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. 88480291 MUSE(Standard Characters, see http://uspto.report/TM/88480291/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Dear Sir/Madam,

This is in response to the official letter of July 19, 2019.

The goods and services in the application has been amended accordingly. 

Favourable consideration is requested.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for meditation, wellness and sleep health instruction and/or research; software applications for meditation, wellness and/or research purposes, namely, software applications for the provision of meditation, wellness and sleep health instructions and/or research; computer application software for mobile devices, namely, software for provision of meditation, wellness and sleep health instructions and/or research; virtual reality software for meditation, wellness and sleep health instruction
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: Computer software for meditation, wellness and sleep health instruction and/or research; Downloadable computer software for meditation, wellness and sleep health instruction and/or research; software applications for meditation, wellness and/or research purposes, namely, software applications for the provision of meditation, wellness and sleep health instructions and/or research; downloadable software applications for meditation, wellness and/or research purposes, namely, software applications for the provision of meditation, wellness and sleep health instructions and/or research; computer application software for mobile devices, namely, software for provision of meditation, wellness and sleep health instructions and/or research; downloadable computer application software for mobile devices, namely, software for provision of meditation, wellness and sleep health instructions and/or research; virtual reality software for meditation, wellness and sleep health instruction; downloadable virtual reality software for meditation, wellness and sleep health instruction; Prerecorded audio and video recordings in the field of meditation, mental health and sleep health; downloadable multimedia podcasts featuring wellness, meditation and sleep health instruction accessible via the internet; downloadable audio recordings and downloadable multimedia files in the field of meditation, wellness, and sleep health accessible via the internet and via voice command through wireless communications networksClass 009 for Downloadable computer software for meditation, wellness and sleep health instruction and/or research; downloadable software applications for meditation, wellness and/or research purposes, namely, software applications for the provision of meditation, wellness and sleep health instructions and/or research; downloadable computer application software for mobile devices, namely, software for provision of meditation, wellness and sleep health instructions and/or research; downloadable virtual reality software for meditation, wellness and sleep health instruction; Prerecorded audio and video recordings in the field of meditation, mental health and sleep health; downloadable multimedia podcasts featuring wellness, meditation and sleep health instruction accessible via the internet; downloadable audio recordings and downloadable multimedia files in the field of meditation, wellness, and sleep health accessible via the internet and via voice command through wireless 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Prerecorded audio and video recordings in the field of meditation, mental health and sleep health; multimedia podcasts featuring wellness, meditation and sleep health instruction accessible via the internet; audio and multimedia recordings in the field of meditation, wellness, and sleep health accessible via the internet and via voice command through wireless communications networks
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: Prerecorded audio and video recordings in the field of meditation, mental health and sleep health; providing multimedia podcasts featuring wellness, meditation and sleep health instruction accessible via the internet; multimedia podcasts featuring wellness, meditation and sleep health instruction accessible via the internet; providing online non-downloadable audio and multimedia recordings in the field of meditation, wellness, and sleep health accessible via the internet and via voice command through wireless communications networks; audio and multimedia recordings in the field of meditation, wellness, and sleep health accessible via the internet and via voice command through wireless communications networksClass 041 for providing multimedia podcasts featuring wellness, meditation and sleep health instruction accessible via the internet; providing online non-downloadable audio and multimedia recordings in the field of meditation, wellness, and sleep health accessible via the internet and via voice command through wireless 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for providing temporary use of online non-downloadable computer software for meditation, wellness and sleep health instruction and/or research; providing temporary use of online non-downloadable software applications for meditation, wellness and/or research purposes, namely software applications for the provision of meditation, wellness and sleep health instructions and/or research; providing temporary use of online non-downloadable computer application software for mobile devices, namely, software for provision of meditation, wellness and sleep health instructions and/or research; providing temporary use of online non-downloadable virtual reality software for meditation, wellness and sleep health instruction
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Elliott Gold/      Date: 08/02/2019
Signatory's Name: Elliott J. Gold
Signatory's Position: Attorney
Signatory's Phone Number: 416-865-3528


Response Signature
Signature: /Elliott Gold/     Date: 08/02/2019
Signatory's Name: Elliott J. Gold
Signatory's Position: Attorney

Signatory's Phone Number: 416-865-3528

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 88480291
RAM Accounting Date: 08/02/2019
        
Serial Number: 88480291
Internet Transmission Date: Fri Aug 02 14:23:46 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019080214234668
9723-88480291-620daa044687edd29be83921af
55d11af1ff2547eeb5966dcc8536e7b57e7b185f
-DA-23465954-20190802141728561936