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. 88371729  (Stylized and/or with Design, see http://uspto.report/TM/88371729/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 041 for Education, namely, providing live and online seminars and conferences in the field of business and e-commerce; providing of training in the field of business and e-commerce; entertainment, namely, providing online video games and non-downloadable playback of digital music; organizing community sporting and cultural events; publication of texts, books and journals; organizing sporting events, namely, baseball games, soccer matches, tennis tournaments, basketball games, golf tournaments and swimming competitions; organizing cultural events and shows; publication of newspapers, magazines and periodicals containing diagrams, images and photographs; education, namely, training courses and instructional classes in the field of telecommunications hardware and software, operation of computers, computer programming, web site design, e-commerce, cloud computing, financial management, business management and advertising; providing education, instruction and training via online interactive and non-interactive courses, classes, workshops and seminars in the field of business and e-commerce; design of educational courses, namely, development of curriculum and educational examinations for others in the field of business and e-commerce; entertainment provided via electronic and digital interactive media, namely, providing online computer games; electronic games services provided by means of the Internet, namely, providing online computer games; providing information about education and entertainment; providing information in the field of sports, sporting events, recreation activities, leisure activities, cultural activities and exhibitions; providing online non-downloadable electronic publications, namely, books, journals, newsletters and articles in the field of business and e-commerce; arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting musical concerts; arranging, organizing, hosting and conducting events and competitions for education purposes, namely, providing educational conferences, competitions and symposia in the field of business and e-commerce; entertainment services, namely, production and distribution of a game show; entertainment ticket agency services; providing entertainment information and education information from a computer database or the Internet; providing non-downloadable prerecorded digital music from the Internet; providing non-downloadable prerecorded digital music from MP3 Internet web sites; entertainment and education services, namely, conducting courses of instruction relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services, namely, live music concerts; rental of sound recordings; entertainment in the nature of on-going television programs in the fields of business and e-commerce; producing entertainment, educational, documentary and news television programs in the fields of business and e-commerce for broadcasting; news reporters services; providing news in the field of sporting or cultural events, and in the field of current events reporting provided by satellite television transmission, the Internet or radio; production of television and radio programs and film production; production of television programs; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose, namely, production of animation movies rendered by means of a global computer network; provision of recreational activities, sporting and gymnasium facilities; live performances by a musical band; night club services; discotheques; fashion shows for entertainment purposes; club services relating to entertainment; education services, namely, arranging and conducting educational conferences, conventions, seminars and training workshops in the field of business, e-commerce, telecommunications, computers, computer programs, cloud computing, web site design, financial management and advertising; providing research in the field of education and information about education; organizing and conducting exhibitions for cultural or educational purposes; art exhibition services; art gallery services, namely, rental of artwork; training services in the field of occupational health and safety, and environmental conservation; provision of cigar appreciation classes, wine tasting classes; providing research in the field of education; providing information relating to research in the field of education; arranging, organizing, planning and running of educational seminars in the field of business and e-commerce; animal training; direction in producing broadcasting programs, namely, production of television and radio programs and film production; instructional services, namely, providing training in operation of audiovisual machines and equipment used for the production of broadcasting programs; providing audio and visual studios; providing sports facilities; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies, namely, booking of seats for shows and sports events; rental of motion pictures; rental and leasing of musical instruments; rental and leasing of television programs in the nature of provision of non-downloadable television programs via video on-demand service; rental and leasing of television sets; lending libraries; archive library services; subtitling services, namely, preparing subtitles for movies; sign language interpretation services; rental of entertainment software, namely, rental of computer game software; providing non-downloadable music and non-downloadable movies in the field of animation, children's entertainment, family entertainment, comedy, drama, documentary, action, adventure, fantasy and horror via the internet; providing online computer games; entertainment services, namely, conducting contests; rental of pre-recorded video tapes; rental and leasing of game machines; rental of arcade game machines; photography; translation; language interpretation; providing educational and training programs in the field of risk management; lottery services; provision of facilities for shows and performances, namely, performance venues, studios, sets, dressing rooms; providing educational and training programs in the field of certification for information technology, computer security, business management, law, financial management and financial planning; providing on-line non-downloadable videos in the field of news, sports, entertainment, popular culture, lifestyles, music, artwork, education, information technology, finance, architecture, law, psychology, business administration, marketing, financial literacy and financial planning; providing tutoring in the field of business, e-commerce, music, artwork, education, information technology, finance, architecture, law, psychology, business administration, marketing, financial literacy and financial planning; and providing consultancy, information and advisory services in connection with the aforesaid services; provision of on-line electronic publications streaming from the Internet or on a computer network or a computer database
