Response to Office Action

NAVER

NAVER Corporation

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 09/30/2020)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88815455
LAW OFFICE ASSIGNED LAW OFFICE 123
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88815455/mark.png
LITERAL ELEMENT NAVER
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
ARGUMENT(S)
The Examining Attorney has refused registration of the Application based on a likelihood of confusion with Registration Number 4,508,816 for the mark NAVER. The grace period for filing to maintain this registration ended October 8, 2020 and the USPTO database has no record of the maintenance documents being filed. Accordingly, the cited registration will expire in due course. Applicant respectfully requests that the refusal be withdrawn.
GOODS AND/OR SERVICES SECTION (007) (current)
INTERNATIONAL CLASS 007
DESCRIPTION
Sorting machines for industry; Machine coupling and transmission components except for land vehicles; Motors and engines (except for land vehicles); Taps (parts of machines, engines, motors); Stamping machines; Vending machines; Gas pumps (gas station equipment); Electric lawn mowers; Electric door opening and closing apparatus; Cargo handling machines; Civil engineering machinery; Stone-working machines; Milking machines; Incubators for eggs; Food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines; Machines for plastics working; Robots
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (007) (proposed)
INTERNATIONAL CLASS 007
TRACKED TEXT DESCRIPTION
Sorting machines for industry; Sorting machines for industry, namely, for sorting machine parts; Machine coupling and transmission components except for land vehicles; Motors and engines (except for land vehicles); Motors and engines except for land vehicles; Taps (parts of machines, engines, motors); Taps being parts of machines, engines, motors; Stamping machines; Automatic stamping machines; Vending machines; Gas pumps (gas station equipment); Gas pumps being gas station equipment, namely, fuel pumps for service stations; Electric lawn mowers; Electric door opening and closing apparatus; Electric door opening and closing apparatus, namely, electric door opening and closing system; Cargo handling machines; Civil engineering machinery; Civil engineering machinery, namely, concrete construction machines; Stone-working machines; Milking machines; Incubators for eggs; Food and drink processing machines for industrial purposes; Electric food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines; Washing machines, namely, electric washing machines for industrial purposes; Machines for plastics working; Robots; Industrial robots
FINAL DESCRIPTION
Sorting machines for industry, namely, for sorting machine parts; Machine coupling and transmission components except for land vehicles; Motors and engines except for land vehicles; Taps being parts of machines, engines, motors; Automatic stamping machines; Vending machines; Gas pumps being gas station equipment, namely, fuel pumps for service stations; Electric lawn mowers; Electric door opening and closing apparatus, namely, electric door opening and closing system; Cargo handling machines; Civil engineering machinery, namely, concrete construction machines; Stone-working machines; Milking machines; Incubators for eggs; Electric food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines, namely, electric washing machines for industrial purposes; Machines for plastics working; Industrial robots
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (009) (current)
INTERNATIONAL CLASS 009
DESCRIPTION
Computer programs for pre-recorded games; Computer programs, recorded; Computer programs, downloadable; Mouse (computer peripheral); Mouse pads; Computer software for wireless content delivery; Computer programmes for document management; Video game cartridges; Software for processing images, graphics and text; Computer programs for images, sound and video; Software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded; Downloadable electronic music; Pre-recorded non-musical electronic media except for computer software; Animated cartoons; Slide film; Downloadable electronic publications; Downloadable electronic books
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (009) (proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Computer programs for pre-recorded games; Computer programs, recorded; Recorded computer programs, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer programs, downloadable; Computer programs, downloadable for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Mouse (computer peripheral); Computer mouse being computer peripherals; Mouse pads; Computer software for wireless content delivery; Downloadable and recorded computer software for wireless content delivery; Computer programmes for document management; Downloadable and recorded computer programmes for document management; Video game cartridges; Software for processing images, graphics and text; Downloadable and recorded software for processing images, graphics and text; Computer programs for images, sound and video; Downloadable and recorded computer programs for editing images, sound and video; Software to control and improve audio equipment sound quality; Downloadable and recorded software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded; Computer software, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic music; Downloadable electronic music files; Pre-recorded non-musical electronic media except for computer software; Pre-recorded non-musical electronic media devices featuring translations, pronunciations and information to aid in translation services, except for computer software; Animated cartoons; Animated cartoons, namely, downloadable electronic cartoons, downloadable cartoon videos and video disks and video tapes with recorded animated cartoons; Slide film; Exposed slide film; Downloadable electronic publications; Downloadable electronic publications in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic books; Downloadable electronic books in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content
FINAL DESCRIPTION
