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. 88383504  (Stylized and/or with Design, see http://uspto.report/TM/88383504/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 Personal digital assistants in the shape of a watch; smartphones; telecommunication machines and apparatus; integrated circuits; computer programs; computers; electronic machines, apparatus and their parts; television receivers and television sets; loudspeakers; earphones; headphones; portable digital audio players; photographic machines and apparatus; cinematographic machines and apparatus; optical machines and apparatus; game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; game programs for arcade video game machine; measuring or testing machines and instruments; phonograph records and downloadable music files; downloadable image files; recorded video discs and video tapes; electronic publications
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: Personal digital assistants in the shape of a watch; smartphones; telecommunication machines and apparatus; telecommunication machines and apparatus, namely, mobile phones and smart phones; integrated circuits; computer programs; computer programs for data processing; computers; electronic machines, apparatus and their parts; electronic machines, apparatus and their parts, namely, hand-held computers, tablet computers, portable media players; television receivers and television sets; loudspeakers; earphones; headphones; portable digital audio players; photographic machines and apparatus; photographic machines and apparatus, namely, cameras, digital cameras, video cameras; cinematographic machines and apparatus; optical machines and apparatus; optical machines and apparatus, namely, optical disc drives; game programs for home video game machines; downloadable computer game programs for home video game machines; electronic circuits and CD-ROMs recorded with programs for hand-held games with liquid crystal displays; electronic circuits and CD-ROMs recorded with computer game programs for hand-held games with liquid crystal displays; game programs for arcade video game machine; downloadable computer game programs for arcade video game machines; measuring or testing machines and instruments; measuring or testing machines and instruments, namely, astrometric measuring machines and apparatus; phonograph records and downloadable music files; phonograph records featuring music; downloadable image files; downloadable music files; recorded video discs and video tapes; downloadable image files containing photographs; electronic publications; recorded video discs and video tapes featuring music, movies and animations; downloadable electronic publications in the nature of books, newsletters, journals, magazines, leaflets, brochures, pamphlets, catalogues, directories, circulars and instruction manuals in the field of entertainmentClass 009 for Personal digital assistants in the shape of a watch; smartphones; telecommunication machines and apparatus, namely, mobile phones and smart phones; integrated circuits; computer programs for data processing; computers; electronic machines, apparatus and their parts, namely, hand-held computers, tablet computers, portable media players; television receivers and television sets; loudspeakers; earphones; headphones; portable digital audio players; photographic machines and apparatus, namely, cameras, digital cameras, video cameras; cinematographic machines and apparatus; optical machines and apparatus, namely, optical disc drives; downloadable computer game programs for home video game machines; electronic circuits and CD-ROMs recorded with computer game programs for hand-held games with liquid crystal displays; downloadable computer game programs for arcade video game machines; measuring or testing machines and instruments, namely, astrometric measuring machines and apparatus; phonograph records featuring music; downloadable music files; downloadable image files containing photographs; recorded video discs and video tapes featuring music, movies and animations; downloadable electronic publications in the nature of books, newsletters, journals, magazines, leaflets, brochures, pamphlets, catalogues, directories, circulars and instruction manuals in the field of entertainment
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 class of goods/services in the application:
Current: Class 038 for Telecommunication services, other than broadcasting; broadcasting services; news agency services; rental of telecommunication equipment; rental of telecommunication equipment including telephones and facsimile apparatus
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: Telecommunication services, other than broadcasting; Telecommunication services, namely, electronic transmission services of messages and data; broadcasting services; cable television broadcasting services; news agency services; satellite television broadcasting services; subscription television broadcasting services; television broadcasting services; radio broadcasting services; news agency services for electronic transmission; rental of telecommunication equipment; rental of telecommunication equipment including telephones and facsimile apparatusClass 038 for Telecommunication services, namely, electronic transmission services of messages and data; cable television broadcasting services; satellite television broadcasting services; subscription television broadcasting services; television broadcasting services; radio broadcasting services; news agency services for electronic transmission; rental of telecommunication equipment; rental of telecommunication equipment including telephones and facsimile apparatus
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 class of goods/services in the application:
Current: Class 042 for Providing meteorological information; architectural design; surveying; geological research; designing of machines, apparatus, instruments and their parts, and systems composed of such machines, apparatus and instruments; computer software design, computer programming, and maintenance of computer software; testing, inspection and research of pharmaceuticals, cosmetics and foodstuffs; research on building construction and city planning; testing and research on prevention of pollution; research on electricity; testing and research on civil engineering; testing, inspection and research on agriculture, livestock breeding or fisheries; testing and research on machines, apparatus and instruments; rental of measuring apparatus; cloud computing; rental of computers; providing computer programs on data networks; rental of laboratory apparatus and instruments
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: Providing meteorological information; architectural design; surveying; geological research; designing of machines, apparatus, instruments and their parts, and systems composed of such machines, apparatus and instruments; computer software design, computer programming, and maintenance of computer software; testing, inspection and research of pharmaceuticals, cosmetics and foodstuffs; testing, inspection and research on the subjects of pharmaceuticals, cosmetics and foodstuffs; research on building construction and city planning; testing and research on prevention of pollution; research on electricity; testing and research on civil engineering; testing, inspection and research on agriculture, livestock breeding or fisheries; testing and research on machines, apparatus and instruments; rental of measuring apparatus; cloud computing; cloud computing featuring software for database management; rental of computers; providing computer programs on data networks; providing a website featuring temporary use of non-downloadable software for word processing; rental of laboratory apparatus and instrumentsClass 042 for Providing meteorological information; architectural design; surveying; geological research; designing of machines, apparatus, instruments and their parts, and systems composed of such machines, apparatus and instruments; computer software design, computer programming, and maintenance of computer software; testing, inspection and research on the subjects of pharmaceuticals, cosmetics and foodstuffs; research on building construction and city planning; testing and research on prevention of pollution; research on electricity; testing and research on civil engineering; testing, inspection and research on agriculture, livestock breeding or fisheries; testing and research on machines, apparatus and instruments; rental of measuring apparatus; cloud computing featuring software for database management; rental of computers; providing a website featuring temporary use of non-downloadable software for word processing; rental of laboratory apparatus and instruments
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: Robert B.G. Horowitz, Esq.. Robert B.G. Horowitz, Esq. of BAKER & HOSTETLER LLP, is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      US
The docket/reference number is 41279.3167.

