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. 88299873 VOLTAGE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8829987 3/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

This is in response to the Office Action mailed February 21, 2020. While Applicant disagrees with the refusal, Applicant has agreed to limit the services in Class 41 as amended herein. In view of the foregoing, Applicant respectfully requests that the refusal be withdrawn and the subject application be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 041 for Education and entertainment services in the nature of organizing, conducting, hosting seminars in the field of marketing; organizing community sporting and cultural activities; book, magazine and music publishing and editing services; publication of printed matter; publication of electronic matter, namely magazine, books and reviews; non downloadable electronic publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation provided via a computer database or from the Internet; publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation being not downloadable from databases or the Internet; electronic games services provided by means of the Internet; arranging of educational conferences, colloquiums, competitions, seminars, symposiums, and workshops; arranging art shows in the nature of art exhibitions; Educational services, namely, offering training and educational seminars in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; providing educational information in the field of photography in the nature of photo-shoots, and film production; providing online non-downloadable instructional videos in the field of the rental and design of buildings, shops and commercial/industrial premises; entertainment services, namely, non-downloadable ring tones accessible from the Internet; provision of online electronic publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; news reporting in the field of current events; news reporter services; providing information about sporting events; production of radio and television programs; videotape film production; production of television shows; ticket reservation services relating to entertainment events; entertainment services, namely, organising, conducting, staging of, judging of and providing facilities for games, competitions and awards therefor; arranging award ceremonies to demonstrate excellence in the field of marketing and advertising; hosting social entertainment events, namely, gala evenings; arranging and conducting award programs and ceremonies to recognize excellence in the field of brand placement arranging competitions, contests, games and quizzes in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; electronic games services provided by means of the Internet or other communications networks, namely, global communications networks; provision of information, advisory and consultancy services for all the aforesaid
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: Education and entertainment services in the nature of organizing, conducting, hosting seminars in the field of marketing; organizing community sporting and cultural activities; book, magazine and music publishing and editing services; publication of printed matter; publication of electronic matter, namely magazine, books and reviews; non downloadable electronic publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation provided via a computer database or from the Internet; publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation being not downloadable from databases or the Internet; electronic games services provided by means of the Internet; arranging of educational conferences, colloquiums, competitions, seminars, symposiums, and workshops; arranging art shows in the nature of art exhibitions; Educational services, namely, offering training and educational seminars in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; providing educational information in the field of photography in the nature of photo-shoots, and film production; providing online non-downloadable instructional videos in the field of the rental and design of buildings, shops and commercial/industrial premises; entertainment services, namely, non-downloadable ring tones accessible from the Internet; provision of online electronic publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; news reporting in the field of current events; news reporter services; providing information about sporting events; production of radio and television programs; videotape film production; production of television shows; ticket reservation services relating to entertainment events; entertainment services, namely, organising, conducting, staging of, judging of and providing facilities for games, competitions and awards therefor; arranging award ceremonies to demonstrate excellence in the field of marketing and advertising; arranging and conducting award programs and ceremonies to recognize excellence in the field of brand placement arranging competitions, contests, games and quizzes in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; hosting social entertainment events, namely, gala evenings; provision of information, advisory and consultancy services for all the aforesaid; electronic games services provided by means of the Internet or other communications networks, namely, global communications networksClass 041 for Education and entertainment services in the nature of organizing, conducting, hosting seminars in the field of marketing; organizing community sporting and cultural activities; book, magazine and music publishing and editing services; publication of printed matter; publication of electronic matter, namely magazine, books and reviews; non downloadable electronic publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation provided via a computer database or from the Internet; publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation being not downloadable from databases or the Internet; arranging of educational conferences, colloquiums, competitions, seminars, symposiums, and workshops; arranging art shows in the nature of art exhibitions; Educational services, namely, offering training and educational seminars in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; providing educational information in the field of photography in the nature of photo-shoots, and film production; providing online non-downloadable instructional videos in the field of the rental and design of buildings, shops and commercial/industrial premises; entertainment services, namely, non-downloadable ring tones accessible from the Internet; provision of online electronic publications in the nature of magazines and journals in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; news reporting in the field of current events; news reporter services; providing information about sporting events; production of radio and television programs; videotape film production; production of television shows; ticket reservation services relating to entertainment events; entertainment services, namely, organising, conducting, staging of, judging of and providing facilities for games, competitions and awards therefor; arranging award ceremonies to demonstrate excellence in the field of marketing and advertising; arranging and conducting award programs and ceremonies to recognize excellence in the field of brand placement arranging competitions, contests, games and quizzes in the field of design, graphic design, interior, exterior design retail graphics, commercial space, retail design, sustainable design, branding, photo-shoots, website creation, film creation, interactive environment creation; provision of information, advisory and consultancy services for all the aforesaid
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 042 for Design services in the field of graphic design; implementation of design, namely, graphic design services; design and development of downloadable application software design and development of computer hardware and software; design, development, implementation, updating of software and computer programming; interior and graphic design services for business; planning and design services for retail premises; retail premises exterior design services; interior design services; new product design and packaging design services; graphic design; website design and development; providing technology consulting in the field of social media design and development; animation design for others; special-effects design for others; audio design services for others; website design services; hosting of online websites featuring graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; prototypes and roll-out design services for others in the nature of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; design, drawing and develop webpages, including creation of writing and text on webpages; creating, testing and maintaining websites for others; hosting the websites of others; installing, namely, implementing websites for others; design consultancy, design and design advice and information services, namely, designing websites for advertising purposes relating to brands; software-as-service services featuring software for advertising, marketing, promotional, public relations purposes for use in database management, service desk management and accounting; providing Internet search engine services; digital computer coding services for others in the nature of coding of messages in the nature of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; consultancy services in the field of data mining; providing educational information in the field of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; providing a web site featuring temporary use of non-downloadable software allowing web site users to edit, post, display, tag, share images, graphics, sound, text or audio-visual information; information, research, evaluation and consultancy services relating to any of the aforesaid
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: Design services in the field of graphic design; implementation of design, namely, graphic design services; design and development of downloadable application software design and development of computer hardware and software; design, development, implementation, updating of software and computer programming; interior and graphic design services for business; planning and design services for retail premises; retail premises exterior design services; interior design services; new product design and packaging design services; graphic design; website design and development; providing technology consulting in the field of social media design and development; animation design for others; special-effects design for others; audio design services for others; audio design services in the nature of designing the featured audio components in software for others; website design services; hosting of online websites featuring graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; prototypes and roll-out design services for others in the nature of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; design, drawing and develop webpages, including creation of writing and text on webpages; creating, testing and maintaining websites for others; hosting the websites of others; installing, namely, implementing websites for others; design consultancy, design and design advice and information services, namely, designing websites for advertising purposes relating to brands; software-as-service services featuring software for advertising, marketing, promotional, public relations purposes for use in database management, service desk management and accounting; providing Internet search engine services; digital computer coding services for others in the nature of coding of messages in the nature of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; consultancy services in the field of data mining; providing educational information in the field of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; providing a web site featuring temporary use of non-downloadable software allowing web site users to edit, post, display, tag, share images, graphics, sound, text or audio-visual information; information, research, evaluation and consultancy services relating to any of the aforesaidClass 042 for Design services in the field of graphic design; implementation of design, namely, graphic design services; design and development of downloadable application software design and development of computer hardware and software; design, development, implementation, updating of software and computer programming; interior and graphic design services for business; planning and design services for retail premises; retail premises exterior design services; interior design services; new product design and packaging design services; graphic design; website design and development; providing technology consulting in the field of social media design and development; animation design for others; special-effects design for others; audio design services in the nature of designing the featured audio components in software for others; website design services; hosting of online websites featuring graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; prototypes and roll-out design services for others in the nature of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; design, drawing and develop webpages, including creation of writing and text on webpages; creating, testing and maintaining websites for others; hosting the websites of others; installing, namely, implementing websites for others; design consultancy, design and design advice and information services, namely, designing websites for advertising purposes relating to brands; software-as-service services featuring software for advertising, marketing, promotional, public relations purposes for use in database management, service desk management and accounting; providing Internet search engine services; digital computer coding services for others in the nature of coding of messages in the nature of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; consultancy services in the field of data mining; providing educational information in the field of graphic design, interior design, planning and layout design services for interior space of retail business establishments, sustainable community planning and infrastructure development, and website development; providing a web site featuring temporary use of non-downloadable software allowing web site users to edit, post, display, tag, share images, graphics, sound, text or audio-visual information; information, research, evaluation and consultancy services relating to any of the aforesaid
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: DDB WORLDWIDE COMMUNICATIONS GROUP LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      437 MADISON AVENUE
      NEW YORK, New York 10022
      United States

