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. 88462991 ARCADE (Stylized and/or with Design, see http://uspto.report/TM/88462991/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for advertising, marketing, and promotion services; promoting the goods and services of others; retail store and online retail store services; retail store services provided via the internet and other computer electronic and communications networks; retail store services featuring computer, electronic and entertainment products and computer software provided via the internet and other computer, electronic and communications networks; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the internet and other electronic and communications networks; providing downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, via the internet and other electronic and communications networks
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[ Liechtenstein application number 20181023 filed 12/07/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: advertising, marketing, and promotion services; promoting the goods and services of others; retail store and online retail store services; retail store services provided via the internet and other computer electronic and communications networks; retail store services featuring computer, electronic and entertainment products and computer software provided via the internet and other computer, electronic and communications networks; retail store services featuring computer, electronic, and entertainment products and computer software provided via the internet and other computer, electronic and communications networks; retail store services featuring computer, electronic, and entertainment products; providing downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, via the internet and other electronic and communications networks; retail store services featuring computer, electronic, and entertainment products provided via the internet and other computer, electronic and communications networks; retail store services featuring computer software; retail store services featuring computer software provided via the internet and other computer, electronic and communications networks; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the Internet and other electronic and communications networks; providing subscriptions to downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, via the internet and other electronic and communications networks; online retail services featuring downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, via the Internet and other electronic and communications networksClass 035 for advertising, marketing, and promotion services; promoting the goods and services of others; retail store and online retail store services; retail store services provided via the internet and other computer electronic and communications networks; retail store services featuring computer, electronic, and entertainment products and computer software provided via the internet and other computer, electronic and communications networks; retail store services featuring computer, electronic, and entertainment products; retail store services featuring computer, electronic, and entertainment products provided via the internet and other computer, electronic and communications networks; retail store services featuring computer software; retail store services featuring computer software provided via the internet and other computer, electronic and communications networks; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the Internet and other electronic and communications networks; providing subscriptions to downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, via the internet and other electronic and communications networks; online retail services featuring downloadable pre-recorded text, data, image, audio, video, and multimedia content for a fee or pre-paid subscription, via the Internet and other electronic and communications networks
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 [ Liechtenstein application number 20181023 filed 12/07/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:
Current: Class 041 for development, production, distribution, and presentation of multimedia entertainment content; providing non-downloadable computer games, electronic games, interactive games, and video games
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[ Liechtenstein application number 20181023 filed 12/07/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 041 for development, production, distribution, and presentation of multimedia entertainment content; providing non-downloadable computer games, electronic games, interactive games, and video games
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 [ Liechtenstein application number 20181023 filed 12/07/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Apple Inc., a corporation of California, having an address of
      One Apple Park Way
      Cupertino, California 95014
      United States

Proposed: Apple Inc., a corporation of California, having an address of
      One Apple Park Way
      Cupertino, California 95014
      United States
      Email Address: appletrademarks@apple.com

The owner's/holder's current attorney information: Thomas R. La Perle. Thomas R. La Perle of APPLE INC., is located at

      MS: 169-3IPL
      ONE APPLE PARK WAY
      CUPERTINO, California 95014
      United States
      The email address is trademarkdocket@apple.com

The owner's/holder's proposed attorney information: Thomas R. La Perle. Other appointed attorneys are All other attorneys in the Trademark Law Group. Thomas R. La Perle of APPLE INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      MS: 169-3IPL
      ONE APPLE PARK WAY
      CUPERTINO, California 95014
      United States
      The email address is trademarkdocket@apple.com

Thomas R. La Perle 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.Correspondence Information (current):
      THOMAS R. LA PERLE
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@apple.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): laperle@apple.com; karenmarie@apple.com
Correspondence Information (proposed):
      Thomas R. La Perle
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@apple.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): laperle@apple.com; karenmarie@apple.com

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

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "ARCADE" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Karen Marie Kitterman/     Date: 03/03/2020
Signatory's Name: Karen Marie Kitterman
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: (669) 227-7171

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:    THOMAS R. LA PERLE
   APPLE INC.
   MS: 169-3IPL
   ONE APPLE PARK WAY
   CUPERTINO, California 95014
Mailing Address:    Thomas R. La Perle
   APPLE INC.
   MS: 169-3IPL
   ONE APPLE PARK WAY
   CUPERTINO, California 95014
        
Serial Number: 88462991
Internet Transmission Date: Tue Mar 03 19:58:27 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:X:XXXX:XXXX:XXXX:XXXX
:XXXX-20200303195827255906-88462991-710a
3ce72e76625e2e50cf4759a5c8d338b696c8cbb9
5a22e2ea73dfd852c9c57-N/A-N/A-2020030319
4546603077