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. 88250179 10G (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8825017 9/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Interface software for transmitting data; Communication software for providing access to the Internet; cable television set-top boxes; Media gateways being gateway routers in the nature of computer control hardware; Gateway routers in the nature of computer control hardware; Televisions; Computer hardware and peripherals; Computer hardware, namely, multiplexers; Cable modems; Network routers; Computer network hubs and switches; digital video recorders; Remote controls for televisions; antennas; Television receivers; Handheld computers; Wireless communication devices for voice, data or image transmission; Webcams; Access control and alarm monitoring systems; Electric control devices for remote control of door ingress and egress; Digital door locks; Thermostats; Smoke detectors; Carbon monoxide detectors; Electric control panels; Lighting controls; Smart phones; Cell phones; Digital phones; Telephones; Liquid crystal display (LCD) monitors; Plasma display monitors; Light emitting diode display monitors; Cathode ray tube (CRT) display monitors; Voice display monitors; Smart watches; Home automation hubs using artificial intelligence comprised of voice-activated speakers, computer hardware, and software for controlling networked devices in the internet of things (IoT), operating internet-enabled and connected lighting apparatus, home security alarms and monitors, and home appliances; Headphones; Wireless speakers; Wireless headsets for use with computers and mobile phones; Computer hardware and peripherals; Cameras; Computer software and computer application software for connecting remotely to computer networks, connecting to cloud based services of database management and/or electronic storage of data, transmitting and receiving data to and from other computers and computer programs and networks, connecting to the Internet, providing access to the Internet, connecting home computer networks, connecting computer network users, managing cloud based services of database management and/or electronic storage of data, managing and controlling remotely digital video recorders and managing, controlling and/or downloading DVR-recorded content, and/or managing and/or remotely controlling Internet protocol enabled devices; Downloadable electronic publications, in the nature of booklets, newsletters, articles, brochures, monographs, reports and/or manuals in the fields of technologies for use in communication networks, telecommunications, Internet connectivity and access, information technology, and cable, wireline, and wireless communications; Downloadable electronic publications, namely, pamphlets, brochures, and booklets on the subject of instructional topics in field of communication technology; software for communication and entertainment; internet of things devices for communication; electronics and communication equipment
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.


Proposed:

Tracked Text Description: Interface software for transmitting data; Communication software for providing access to the Internet; cable television set-top boxes; Media gateways being gateway routers in the nature of computer control hardware; Gateway routers in the nature of computer control hardware; Televisions; Computer hardware and peripherals; Computer hardware, namely, multiplexers; Cable modems; Network routers; Computer network hubs and switches; digital video recorders; Remote controls for televisions; antennas; Television receivers; Handheld computers; Wireless communication devices for voice, data or image transmission; Webcams; Access control and alarm monitoring systems; Electric control devices for remote control of door ingress and egress; Digital door locks; Thermostats; Smoke detectors; Carbon monoxide detectors; Electric control panels; Lighting controls; Smart phones; Cell phones; Digital phones; Telephones; Liquid crystal display (LCD) monitors; Plasma display monitors; Light emitting diode display monitors; Cathode ray tube (CRT) display monitors; Voice display monitors; Smart watches; Home automation hubs using artificial intelligence comprised of voice-activated speakers, computer hardware, and software for controlling networked devices in the internet of things (IoT), operating internet-enabled and connected lighting apparatus, home security alarms and monitors, and home appliances; Headphones; Wireless speakers; Wireless headsets for use with computers and mobile phones; Computer hardware and peripherals; Cameras; Computer software and computer application software for connecting remotely to computer networks, connecting to cloud based services of database management and/or electronic storage of data, transmitting and receiving data to and from other computers and computer programs and networks, connecting to the Internet, providing access to the Internet, connecting home computer networks, connecting computer network users, managing cloud based services of database management and/or electronic storage of data, managing and controlling remotely digital video recorders and managing, controlling and/or downloading DVR-recorded content, and/or managing and/or remotely controlling Internet protocol enabled devices; Downloadable electronic publications, in the nature of booklets, newsletters, articles, brochures, monographs, reports and/or manuals in the fields of technologies for use in communication networks, telecommunications, Internet connectivity and access, information technology, and cable, wireline, and wireless communications; Downloadable electronic publications, namely, pamphlets, brochures, and booklets on the subject of instructional topics in field of communication technology; software for communication and entertainment; internet of things devices for communication; electronics and communication equipmentClass 009 for Interface software for transmitting data; Communication software for providing access to the Internet; cable television set-top boxes; Media gateways being gateway routers in the nature of computer control hardware; Gateway routers in the nature of computer control hardware; Televisions; Computer hardware and peripherals; Computer hardware, namely, multiplexers; Cable modems; Network routers; Computer network hubs and switches; digital video recorders; Remote controls for televisions; antennas; Television receivers; Handheld computers; Wireless communication devices for voice, data or image transmission; Webcams; Access control and alarm monitoring systems; Electric control devices for remote control of door ingress and egress; Digital door locks; Thermostats; Smoke detectors; Carbon monoxide detectors; Electric control panels; Lighting controls; Smart phones; Cell phones; Digital phones; Telephones; Liquid crystal display (LCD) monitors; Plasma display monitors; Light emitting diode display monitors; Cathode ray tube (CRT) display monitors; Voice display monitors; Smart watches; Home automation hubs using artificial intelligence comprised of voice-activated speakers, computer hardware, and software for controlling networked devices in the internet of things (IoT), operating internet-enabled and connected lighting apparatus, home security alarms and monitors, and home appliances; Headphones; Wireless speakers; Wireless headsets for use with computers and mobile phones; Cameras; Computer software and computer application software for connecting remotely to computer networks, connecting to cloud based services of database management and/or electronic storage of data, transmitting and receiving data to and from other computers and computer programs and networks, connecting to the Internet, providing access to the Internet, connecting home computer networks, connecting computer network users, managing cloud based services of database management and/or electronic storage of data, managing and controlling remotely digital video recorders and managing, controlling and/or downloading DVR-recorded content, and/or managing and/or remotely controlling Internet protocol enabled devices; Downloadable electronic publications, in the nature of booklets, newsletters, articles, brochures, monographs, reports and/or manuals in the fields of technologies for use in communication networks, telecommunications, Internet connectivity and access, information technology, and cable, wireline, and wireless communications; Downloadable electronic publications, namely, pamphlets, brochures, and booklets on the subject of instructional topics in field of communication technology
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.

