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)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88840133 NEO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8884013 3/large) has been amended as follows:

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

RESPONSE TO OFFICE ACTION

This is in response to the office action dated April 20, 2020.

AMENDMENT

Applicant requests the following amendments.

Class 9

(Based on 44(e)) Computer programs, recorded, for use in playing video and audio, and showing audio, text, and images of cartoons, animations, emoticons, music videos, advertisements and various forms of media; downloadable smart phone application software for playing games, videos, and collaborating with other software; (Based on Intent to Use) protection cap for cable connectors; cases for ear phones; pouches made in whole or substantial part of fabric, plastic, silicone, leather specially adapted for ear phones; smartphones; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to children’s education; optical apparatus and instruments except for glasses and photographic apparatus, namely, optical inspection apparatus, optical measurement apparatus in the nature of tachometers, optical communications instruments in the nature of optical transmitters, and optical character recognition (OCR) apparatus; photographic apparatus and instruments, namely, stands, tripods, cases, lights, protective camera housing and cases, arm extension device designed for use with cameras, mounting devices, camera lenses, filters, plug adaptors, a smart phone mount for a sports or action camera; sunglasses; electrical controllers; sunglasses; electrical controllers; electric audio and visual apparatus and instruments, namely, loud speakers, audio speakers, amplifiers, woofers, stereo tuners, mp3 players, mp4 players, audio sound speakers, movie projectors, digital sound processors, video monitors, television tuners, televisions, audio and video receivers, video display terminals being liquid crystal display monitors, light emitting diode (LED) monitors, televisions, DVD players; ear phones; computer hardware and computer peripheral devices; electric plugs; protective helmets; downloadable music files; metronomes; recorded DVDs, not of music, featuring cartoons, and films and television programs featuring animations, documentary, comedy and drama, and animated cartoons; downloadable tickets for event entry or venue access; cinematographic films featuring music, cartoons, animations; downloadable electronic publications in the nature of books, magazines in the field of entertainment; batteries; USB cables for cellphones

Class 16

(Based on 44(e)) Stickers; stationery; office requisites, except furniture, namely, envelope sealing machines, paper trimmers, staple removers; school supplies, namely, stationery; writing instruments; paper labels; packaging boxes of paper; paper bags for packaging; printed matters except books and periodicals, namely, posters and calendars; pictures; printed photographs; books in the field of entertainment; printed publications in the nature of booklets, magazines, and journals in the field of entertainment

Class 28

(Based on 44(e)) Games and playthings, namely, board games, tabletop games, party games, card games, balls for games, action figures, parlor games; gymnastic and sporting articles, namely, pommel horses, balance beams, gymnastic benches, springboards, gymnastic apparatus, gymnastic parallel bars, gymnastic horizontal bars, gymnastic training stools, gymnastic rings, gymnastic uneven bars, sporting balls, rackets and strings for rackets, knee pads for athletic use, baseball gloves, baseball bats, protective supports for shoulders and elbows, electronic golf ball dispensers, tennis rackets, skateboards; toys for pets; toys being playthings, namely, finger puppets, darts, toy cars, toy model train sets, bath toys, infant toys, musical toys, inflatable pool toys, ride-on toys, bendable toys, construction toys, plush toys and pull toys; dolls; toys, namely, stuffed toys, character toys, toy animals, toy balloons, squeezable squeaking toys, puppets and accessories thereof; games, namely, puzzle games, jigsaw games; manually-operated physical exercise apparatus, other than for medical use; golf balls

REMARKS

The examining attorney has required that the goods be amended. Applicant submits that the goods, as amended, are now properly identified and classified.

The following mark description may be entered into the record:

The mark consists of stylized word “NEO” in blue. A cartoon design of a cat in blue and outlined in black with a white stomach, black hair with gray designs, blue ears with pink on the inside, white eyes with black pupils and eyelashes, black and white nose area, and four white paws.

As all outstanding matters have been addressed, Applicant respectfully submits that the application is now in condition for publication.

