Response to Office Action

PTO- 1957

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- 1957

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 Office Action

To the Commissioner for Trademarks:

Application serial no. 88911959 DIGIT(Standard Characters, see http://uspto.report/TM/88911959/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Recorded and/or downloadable software application for controlling and customizing indoor and outdoor multi-color LED lighting products; Home automation hubs comprised of voice-activated speakers, computer hardware, and downloadable software for controlling and customizing wifi enabled indoor and outdoor multi-color LED lighting products; Wireless indoor and outdoor speakers; Electronic charging devices for cell phones, tablets, PCs; lights for use with computer and video cameras
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.


Proposed:

Tracked Text Description: Recorded and/or downloadable software application for controlling and customizing indoor and outdoor multi-color LED lighting products; Home automation hubs comprised of voice-activated speakers, computer hardware, and downloadable software for controlling and customizing wifi enabled indoor and outdoor multi-color LED lighting products; Home automation hubs comprised of voice-activated speakers, computer hardware, and downloadable software for controlling and customizing wireless network enabled indoor and outdoor multi-color LED lighting products; Wireless indoor and outdoor speakers; Electronic charging devices for cell phones, tablets, PCs; lights for use with computer and video cameras; Customizable, voice, application, and wireless network controlled indoor and outdoor multi color LED lighting products, namely, LED signs; flashlights for use in photography; electrical lights for use in photography; lights for use with camerasClass 009 for Recorded and/or downloadable software application for controlling and customizing indoor and outdoor multi-color LED lighting products; Home automation hubs comprised of voice-activated speakers, computer hardware, and downloadable software for controlling and customizing wireless network enabled indoor and outdoor multi-color LED lighting products; Wireless indoor and outdoor speakers; Electronic charging devices for cell phones, tablets, PCs; lights for use with computer and video cameras; Customizable, voice, application, and wireless network controlled indoor and outdoor multi color LED lighting products, namely, LED signs; flashlights for use in photography; electrical lights for use in photography; lights for use with cameras
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.

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


Applicant proposes to amend the following:

Current:
Class 011 for Customizable, voice, application, and wifi controlled indoor and outdoor multi-color LED lighting products; Lights, namely, wall lights, ceiling lights and light bulbs
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 11/13/2019 and first used in commerce at least as early as 11/13/2019 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Customizable, voice, application, and wifi controlled indoor and outdoor multi-color LED lighting products; Customizable, voice, application, and wireless network controlled indoor and outdoor multi-color LED lighting products, namely, lighting fixtures; Lights, namely, wall lights, ceiling lights and light bulbsClass 011 for Customizable, voice, application, and wireless network controlled indoor and outdoor multi-color LED lighting products, namely, lighting fixtures; Lights, namely, wall lights, ceiling lights and light bulbs
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 11/13/2019 and first used in commerce at least as early as 11/13/2019 , and is now in use in such commerce.

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

Applicant hereby adds the following class of goods/services to the application:
New: Class 028 for Customizable, voice, application and wireless network controlled indoor and outdoor multi-color LED lighting products, namely, toy LED light sticks
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.

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

Correspondence Information (current):
      Amy J Benjamin
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@goldbergcohen.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mcohen@goldbergcohen.com; lwigder@goldbergcohen.comm
Correspondence Information (proposed):
      Amy J Benjamin
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@goldbergcohen.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mcohen@goldbergcohen.com; lwigder@goldbergcohen.comm

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).

FEE(S)
Fee(s) in the amount of $350 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /amy j benjamin/     Date: 09/07/2021
Signatory's Name: Amy J Benjamin
Signatory's Position: Attorney of Record, NY State Bar

Signatory's Phone Number: 212-673-8350 Signature method: Signed directly within the form

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:    Amy J Benjamin
   GOLDBERG COHEN LLP
   3RD FLOOR
   1350 AVENUE OF THE AMERICAS
   NEW YORK, New York 10019
Mailing Address:    Amy J Benjamin
   GOLDBERG COHEN LLP
   3RD FLOOR
   1350 AVENUE OF THE AMERICAS
   NEW YORK, New York 10019
        
PAYMENT: 88911959
PAYMENT DATE: 09/07/2021
        
Serial Number: 88911959
Internet Transmission Date: Tue Sep 07 11:10:46 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXXX:XXXX:XXX:X
XXX:XXXX-20210907111046598700-88911959-7
8180cf8ad539eba451e4b9b7f74a7967759f41ca
ebfe974ae2958b2738d4fac-DA-10443161-2021
0907104136947610