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. 88690494 RAKUTEN (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8869049 4/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable motion pictures; motion pictures for theatrical distribution; pre-recorded audio visual digital content; pre-recorded digital media, DVDs and optical media featuring motion pictures; digital downloadable video files for delivery to mobile telephone and personal digital devices; pre-recorded CD's, audio tapes, videotapes, optical discs, and digital downloadable audio files and webisodes for delivery to mobile telephone and personal digital devices; downloadable electronic publications in the nature of fiction, non-fiction, comics and screenplays via computer and communications networks; downloadable streaming and wireless entertainment content in the nature of audiovisual works, motion pictures, trailers, television programming, music and 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.


Proposed:

Tracked Text Description: Downloadable motion pictures; Downloadable motion pictures about comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; motion pictures for theatrical distribution; motion pictures films for theatrical distribution about comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded audio visual digital content; pre-recorded audio visual digital content in the nature of pre-recorded digital media, namely, digital audio and video tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded digital media, DVDs and optical media featuring motion pictures; pre-recorded digital media, namely, digital audio and video tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards featuring motion picture films; digital downloadable video files for delivery to mobile telephone and personal digital devices; digital downloadable multimedia files containing video for delivery to mobile telephone and personal digital devices relating to comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded CD's, audio tapes, videotapes, optical discs, and digital downloadable audio files and webisodes for delivery to mobile telephone and personal digital devices; pre-recorded CD's, audio tapes, videotapes, optical discs, and digital downloadable audio files and webisodes for delivery to mobile telephone and personal digital devices featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; downloadable electronic publications in the nature of fiction, non-fiction, comics and screenplays via computer and communications networks; downloadable electronic publications in the nature of e-books, journals, magazines, reviews, newsletters, news articles, articles and short stories in the field of fiction, non-fiction, comics and screenplays via computer and communications networks; downloadable streaming and wireless entertainment content in the nature of audiovisual works, motion pictures, trailers, television programming, music and games; downloadable streaming and wireless entertainment content in the nature of audiovisual works being tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards, motion pictures, multimedia file containing video relating to movie trailers, television programming shows, music and electronic games via the Internet and wireless devices all featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sportsClass 009 for Downloadable motion pictures about comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; motion pictures films for theatrical distribution about comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded audio visual digital content in the nature of pre-recorded digital media, namely, digital audio and video tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded digital media, namely, digital audio and video tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards featuring motion picture films; digital downloadable multimedia files containing video for delivery to mobile telephone and personal digital devices relating to comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; pre-recorded CD's, audio tapes, videotapes, optical discs, and digital downloadable audio files and webisodes for delivery to mobile telephone and personal digital devices featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; downloadable electronic publications in the nature of e-books, journals, magazines, reviews, newsletters, news articles, articles and short stories in the field of fiction, non-fiction, comics and screenplays via computer and communications networks; downloadable streaming and wireless entertainment content in the nature of audiovisual works being tapes, cassettes, discs, CDs, DVDs, optical discs, magnetic discs, high definition digital discs, magnetic data carriers, optical data carriers, flash drives, flash memory cards, USB flash drives and USB cards, motion pictures, multimedia file containing video relating to movie trailers, television programming shows, music and electronic games via the Internet and wireless devices all featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports
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:

