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. 88391799 LIVE YOUR VISION(Standard Characters, see http://uspto.report/TM/88391799/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 Photographic machines and apparatus; cinematographic machines and apparatus; optical machines and apparatus; batteries and cells; telecommunication machines and apparatus; broadcasting machines and apparatus; radio communication machines and apparatus; audio frequency devices and apparatus; video frequency devices and apparatus; digital cameras; video cameras; global positioning system apparatus; personal digital assistants in the shape of watch; smartphones; computer programs; application software for smartphones; electronic machines and apparatus and their parts; downloadable music files; downloadable image files; recorded video discs and video tapes
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(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[ Japan application number 2018-145304 filed 11/26/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Photographic machines and apparatus; Photographic machines and apparatus, namely, photographic cameras, wearable cameras, digital cameras and accessories therefor, namely, lenses, remote shutter releases, cases, filters, tripods, flash units, batteries and carrying straps; cinematographic machines and apparatus; optical machines and apparatus; batteries and dry cells; batteries and cells; broadcasting machines and apparatus, namely, video cameras for broadcasting, video editing apparatus for use in broadcasting, video surveillance apparatus, video servers and video screens; telecommunication machines and apparatus; video frequency devices and apparatus, namely, video editing apparatus, video surveillance apparatus, video servers and video screens; broadcasting machines and apparatus; digital cameras; radio communication machines and apparatus; video cameras; audio frequency devices and apparatus; global positioning system apparatus; video frequency devices and apparatus; personal digital assistants in the shape of watch; smartphones; computer programs, recorded, for video editing, for video conferencing, for database management, and, for electronic storage of data; electronic machines and apparatus, namely, LCD monitors, computer peripheral equipment for input, output, transmission and storage of data, network communication equipment, data processing apparatus and parts therefor; downloadable music files; computer programs; application software for smartphones; electronic machines and apparatus and their parts; downloadable image files; recorded video discs and video tapesClass 009 for Photographic machines and apparatus, namely, photographic cameras, wearable cameras, digital cameras and accessories therefor, namely, lenses, remote shutter releases, cases, filters, tripods, flash units, batteries and carrying straps; cinematographic machines and apparatus; batteries and dry cells; broadcasting machines and apparatus, namely, video cameras for broadcasting, video editing apparatus for use in broadcasting, video surveillance apparatus, video servers and video screens; video frequency devices and apparatus, namely, video editing apparatus, video surveillance apparatus, video servers and video screens; digital cameras; video cameras; global positioning system apparatus; personal digital assistants in the shape of watch; smartphones; computer programs, recorded, for video editing, for video conferencing, for database management, and, for electronic storage of data; electronic machines and apparatus, namely, LCD monitors, computer peripheral equipment for input, output, transmission and storage of data, network communication equipment, data processing apparatus and parts therefor; downloadable music files
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(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 [ Japan application number 2018-145304 filed 11/26/2018]. 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 010 for Medical apparatus and instruments; endoscopy cameras for medical purposes; flow cytometers; cell sorters
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(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[ Japan application number 2018-145304 filed 11/26/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Medical apparatus and instruments; Medical apparatus and instruments, namely, imaging cameras for medical use, computer monitors for medical use, computer printers for medical use, video recorders for medical use, and, IP Imaging Platforms by which video and still images are transmitted over hospital networks; endoscopy cameras for medical purposes; flow cytometers; flow cytometers for medical diagnostic uses; cell sorters; cell sorters, namely, liquid chromatography cell sorters for use in medical immunoassay proceduresClass 010 for Medical apparatus and instruments, namely, imaging cameras for medical use, computer monitors for medical use, computer printers for medical use, video recorders for medical use, and, IP Imaging Platforms by which video and still images are transmitted over hospital networks; endoscopy cameras for medical purposes; flow cytometers for medical diagnostic uses; cell sorters, namely, liquid chromatography cell sorters for use in medical immunoassay procedures
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(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 [ Japan application number 2018-145304 filed 11/26/2018]. 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 Production of radio and television programs; production of videotape film in the field of education, culture, entertainment and sports, excluding movies and television programs and not for advertising or publicity; movie theatre presentations and movie film production and distribution; operation of video and audio equipment for production of radio and television programs; rental of cinematographic machines and apparatus; rental of cameras; rental of optical machines and 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.

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[ Japan application number 2018-145304 filed 11/26/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Production of radio and television programs; production of videotape film in the field of education, culture, entertainment and sports, excluding movies and television programs and not for advertising or publicity; movie theatre presentations and movie film production and distribution; presentation of motion picture theatre and motion picture film production and distribution; operation of video and audio equipment for production of radio and television programs; rental of cinematographic machines and apparatus; rental of cameras; rental of optical machines and apparatusClass 041 for Production of radio and television programs; production of videotape film in the field of education, culture, entertainment and sports, excluding movies and television programs and not for advertising or publicity; presentation of motion picture theatre and motion picture film production and distribution; operation of video and audio equipment for production of radio and television programs; rental of cinematographic machines and apparatus; rental of cameras; rental of optical machines and 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.

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 [ Japan application number 2018-145304 filed 11/26/2018]. 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.

The applicant's current attorney information: /Robert B.G. Horowitz/. /Robert B.G. Horowitz/ of BAKER & HOSTETLER LLP, is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      US
The docket/reference number is 41279.3177.

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/. Other appointed attorneys are Kevin M. Wallace, Esq.. /Robert B.G. Horowitz/ 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 41279.3177.

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/ 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/. /ROBERT B.G. HOROWITZ/ of BAKER & HOSTETLER LLP, is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      US
The docket/reference number is 41279.3177.

The phone number is 212-589-4200 x894240.

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/. /Robert B.G. Horowitz/ of BAKER & HOSTETLER LLP, is located at

      45 ROCKEFELLER PLAZA, 14TH FLOOR
      NEW YORK, New York 10111
      United States
The docket/reference number is 41279.3177.

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

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Office Action dated May 31, 2019 has been received and carefully reviewed. The Hon. Trademark Attorney requested a copy of the Certificate of Foreign Registration for this mark. Applicant respectfully responds that said Registration has not yet issued and requests that this application be placed in suspension as a result.


SIGNATURE(S)
Response Signature
Signature: /Robert B.G. Horowitz/     Date: 11/14/2019
Signatory's Name: Robert B.G. Horowitz
Signatory's Position: Attorney of record

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/
   BAKER & HOSTETLER LLP
   
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
Mailing Address:    /Robert B.G. Horowitz/
   BAKER & HOSTETLER LLP
   45 ROCKEFELLER PLAZA, 14TH FLOOR
   NEW YORK, New York 10111
        
Serial Number: 88391799
Internet Transmission Date: Thu Nov 14 15:45:00 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019111415450056
8921-88391799-7008498f64f6160c9547ec9711
72364a2fdc689d816b8a25451c7f9e56fe351da-
N/A-N/A-20191114153619149197