The phone number is 212-589-4200.

The fax number is 212 589-4201.

The email address is bhipdocket@bakerlaw.com

The applicants proposed attorney information: Robert B.G. Horowitz, Esq.. Other appointed attorneys are Kevin M. Wallace, Esq.. Robert B.G. Horowitz, Esq. of BAKER & HOSTETLER 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

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      United States
The docket/reference number is 41279.3167.

The phone number is 212-589-4200.

The fax number is 212 589-4201.

The email address is bhipdocket@bakerlaw.com

Robert B.G. Horowitz, Esq. 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: ROBERT B.G. HOROWITZ, ESQ.. ROBERT B.G. HOROWITZ, ESQ. of BAKER & HOSTETLER LLP, is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      US
The docket/reference number is 41279.3167.

The phone number is 212-589-4200.

The fax number is 212 589-4201.

The email address is bhipdocket@bakerlaw.com; rhorowitz@bakerlaw.com; jcupito@bakerlaw.com

The applicants proposed correspondence information: Robert B.G. Horowitz, Esq.. Robert B.G. Horowitz, Esq. of BAKER & HOSTETLER LLP, is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      United States
The docket/reference number is 41279.3167.

The phone number is 212-589-4200.

The fax number is 212 589-4201.

The email address is bhipdocket@bakerlaw.com; rhorowitz@bakerlaw.com; jcupito@bakerlaw.com

SIGNATURE(S)
Response Signature
Signature: /Robert B.G. Horowitz/     Date: 11/19/2019
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 212 589-4200

The signatory has confirmed that he/she is 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:    ROBERT B.G. HOROWITZ, ESQ.
   BAKER & HOSTETLER LLP
   
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
Mailing Address:    Robert B.G. Horowitz, Esq.
   BAKER & HOSTETLER LLP
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
        
Serial Number: 88383504
Internet Transmission Date: Tue Nov 19 14:55:40 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019111914554080
0605-88383504-700d27112b32bd82da859fa67d
d85b453dd91cd898844aeb80ea5daa6be0ba27-N
/A-N/A-20191119145131691752