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)

---

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. 88319731 FIREVIEW(Standard Characters, see http://uspto.report/TM/88319731/mark.png) has been amended as follows:

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

Please see the argument in the evidence section

EVIDENCE
Evidence in the nature of Response to Office Action and Exhibit A has been attached.
Original PDF file:
evi_3-205149289-20191113174744404046_._Response_to_Office_Action_for_FIREVIEW__Serial_No._88319731_.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_2-205149289-20191113174744404046_._Exhibit_A_-_Response_to_Office_Action_for_FIREVIEW.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer and electronic game programs; audio, visual and audiovisual works in the nature of digitally recorded music files prerecorded on compact discs or downloadable via the Internet; motion picture films featuring comedy, drama, animation, action, horror, fantasy, family, fiction and documentaries prerecorded on optical disks or downloadable via the Internet; television shows about comedy, drama, animation, action, horror, fantasy, fiction and documentaries prerecorded on optical disks or downloadable via the Internet; electronic books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks in the field of fiction prerecorded on computer media or downloadable via the Internet; computer software development tools; desktop publishing software; software for text, image and sound transmission, editing and display used in the publishing industry; game software; software in the nature of drivers and firmware for operating computers, tablets and digital devices; software for accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; electronic devices, namely, computers, tablet computers, electronic book readers, electronic personal organizers, personal digital assistants, mobile telephones, global positioning system (GPS) navigation devices, digital audio and video players and recorders, digital media players and recorders, audio amplifiers, audio speakers, audio receivers, electric power converters, and inverters, home theater systems comprising audio amplifiers and audio speakers, and portable and handheld digital electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data; parts, peripherals, components, cables and accessories for electronic devices, namely, mice, keyboards, flat panel display screens, monitors, wires, cables, cable connectors, cable adapters, modems, printers, remote controls, disk drives, memory cards, memory card readers, memory card adapters, electronic docking stations, batteries, battery chargers, headsets, headphones and earphones, speakers, speaker enclosures, microphones, cases, covers, holders, privacy display screen protectors, protective screens, and stands; and computer hardware, peripherals and cables
Original Filing Basis:
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: Computer and electronic game programs; Downloadable computer and electronic game programs; audio, visual and audiovisual works in the nature of digitally recorded music files prerecorded on compact discs or downloadable via the Internet; audio, visual and audiovisual works in the nature of digitally recorded music files prerecorded on compact discs and downloadable via the Internet; motion picture films featuring comedy, drama, animation, action, horror, fantasy, family, fiction and documentaries prerecorded on optical disks or downloadable via the Internet; motion picture films featuring comedy, drama, animation, action, horror, fantasy, family, fiction and documentaries prerecorded on optical disks and downloadable via the Internet; television shows about comedy, drama, animation, action, horror, fantasy, fiction and documentaries prerecorded on optical disks or downloadable via the Internet; television shows about comedy, drama, animation, action, horror, fantasy, fiction and documentaries prerecorded on optical disks and downloadable via the Internet; electronic books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks in the field of fiction prerecorded on computer media or downloadable via the Internet; electronic books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks in the field of fiction prerecorded on computer media and downloadable via the Internet; computer software development tools; Downloadable computer software development tools; desktop publishing software; Downloadable desktop publishing software; software for text, image and sound transmission, editing and display used in the publishing industry; Downloadable software for text, image and sound transmission, editing and display used in the publishing industry; game software; Downloadable game software; software in the nature of drivers and firmware for operating computers, tablets and digital devices; Downloadable software in the nature of drivers and firmware for operating computers, tablets and digital devices; software for accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; Downloadable software for accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; electronic devices, namely, computers, tablet computers, electronic book readers, electronic personal organizers, personal digital assistants, mobile telephones, global positioning system (GPS) navigation devices, digital audio and video players and recorders, digital media players and recorders, audio amplifiers, audio speakers, audio receivers, electric power converters, and inverters, home theater systems comprising audio amplifiers and audio speakers, and portable and handheld digital electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data; parts, peripherals, components, cables and accessories for electronic devices, namely, mice, keyboards, flat panel display screens, monitors, wires, cables, cable connectors, cable adapters, modems, printers, remote controls, disk drives, memory cards, memory card readers, memory card adapters, electronic docking stations, batteries, battery chargers, headsets, headphones and earphones, speakers, speaker enclosures, microphones, cases, covers, holders, privacy display screen protectors, protective screens, and stands; parts, peripherals, components, cables and accessories for electronic devices, namely, computer mice, keyboards, flat panel display screens, Video monitors, electric wires, cables, cable connectors, Electric cable adapters, modems, Document printers, remote controls; disk drives, memory cards, memory card readers, memory card adapters, electronic docking stations, batteries, battery chargers, headsets, headphones and earphones, speakers, speaker enclosures, microphones, cases, covers, holders, privacy display screen protectors, protective screens, and stands; and computer hardware, peripherals and cablesClass 009 for Downloadable computer and electronic game programs; audio, visual and audiovisual works in the nature of digitally recorded music files prerecorded on compact discs and downloadable via the Internet; motion picture films featuring comedy, drama, animation, action, horror, fantasy, family, fiction and documentaries prerecorded on optical disks and downloadable via the Internet; television shows about comedy, drama, animation, action, horror, fantasy, fiction and documentaries prerecorded on optical disks and downloadable via the Internet; electronic books, magazines, newspapers, periodicals, newsletters, journals, manuals and audiobooks in the field of fiction prerecorded on computer media and downloadable via the Internet; Downloadable computer software development tools; Downloadable desktop publishing software; Downloadable software for text, image and sound transmission, editing and display used in the publishing industry; Downloadable game software; Downloadable software in the nature of drivers and firmware for operating computers, tablets and digital devices; Downloadable software for accessing, broadcasting, caching, encoding, formatting, converting, transmitting, receiving, streaming, storing, decoding, downloading, displaying, sharing and transferring data, text, images, graphics, photos, files, documents, applications, audio, video, and digital media; electronic devices, namely, computers, tablet computers, electronic book readers, electronic personal organizers, personal digital assistants, mobile telephones, global positioning system (GPS) navigation devices, digital audio and video players and recorders, digital media players and recorders, audio amplifiers, audio speakers, audio receivers, electric power converters, and inverters, home theater systems comprising audio amplifiers and audio speakers, and portable and handheld digital electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data; parts, peripherals, components, cables and accessories for electronic devices, namely, computer mice, keyboards, flat panel display screens, Video monitors, electric wires, cables, cable connectors, Electric cable adapters, modems, Document printers, remote controls; disk drives, memory cards, memory card readers, memory card adapters, electronic docking stations, batteries, battery chargers, headsets, headphones and earphones, speakers, speaker enclosures, microphones, cases, covers, holders, privacy display screen protectors, protective screens, and stands; and computer hardware, peripherals and cables
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.

