TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88397987 INSTANT CAPTURE(Standard Characters, see http://uspto.report/TM/88397987/mark.png) has been amended as follows:
FOREIGN REGISTRATION
The applicant herein submits a digitized image of a copy, a certification, or a certified copy of a registration in the applicant's country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. If the foreign registration is not in English, an English translation thereof is being submitted. The applicant hereby requests removal of this application from suspension for further action by the examining attorney.

The applicant requests that the examining attorney delete the Section 1(b) basis for the goods and/or services that the foreign registration submitted herewith covers, IF the Section 44(e) basis is accepted for those goods and/or services.

Filing Basis: Section 44(e), Based on Foreign Registration: A copy of Korea, South registration number 1570748 registered 02/04/2020, with a renewal date of __________ and an expiration date of 02/04/2030, and translation thereof (if appropriate), is attached in accordance with 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FR_19235139129-074427881_._Korean_trademark_Register_with_English_translation_thereof.pdf
Converted PDF file(s) (4 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4

The foreign registration that is the basis of the U.S. application under Section 44(e) of the Trademark Act (15 U.S.C. Section 1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: LG Electronics Inc., a corporation of Korea, South, having an address of
      128, Yeoui-daero, Yeongdeungpo-gu
      Seoul, 07336
      Korea, South
      Email Address: XXXXProposed: LG Electronics Inc., a corporation of Korea, South, having an address of
      128, Yeoui-daero, Yeongdeungpo-gu
      Seoul, 07336
      Korea, South
      Email Address: XXXX

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). NOTE: The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce.

Miscellaneous Statement
Applicant thanks the examining attorney for the thorough consideration given the present application. Applicant's INSTANT CAPTURE mark is refused registration on the Principal Register because the mark purportedly merely describes a feature or characteristic of applicant's goods. Applicant respectfully disagrees, but to advance prosecution of the application, applicant has amended the application herein to seek registration on the Supplemental Register. REGISTRATION BASIS: Applicant respectfully requests that the basis be amended to Section 44(e) based on S. Korean Registration No. 1570748, a copy of which is submitted herewith. The applicant has had a bona fide and effective industrial or commercial establishment in S. Korea as of the date of issuance of the foreign registration. Applicant believes that all requirements to establish the Section 44(e) basis have been satisfied. Applicant respectfully requests that the Section 1(b) basis be deleted if the Section 44(e) basis is accepted. Applicant has checked the box to indicate that an Amendment to Allege Use is being filed solely to circumvent the electronic filing system, which requires the box to be checked to amend to the Supplemental Register. If the 44(e) basis is accepted, applicant will not be perfecting the 1(a) basis but instead is relying on the 44(e) basis to support the amendment to the Supplemental Register. REMARKS: Applicant has amended the basis in reliance on its S. Korean registration, and amended the application to seek registration on the Supplemental Register to overcome the 2(e)(1) refusal. There being no other issues raised in the Notice of Suspension, applicant believes that the present application is in condition for allowance. If the examining attorney has any questions concerning this application, the examining attorney is requested to contact Robert J. Kenney at (703) 205-8000 in the Washington, D.C. area. In view of the foregoing, applicant respectfully requests withdrawal of the 2(e)(1) merely descriptive refusal.
Correspondence Information (current):
      Robert J. Kenney
      PRIMARY EMAIL FOR CORRESPONDENCE: mailroom@bskb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Robert J. Kenney
      PRIMARY EMAIL FOR CORRESPONDENCE: mailroom@bskb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): msmith@bskb.com

The docket/reference number is 0465-6919US1.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

Response Suspension Inquiry Signature
Signature: /Robert J. Kenney/     Date: 04/13/2020
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member
Signatory's Phone Number: 7032058000

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 J. Kenney
   Birch Stewart Kolasch & Birch LLP
   
   8110 Gatehouse Road, Suite 100E
   Falls Church, Virginia
Mailing Address:    Robert J. Kenney
   Birch Stewart Kolasch & Birch LLP
   8110 Gatehouse Road, Suite 100E
   Falls Church, Virginia 22042
        
Serial Number: 88397987
Internet Transmission Date: Mon Apr 13 11:52:05 ET 2020
TEAS Stamp: USPTO/RSI-XXX.XX.XXX.XXX-202004131152052
35498-88397987-7104c11e1f45eebb499214c15
34b9356e1a80a09bf6b6cf7771919adcce6894-N
/A-N/A-20200413074427881051