Computer programs for pre-recorded games; Recorded computer programs, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer programs, downloadable for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer mouse being computer peripherals; Mouse pads; Downloadable and recorded computer software for wireless content delivery; Downloadable and recorded computer programmes for document management; Video game cartridges; Downloadable and recorded software for processing images, graphics and text; Downloadable and recorded computer programs for editing images, sound and video; Downloadable and recorded software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic music files; Pre-recorded non-musical electronic media devices featuring translations, pronunciations and information to aid in translation services, except for computer software; Animated cartoons, namely, downloadable electronic cartoons, downloadable cartoon videos and video disks and video tapes with recorded animated cartoons; Exposed slide film; Downloadable electronic publications in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic books in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (012) (current)
INTERNATIONAL CLASS 012
DESCRIPTION
Interior decorations for vehicles; Bodies for vehicles; Saddles for bicycle and motocycles; Apparatus for locomotion by land, air and water; Vessels (boats and ships); Air vehicles; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles; Tractors for agricultural purposes; Motive power machines for land vehicles; Power transmissions for land vehicles; Bearings for land vehicles; Motors for land vehicles
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (012) (proposed)
INTERNATIONAL CLASS 012
TRACKED TEXT DESCRIPTION
Interior decorations for vehicles; Interior decorations for vehicles, namely, automotive exterior and interior metal decorative and protective trim; Bodies for vehicles; Saddles for bicycle and motocycles; Saddles for bicycle and motorcycles; Apparatus for locomotion by land, air and water; Apparatus for locomotion by land, air and water, namely locomotives; Vessels (boats and ships); Vessels being boats and ships; Air vehicles; Air vehicles, namely, airplanes; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles; Braking devices for vehicles, namely, brake hardware for vehicles; Tractors for agricultural purposes; Motive power machines for land vehicles; Motive power machines for land vehicles, namely, engines for land vehicles; Power transmissions for land vehicles; Bearings for land vehicles; Wheel and axle bearings for land vehicles; Motors for land vehicles
FINAL DESCRIPTION
Interior decorations for vehicles, namely, automotive exterior and interior metal decorative and protective trim; Bodies for vehicles; Saddles for bicycle and motorcycles; Apparatus for locomotion by land, air and water, namely locomotives; Vessels being boats and ships; Air vehicles, namely, airplanes; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles, namely, brake hardware for vehicles; Tractors for agricultural purposes; Motive power machines for land vehicles, namely, engines for land vehicles; Power transmissions for land vehicles; Wheel and axle bearings for land vehicles; Motors for land vehicles
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (035) (current)
INTERNATIONAL CLASS 035
DESCRIPTION
Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; Opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others; Computerized file management; Auctioneering provided on the internet
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (035) (proposed)
INTERNATIONAL CLASS 035
TRACKED TEXT DESCRIPTION
Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; Opinion polling; Public opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others; Information retrieval services on the internet for others, namely, compilation of information into computer databases; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others; Data search in computer files for others, namely, business research; Computerized file management; Auctioneering provided on the internet
FINAL DESCRIPTION
Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; Public opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others, namely, compilation of information into computer databases; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others, namely, business research; Computerized file management; Auctioneering provided on the internet
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (038) (current)
INTERNATIONAL CLASS 038
DESCRIPTION
Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services; Instant messenger service; Providing internet chatrooms; Transmission of message/image via the internet; Internet telephony services; Electronic bulletin board services (telecommunications services); Leasing access time to a computer database; Transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting services
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (038) (proposed)
INTERNATIONAL CLASS 038
TRACKED TEXT DESCRIPTION
Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services; Providing e-mail services, namely, electronic transmission of e-mail and e-mail forwarding services; Instant messenger service; Providing internet chatrooms; Transmission of message/image via the internet; Transmission of messages and images via the internet; Internet telephony services; Electronic bulletin board services (telecommunications services); Electronic bulletin board services; Leasing access time to a computer database; Leasing access time to a computer database, namely, providing access to databases; Transmission of computer data; Electronic transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting services
FINAL DESCRIPTION
Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services, namely, electronic transmission of e-mail and e-mail forwarding services; Instant messenger service; Providing internet chatrooms; Transmission of messages and images via the internet; Internet telephony services; Electronic bulletin board services; Leasing access time to a computer database, namely, providing access to databases; Electronic transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting services
