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. 88489426 CATV(Standard Characters, see http://uspto.report/TM/88489426/mark.png) has been amended as follows:

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

CATV is a news website about California (CA) and a social network (see additional specimen - printout of the website catv.com); Services from the application are not used for cable television; The wording "Providing a website featuring a search engine for media content" is used for the search engine of locally hosted media files (video, audio, etc.) and content (groups, activity, members, forums, etc.); This wording has been removed to exclude any questions; The applicant is the owner of the registered service mark CATV in international class 038, principal register, US registration number 5791558; The applicant is the owner of the registered service mark CATV in international class 041, principal register, US registration number 5888469; Services are not used for cable television, but describe the relevant sections and services of the news site and the social network CATV (catv.com). Please reconsider your office action and let the application proceed.

EVIDENCE
Evidence in the nature of Printout of the website catv.com has been attached.
Original PDF file:
evi_2605e0001417502988d890d110bfff-20200315134554468344_._20200315105125.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 042 for Application service provider (ASP) featuring software for use in uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Application service provider (ASP), namely, hosting computer software applications of others; Creating and designing website based indexes of information for others using information technology; Creating and maintaining blogs for others; Creating, designing and maintaining web sites; Design, development and implementation of software; Design, development, installation and maintenance of computer software; Development, maintenance and updating of a telecommunication network search engine; Electronic data storage; Electronic storage of documents and archived e-mails; Electronic storage of electronic media, namely, images, text and audio data; Electronic storage of files and documents; Electronic storage of messages; Electronic storage services for archiving electronic data; Hosting of digital content on the Internet; Maintenance of websites and hosting on-line web facilities for others; Mobile media services in the nature of electronic storage of entertainment media content; On-line batch computer services, namely, configuration of multiple files into a single group; Peer-to-browser photo sharing services, namely, providing a website featuring technology enabling users to upload, view, and download digital photos; Providing temporary use of on-line non-downloadable software and applications for use in creation of personal user profiles featuring user-defined information and transferring and sharing of such information among multiple websites; Providing temporary use of on-line non-downloadable software and applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing temporary use of on-line non-downloadable software and applications for sharing web-based documents; Providing temporary use of on-line non-downloadable software and applications for use in uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Providing temporary use of on-line non-downloadable software for use in collection of statistical data about the behavior of viewers of online videos, pictures, images, text, photos and other electronic media or information; Providing a members-only website featuring technology which provides members with the ability to access, view, upload, display, share, download or otherwise interact with electronic media, multimedia content, other data and information; Providing a web site allowing users to upload on-line videos for sharing with others for motivational and inspirational purposes; Providing a web site featuring technology that enables internet users to create, bookmark, annotate, and publicly share data; Providing a web site featuring technology that enables internet users to share documents, images and videos; Providing a web site featuring temporary use of non-downloadable software for use in uploading, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, videos, pictures, images, text, photos, user-generated content, audio content and information via the Internet and other communications networks; Providing a website allowing users to download music and music videos; Providing a website featuring a search engine for media content; Providing a website that gives users the ability to review various print, photographic, graphic image, and audio and video content and utilize a custom template to provide input, likes, dislikes, edits, changes, modifications, opinions, suggestions, and comments and engage in social, business and community networking; Computer services, namely, interactive hosting services which allow the users to publish and share their own content and images on-line; Computer security services, namely, restricting unauthorized access to computer networks; Computer security services, namely, restricting unauthorized access to websites; Computer security services, namely, restricting unauthorized network access by users without credentials; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information; Computer services, namely, creating an on-line community for registered users to participate in discussions and engage in social, business and community networking; Computer services, namely, designing and implementing web pages for others; Computer services, namely, filtering of unwanted e-mails; Computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; Computer services, namely, managing web sites for others; Computer services, namely, on-site management of information technology (IT) systems of others; Computer services, namely, providing customized web pages featuring user-defined information; Computer services, namely, uploading music to the Internet for others; File sharing services, namely, providing a website featuring technology enabling users to upload and download electronic files; Hosting on-line web facilities for others for managing and sharing on-line content; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Providing a web site featuring technology that enables internet users to submit comments of personal recognition; Providing a web site featuring temporary use of non-downloadable software allowing web site users to upload, post and display online videos for sharing with others for entertainment purposes; Providing a web site for the electronic storage of digital photographs and videos; Providing a web site that gives computer users the ability to upload and share user-generated videos, essays and articles on a wide variety of topics and subjects; Providing a website allowing users to upload and download music; Providing a website featuring on-line non-downloadable software tools for image editing; Providing a website featuring technology that enables users to upload and share user-generated videos on a wide variety of topics and subjects; Providing a website that features technology that enables the secure exchange of information by users; Providing an on-line network environment that features technology that enables users to share data; Providing customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites; Providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other web sites; Providing user authentication services using single sign-on technology for online software applications