EVIDENCE
Evidence has been attached: Executed copy of applicant's response to office action
Original PDF file:
evi_192957383-20201020115 811950486_._S24745Respons etoofficeactionasfiled.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for protection cap for cable connectors; cases for ear phones; pouches for ear phones; smartphones; downloadable multimedia file; optical apparatus and instruments except for glasses and photographic apparatus; photographic apparatus and instruments; sunglasses; electrical controllers; electric audio and visual apparatus and instruments; ear phones; computer programs, recorded; downloadable smart phone application software; computer hardware and computer peripheral devices; plugs; helmets; downloadable music files; metronomes; recorded DVDs, not of music; downloadable ticket; cinematographic films; downloadable electronic publications; batteries; USB cables for cellphones
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 1052710 registered 08/11/2014 with a renewal date of __________ and an expiration date of 08/11/2024 ], 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: protection cap for cable connectors; (Based on 44(e)) Computer programs, recorded, for use in playing video and audio, and showing audio, text, and images of cartoons, animations, emoticons, music videos, advertisements and various forms of media; downloadable smart phone application software for playing games, videos, and collaborating with other software; pouches for ear phones; (Based on Intent to Use) protection cap for cable connectors; cases for ear phones; downloadable multimedia file; pouches made in whole or substantial part of fabric, plastic, silicone, leather specially adapted for ear phones; optical apparatus and instruments except for glasses and photographic apparatus; smartphones; photographic apparatus and instruments; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to children's education; optical apparatus and instruments except for glasses and photographic apparatus, namely, optical inspection apparatus, optical measurement apparatus in the nature of tachometers, optical communications instruments in the nature of optical transmitters, and optical character recognition (OCR) apparatus; photographic apparatus and instruments, namely, stands, tripods, cases, lights, protective camera housing and cases, arm extension device designed for use with cameras, mounting devices, camera lenses, filters, plug adaptors, a smart phone mount for a sports or action camera; electric audio and visual apparatus and instruments; sunglasses; electrical controllers; computer programs, recorded; sunglasses; downloadable smart phone application software; electrical controllers; electric audio and visual apparatus and instruments, namely, loud speakers, audio speakers, amplifiers, woofers, stereo tuners, mp3 players, mp4 players, audio sound speakers, movie projectors, digital sound processors, video monitors, television tuners, televisions, audio and video receivers, video display terminals being liquid crystal display monitors, light emitting diode (LED) monitors, televisions, DVD players; plugs; ear phones; helmets; computer hardware and computer peripheral devices; electric plugs; protective helmets; recorded DVDs, not of music; downloadable music files; downloadable ticket; metronomes; cinematographic films; recorded DVDs, not of music, featuring cartoons, and films and television programs featuring animations, documentary, comedy and drama, and animated cartoons; downloadable electronic publications; downloadable tickets for event entry or venue access; cinematographic films featuring music, cartoons, animations; downloadable electronic publications in the nature of books, magazines in the field of entertainment; batteries; USB cables for cellphonesClass 009 for (Based on 44(e)) Computer programs, recorded, for use in playing video and audio, and showing audio, text, and images of cartoons, animations, emoticons, music videos, advertisements and various forms of media; downloadable smart phone application software for playing games, videos, and collaborating with other software; (Based on Intent to Use) protection cap for cable connectors; cases for ear phones; pouches made in whole or substantial part of fabric, plastic, silicone, leather specially adapted for ear phones; smartphones; downloadable multimedia file containing artwork, text, audio, video, games, and internet web links relating to children's education; optical apparatus and instruments except for glasses and photographic apparatus, namely, optical inspection apparatus, optical measurement apparatus in the nature of tachometers, optical communications instruments in the nature of optical transmitters, and optical character recognition (OCR) apparatus; photographic apparatus and instruments, namely, stands, tripods, cases, lights, protective camera housing and cases, arm extension device designed for use with cameras, mounting devices, camera lenses, filters, plug adaptors, a smart phone mount for a sports or action camera; sunglasses; electrical controllers; sunglasses; electrical controllers; electric audio and visual apparatus and instruments, namely, loud speakers, audio speakers, amplifiers, woofers, stereo tuners, mp3 players, mp4 players, audio sound speakers, movie projectors, digital sound processors, video monitors, television tuners, televisions, audio and video receivers, video display terminals being liquid crystal display monitors, light emitting diode (LED) monitors, televisions, DVD players; ear phones; computer hardware and computer peripheral devices; electric plugs; protective helmets; downloadable music files; metronomes; recorded DVDs, not of music, featuring cartoons, and films and television programs featuring animations, documentary, comedy and drama, and animated cartoons; downloadable tickets for event entry or venue access; cinematographic films featuring music, cartoons, animations; downloadable electronic publications in the nature of books, magazines in the field of entertainment; batteries; USB cables for cellphones
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 1052710 registered 08/11/2014 with a renewal date of __________ and an expiration date of 08/11/2024 ], 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 016 for passport holders; passport cases; glue for household purposes; stickers; stationery; office requisites, except furniture; school supplies, namely, stationery; writing instruments; paper labels; paper; towels of paper; passport cases; packaging boxes of paper; paper bags for packaging; printed matters except books and periodicals; pictures; figures made of paper; printed photographs; modelling clay; books; printed publications