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (041) (current)
INTERNATIONAL CLASS 041
DESCRIPTION
Production of radio and television programmes; Production of animated films; Reservation of theatre tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable; Education information; Online educational examination services; Education courses through the internet; Internet education instruction; Computer software academies; Provision of game information; Game services provided on-line; Booking of seats for sports competitions; On-line game service
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (041) (proposed)
INTERNATIONAL CLASS 041
TRACKED TEXT DESCRIPTION
Production of radio and television programmes; Production of animated films; Reservation of theatre tickets; Reservation of theatre show tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable; Providing online electronic publications, not downloadable, in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Education information; Education information, namely, providing information about education; Online educational examination services; Education courses through the internet; Education services in the nature of courses in the field of internet use, computer software, and online advertising, offered through the internet; Internet education instruction; Internet educational instruction in the field of internet use, computer software, and online advertising; Computer software academies; Computer software academies, namely, providing courses of instruction in the field of computer software; Provision of game information; Provision of game information, namely, provision of information relating to electronic computer games provided via the Internet; Game services provided on-line; Game services provided on-line, namely, providing online video games; Booking of seats for sports competitions; On-line game service; On-line game service, namely, providing online electronic games
FINAL DESCRIPTION
Production of radio and television programmes; Production of animated films; Reservation of theatre show tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable, in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Education information, namely, providing information about education; Online educational examination services; Education services in the nature of courses in the field of internet use, computer software, and online advertising, offered through the internet; Internet educational instruction in the field of internet use, computer software, and online advertising; Computer software academies, namely, providing courses of instruction in the field of computer software; Provision of game information, namely, provision of information relating to electronic computer games provided via the Internet; Game services provided on-line, namely, providing online video games; Booking of seats for sports competitions; On-line game service, namely, providing online electronic games
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (042) (current)
INTERNATIONAL CLASS 042
DESCRIPTION
Industrial design services; Development of game software; Rental of a database server (to third parties); Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer sites (web sites); Provision of internet search engines; Provision of internet security programs; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
GOODS AND/OR SERVICES SECTION (042) (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Industrial design services; Development of game software; Rental of a database server (to third parties); Rental of a database server to third parties; Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer sites (web sites); Hosting computer web sites; Provision of internet search engines; Provision of internet security programs; Provision of internet security programs, namely, providing temporary use of non-downloadable web application for monitoring and controlling computer and online activity; Provision of internet security programs, namely, computer software that allows users to take measures to protect the security of their internet connections; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information
FINAL DESCRIPTION
Industrial design services; Development of game software; Rental of a database server to third parties; Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer web sites; Provision of internet search engines; Provision of internet security programs, namely, providing temporary use of non-downloadable web application for monitoring and controlling computer and online activity; Provision of internet security programs, namely, computer software that allows users to take measures to protect the security of their internet connections; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 40-1047365
       FOREIGN REGISTRATION
       COUNTRY/REGION/JURISDICTION/U.S. TERRITORY
Korea, South
       FOREIGN REGISTRATION
       DATE
07/09/2014
       FOREIGN EXPIRATION DATE 07/09/2024
CORRESPONDENCE INFORMATION (current)
NAME REBECCA LIEBOWITZ
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarkdocket@venable.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) rliebowitz@venable.com
DOCKET/REFERENCE NUMBER 31781-518797
CORRESPONDENCE INFORMATION (proposed)
NAME Rebecca Liebowitz
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarkdocket@venable.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) rliebowitz@venable.com; tmcurcio@venable.com
DOCKET/REFERENCE NUMBER 31781-518797
SIGNATURE SECTION
       ORIGINAL PDF FILE HS_21614181254-165526226_ ._NAVER_declaration_20200 427.pdf
       CONVERTED PDF FILE(S)
       (1 page)
\\TICRS\EXPORT18\IMAGEOUT 18\888\154\88815455\xml4\ ROA0002.JPG
SIGNATORY'S NAME Baek Jeong Hee
SIGNATORY'S POSITION Manager
SIGNATORY'S PHONE NUMBER 2023444497
RESPONSE SIGNATURE /tmc/
SIGNATORY'S NAME Tanya Marie Curcio
SIGNATORY'S POSITION Attorney, Venable LLP, New York Bar Member
SIGNATORY'S PHONE NUMBER 2023444497
DATE SIGNED 10/27/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Oct 27 10:55:55 ET 2020
TEAS STAMP USPTO/ROA-XXX.XX.XXX.XXX-
20201027105555349595-8881
5455-750beba143da2a12676c
c8e81d48773ba98952d213ab8
7f721b056e95f4886094-N/A-
N/A-20201027104958746474



