TEAS Response to Suspension Inquiry

PTO- 1822

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1822

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88889648 IMLIVE ADULT WEBCAM EXPERIENCES (Stylized and/or with Design, see http://uspto.report/TM/88889648/mark.png) has been amended as follows:

OTHER REASON
Registration of subject application is refused due to a likelihood of confusion with the marks in U.S. Reg. Nos. 3938794 and 3935444, owned by Immersive Media Company. The Applicant hereby submits a copy of the consent in the form of a Consent Agreement, signed by Immersive Media Company and I.M.L., SLU, in which the owner of the cited registrations explicitly consents to registration by Applicant of the applied-for mark (Exhibit A). The two parties recognize the validity of each other's use of their respective marks in connection with their respective goods, and wish to avoid any conflict with the registration of their marks. With the submission of the agreement, disclaimer of IMLIVE and amendments to the listing of services, the refusals to register should be withdrawn.
Original PDF file:
OT_3810821634-103543750_. _IMLIVE_-_Exhibit_A__F419 9284x96B9E_.pdf
Converted PDF file(s) (3 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Entertainment services, namely, providing a website featuring adult entertainment, providing live performances by an adult entertainer, and providing a web site featuring non-downloadable adult-themed photographs and videos
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/22/2020 and first used in commerce at least as early as 04/22/2020, and is now in use in such commerce.

Proposed:
Tracked Text Description: Entertainment services, namely, providing a website featuring adult entertainment, providing live performances by an adult entertainer, and providing a web site featuring non-downloadable adult-themed photographs and videos; Entertainment services, namely, providing a website featuring adult entertainment in the nature of live adult-oriented shows and tease shows; providing live performances by an adult entertainer, and providing a web site featuring non-downloadable adult-themed photographs and videosClass 041 for Entertainment services, namely, providing a website featuring adult entertainment in the nature of live adult-oriented shows and tease shows; providing live performances by an adult entertainer, and providing a web site featuring non-downloadable adult-themed photographs and videos
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/22/2020 and first used in commerce at least as early as 04/22/2020, and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services, namely, hosting on-line web facilities for others for organizing and conducting on-line meetings, on-line interactive communications and on-line interactive discussions
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/22/2020 and first used in commerce at least as early as 04/22/2020, and is now in use in such commerce.

Proposed: Class 042 for Computer services, namely, hosting on-line web facilities for others for organizing and conducting on-line meetings, on-line interactive communications and on-line interactive discussions
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/22/2020 and first used in commerce at least as early as 04/22/2020, and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Personal and social services, namely, arranging personal social introductions for entertainment purposes
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/22/2020 and first used in commerce at least as early as 04/22/2020, and is now in use in such commerce.

Proposed:
Tracked Text Description: Personal and social services, namely, arranging personal social introductions for entertainment purposes; Personal and social services, namely, arranging Internet-based personal social introductions for entertainment purposesClass 045 for Personal and social services, namely, arranging Internet-based personal social introductions for entertainment purposes
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/22/2020 and first used in commerce at least as early as 04/22/2020, and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided


ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use IMLIVE apart from the mark as shown.
Correspondence Information (current):
      Tamar Niv Bessinger
      PRIMARY EMAIL FOR CORRESPONDENCE: Bessinger-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is IMLS 2004889.
Correspondence Information (proposed):
      Tamar Niv Bessinger
      PRIMARY EMAIL FOR CORRESPONDENCE: Bessinger-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is IMLS 2004889.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

Response Suspension Inquiry Signature
Signature: /tnb/     Date: 08/19/2021
Signatory's Name: Tamar Niv Bessinger
Signatory's Position: Attorney of Record, New York State Bar Member
Signatory's Phone Number: 212-813-5900
Signature method: Sent to third party for signature

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:    Tamar Niv Bessinger
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York
Mailing Address:    Tamar Niv Bessinger
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
        
Serial Number: 88889648
Internet Transmission Date: Thu Aug 19 14:26:48 ET 2021
TEAS Stamp: USPTO/RSI-XX.XXX.XXX.XX-2021081914264878
1134-88889648-7818bef72116f4322992928b98
554e93c4e148ca4fde0deafd59aa106d851a3ebf
-N/A-N/A-20210819141810173434