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. 88261791 ACTIVE ES (Stylized and/or with Design, see http://uspto.report/TM/88261791/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 009 for Electronic pens; graphics tablets; LCD graphics tablets; Tablet computer; computers
Original Filing Basis:
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[ Japan application number 2018-164024 filed 12/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Electronic pens; graphics tablets; input devices for computers, namely, graphics tablets, LCD graphics tablets; LCD graphics tablets; Tablet computer; computersClass 009 for Electronic pens; input devices for computers, namely, graphics tablets, LCD graphics tablets; Tablet computer; computers
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 [ Japan application number 2018-164024 filed 12/27/2018]. 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 "ES" apart from the mark as shown.


Description of mark
The mark consists of highly stylized letters of "AES" where the letter "A" appears as a forward slash with a dot near the lower portion of the forward slash, the letter "E" appears as three horizontal lines without a vertical line connection, and the letter "S" appears as a mirror image of the letter "Z". Underneath, the stylized wording "ACTIVE ES" is displayed.

Miscellaneous Statement
The Hon. Trademark Attorney has requested a copy of the registration which issues from the underlying foreign application upon which this application is based, pursuant to Section 44(d) of the Act. Applicant respectfully advises that it wishes to maintain the Section 44(d) filing basis and that the foreign registration has not yet issued. Applicant hopes that the registration will issue by year-end assuming no objections are raised during the prosecution of the underlying application. Accordingly, Applicant requests that this application be suspended pending the issuance of the foreign registration.


SIGNATURE(S)
Response Signature
Signature: /Robert B.G. Horowitz/     Date: 04/24/2019
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 212 589-4200

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: 88261791
Internet Transmission Date: Wed Apr 24 11:01:03 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019042411010398
9353-88261791-620251bc7de6473edf28832904
b233bcd60f7f50d78358e9f2cf6048d028be88c6
-N/A-N/A-20190424105305814887