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 09/30/2020)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 88815455 NAVER (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8881545 5/large) has been amended as follows:

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

The Examining Attorney has refused registration of the Application based on a likelihood of confusion with Registration Number 4,508,816 for the mark NAVER. The grace period for filing to maintain this registration ended October 8, 2020 and the USPTO database has no record of the maintenance documents being filed. Accordingly, the cited registration will expire in due course. Applicant respectfully requests that the refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 007 for Sorting machines for industry; Machine coupling and transmission components except for land vehicles; Motors and engines (except for land vehicles); Taps (parts of machines, engines, motors); Stamping machines; Vending machines; Gas pumps (gas station equipment); Electric lawn mowers; Electric door opening and closing apparatus; Cargo handling machines; Civil engineering machinery; Stone-working machines; Milking machines; Incubators for eggs; Food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines; Machines for plastics working; Robots
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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: Sorting machines for industry; Sorting machines for industry, namely, for sorting machine parts; Machine coupling and transmission components except for land vehicles; Motors and engines (except for land vehicles); Motors and engines except for land vehicles; Taps (parts of machines, engines, motors); Taps being parts of machines, engines, motors; Stamping machines; Automatic stamping machines; Vending machines; Gas pumps (gas station equipment); Gas pumps being gas station equipment, namely, fuel pumps for service stations; Electric lawn mowers; Electric door opening and closing apparatus; Electric door opening and closing apparatus, namely, electric door opening and closing system; Cargo handling machines; Civil engineering machinery; Civil engineering machinery, namely, concrete construction machines; Stone-working machines; Milking machines; Incubators for eggs; Food and drink processing machines for industrial purposes; Electric food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines; Washing machines, namely, electric washing machines for industrial purposes; Machines for plastics working; Robots; Industrial robotsClass 007 for Sorting machines for industry, namely, for sorting machine parts; Machine coupling and transmission components except for land vehicles; Motors and engines except for land vehicles; Taps being parts of machines, engines, motors; Automatic stamping machines; Vending machines; Gas pumps being gas station equipment, namely, fuel pumps for service stations; Electric lawn mowers; Electric door opening and closing apparatus, namely, electric door opening and closing system; Cargo handling machines; Civil engineering machinery, namely, concrete construction machines; Stone-working machines; Milking machines; Incubators for eggs; Electric food and drink processing machines for industrial purposes; Printing machines; Packaging machines; Washing machines, namely, electric washing machines for industrial purposes; Machines for plastics working; Industrial robots
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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 009 for Computer programs for pre-recorded games; Computer programs, recorded; Computer programs, downloadable; Mouse (computer peripheral); Mouse pads; Computer software for wireless content delivery; Computer programmes for document management; Video game cartridges; Software for processing images, graphics and text; Computer programs for images, sound and video; Software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded; Downloadable electronic music; Pre-recorded non-musical electronic media except for computer software; Animated cartoons; Slide film; Downloadable electronic publications; Downloadable electronic books
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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 programs for pre-recorded games; Computer programs, recorded; Recorded computer programs, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer programs, downloadable; Computer programs, downloadable for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Mouse (computer peripheral); Computer mouse being computer peripherals; Mouse pads; Computer software for wireless content delivery; Downloadable and recorded computer software for wireless content delivery; Computer programmes for document management; Downloadable and recorded computer programmes for document management; Video game cartridges; Software for processing images, graphics and text; Downloadable and recorded software for processing images, graphics and text; Computer programs for images, sound and video; Downloadable and recorded computer programs for editing images, sound and video; Software to control and improve audio equipment sound quality; Downloadable and recorded software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded; Computer software, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic music; Downloadable electronic music files; Pre-recorded non-musical electronic media except for computer software; Pre-recorded non-musical electronic media devices featuring translations, pronunciations and information to aid in translation services, except for computer software; Animated cartoons; Animated cartoons, namely, downloadable electronic cartoons, downloadable cartoon videos and video disks and video tapes with recorded animated cartoons; Slide film; Exposed slide film; Downloadable electronic publications; Downloadable electronic publications in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic books; Downloadable electronic books in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing contentClass 009 for Computer programs for pre-recorded games; Recorded computer programs, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer programs, downloadable for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Computer mouse being computer peripherals; Mouse pads; Downloadable and recorded computer software for wireless content delivery; Downloadable and recorded computer programmes for document management; Video game cartridges; Downloadable and recorded software for processing images, graphics and text; Downloadable and recorded computer programs for editing images, sound and video; Downloadable and recorded software to control and improve audio equipment sound quality; Video games apparatus adapted for use with an external display screen or monitor; Apparatus for recording, transmission or reproduction of