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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88837614 BERMUDA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8883761 4/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Recorded messenger program; artificial intelligence application software program, downloadable for wireless terminals; downloadable software; downloadable smart phone application software; downloadable instant messaging software; downloadable cloud computing software; computer software for database; computer software for wireless network communications; software; application software for smart phone; software for online messaging; application software; instant messaging software; computer software for internet chatting; computer databases; computer software; communications software for connecting computer network users; computer software platforms; communications software; application software for smart phone for video chatting services
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 2020-0032194 filed 02/26/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Recorded messenger program; Recorded messenger program, namely, software for the redirection of electronic messages to alternate addresses; artificial intelligence application software program, downloadable for wireless terminals; artificial intelligence application software program, downloadable for wireless terminals for video chatting; downloadable software; downloadable software for video chatting; downloadable smart phone application software; downloadable smart phone application software for video chatting; downloadable instant messaging software; downloadable cloud computing software; downloadable cloud computing software for video chatting; computer software for database; downloadable computer software for database management; computer software for wireless network communications; downloadable computer software for connecting wireless network communications; software; downloadable application software for smart phone for video chatting; application software for smart phone; downloadable software for online messaging; software for online messaging; downloadable application software for database management; application software; downloadable instant messaging software; instant messaging software; downloadable computer software for internet chatting; computer software for internet chatting; computer databases in the nature of computer servers; computer databases; downloadable computer software for video chatting; computer software; downloadable communications software for connecting computer network users; communications software for connecting computer network users; computer software platforms for database management; computer software platforms; downloadable communications software for providing access to the Internet; communications software; application software for smart phone for video chatting servicesClass 009 for Recorded messenger program, namely, software for the redirection of electronic messages to alternate addresses; artificial intelligence application software program, downloadable for wireless terminals for video chatting; downloadable software for video chatting; downloadable smart phone application software for video chatting; downloadable instant messaging software; downloadable cloud computing software for video chatting; downloadable computer software for database management; downloadable computer software for connecting wireless network communications; downloadable application software for smart phone for video chatting; downloadable software for online messaging; downloadable application software for database management; downloadable instant messaging software; downloadable computer software for internet chatting; computer databases in the nature of computer servers; downloadable computer software for video chatting; downloadable communications software for connecting computer network users; computer software platforms for database management; downloadable communications software for providing access to the Internet
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 2020-0032194 filed 02/26/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 038 for Digital network telecommunications services; message sending; transmission of images between mobile telecommunications devices; transmission of video and text via applications for mobile devices; providing chat services via mobile and wired communication; wireless communication services; video and audio communication and transmission services; video streaming services; providing mobile chat service via the smart phone application; video communication services; providing on-line discussion services; providing online chat service; voice communication service; transmission of instant messages; chatroom services through Internet; transmission of data via the Internet; transmission of information; information transfer; transmission of contents via computers; providing internet application services for communications
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 2020-0032194 filed 02/26/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Digital network telecommunications services; message sending; electronic message sending; transmission of images between mobile telecommunications devices; transmission of video and text via applications for mobile devices; transmission of video and text via wires telecommunication applications for mobile devices; providing chat services via mobile and wired communication; providing voice or video chat services via mobile and wired communication; wireless communication services; wireless broadband communication services; video and audio communication and transmission services; video and audio communication and transmission services, namely, transmission of audio and video tethered downloads; video streaming services; providing mobile voice or video chat service via the smart phone application; providing mobile chat service via the smart phone application; video communication services, namely, video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others; video communication services; providing on-line discussion services, namely, providing internet chat rooms; providing on-line discussion services; providing online chat service, namely, providing internet chat rooms; providing online chat service; providing voice communication service via the Internet; voice communication service; transmission of instant messages; chatroom services through the Internet; chatroom services through Internet; electronic transmission of data via the Internet; transmission of data via the Internet; transmission of information via digital networks; transmission of information; information transfer, namely, transmission of information via digital networks; information transfer; electronic transmission of digital media contents via global computer networks; transmission of contents via computers; providing internet application services for communicationsClass 038 for Digital network telecommunications services; electronic message sending; transmission of images between mobile telecommunications devices; transmission of video and text via wires telecommunication applications for mobile devices; providing voice or video chat services via mobile and wired communication; wireless broadband communication services; video and audio communication and transmission services, namely, transmission of audio and video tethered downloads; providing mobile voice or video chat service via the smart phone application; video communication services, namely, video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others; providing on-line discussion services, namely, providing internet chat rooms; providing online chat service, namely, providing internet chat rooms; providing voice communication service via the Internet; transmission of instant messages; chatroom services through the Internet; electronic transmission of data via the Internet; transmission of information via digital networks; information transfer, namely, transmission of information via digital networks; electronic transmission of digital media contents via global computer networks
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 2020-0032195 filed 02/26/2020]. 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.