Applicant proposes to amend the following:

Current:
Class 035 for Promoting awareness of broadband internet, television, telephony, entertainment, and cable-provided communications technology, products, and services; advocacy services concerning communication technology
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.


Proposed:

Tracked Text Description: Promoting awareness of broadband internet, television, telephony, entertainment, and cable-provided communications technology, products, and services; advocacy services concerning communication technologyClass 035 for Promoting awareness of broadband internet, television, telephony, entertainment, and cable-provided communications technology, products, and services
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.

Applicant proposes to amend the following:

Current:
Class 038 for Wireless transmission of voice, messages, data and information; High-speed access services and wireless access services to the internet; Providing Internet access; Providing third party users with access to telecommunication infrastructure; Telecommunication services, namely, transmission of data, voice, audio, video, and images by telecommunications networks, wireless communication networks, wireline networks, the Internet, information services networks, broadband networks, optical networks and data networks; data and information transmission via electronic communications networks; Providing high speed access to the Internet and other electronic communications networks; Communications by means of mobile phones; Streaming of audio and video material via the Internet and other electronic communications networks; Cable television transmission services and cable radio transmission services; broadcasting services; broadcasting services and provision of telecommunication access to video and audio content provided via video-on-demand, interactive television, pay per view and pay television transmission subscription services; transmission services; transmission of interactive television program guides, and subscription television broadcasting services
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.


Proposed:

Tracked Text Description: Wireless transmission of voice, messages, data and information; Wireless electronic transmission of voice, messages, data and information; High-speed access services and wireless access services to the internet; Providing Internet access; Providing third party users with access to telecommunication infrastructure; Telecommunication services, namely, transmission of data, voice, audio, video, and images by telecommunications networks, wireless communication networks, wireline networks, the Internet, information services networks, broadband networks, optical networks and data networks; data and information transmission via electronic communications networks; Providing high speed access to the Internet and other electronic communications networks; Communications by means of mobile phones; Streaming of audio and video material via the Internet and other electronic communications networks; Cable television transmission services and cable radio transmission services; broadcasting services; broadcasting services and provision of telecommunication access to video and audio content provided via video-on-demand, interactive television, pay per view and pay television transmission subscription services; transmission of interactive television program guides, and subscription television broadcasting services; transmission servicesClass 038 for Wireless electronic transmission of voice, messages, data and information; High-speed access services and wireless access services to the internet; Providing Internet access; Providing third party users with access to telecommunication infrastructure; Telecommunication services, namely, transmission of data, voice, audio, video, and images by telecommunications networks, wireless communication networks, wireline networks, the Internet, information services networks, broadband networks, optical networks and data networks; data and information transmission via electronic communications networks; Providing high speed access to the Internet and other electronic communications networks; Communications by means of mobile phones; Streaming of audio and video material via the Internet and other electronic communications networks; Cable television transmission services and cable radio transmission services; broadcasting services and provision of telecommunication access to video and audio content provided via video-on-demand, interactive television, pay per view and pay television transmission subscription services; transmission of interactive television program guides, and subscription television broadcasting services
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: NCTA - THE INTERNET & TELEVISION ASSOCIATION, a corporation of District of Columbia, having an address of

            SUITE 100      25 MASSACHUSETTS AVENUE, NW
      Washington, District of Columbia 20001
      United States

Proposed: NCTA - THE INTERNET & TELEVISION ASSOCIATION, a corporation of District of Columbia, having an address of
      SUITE 100
      25 MASSACHUSETTS AVENUE, NW
      Washington, District of Columbia 20001
      United States
      Email Address: XXXX
Correspondence Information (current):
      Alisa C. Simmons
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@fitcheven.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): asimmons@fitcheven.com

The docket/reference number is 9303-144668.
Correspondence Information (proposed):
      Alisa C. Simmons
      PRIMARY EMAIL FOR CORRESPONDENCE: trademark@fitcheven.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): asimmons@fitcheven.com

The docket/reference number is 9303-144668.

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: /Alisa C. Simmons/     Date: 04/23/2020
Signatory's Name: Alisa C. Simmons
Signatory's Position: Attorney of Record, Illinois Bar member

Signatory's Phone Number: 3125777000

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:    Alisa C. Simmons
   FITCH, EVEN, TABIN & FLANNERY LLP
   SUITE 2100
   120 SOUTH LASALLE STREET
   CHICAGO, Illinois 60603
Mailing Address:    Alisa C. Simmons
   FITCH, EVEN, TABIN & FLANNERY LLP
   SUITE 2100
   120 SOUTH LASALLE STREET
   CHICAGO, Illinois 60603
        
Serial Number: 88250179
Internet Transmission Date: Thu Apr 23 12:44:22 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XXX-202004231244227
78543-88250179-710d38da53934a22a53662d5f
eb62563d13c52604f15898515bc9fe3f2d75457a
f-N/A-N/A-20200423105425163648