sound and images; Computer software, recorded for creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, viewing cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic music files; Pre-recorded non-musical electronic media devices featuring translations, pronunciations and information to aid in translation services, except for computer software; Animated cartoons, namely, downloadable electronic cartoons, downloadable cartoon videos and video disks and video tapes with recorded animated cartoons; Exposed slide film; Downloadable electronic publications in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Downloadable electronic books in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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 012 for Interior decorations for vehicles; Bodies for vehicles; Saddles for bicycle and motocycles; Apparatus for locomotion by land, air and water; Vessels (boats and ships); Air vehicles; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles; Tractors for agricultural purposes; Motive power machines for land vehicles; Power transmissions for land vehicles; Bearings for land vehicles; Motors for land vehicles
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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: Interior decorations for vehicles; Interior decorations for vehicles, namely, automotive exterior and interior metal decorative and protective trim; Bodies for vehicles; Saddles for bicycle and motocycles; Saddles for bicycle and motorcycles; Apparatus for locomotion by land, air and water; Apparatus for locomotion by land, air and water, namely locomotives; Vessels (boats and ships); Vessels being boats and ships; Air vehicles; Air vehicles, namely, airplanes; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles; Braking devices for vehicles, namely, brake hardware for vehicles; Tractors for agricultural purposes; Motive power machines for land vehicles; Motive power machines for land vehicles, namely, engines for land vehicles; Power transmissions for land vehicles; Bearings for land vehicles; Wheel and axle bearings for land vehicles; Motors for land vehiclesClass 012 for Interior decorations for vehicles, namely, automotive exterior and interior metal decorative and protective trim; Bodies for vehicles; Saddles for bicycle and motorcycles; Apparatus for locomotion by land, air and water, namely locomotives; Vessels being boats and ships; Air vehicles, namely, airplanes; Rolling stock for railways; Motorcycles; Automobiles; Bicycles; Carts; Strollers; Tires; Suspension shock absorbers for vehicles; Braking devices for vehicles, namely, brake hardware for vehicles; Tractors for agricultural purposes; Motive power machines for land vehicles, namely, engines for land vehicles; Power transmissions for land vehicles; Wheel and axle bearings for land vehicles; Motors for land vehicles
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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 035 for Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; Opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others; Computerized file management; Auctioneering provided on the internet
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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: Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; Opinion polling; Public opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others; Information retrieval services on the internet for others, namely, compilation of information into computer databases; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others; Data search in computer files for others, namely, business research; Computerized file management; Auctioneering provided on the internetClass 035 for Online advertising on a computer network; Advertising information services; Marketing services; Providing and rental of advertising space on the internet; Rental of advertising time on communication media; Price comparison services; Providing business information; News clipping services; Commercial information agency services; Marketing research; Public opinion polling; Commercial information agency services, via the internet; Personnel recruitment; Providing information in the field of employment; Information retrieval services on the internet for others, namely, compilation of information into computer databases; Compilation of information into computer databases; Systemization of information into computer databases; Management and compilation of computerised databases; Data search in computer files for others, namely, business research; Computerized file management; Auctioneering provided on the internet
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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 038 for Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services; Instant messenger service; Providing internet chatrooms; Transmission of message/image via the internet; Internet telephony services; Electronic bulletin board services (telecommunications services); Leasing access time to a computer database; Transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting services
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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: Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services; Providing e-mail services, namely, electronic transmission of e-mail and e-mail forwarding services; Instant messenger service; Providing internet chatrooms; Transmission of message/image via the internet; Transmission of messages and images via the internet; Internet telephony services; Electronic bulletin board services (telecommunications services); Electronic bulletin board services; Leasing access time to a computer database; Leasing access time to a computer database, namely, providing access to databases; Transmission of computer data; Electronic transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting servicesClass 038 for Communications by fibre optic networks; Transmission of information on optical telecommunication networks; Providing access to databases; Transmission of messages; Providing access to wireless internet; Providing on-line access to databases; Voice mail services; Providing e-mail services, namely, electronic transmission of e-mail and e-mail forwarding services; Instant messenger service; Providing internet chatrooms; Transmission of messages and images via the internet; Internet telephony services; Electronic bulletin board services; Leasing access time to a computer database, namely, providing access to databases; Electronic transmission of computer data; Transmission of stock market information with the help of telecommunication media; Internet broadcasting services