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Hong Kong registration number 301994301 registered 08/04/2011 with a renewal date of __________ and an expiration date of 08/04/2021 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Education, namely, providing live and online seminars and conferences in the field of business and e-commerce; providing of training in the field of business and e-commerce; entertainment, namely, providing online video games and non-downloadable playback of digital music; organizing community sporting and cultural events; publication of texts, books and journals; organizing sporting events, namely, baseball games, soccer matches, tennis tournaments, basketball games, golf tournaments and swimming competitions; organizing cultural events and shows; publication of newspapers, magazines and periodicals containing diagrams, images and photographs; education, namely, training courses and instructional classes in the field of telecommunications hardware and software, operation of computers, computer programming, web site design, e-commerce, cloud computing, financial management, business management and advertising; providing education, instruction and training via online interactive and non-interactive courses, classes, workshops and seminars in the field of business and e-commerce; design of educational courses, namely, development of curriculum and educational examinations for others in the field of business and e-commerce; entertainment provided via electronic and digital interactive media, namely, providing online computer games; electronic games services provided by means of the Internet, namely, providing online computer games; providing information about education and entertainment; providing information in the field of sports, sporting events, recreation activities, leisure activities, cultural activities and exhibitions; providing online non-downloadable electronic publications, namely, books, journals, newsletters and articles in the field of business and e-commerce; arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting musical concerts; arranging, organizing, hosting and conducting events and competitions for education purposes, namely, providing educational conferences, competitions and symposia in the field of business and e-commerce; entertainment services, namely, production and distribution of a game show; entertainment ticket agency services; providing entertainment information and education information from a computer database or the Internet; providing non-downloadable prerecorded digital music from the Internet; providing non-downloadable prerecorded digital music from MP3 Internet web sites; entertainment and education services, namely, conducting courses of instruction relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services, namely, live music concerts; rental of sound recordings; entertainment in the nature of on-going television programs in the fields of business and e-commerce; producing entertainment, educational, documentary and news television programs in the fields of business and e-commerce for broadcasting; news reporters services; providing news in the field of sporting or cultural events, and in the field of current events reporting provided by satellite television transmission, the Internet or radio; production of television and radio programs and film production; production of television programs; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose, namely, production of animation movies rendered by means of a global computer network; provision of recreational activities, sporting and gymnasium facilities; live performances by a musical band; night club services; discotheques; fashion shows for entertainment purposes; club services relating to entertainment; education services, namely, arranging and conducting educational conferences, conventions, seminars and training workshops in the field of business, e-commerce, telecommunications, computers, computer programs, cloud computing, web site design, financial management and advertising; providing research in the field of education and information about education; organizing and conducting exhibitions for cultural or educational purposes; art exhibition services; art gallery services, namely, rental of artwork; training services in the field of occupational health and safety, and environmental conservation; provision of cigar appreciation classes, wine tasting classes; providing research in the field of education; providing information relating to research in the field of education; arranging, organizing, planning and running of educational seminars in the field of business and e-commerce; animal training; direction in producing broadcasting programs, namely, production of television and radio programs and film production; instructional services, namely, providing training in operation of audiovisual machines and equipment used for the production of broadcasting programs; providing audio and visual studios; providing sports facilities; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies, namely, booking of seats for shows and sports events; rental of motion pictures; rental and leasing of musical instruments; rental and leasing of television programs in the nature of provision of non-downloadable television programs via video on-demand service; rental and leasing of television sets; lending libraries; archive library services; subtitling services, namely, preparing subtitles for movies; sign language interpretation services; rental of entertainment software, namely, rental of computer game software; providing non-downloadable music and non-downloadable movies in the field of animation, children's entertainment, family entertainment, comedy, drama, documentary, action, adventure, fantasy and horror via the internet; providing online computer games; entertainment services, namely, conducting contests; rental of pre-recorded video tapes; rental and leasing of game machines; rental of arcade game machines; photography; translation; language interpretation; providing educational and training programs in the field of risk management; lottery services; provision of facilities for shows and performances, namely, performance venues, studios, sets, dressing rooms; providing educational and training programs in the field of certification for information technology, computer security, business management, law, financial management and financial planning; providing on-line non-downloadable videos in the field of news, sports, entertainment, popular culture, lifestyles, music, artwork, education, information technology, finance, architecture, law, psychology, business administration, marketing, financial literacy and financial planning; providing tutoring in the field of business, e-commerce, music, artwork, education, information technology, finance, architecture, law, psychology, business administration, marketing, financial literacy and financial planning; and providing consultancy, information and advisory services in connection with the aforesaid services; provision of on-line electronic publications streaming from the Internet or on a computer network or a computer database; provision of the services of on-line electronic publications streaming from the internet or on a computer network or a computer database in connection with the services of providing the online publications of newsletters, articles, research reports, journals, books, and magazines in the field of shopping, purchasing, fashion and style, communication, product and service reviews, entertainment, health and fitness, personal care, lifestyle, popular culture, media and video, music and audio, photography, social network, technology, and businessClass 041 for Education, namely, providing live and online seminars and conferences in the field of business and e-commerce; providing of training in the field of business and e-commerce; entertainment, namely, providing online video games and non-downloadable playback of digital music; organizing community sporting and cultural events; publication of texts, books and journals; organizing sporting events, namely, baseball games, soccer matches, tennis tournaments, basketball