Current:
Class 041 for Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows and multimedia entertainment content; provision of non-downloadable entertainment media content, namely, audio-visual recordings, photographs, films and movies, and television programs via video on demand (VOD) and subscription video on demand (SVOD); electronic sell-through (EST), namely, electronic media distribution in the nature of distribution of films, television programs, music, and literary works; entertainment services, namely, provision of ongoing television programs; entertainment services in the form of production and distribution of animation, visual effects, and computer graphics for motion pictures and television; providing audio and video content in the fields of entertainment and education; production and distribution of pre-recorded digital versatile discs (DVDs) and pre-recorded audio discs and non-disc digital storage media; movie theatre presentations; provision of cinema or theatre facilities; motion picture and television studio services; recording, modifying or editing services for film, sound and video; preparing subtitles for movies; providing online interviews featuring celebrities and athletes in the field of movies and sports for entertainment purposes; providing ratings for television, movie, music, video and video game content; planning arrangement of showing movies, shows, plays or musical performances rental of motion pictures and of sound recordings; rental of stage and movie equipment, namely, camera equipment, lighting equipment and grip equipment; entertainment ticket agency services; provision of information relating to distribution of television shows, motion picture film and radio shows; motion picture song production; rental of apparatus for transmitting, receiving, modifying, editing or reproducing cinematographic films, sound or video; rental of motion picture and television scenery and equipment; providing information, reviews and recommendations in the fields of entertainment, motion pictures, music and television over computer networks and global communication networks; providing online computer games; provision of non-downloadable motion pictures, music, movies and videos, all provided via a global computer network; providing online non-downloadable comic books and graphic novels; provision of blogs and non-downloadable publications in the field of entertainment, comics, screenplays, books, short stories, all provided via a website; consultancy in the field of entertainment and the entertainment industry; providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of entertainment
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: Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows and multimedia entertainment content; provision of non-downloadable entertainment media content, namely, audio-visual recordings, photographs, films and movies, and television programs via video on demand (VOD) and subscription video on demand (SVOD); provision of non-downloadable entertainment media content, namely, audio-visual recordings, photographs, films and movies, and television programs featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports via video on demand (VOD) and subscription video on demand (SVOD); electronic sell-through (EST), namely, electronic media distribution in the nature of distribution of films, television programs, music, and literary works; electronic sell-through (EST), namely, electronic media distribution in the nature of distribution of films, and television programs, and non-downloadable pre-recorded music, and literary works in the nature of articles in the field of music, film, filmmaking, and entertainment presented to mobile communications devices via a global computer network and wireless networks; entertainment services, namely, provision of ongoing television programs; entertainment services, namely, provision of ongoing television programs in the field of comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; entertainment services in the form of production and distribution of animation, visual effects, and computer graphics for motion pictures and television; providing audio and video content in the fields of entertainment and education; providing online non-downloadable audio and video recordings in the fields of entertainment and educational motion picture films; production and distribution of pre-recorded digital versatile discs (DVDs) and pre-recorded audio discs and non-disc digital storage media; production and distribution of pre-recorded digital versatile discs (DVDs) and pre-recorded audio discs and non-disc digital storage media being optical magnetic media, optical data carriers, magnetic data carriers, tapes, cassettes, flash drives, flash memory cards, USB flash drives and USB cards featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; movie theatre presentations; movie theatre presentations, namely, planning arrangement of showing movies; provision of cinema or theatre facilities; provision of cinema and theatre facilities; motion picture and television studio services; motion picture film and television studio services; recording, modifying or editing services for film, sound and video; recording, modifying or editing services for film, sound and video, namely, video and film recording services, video and film editing, editing of sounds and images and recording of sounds and images; preparing subtitles for movies; providing online interviews featuring celebrities and athletes in the field of movies and sports for entertainment purposes; providing ratings for television, movie, music, video and video game content; planning arrangement of showing movies, shows, plays or musical performances rental of motion pictures and of sound recordings; planning arrangement of showing movies, shows, plays or musical performances; rental of motion pictures and of sound recordings; rental of stage and movie equipment, namely, camera equipment, lighting equipment and grip equipment; entertainment ticket agency services; provision of information relating to distribution of television shows, motion picture film and radio shows; rental of apparatus for transmitting, receiving, modifying, editing or reproducing cinematographic films, sound or video; motion picture song production; rental of motion picture and television scenery and equipment; rental of audiovisual equipment for transmitting, receiving, modifying, editing or reproducing cinematographic films, sound or video; providing information, reviews and recommendations in the fields of entertainment, motion pictures, music and television over computer networks and global communication networks; rental of motion picture and television scenery sets and portable stages; providing online non-downloadable entertainment information, reviews and recommendations in the fields of entertainment films, motion pictures, music and television over computer networks and global communication networks; provision of non-downloadable motion pictures, music, movies and videos, all provided via a global computer network; providing online computer games; provision of non-downloadable motion pictures films, prerecorded music, movies and videos, all provided via a global computer network in the field of comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; provision of blogs and non-downloadable publications in the field of entertainment, comics, screenplays, books, short stories, all provided via a website; providing online non-downloadable comic books and graphic novels; consultancy in the field of entertainment and the entertainment industry; provision of blogs and non-downloadable publications in the field of entertainment being, comic books, screenplays, books, short stories, journals, magazines, reviews, newsletters, news articles and articles featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports all provided via a website; consultancy in the field of entertainment and the entertainment industry, namely, consulting regarding musical selections and arrangements for sound recording and live performances, film and video production consulting services, and consulting services in the field of cinematography; providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of entertainmentClass 041 for Entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, television shows and multimedia entertainment content; provision of non-downloadable entertainment media content, namely, audio-visual recordings, photographs, films and movies, and television programs featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports via video on demand (VOD) and subscription video on demand (SVOD); electronic sell-through (EST), namely, electronic media distribution in the nature of distribution of films, and television programs, and non-downloadable pre-recorded music, and literary works in the nature of articles in the field of music, film, filmmaking, and entertainment presented to mobile communications devices via a global computer network and wireless networks; entertainment services, namely, provision of ongoing television programs in the field of comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; entertainment services in the form of production and distribution of animation, visual effects, and computer graphics for motion pictures and television; providing online non-downloadable audio and video recordings in the fields of entertainment and educational motion picture films; production and distribution of pre-recorded digital versatile discs (DVDs) and pre-recorded audio discs and non-disc digital storage media being optical magnetic media, optical data carriers, magnetic data carriers, tapes, cassettes, flash drives, flash memory cards, USB flash drives and USB cards featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; movie theatre presentations, namely, planning arrangement of showing movies; provision of cinema and theatre facilities; motion picture film and television studio services; recording, modifying or editing services for film, sound and video, namely, video and film recording services, video and film editing, editing of sounds and images and recording of sounds and images; preparing subtitles for movies; providing online interviews featuring celebrities and athletes in the field of movies and sports for entertainment purposes; providing ratings for television, movie, music, video and video game content; planning arrangement of showing movies, shows, plays or musical performances; rental of motion pictures and of sound recordings; rental of stage and movie equipment, namely, camera equipment, lighting equipment and grip equipment; entertainment ticket agency services; provision of information relating to distribution of television shows, motion picture film and radio shows; motion picture song production; rental of audiovisual equipment for transmitting, receiving, modifying, editing or reproducing cinematographic films, sound or video; rental of motion picture and television scenery sets and portable stages; providing online non-downloadable entertainment information, reviews and recommendations in the fields of entertainment films, motion pictures, music and television over computer networks and global communication networks; providing online computer games; provision of non-downloadable motion pictures films, prerecorded music, movies and videos, all provided via a global computer network in the field of comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports; providing online non-downloadable comic books and graphic novels; provision of blogs and non-downloadable publications in the field of entertainment being, comic books, screenplays, books, short stories, journals, magazines, reviews, newsletters, news articles and articles featuring comedy, drama, musical performances, action, adventure, suspense, horror, westerns, science fiction, fantasy, detective stories, war subjects, news, sports events, documentaries, animations, children's entertainment, crime, history, biography and sports all provided via a website; consultancy in the field of entertainment and the entertainment industry, namely, consulting regarding musical selections and arrangements for sound recording and live performances, film and video production consulting services, and consulting services in the field of cinematography; providing recognition and incentives by the way of awards and contests to demonstrate excellence in the field of entertainment
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Rakuten, Inc., a corporation of Japan, having an address of
      1-14-1 Tamagawa, Setagaya-ku
      Tokyo, 158-0094
      Japan