The applicant's current attorney information: SUSAN M. KAYSER. SUSAN M. KAYSER of K&L GATES LLP, is located at

      1601 K STREET, N.W.
      WASHINGTON, District of Columbia 20006
      US

The phone number is 202-778-9000.

The fax number is 202-778-9100.

The email address is WATrademarks@klgates.com

The applicants proposed attorney information: SUSAN M. KAYSER. Other appointed attorneys are Anisha Mehta. SUSAN M. KAYSER of K&L GATES 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

      1601 K STREET, N.W.
      WASHINGTON, District of Columbia 20006
      United States

The phone number is 202-778-9000.

The fax number is 202-778-9100.

The email address is WATrademarks@klgates.com

SUSAN M. KAYSER 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.
The applicant's current correspondence information: SUSAN M. KAYSER. SUSAN M. KAYSER of K&L GATES LLP, is located at

      1601 K STREET, N.W.
      WASHINGTON, District of Columbia 20006
      US

The phone number is 202-778-9000.

The fax number is 202-778-9100.

The email address is WATrademarks@klgates.com; Susan.Kayser@klgates.com; Aryane.Garansi@klgates.com; eric.lee@klgates.com; valerie.swanson@klgates.com

The applicants proposed correspondence information: SUSAN M. KAYSER. SUSAN M. KAYSER of K&L GATES LLP, is located at

      1601 K STREET, N.W.
      WASHINGTON, District of Columbia 20006
      United States

The phone number is 202-778-9000.

The fax number is 202-778-9100.

The email address is WATrademarks@klgates.com; susan.kayser@klgates.com; anisha.mehta@klgates.com; Patricia.Foley@klgates.com

SIGNATURE(S)
Response Signature
Signature: /Anisha Mehta/     Date: 11/13/2019
Signatory's Name: Anisha Mehta
Signatory's Position: Associate Attorney, K&L Gates LLP, Illinois Bar member

Signatory's Phone Number: 3128074227

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:    SUSAN M. KAYSER
   K&L GATES LLP
   
   1601 K STREET, N.W.
   WASHINGTON, District of Columbia 20006
Mailing Address:    SUSAN M. KAYSER
   K&L GATES LLP
   1601 K STREET, N.W.
   WASHINGTON, District of Columbia 20006
        
Serial Number: 88319731
Internet Transmission Date: Wed Nov 13 18:20:10 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20191113182010823
313-88319731-700256c79fd28bd891f2f76e9eb
563df8222e2f6b1099cb7dfbbbc5178f33a3ab21
-N/A-N/A-20191113174744404046