games, golf tournaments and swimming competitions; organizing cultural events and shows; publication of newspapers, magazines and periodicals containing diagrams, images and photographs; education, namely, training courses and instructional classes in the field of telecommunications hardware and software, operation of computers, computer programming, web site design, e-commerce, cloud computing, financial management, business management and advertising; providing education, instruction and training via online interactive and non-interactive courses, classes, workshops and seminars in the field of business and e-commerce; design of educational courses, namely, development of curriculum and educational examinations for others in the field of business and e-commerce; entertainment provided via electronic and digital interactive media, namely, providing online computer games; electronic games services provided by means of the Internet, namely, providing online computer games; providing information about education and entertainment; providing information in the field of sports, sporting events, recreation activities, leisure activities, cultural activities and exhibitions; providing online non-downloadable electronic publications, namely, books, journals, newsletters and articles in the field of business and e-commerce; arranging, organizing, hosting and conducting singing competitions; arranging, organizing, hosting and conducting musical concerts; arranging, organizing, hosting and conducting events and competitions for education purposes, namely, providing educational conferences, competitions and symposia in the field of business and e-commerce; entertainment services, namely, production and distribution of a game show; entertainment ticket agency services; providing entertainment information and education information from a computer database or the Internet; providing non-downloadable prerecorded digital music from the Internet; providing non-downloadable prerecorded digital music from MP3 Internet web sites; entertainment and education services, namely, conducting courses of instruction relating to planning, production and distribution of sound, images, digital music, movies, live or recorded audio, visual or audiovisual material for broadcasting on terrestrial cable, satellite channels, the Internet, wireless or wire-link systems and other means of communications; music entertainment services, namely, live music concerts; rental of sound recordings; entertainment in the nature of on-going television programs in the fields of business and e-commerce; producing entertainment, educational, documentary and news television programs in the fields of business and e-commerce for broadcasting; news reporters services; providing news in the field of sporting or cultural events, and in the field of current events reporting provided by satellite television transmission, the Internet or radio; production of television and radio programs and film production; production of television programs; provision of information, data, graphics, sound, music, videos, animation and text for entertainment purpose, namely, production of animation movies rendered by means of a global computer network; provision of recreational activities, sporting and gymnasium facilities; live performances by a musical band; night club services; discotheques; fashion shows for entertainment purposes; club services relating to entertainment; education services, namely, arranging and conducting educational conferences, conventions, seminars and training workshops in the field of business, e-commerce, telecommunications, computers, computer programs, cloud computing, web site design, financial management and advertising; providing research in the field of education and information about education; organizing and conducting exhibitions for cultural or educational purposes; art exhibition services; art gallery services, namely, rental of artwork; training services in the field of occupational health and safety, and environmental conservation; provision of cigar appreciation classes, wine tasting classes; providing research in the field of education; providing information relating to research in the field of education; arranging, organizing, planning and running of educational seminars in the field of business and e-commerce; animal training; direction in producing broadcasting programs, namely, production of television and radio programs and film production; instructional services, namely, providing training in operation of audiovisual machines and equipment used for the production of broadcasting programs; providing audio and visual studios; providing sports facilities; providing facilities for movies, shows, plays, music or educational training; entertainment booking agencies, namely, booking of seats for shows and sports events; rental of motion pictures; rental and leasing of musical instruments; rental and leasing of television programs in the nature of provision of non-downloadable television programs via video on-demand service; rental and leasing of television sets; lending libraries; archive library services; subtitling services, namely, preparing subtitles for movies; sign language interpretation services; rental of entertainment software, namely, rental of computer game software; providing non-downloadable music and non-downloadable movies in the field of animation, children's entertainment, family entertainment, comedy, drama, documentary, action, adventure, fantasy and horror via the internet; providing online computer games; entertainment services, namely, conducting contests; rental of pre-recorded video tapes; rental and leasing of game machines; rental of arcade game machines; photography; translation; language interpretation; providing educational and training programs in the field of risk management; lottery services; provision of facilities for shows and performances, namely, performance venues, studios, sets, dressing rooms; providing educational and training programs in the field of certification for information technology, computer security, business management, law, financial management and financial planning; providing on-line non-downloadable videos in the field of news, sports, entertainment, popular culture, lifestyles, music, artwork, education, information technology, finance, architecture, law, psychology, business administration, marketing, financial literacy and financial planning; providing tutoring in the field of business, e-commerce, music, artwork, education, information technology, finance, architecture, law, psychology, business administration, marketing, financial literacy and financial planning; and providing consultancy, information and advisory services in connection with the aforesaid services; provision of the services of on-line electronic publications streaming from the internet or on a computer network or a computer database in connection with the services of providing the online publications of newsletters, articles, research reports, journals, books, and magazines in the field of shopping, purchasing, fashion and style, communication, product and service reviews, entertainment, health and fitness, personal care, lifestyle, popular culture, media and video, music and audio, photography, social network, technology, and business
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Hong Kong registration number 301994301 registered 08/04/2011 with a renewal date of __________ and an expiration date of 08/04/2021 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The applicant's current attorney information: Jeffrey L. Costellia. Jeffrey L. Costellia of NIXON PEABODY LLP, is located at