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 1052710 registered 08/11/2014 with a renewal date of __________ and an expiration date of 08/11/2024 ], 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: passport holders; (Based on 44(e)) Stickers; passport cases; stationery; glue for household purposes; office requisites, except furniture, namely, envelope sealing machines, paper trimmers, staple removers; stickers; school supplies, namely, stationery; writing instruments; office requisites, except furniture; paper labels; packaging boxes of paper; paper bags for packaging; printed matters except books and periodicals, namely, posters and calendars; paper; pictures; towels of paper; printed photographs; passport cases; books in the field of entertainment; printed publications in the nature of booklets, magazines, and journals in the field of entertainment; printed matters except books and periodicals; figures made of paper; modelling clay; books; printed publicationsClass 016 for (Based on 44(e)) Stickers; stationery; office requisites, except furniture, namely, envelope sealing machines, paper trimmers, staple removers; school supplies, namely, stationery; writing instruments; paper labels; packaging boxes of paper; paper bags for packaging; printed matters except books and periodicals, namely, posters and calendars; pictures; printed photographs; books in the field of entertainment; printed publications in the nature of booklets, magazines, and journals in the field of entertainment
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 1052710 registered 08/11/2014 with a renewal date of __________ and an expiration date of 08/11/2024 ], 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 028 for games and playthings; gymnastic and sporting articles; butterfly nets; toys for pets; ornaments for Christmas trees, except illumination articles and confectionery; toys being playthings; dolls; toys; games; physical exercise apparatus, other than for medical use; climbers' harness; golf balls; fishing tackle
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Korea, South registration number 1052710 registered 08/11/2014 with a renewal date of __________ and an expiration date of 08/11/2024 ], 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: games and playthings; (Based on 44(e)) Games and playthings, namely, board games, tabletop games, party games, card games, balls for games, action figures, parlor games; gymnastic and sporting articles; gymnastic and sporting articles, namely, pommel horses, balance beams, gymnastic benches, springboards, gymnastic apparatus, gymnastic parallel bars, gymnastic horizontal bars, gymnastic training stools, gymnastic rings, gymnastic uneven bars, sporting balls, rackets and strings for rackets, knee pads for athletic use, baseball gloves, baseball bats, protective supports for shoulders and elbows, electronic golf ball dispensers, tennis rackets, skateboards; butterfly nets; toys for pets; toys being playthings, namely, finger puppets, darts, toy cars, toy model train sets, bath toys, infant toys, musical toys, inflatable pool toys, ride-on toys, bendable toys, construction toys, plush toys and pull toys; ornaments for Christmas trees, except illumination articles and confectionery; dolls; toys being playthings; toys, namely, stuffed toys, character toys, toy animals, toy balloons, squeezable squeaking toys, puppets and accessories thereof; games, namely, puzzle games, jigsaw games; toys; manually-operated physical exercise apparatus, other than for medical use; games; golf balls; physical exercise apparatus, other than for medical use; climbers' harness; fishing tackleClass 028 for (Based on 44(e)) Games and playthings, namely, board games, tabletop games, party games, card games, balls for games, action figures, parlor games; gymnastic and sporting articles, namely, pommel horses, balance beams, gymnastic benches, springboards, gymnastic apparatus, gymnastic parallel bars, gymnastic horizontal bars, gymnastic training stools, gymnastic rings, gymnastic uneven bars, sporting balls, rackets and strings for rackets, knee pads for athletic use, baseball gloves, baseball bats, protective supports for shoulders and elbows, electronic golf ball dispensers, tennis rackets, skateboards; toys for pets; toys being playthings, namely, finger puppets, darts, toy cars, toy model train sets, bath toys, infant toys, musical toys, inflatable pool toys, ride-on toys, bendable toys, construction toys, plush toys and pull toys; dolls; toys, namely, stuffed toys, character toys, toy animals, toy balloons, squeezable squeaking toys, puppets and accessories thereof; games, namely, puzzle games, jigsaw games; manually-operated physical exercise apparatus, other than for medical use; golf balls
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 1052710 registered 08/11/2014 with a renewal date of __________ and an expiration date of 08/11/2024 ], 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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized word "NEO" in blue. A cartoon design of a cat in blue and outlined in black with a white stomach, black hair with gray designs, blue ears with pink on the inside, white eyes with black pupils and eyelashes, black and white nose area, and four white paws.
Correspondence Information (current):
      LEIGH ANN LINDQUIST
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@sughrue.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is S24745.
Correspondence Information (proposed):
      LEIGH ANN LINDQUIST
      PRIMARY EMAIL FOR CORRESPONDENCE: tm@sughrue.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is S24745.

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_192957383-115811950_._ S24745SignedNAD.pdf
Converted PDF file(s) (2 pages) Signature File1Signature File2
Signatory's Name: Jong Soo KIM
Signatory's Position: Authorized Agent

Response Signature
Signature: /Leigh Ann Lindquist/     Date: 10/20/2020
Signatory's Name: Leigh Ann Lindquist
Signatory's Position: Attorney for applicant, DC bar member

Signatory's Phone Number: 202 663 7409

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:    LEIGH ANN LINDQUIST
   SUGHRUE MION, PLLC
   
   2000 PENNSYLVANIA AVENUE NW, SUITE 900
   WASHINGTON, District of Columbia 20006
Mailing Address:    LEIGH ANN LINDQUIST
   SUGHRUE MION, PLLC
   2000 PENNSYLVANIA AVENUE NW, SUITE 900
   WASHINGTON, District of Columbia 20006
        
Serial Number: 88840133
Internet Transmission Date: Tue Oct 20 14:00:18 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20201020140018903
586-88840133-750f618185e6c0fde740aef0ff9
f6d6972b0aaf2faa3aafc8dd9ffb7380d870b0-N
/A-N/A-20201020115811950486