ADDITIONAL STATEMENTS
Color Claim
The color(s) dark purple, medium purple, light purple, light blue, gray, and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of the design of an irregular smiley face, with the body of the smiley face in dark purple, and the top right portion of the smiley face going from medium purple to light purple. The top right and bottom of the smiley face is in white with a gray outline. There is white shading on the left side of the smiley face design. Inside the smiley face design, the left eye is in light blue with white shading at the top and gray shading at the bottom. The right eye is in white with gray shading around the edge. The mouth is in white. Behind the smiley face design is an arcing arrow in various shades of light blue. All above the stylized wording "BERMUDA" in dark purple. The additional areas of white represent background, outlining, shading, and/or transparent areas and are not part of the mark.

Miscellaneous Statement
The wording "BERMUDA" in the mark has no any meaning nor significance in the trade or industry in which applicant's goods and/or services are manufactured or provided, has no any meaning nor significance as applied to applicant's goods and/or services, nor is it a term of art within applicant's industry. The wording "BERMUDA" in the mark identifies a geographic place.


The owner's/holder's current attorney information: Jun-Hwa Jeong. Jun-Hwa Jeong of RABIN & BERDO, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1101 14TH STREET, N.W., SUITE 500
      WASHINGTON, District of Columbia 20005
      United States
The docket/reference number is MIP-484TM.
      The phone number is 202-371-8976.
      The fax number is 571-374-8268.
      The email address is firm@rabinberdo.com

The owner's/holder's proposed attorney information: Jun-Hwa Jeong. Jun-Hwa Jeong of RABIN & BERDO, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2650 Park Tower Drive, Suite 800
      WASHINGTON, Virginia 22180
      United States
The docket/reference number is MIP-484TM.
      The phone number is 202-371-8976.
      The fax number is 703-573-2514.
      The email address is firm@rabinberdo.com

Jun-Hwa Jeong submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      Jun-Hwa Jeong
      PRIMARY EMAIL FOR CORRESPONDENCE: firm@rabinberdo.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is MIP-484TM.
Correspondence Information (proposed):
      Jun-Hwa Jeong
      PRIMARY EMAIL FOR CORRESPONDENCE: firm@rabinberdo.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is MIP-484TM.

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: /Jun-Hwa Jeong/     Date: 12/14/2020
Signatory's Name: Jun-Hwa Jeong
Signatory's Position: Attorney of record, DC Bar member

Signatory's Phone Number: 202-371-8976

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:    Jun-Hwa Jeong
   RABIN & BERDO, P.C.
   
   1101 14TH STREET, N.W., SUITE 500
   WASHINGTON, District of Columbia 20005
Mailing Address:    Jun-Hwa Jeong
   RABIN & BERDO, P.C.
   2650 Park Tower Drive, Suite 800
   WASHINGTON, Virginia 22180
        
Serial Number: 88837614
Internet Transmission Date: Mon Dec 14 13:54:18 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020121413541810
0376-88837614-750ca7f85df75cb9735f12fbd2
86a811eeb17f6d6e6349f55d854d61325fd6655-
N/A-N/A-20201214134850293589