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. 88313725 CONQUER(Standard Characters, see http://uspto.report/TM/88313725/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 Downloadable audio recordings, video recordings and audio-visual recordings featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training; Digital music downloadable from the Internet; Digital audio recordings and digital audio visual recordings, downloadable from the Internet, featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training; Downloadable electronic data files and multi-media files featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training, graphics, artwork, text and images related to physical fitness, exercise and health club programs downloadable from the Internet, websites, intranets and extranets; Downloadable audio, video, MP3 recordings and publications, namely, booklets, manuals, newsletters, seminars, webinars, workbooks, certificates, guides, presentations featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training downloadable from the Internet, websites, intranets and extranets
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[ New Zealand application number 1113456 filed 02/08/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Downloadable audio recordings, video recordings and audio-visual recordings featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training; Digital music downloadable from the Internet.; Digital music downloadable from the Internet; Digital audio recordings and digital audio visual recordings, downloadable from the Internet, featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training; Downloadable electronic data files and multi-media files featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training, graphics, artwork, text and images related to physical fitness, exercise and health club programs downloadable from the Internet, websites, intranets and extranets; Downloadable audio, video, MP3 recordings and publications, namely, booklets, manuals, newsletters, seminars, webinars, workbooks, certificates, guides, presentations featuring fitness and health club programs, instruction in the fields of physical fitness, exercise and sports training downloadable from the Internet, websites, intranets and extranetsClass 009 for Digital music downloadable from the Internet.
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 [ New Zealand application number 1113456 filed 02/08/2019]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Recreation services, namely, producing and conducting fitness and exercise classes; Training services, namely, providing classes, seminars, programs, courses, workshops and conferences in the fields of health, nutrition and physical fitness; Sporting activities, namely, providing fitness and exercise classes; Education services, namely, providing instruction and advice with respect to fitness exercise classes, exercise planning and delivering exercise classes; Producing and conducting exercise classes and programs; Health club services, and fitness club services, namely, providing classes, instruction and equipment for physical exercise; Exercise instruction, advisory and training services; Physical fitness tuition, namely, coaching and instruction in the field of exercise, health and physical fitness; Advisory and consultancy services in the fields of recreation activities, physical fitness training, exercise classes and instruction; Publication of printed matter with respect to fitness and health club related programs and training materials; Publication of electronic media, namely, publication of music and video and audio visual resources with respect to fitness and health club related programs and training materials in digital format; Providing on-line digital publications in the nature of music and video in the field of fitness and health club related programs via the Internet; Publication of on-line music and video and audio visual resources with respect to fitness and health club related programs; Providing on-line videos featuring exercise to music classes and programs, not downloadable; Publishing online electronic publications, namely, books, booklets, newsletters, magazines, manuals, posters and postcards all in relation to fitness and health club related programs in the field of fitness health and sport, over the Internet
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[ New Zealand application number 1113456 filed 02/08/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Recreation services, namely, producing and conducting fitness and exercise classes; Publication of printed matter with respect to fitness and health club related programs and training materials; Training services, namely, providing classes, seminars, programs, courses, workshops and conferences in the fields of health, nutrition and physical fitness; Publication of electronic media, namely, publication of music and video and audio visual resources with respect to fitness and health club related programs and training materials in digital format; Sporting activities, namely, providing fitness and exercise classes; Publication of on-line music and video and audio visual resources with respect to fitness and health club related programs; Education services, namely, providing instruction and advice with respect to fitness exercise classes, exercise planning and delivering exercise classes; Publishing online electronic publications, namely, books, booklets, newsletters, magazines, manuals, posters and postcards all in relation to fitness and health club related programs in the field of fitness health and sport, over the Internet; Producing and conducting exercise classes and programs; Health club services, and fitness club services, namely, providing classes, instruction and equipment for physical exercise; Exercise instruction, advisory and training services; Physical fitness tuition, namely, coaching and instruction in the field of exercise, health and physical fitness; Advisory and consultancy services in the fields of recreation activities, physical fitness training, exercise classes and instruction; Providing on-line digital publications in the nature of music and video in the field of fitness and health club related programs via the Internet; Providing on-line videos featuring exercise to music classes and programs, not downloadableClass 041 for Publication of printed matter with respect to fitness and health club related programs and training materials; Publication of electronic media, namely, publication of music and video and audio visual resources with respect to fitness and health club related programs and training materials in digital format; Publication of on-line music and video and audio visual resources with respect to fitness and health club related programs; Publishing online electronic publications, namely, books, booklets, newsletters, magazines, manuals, posters and postcards all in relation to fitness and health club related programs in the field of fitness health and sport, over the Internet
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 [ New Zealand application number 1113456 filed 02/08/2019]. 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.

SIGNATURE(S)
Response Signature
Signature: /CARINA BARNETT/     Date: 07/30/2019
Signatory's Name: Carina Barnett
Signatory's Position: Manager

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 88313725
Internet Transmission Date: Mon Jul 29 22:21:34 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190729222134
421694-88313725-620a5d5d7598373bc176a84b
994afd21bc925de24d408becbf7038b9f9ff4e75
74-N/A-N/A-20190729213635859759