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. 88903750 K91(Standard Characters, see http://uspto.report/TM/88903750/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Smart phones; Television receivers; Wearable computer; Computer; Digital sensory devices; Electronic sensors; Apparatus for recording, transmission or reproduction of sound or images; Application software; Computer application software for mobile phones for receiving and transmission of message in the nature of data, text, language, sound, image and video; Computer applications software for smart phones and smart watches; Tablet computers; Settop boxes; Cameras; Wearable smart phones; Cases for smart phones; Cameras for smart phones; Battery chargers for use with mobile telecommunication devices; Batteries for use with mobile telecommunication devices; Smart phone speakers; Earphones; Electric touch pen for smart phones; Smart phone stand for automobiles; Wireless headsets for smart phones; Application software for smart phones; Memory card for smart phones; Semi-conductors; Televisions; Light Emitting Diode (LED) displays; Electric telecommunications apparatus
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Trinidad and Tobago application number 56029 filed 11/11/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Smart phones; Television receivers; Wearable computer; Wearable computers in the nature of smartwatches and smart glasses; Computer; Digital sensory devices; Digital sensory devices in the nature of proximity sensors, acceleration sensors, gesture and motion sensors, humidity and liquid level sensors; Electronic sensors; Electronic proximity sensors; Apparatus for recording, transmission or reproduction of sound or images; Electronic acceleration sensors; Application software; Apparatus for recording, transmission and reproduction of sound or images; Computer application software for mobile phones for receiving and transmission of message in the nature of data, text, language, sound, image and video; Downloadable computer application software for mobile phones for use in database management, use in electronic storage of data; Computer applications software for smart phones and smart watches; Downloadable computer application software for mobile phones for receiving and transmission of message in the nature of data, text, language, sound, image and video; Downloadable computer applications software for smart phones and smart watches for use in database management, use in electronic storage of data; Tablet computers; Settop boxes; Cameras; Wearable smart phones; Cases for smart phones; Cameras for smart phones; Battery chargers for use with mobile telecommunication devices; Smart phone speakers; Batteries for use with mobile telecommunication devices; Smart phone audio speakers; Electric touch pen for smart phones; Earphones; Smart phone stand for automobiles; Electronic touch pen for smart phones in the nature of electronic pens with conductive points for touch screen devices and computer styluses; Stands specially adapted for smartphones for use in automobiles; Application software for smart phones; Wireless headsets for smart phones; Downloadable application software for smart phones for receiving and transmission of messages in the nature of data, text, language, sound, image, and video; Memory card for smart phones; Semi-conductors; Televisions; Electric telecommunications apparatus; Light Emitting Diode (LED) displays; Electronic telecommunications apparatus being mobile phones, portable media players and handheld computersClass 009 for Smart phones; Television receivers; Wearable computers in the nature of smartwatches and smart glasses; Computer; Digital sensory devices in the nature of proximity sensors, acceleration sensors, gesture and motion sensors, humidity and liquid level sensors; Electronic proximity sensors; Electronic acceleration sensors; Apparatus for recording, transmission and reproduction of sound or images; Downloadable computer application software for mobile phones for use in database management, use in electronic storage of data; Downloadable computer application software for mobile phones for receiving and transmission of message in the nature of data, text, language, sound, image and video; Downloadable computer applications software for smart phones and smart watches for use in database management, use in electronic storage of data; Tablet computers; Settop boxes; Cameras; Wearable smart phones; Cases for smart phones; Cameras for smart phones; Battery chargers for use with mobile telecommunication devices; Batteries for use with mobile telecommunication devices; Smart phone audio speakers; Earphones; Electronic touch pen for smart phones in the nature of electronic pens with conductive points for touch screen devices and computer styluses; Stands specially adapted for smartphones for use in automobiles; Wireless headsets for smart phones; Downloadable application software for smart phones for receiving and transmission of messages in the nature of data, text, language, sound, image, and video; Memory card for smart phones; Semi-conductors; Televisions; Light Emitting Diode (LED) displays; Electronic telecommunications apparatus being mobile phones, portable media players and handheld computers
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Trinidad and Tobago application number 56029 filed 11/11/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018235132 registered 09/15/2020 with a renewal date of __________ and an expiration date of 05/06/2030 ], 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.
Original PDF file:
FRU0-19235139129-13590029 5_._EUTM_18235132_K91_reg _cert.pdf
Converted PDF file(s) ( 5 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

ADDITIONAL STATEMENTS
Miscellaneous Statement
AMENDMENT TO REGISTRATION BASIS: Applicant respectfully requests the examining attorney to amend the basis to section 44(e) based on EUTM Registration No. 018235132, a copy of which is submitted herewith. Aplicant has had a bona fide and effective industrial or commercial establishment in Germany as of the date of issuance of the foreign registration. Germany is a member of the EU and a country of origin of the applicant through the presence of its wholly owned German subsidiary LG Electronics Deutschland GmbH. Therefore, applicant believes that all requirements to establish the section 44(e) basis have been satisfied. Applicant respectfully requests the examining attorney to delete the section 1(b) basis if the section 44(e) basis is accepted. REMARKS: Applicant has amended the identification of goods and amended the registration basis. There being no other issues raised in the Office Action, applicant believes that the present application is in condition to be approved for publication. If the examining attorney has any questions concerning this application, the examining attorney is requested to contact Michael T. Smith at (703) 205-8000 in the Washington, D.C. area.

Correspondence Information (current):
      Michael T. Smith
      PRIMARY EMAIL FOR CORRESPONDENCE: mailroom@bskb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 0465-7598US1.
Correspondence Information (proposed):
      Michael T. Smith
      PRIMARY EMAIL FOR CORRESPONDENCE: mailroom@bskb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): msmith@bskb.com

The docket/reference number is 0465-7598US1.

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

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Michael T. Smith/      Date: 11/16/2020
Signatory's Name: Michael T. Smith
Signatory's Position: Authorized attorney, WV bar member
Signatory's Phone Number: 7032058000


Response Signature
Signature: /Michael T. Smith/     Date: 11/16/2020
Signatory's Name: Michael T. Smith
Signatory's Position: Authorized attorney, WV bar member

Signatory's Phone Number: 7032058000

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Michael T. Smith
   BIRCH, STEWART, KOLASCH, & BIRCH, LLP
   
   8110 Gatehouse Road, Suite 100 East
   Falls Church, Virginia 22042
Mailing Address:    Michael T. Smith
   BIRCH, STEWART, KOLASCH, & BIRCH, LLP
   8110 Gatehouse Road, Suite 100 East
   Falls Church, Virginia 22042
        
Serial Number: 88903750
Internet Transmission Date: Mon Nov 16 14:04:18 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202011161404186
91169-88903750-750ae8e1d3e3898581ad238a8
62a5eaa8ede8a3357a04995f01623b260aac071b
2-N/A-N/A-20201116135900295438