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. 88745936 TWINONE(Standard Characters, see http://uspto.report/TM/88745936/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 007 for Electric washing machines
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.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Korea, South application number 402020000076 filed 01/03/2020]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Electric washing machines; Electric clothes washing machines for household purposesClass 007 for Electric clothes washing machines for household purposes
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.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Korea, South application number 402020000076 filed 01/03/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: LG ELECTRONICS INC., a corporation of Korea, South, having an address of
      128, Yeoui-daero, Yeongdeungpo-gu
      Seoul, 07336
      Korea, South
      Email Address: mailroom@bskb.com

Proposed: LG ELECTRONICS INC., a corporation of Korea, South, having an address of
      128, Yeoui-daero, Yeongdeungpo-gu
      Seoul, 07336
      Korea, South
      Email Address: trademarkbox@bskb.com
Correspondence Information (current):
      ROBERT J. KENNEY
      PRIMARY EMAIL FOR CORRESPONDENCE: mailroom@bskb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 0630-8074US1.
Correspondence Information (proposed):
      Robert J. Kenney
      PRIMARY EMAIL FOR CORRESPONDENCE: mailroom@bskb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): msmith@bskb.com

The docket/reference number is 0630-8074US1.

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
Miscellaneous Statement
CLARIFICATION OF FILING/REGISTRATION BASIS: Applicant responds that it intends to rely upon both the intent-to-use filing basis under Section 1(b), as well as the Section 44 basis. Applicant notes that the foreign registration has not issued yet, and requests that the application be suspended pending the completion of the prosecution of the S. Korean priority application no. 40-2020-0000760. REMARKS: Applicant thanks the examining attorney for the thorough consideration given the present application. Applicant has amended the identification of goods, and clarified the registration/filing basis herein. There being no other issues raised in the Office Action, applicant believes that the present application will be in condition to be approved for publication once a registration basis is perfected. An early Notice of Publication thereafter is respectfully requested. If the examining attorney has any questions concerning this application, the examining attorney is requested to contact Robert J. Kenney at (703) 205-8000 in the Washington, D.C. area.


SIGNATURE(S)
Response Signature
Signature: /Robert J. Kenney/     Date: 03/11/2020
Signatory's Name: Robert J. Kenney
Signatory's Position: Attorney of record, VA bar member

Signatory's Phone Number: 7032058000

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:    ROBERT J. KENNEY
   BIRCH, STEWART, KOLASCH & BIRCH, LLP
   
   8110 GATEHOUSE ROAD, SUITE 100 EAST
   FALLS CHURCH, Virginia 22042
Mailing Address:    Robert J. Kenney
   BIRCH, STEWART, KOLASCH & BIRCH, LLP
   8110 GATEHOUSE ROAD, SUITE 100 EAST
   FALLS CHURCH, Virginia 22042
        
Serial Number: 88745936
Internet Transmission Date: Wed Mar 11 16:48:29 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202003111648298
28498-88745936-710d4ba3f27d8d1462fa54d0e
d4a8ce3bb1231ee626dbb9cb22792426be772d5-
N/A-N/A-20200311163932629923