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/14/2017 and first used in commerce at least as early as 03/05/2018 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Application service provider (ASP) featuring software for use in uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Application service provider (ASP), namely, hosting computer software applications of others; Creating and designing website based indexes of information for others using information technology; Creating and maintaining blogs for others; Creating, designing and maintaining web sites; Design, development and implementation of software; Design, development, installation and maintenance of computer software; Development, maintenance and updating of a telecommunication network search engine; Electronic data storage; Electronic storage of documents and archived e-mails; Electronic storage of electronic media, namely, images, text and audio data; Electronic storage of files and documents; Electronic storage of messages; Electronic storage services for archiving electronic data; Hosting of digital content on the Internet; Maintenance of websites and hosting on-line web facilities for others; Mobile media services in the nature of electronic storage of entertainment media content; On-line batch computer services, namely, configuration of multiple files into a single group; Peer-to-browser photo sharing services, namely, providing a website featuring technology enabling users to upload, view, and download digital photos; Providing temporary use of on-line non-downloadable software and applications for use in creation of personal user profiles featuring user-defined information and transferring and sharing of such information among multiple websites; Providing temporary use of on-line non-downloadable software and applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing temporary use of on-line non-downloadable software and applications for sharing web-based documents; Providing temporary use of on-line non-downloadable software and applications for use in uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Providing temporary use of on-line non-downloadable software for use in collection of statistical data about the behavior of viewers of online videos, pictures, images, text, photos and other electronic media or information; Providing a members-only website featuring technology which provides members with the ability to access, view, upload, display, share, download or otherwise interact with electronic media, multimedia content, other data and information; Providing a web site allowing users to upload on-line videos for sharing with others for motivational and inspirational purposes; Providing a web site featuring technology that enables internet users to create, bookmark, annotate, and publicly share data; Providing a web site featuring technology that enables internet users to share documents, images and videos; Providing a web site featuring temporary use of non-downloadable software for use in uploading, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, videos, pictures, images, text, photos, user-generated content, audio content and information via the Internet and other communications networks; Providing a website allowing users to download music and music videos; Providing a website featuring a search engine for media content; Providing a website that gives users the ability to review various print, photographic, graphic image, and audio and video content and utilize a custom template to provide input, likes, dislikes, edits, changes, modifications, opinions, suggestions, and comments and engage in social, business and community networking; Computer services, namely, interactive hosting services which allow the users to publish and share their own content and images on-line; Computer security services, namely, restricting unauthorized access to computer networks; Computer security services, namely, restricting unauthorized access to websites; Computer security services, namely, restricting unauthorized network access by users without credentials; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information; Computer services, namely, creating an on-line community for registered users to participate in discussions and engage in social, business and community networking; Computer services, namely, designing and implementing web pages for others; Computer services, namely, filtering of unwanted e-mails; Computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; Computer services, namely, managing web sites for others; Computer services, namely, on-site management of information technology (IT) systems of others; Computer services, namely, providing customized web pages featuring user-defined information; Computer services, namely, uploading music to the Internet for others; File sharing services, namely, providing a website featuring technology enabling users to upload and download electronic files; Hosting on-line web facilities for others for managing and sharing on-line content; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Providing a web site featuring technology that enables internet users to submit comments of personal recognition; Providing a web site featuring temporary use of non-downloadable software allowing web site users to upload, post and display online videos for sharing with others for entertainment purposes; Providing a web site for the electronic storage of digital photographs and videos; Providing a web site that gives computer users the ability to upload and share user-generated videos, essays and articles on a wide variety of topics and subjects; Providing a website allowing users to upload and download music; Providing a website featuring on-line non-downloadable software tools for image editing; Providing a website featuring technology that enables users to upload and share user-generated videos on a wide variety of topics and subjects; Providing a website that features technology that enables the secure exchange of information by users; Providing an on-line network environment that features technology that enables users to share data; Providing customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites; Providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other web sites; Providing user authentication services using single sign-on technology for online software applicationsClass 042 for Application service provider (ASP) featuring software for use in uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Application service provider (ASP), namely, hosting computer software applications of others; Creating and designing website based indexes of information for others using information technology; Creating and maintaining blogs for others; Creating, designing and maintaining web sites; Design, development and implementation of software; Design, development, installation and maintenance of computer software; Development, maintenance and updating of a telecommunication network search engine; Electronic data storage; Electronic storage of documents and archived e-mails; Electronic storage of electronic media, namely, images, text