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the application or AAU filing date; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: for a trademark or service mark application, the applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Robert B.G. Horowitz/    Date: 06/29/2020
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant, a New York State Bar member
Signatory's Phone Number: 212 589-4200

Response Suspension Inquiry Signature
Signature: /Robert B.G. Horowitz/     Date: 06/29/2020
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant, a New York State Bar member
Signatory's Phone Number: 212 589-4200

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.

Mailing Address:    ROBERT B.G. HOROWITZ, ESQ.
   BAKER & HOSTETLER LLP
   
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York
Mailing Address:    Robert B.G. Horowitz, Esq.
   BAKER & HOSTETLER LLP
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
        
Serial Number: 88205339
Internet Transmission Date: Mon Jun 29 20:25:31 ET 2020
TEAS Stamp: USPTO/RSI-XX.XXX.XXX.XX-2020062920253156
0602-88205339-7109726a4d11583eafb5d3468c
24cde8611a79559c11379b12bd6aa6f4eb82ce98
-N/A-N/A-20200629194851033501