      799 9TH STREET, NW, SUITE 500
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 074619-213.

The phone number is 202-585-8000.

The fax number is 202-585-8080.

The email address is nptm@nixonpeabody.com

The applicants proposed attorney information: Jeffrey L. Costellia. Other appointed attorneys are David L. May, Lauren J. Arnold, Jennette W. Psihoules, Alexis P. Grilli. Jeffrey L. Costellia of Nixon Peabody 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

      799 9th Street, NW, Suite 500
      Washington, District of Columbia 20001
      United States
The docket/reference number is 074619-213.

The phone number is 202-585-8000.

The fax number is 202-585-8080.

The email address is nptm@nixonpeabody.com

Jeffrey L. Costellia submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: JEFFREY L. COSTELLIA. JEFFREY L. COSTELLIA of NIXON PEABODY LLP, is located at

      799 9TH STREET, NW, SUITE 500
      WASHINGTON, District of Columbia 20001
      US
The docket/reference number is 074619-213.

The phone number is 202-585-8000.

The fax number is 202-585-8080.

The email address is nptm@nixonpeabody.com

The applicants proposed correspondence information: Jeffrey L. Costellia. Jeffrey L. Costellia of Nixon Peabody LLP, is located at

      799 9th Street, NW, Suite 500
      Washington, District of Columbia 20001
      United States
The docket/reference number is 074619-213.

The phone number is 202-585-8000.

The fax number is 202-585-8080.

The email address is nptm@nixonpeabody.com

SIGNATURE(S)
Response Signature
Signature: /Alexis P. Grilli/     Date: 08/09/2019
Signatory's Name: Alexis P. Grilli
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 202-585-8404

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:    JEFFREY L. COSTELLIA
   NIXON PEABODY LLP
   
   799 9TH STREET, NW, SUITE 500
   WASHINGTON, District of Columbia 20001
Mailing Address:    Jeffrey L. Costellia
   Nixon Peabody LLP
   799 9th Street, NW, Suite 500
   Washington, District of Columbia 20001
        
Serial Number: 88371729
Internet Transmission Date: Fri Aug 09 12:42:14 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201908091242142
13712-88371729-610ebbd8d3ede513a39c16ff9
77fe4276b978e1bd19fd8d28d28f6eb4f26faf03
-N/A-N/A-20190809094524774822