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. 88483555  (Stylized and/or with Design, see http://uspto.report/TM/88483555/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: (Stylized and/or with Design, see http://uspto.report/TM/88483555/mark.png)
Proposed: (Stylized and/or with Design, see mark)
The color(s) dark blue, light blue, turquoise, black and white is/are claimed as a feature of the mark.
The mark consists of the design of a stylized cell phone, outlined in black and dark blue, with a light blue interior, with the design of two bisected ovals overlaid on the longer parallel sides. The outer portion of the ovals is in turquoise, the inner portions of the ovals inside the phone design are white, and the inner portion of the ovals outside the phone are in turquoise.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Smartphones; earphones; headphones; telecommunication machines and apparatus; application software for smartphones; computer programs; electronic machines and apparatus
Original Filing Basis:
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 2019-012987 filed 01/18/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Smartphones; earphones; headphones; telecommunication machines and apparatus; telecommunication machines and apparatus, namely, smartphones with electronic touch, pressure, gesture-sensitive and motion sensors; application software for smartphones; downloadable application software for use with electronic touch, pressure, gesture-sensitive and motion sensors for smartphones; computer programs; downloadable computer programs for use with electronic touch, pressure, gesture-sensitive and motion sensors; electronic machines and apparatus; electronic machines and apparatus, namely, electronic touch, pressure, gesture-sensitive and motion sensors for controlling smartphonesClass 009 for Smartphones; earphones; headphones; telecommunication machines and apparatus, namely, smartphones with electronic touch, pressure, gesture-sensitive and motion sensors; downloadable application software for use with electronic touch, pressure, gesture-sensitive and motion sensors for smartphones; downloadable computer programs for use with electronic touch, pressure, gesture-sensitive and motion sensors; electronic machines and apparatus, namely, electronic touch, pressure, gesture-sensitive and motion sensors for controlling smartphones
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 2019-012987 filed 01/18/2019]. 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: Ann K. Ford. Ann K. Ford of DLA PIPER LLP (US), is located at

      500 EIGHTH STREET, NW
      WASHINGTON, District of Columbia 20004
      US

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

The applicants proposed attorney information: Ann K. Ford. Other appointed attorneys are Thomas E. Zutic; John M. Nading; Ryan C. Compton; Eunice R. Chung; David M. Kramer; Ashley H. Joyce; James K.S. Stewart; Naomi E. Abraham; Alberto Z. Zacapa; Devika Persaud; Latoya A. Tyson. Ann K. Ford of DLA PIPER LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      500 EIGHTH STREET, NW
      WASHINGTON, District of Columbia 20004
      United States

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

Ann K. Ford 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: ANN K. FORD. ANN K. FORD of DLA PIPER LLP (US), is located at

      500 EIGHTH STREET, NW
      WASHINGTON, District of Columbia 20004
      US

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

The applicants proposed correspondence information: Ann K. Ford. Ann K. Ford of DLA PIPER LLP (US), is located at

      500 EIGHTH STREET, NW
      WASHINGTON, District of Columbia 20004
      United States

The phone number is 202-799-4000.

The fax number is 2027995000.

The email address is dctrademarks@dlapiper.com

SIGNATURE(S)
Response Signature
Signature: /David M. Kramer/     Date: 01/15/2020
Signatory's Name: David M. Kramer
Signatory's Position: Attorney of Record, District of Columbia bar member

Signatory's Phone Number: 2027994000

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:    ANN K. FORD
   DLA PIPER LLP (US)
   
   500 EIGHTH STREET, NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Ann K. Ford
   DLA PIPER LLP (US)
   500 EIGHTH STREET, NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88483555
Internet Transmission Date: Wed Jan 15 13:13:36 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202001151313360
52886-88483555-700883a1646759bef5fdfc4c7
13cc53bbc05fcbf898dc0d634bd8ad106f598c8-
N/A-N/A-20200115122336317646