Proposed: DDB WORLDWIDE COMMUNICATIONS GROUP LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      437 MADISON AVENUE
      NEW YORK, New York 10022
      United States
      Email Address: XXXX
Correspondence Information (current):
      Jeffrey C. Katz
      PRIMARY EMAIL FOR CORRESPONDENCE: jkatz@dglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 5360760092.
Correspondence Information (proposed):
      Jeffrey C. Katz
      PRIMARY EMAIL FOR CORRESPONDENCE: jkatz@dglaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tsuhay@dglaw.com; jcipriani@dglaw.com

The docket/reference number is 5360760092.

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: /Jeffrey C. Katz/     Date: 07/30/2020
Signatory's Name: Jeffrey C. Katz
Signatory's Position: Attorney of Record, New York State Bar Member

Signatory's Phone Number: 212-468-4800

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:    Jeffrey C. Katz
   DAVIS & GILBERT LLP
   
   1740 Broadway
   New York, New York 10019
Mailing Address:    Jeffrey C. Katz
   DAVIS & GILBERT LLP
   1740 Broadway
   New York, New York 10019
        
Serial Number: 88299873
Internet Transmission Date: Thu Jul 30 09:54:01 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.X.XXX-20200730095401429
999-88299873-7403e28c59f6463108a9622bf4a
55e7bc1d94cd8807c27c8843b3578011c68d93-N
/A-N/A-20200730095225085111