and audio data; Electronic storage of files and documents; Electronic storage of messages; Electronic storage services for archiving electronic data; Hosting of digital content on the Internet; Maintenance of websites and hosting on-line web facilities for others; Mobile media services in the nature of electronic storage of entertainment media content; On-line batch computer services, namely, configuration of multiple files into a single group; Peer-to-browser photo sharing services, namely, providing a website featuring technology enabling users to upload, view, and download digital photos; Providing temporary use of on-line non-downloadable software and applications for use in creation of personal user profiles featuring user-defined information and transferring and sharing of such information among multiple websites; Providing temporary use of on-line non-downloadable software and applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing temporary use of on-line non-downloadable software and applications for sharing web-based documents; Providing temporary use of on-line non-downloadable software and applications for use in uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Providing temporary use of on-line non-downloadable software for use in collection of statistical data about the behavior of viewers of online videos, pictures, images, text, photos and other electronic media or information; Providing a members-only website featuring technology which provides members with the ability to access, view, upload, display, share, download or otherwise interact with electronic media, multimedia content, other data and information; Providing a web site allowing users to upload on-line videos for sharing with others for motivational and inspirational purposes; Providing a web site featuring technology that enables internet users to create, bookmark, annotate, and publicly share data; Providing a web site featuring technology that enables internet users to share documents, images and videos; Providing a web site featuring temporary use of non-downloadable software for use in uploading, posting, showing, editing, playing, streaming, viewing, previewing, displaying, tagging, blogging, sharing, manipulating, distributing, publishing, reproducing, and otherwise providing electronic media, multimedia content, videos, pictures, images, text, photos, user-generated content, audio content and information via the Internet and other communications networks; Providing a website allowing users to download music and music videos; Providing a website that gives users the ability to review various print, photographic, graphic image, and audio and video content and utilize a custom template to provide input, likes, dislikes, edits, changes, modifications, opinions, suggestions, and comments and engage in social, business and community networking; Computer services, namely, interactive hosting services which allow the users to publish and share their own content and images on-line; Computer security services, namely, restricting unauthorized access to computer networks; Computer security services, namely, restricting unauthorized access to websites; Computer security services, namely, restricting unauthorized network access by users without credentials; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information; Computer services, namely, creating an on-line community for registered users to participate in discussions and engage in social, business and community networking; Computer services, namely, designing and implementing web pages for others; Computer services, namely, filtering of unwanted e-mails; Computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions; Computer services, namely, managing web sites for others; Computer services, namely, on-site management of information technology (IT) systems of others; Computer services, namely, providing customized web pages featuring user-defined information; Computer services, namely, uploading music to the Internet for others; File sharing services, namely, providing a website featuring technology enabling users to upload and download electronic files; Hosting on-line web facilities for others for managing and sharing on-line content; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Providing a web site featuring technology that enables internet users to submit comments of personal recognition; Providing a web site featuring temporary use of non-downloadable software allowing web site users to upload, post and display online videos for sharing with others for entertainment purposes; Providing a web site for the electronic storage of digital photographs and videos; Providing a web site that gives computer users the ability to upload and share user-generated videos, essays and articles on a wide variety of topics and subjects; Providing a website allowing users to upload and download music; Providing a website featuring on-line non-downloadable software tools for image editing; Providing a website featuring technology that enables users to upload and share user-generated videos on a wide variety of topics and subjects; Providing a website that features technology that enables the secure exchange of information by users; Providing an on-line network environment that features technology that enables users to share data; Providing customized on-line web pages and data feeds featuring user-defined information, which includes blog posts, new media content, other on-line content, and on-line web links to other websites; Providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other web sites; Providing user authentication services using single sign-on technology for online software applications
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 09/14/2017 and first used in commerce at least as early as 03/05/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of print out of the website catv.com.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-2605e0001417502988d890d110bfff-20200315134554468344_._20200315105125.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Correspondence Information (current):
      Abraham Lichy
      PRIMARY EMAIL FOR CORRESPONDENCE: alichy@lichylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Abraham Lichy
      PRIMARY EMAIL FOR CORRESPONDENCE: alichy@lichylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sandy@sandylipkin.com; roman.matusevich@gmail.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).

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: /Sandy Lipkin/      Date: 03/15/2020
Signatory's Name: Sandy Lipkin
Signatory's Position: Attorney of Record
Signatory's Phone Number: 805-275-1861


Response Signature
Signature: /Sandy Lipkin/     Date: 03/15/2020
Signatory's Name: Sandy Lipkin
Signatory's Position: Attorney of Record

Signatory's Phone Number: 805-275-1861

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:    Abraham Lichy
   The Lichy Law Firm, P.C.
   
   222 East 68th Street
   New York, New York 10065
Mailing Address:    Abraham Lichy
   The Lichy Law Firm, P.C.
   222 East 68th Street
   New York, New York 10065
        
Serial Number: 88489426
Internet Transmission Date: Sun Mar 15 13:53:53 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXX:XXX:XX
XX:XXXX-20200315135353947660-88489426-71
0d291372fa964b9678cd2594a4f8152aee59f7aa
fe4af9c7bab59ced6143cbe73-N/A-N/A-202003
15134554468344