Proposed: Rakuten, Inc., a corporation of Japan, having an address of
      1-14-1 Tamagawa, Setagaya-ku
      Tokyo, 158-0094
      Japan
      Email Address: XXXX

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
RAKUTEN appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) RAKUTEN has no meaning in a foreign language.


Miscellaneous Statement
Applicant respectfully advises the Examining Attorney that the Class 41 service "rental of motion pictures" seems to have been added in the list of goods/services in the Office Action but it was not included in the original description. Therefore, it was deleted from the description as amended.

Correspondence Information (current):
      Anna Kurian Shaw
      PRIMARY EMAIL FOR CORRESPONDENCE: DCPTOTrademarkMail@hoganlovells.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): HLDCTMGroup@hoganlovells.com; dctmfiling@hoganlovells.com

The docket/reference number is 1Y0049.tbd.
Correspondence Information (proposed):
      Anna Kurian Shaw
      PRIMARY EMAIL FOR CORRESPONDENCE: DCPTOTrademarkMail@hoganlovells.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): HLDCTMGroup@hoganlovells.com; dctmfiling@hoganlovells.com

The docket/reference number is 1Y0049.tbd.

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)
Response Signature
Signature: /aks/     Date: 06/09/2020
Signatory's Name: Shaw, Anna Kurian
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202-637-5600

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:    Anna Kurian Shaw
   Hogan Lovells US LLP
   
   555 13th Street NW
   Washington, District of Columbia 20004
Mailing Address:    Anna Kurian Shaw
   Hogan Lovells US LLP
   555 13th Street NW
   Washington, District of Columbia 20004
        
Serial Number: 88690494
Internet Transmission Date: Wed Jun 10 11:02:55 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200610110255164
010-88690494-710ca43b740fe2f17e89c6840e8
1cddb3875aaa658c3e1893b9f4ce88757e3d83-N
/A-N/A-20200609131604649272