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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 Production of radio and television programmes; Production of animated films; Reservation of theatre tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable; Education information; Online educational examination services; Education courses through the internet; Internet education instruction; Computer software academies; Provision of game information; Game services provided on-line; Booking of seats for sports competitions; On-line game service
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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: Production of radio and television programmes; Production of animated films; Reservation of theatre tickets; Reservation of theatre show tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable; Providing online electronic publications, not downloadable, in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Education information; Education information, namely, providing information about education; Online educational examination services; Education courses through the internet; Education services in the nature of courses in the field of internet use, computer software, and online advertising, offered through the internet; Internet education instruction; Internet educational instruction in the field of internet use, computer software, and online advertising; Computer software academies; Computer software academies, namely, providing courses of instruction in the field of computer software; Provision of game information; Provision of game information, namely, provision of information relating to electronic computer games provided via the Internet; Game services provided on-line; Game services provided on-line, namely, providing online video games; Booking of seats for sports competitions; On-line game service; On-line game service, namely, providing online electronic gamesClass 041 for Production of radio and television programmes; Production of animated films; Reservation of theatre show tickets; Providing entertainment information; Film distribution; Providing information on cinema film; Providing online electronic publications, not downloadable, in the nature of magazines and newsletters in the field of creating advertisements, performing internet searches and displaying the search results, online search engines, mobile messaging, online advertising, content creation, AI platforms, cartoons, speech recognition, language translation, web browsing, navigation, and sharing content; Education information, namely, providing information about education; Online educational examination services; Education services in the nature of courses in the field of internet use, computer software, and online advertising, offered through the internet; Internet educational instruction in the field of internet use, computer software, and online advertising; Computer software academies, namely, providing courses of instruction in the field of computer software; Provision of game information, namely, provision of information relating to electronic computer games provided via the Internet; Game services provided on-line, namely, providing online video games; Booking of seats for sports competitions; On-line game service, namely, providing online electronic games
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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 042 for Industrial design services; Development of game software; Rental of a database server (to third parties); Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer sites (web sites); Provision of internet search engines; Provision of internet security programs; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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: Industrial design services; Development of game software; Rental of a database server (to third parties); Rental of a database server to third parties; Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer sites (web sites); Hosting computer web sites; Provision of internet search engines; Provision of internet security programs; Provision of internet security programs, namely, providing temporary use of non-downloadable web application for monitoring and controlling computer and online activity; Provision of internet security programs, namely, computer software that allows users to take measures to protect the security of their internet connections; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological informationClass 042 for Industrial design services; Development of game software; Rental of a database server to third parties; Programming of multimedia applications; Hosting web sites relating to real estate; Creating and maintaining web sites for others; Hosting computer web sites; Provision of internet search engines; Provision of internet security programs, namely, providing temporary use of non-downloadable web application for monitoring and controlling computer and online activity; Provision of internet security programs, namely, computer software that allows users to take measures to protect the security of their internet connections; Conversion of data or documents from physical to electronic media; Maintenance of computer game software; Computer software development; Updating of computer software; Meteorological information
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1047365 registered 07/09/2014 with a renewal date of __________ and an expiration date of 07/09/2024 ], 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.
Correspondence Information (current):
      REBECCA LIEBOWITZ
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rliebowitz@venable.com

The docket/reference number is 31781-518797.
Correspondence Information (proposed):
      Rebecca Liebowitz
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): rliebowitz@venable.com; tmcurcio@venable.com

The docket/reference number is 31781-518797.

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
Original PDF file:
HS_21614181254-165526226_ ._NAVER_declaration_20200 427.pdf
Converted PDF file(s) (1 page) Signature File1
Signatory's Name: Baek Jeong Hee
Signatory's Position: Manager
Signatory's Phone Number: 2023444497


Response Signature
Signature: /tmc/     Date: 10/27/2020
Signatory's Name: Tanya Marie Curcio
Signatory's Position: Attorney, Venable LLP, New York Bar Member

Signatory's Phone Number: 2023444497

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:    REBECCA LIEBOWITZ
   VENABLE LLP
   
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043
Mailing Address:    Rebecca Liebowitz
   VENABLE LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043
        
Serial Number: 88815455
Internet Transmission Date: Tue Oct 27 10:55:55 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202010271055553
49595-88815455-750beba143da2a12676cc8e81
d48773ba98952d213ab87f721b056e95f4886094
-N/A-N/A-20201027104958746474


Response to Office Action [image/jpeg]


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