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. 88499569 SPIRITUAL VISION(Standard Characters, see http://uspto.report/TM/88499569/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Computer software and computer hardware, CD Roms, VCDs, DVDs, cinematographic films, videotapes and video disks recorded with religious and spiritual music, visual recordings and audio visual recordings featuring music in the field of religion, spirituality, self improvement; computer programs, disks and tapes, electronic publications, encoded cards, compact discs, audio and video discs, floppy discs, video tapes and cassettes, parts and fittings for all aforesaid goods
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Computer software and computer hardware, CD Roms, VCDs, DVDs, cinematographic films, videotapes and video disks recorded with religious and spiritual music, visual recordings and audio visual recordings featuring music in the field of religion, spirituality, self improvement; Recorded and downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, computer hardware, pre-recorded CD ROMs, VCDs, DVDs, cinematographic films, videotapes and video disks featuring religious and spiritual music, visual recordings and audio visual recordings featuring music in the field of religion, spirituality, self-improvement; computer programs, disks and tapes, electronic publications, encoded cards, compact discs, audio and video discs, floppy discs, video tapes and cassettes, parts and fittings for all aforesaid goods; computer programs, disks and tapes, electronic publications, electronic downloadable publications in the nature of books and magazines in the field of religion, magnetically encoded identity cards, pre-recorded compact discs, audio and video discs, floppy computer discs, video tapes and cassettes featuring religious and spiritual music, replacement parts and fittings for all aforesaid goodsClass 009 for Recorded and downloadable computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information, computer hardware, pre-recorded CD ROMs, VCDs, DVDs, cinematographic films, videotapes and video disks featuring religious and spiritual music, visual recordings and audio visual recordings featuring music in the field of religion, spirituality, self-improvement; computer programs, disks and tapes, electronic publications, electronic downloadable publications in the nature of books and magazines in the field of religion, magnetically encoded identity cards, pre-recorded compact discs, audio and video discs, floppy computer discs, video tapes and cassettes featuring religious and spiritual music, replacement parts and fittings for all aforesaid goods
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following:
Current: Class 016 for Religious books; religious circular letters; printed matter, brochures, reports, catalogues, paper, cardboard; news bulletins; photographs, office requisites (except furniture) and stationery
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Religious books; religious circular letters; printed matter, brochures, reports, catalogues, paper, cardboard; printed matter, namely, brochures, reports, and catalogues in the field of religion, paper, cardboard; news bulletins; photographs, office requisites (except furniture) and stationery; photographs, office requisites, except furniture, namely, staplers, staple removers, rubber bands and adhesive tape dispensers, and stationery; non-magnetically encoded volunteer identity cardsClass 016 for Religious books; religious circular letters; printed matter, namely, brochures, reports, and catalogues in the field of religion, paper, cardboard; news bulletins; photographs, office requisites, except furniture, namely, staplers, staple removers, rubber bands and adhesive tape dispensers, and stationery; non-magnetically encoded volunteer identity cards
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following:
Current: Class 041 for Religious instruction services ; educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; providing of training, arranging and conducting educational conferences, arranging of exhibitions, seminars and conferences; television entertainment, production of television programs and shows, film production, recording studio services, presentation of live show performances, dubbing services
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Religious instruction services; educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; providing of training, arranging and conducting educational conferences, arranging of exhibitions, seminars and conferences; providing of training in the field of religion, arranging and conducting educational conferences, arranging of exhibitions, seminars and conferences for cultural or educational purposes; television entertainment, production of television programs and shows, film production, recording studio services, presentation of live show performances, dubbing services; entertainment in the nature of ongoing television programs in the field of religion, production of television programs and shows, film production, recording studio services, presentation of live show performances featuring music religion, spirituality and self-improvement; dubbing servicesClass 041 for Religious instruction services; educational and entertainment services, namely, providing motivational and educational speakers in the field of self- and personal improvement; providing of training in the field of religion, arranging and conducting educational conferences, arranging of exhibitions, seminars and conferences for cultural or educational purposes; entertainment in the nature of ongoing television programs in the field of religion, production of television programs and shows, film production, recording studio services, presentation of live show performances featuring music religion, spirituality and self-improvement; dubbing services
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following:
Current: Class 045 for Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals and spiritual rehabilitation services; religious prayer services; evangelistic and ministerial services; ministerial services, namely, holding spiritual retreats to assist religious leaders, both clergy and lay, to develop and enhance their spiritual lives; charitable outreach services, namely, providing counseling services in the field of religion to the needy, the imprisoned, and the sick; providing on-line information in the field of spirituality, self-help, and personal empowerment subject matters
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals and spiritual rehabilitation services; Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals; religious prayer services; providing spiritual rehabilitation services; conducting religious prayer services; evangelistic and ministerial services; ministerial services, namely, holding spiritual retreats to assist religious leaders, both clergy and lay, to develop and enhance their spiritual lives; charitable outreach services, namely, providing counseling services in the field of religion to the needy, the imprisoned, and the sick; providing on-line information in the field of spirituality, self-help, and personal empowerment subject mattersClass 045 for Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals; providing spiritual rehabilitation services; conducting religious prayer services; evangelistic and ministerial services; ministerial services, namely, holding spiritual retreats to assist religious leaders, both clergy and lay, to develop and enhance their spiritual lives; charitable outreach services, namely, providing counseling services in the field of religion to the needy, the imprisoned, and the sick; providing on-line information in the field of spirituality, self-help, and personal empowerment subject matters
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1805076 registered 11/07/2018 with a renewal date of __________ and an expiration date of 10/26/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: OWA Holdings Ltd., a limited liability company legally organized under the laws of United Kingdom, having an address of
      71-75, Shelton Street Covent Garden
      London, WC2H9JQ
      United Kingdom

Proposed: OWA Holdings Ltd., a limited liability company legally organized under the laws of United Kingdom, having an address of
      71-75, Shelton Street Covent Garden
      London, WC2H9JQ
      United Kingdom
      Email Address: elizabeth@puthrans.com
Correspondence Information (current):
      Elise Tenen-Aoki
      PRIMARY EMAIL FOR CORRESPONDENCE: elise@taiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@1027tm.com
Correspondence Information (proposed):
      Elise Tenen-Aoki
      PRIMARY EMAIL FOR CORRESPONDENCE: elise@taiplaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@1027tm.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 SPIRITUAL apart from the mark as shown.


Miscellaneous Statement
Applicant has had a bona fide and effective industrial or commercial establishment in Australia as of the date of issuance of the foreign registrations forming the basis of the 44(e) claims.


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: /eta/      Date: 03/24/2020
Signatory's Name: Elise Tenen-Aoki
Signatory's Position: Attorney of Record, Member California Bar
Signatory's Phone Number: 949-705-6856


Response Signature
Signature: /eta/     Date: 03/24/2020
Signatory's Name: Elise Tenen-Aoki
Signatory's Position: Attorney of Record, Member California Bar

Signatory's Phone Number: 949-705-6856

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:    Elise Tenen-Aoki
   TA IP Law, P.C.
   
   14271 Jeffrey Road, Suite 313
   Irvine, California 92620
Mailing Address:    Elise Tenen-Aoki
   TA IP Law, P.C.
   14271 Jeffrey Road, Suite 313
   Irvine, California 92620
        
Serial Number: 88499569
Internet Transmission Date: Tue Mar 24 14:41:59 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXX:XXXX:XXXX:X
XXX:XXXX-20200324144159106271-88499569-7
10c262ca11d48be52b887bf85b0c57c472513299
3b8a7ca2061da89f25d66ee68-N/A-N/A-202003
24140549583622