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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88454480 IWANT(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88454480/large) has been amended as follows:

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

In Office Action No. 1, the Examining Attorney cited Registration No. 4,786,050 as the sole substantive obstacle to registration of the Applicant's mark. The Applicant states that a cancellation proceeding in the matter of the above registration is being filed concurrently with the response to the Office Action, and requests suspension of its application pending resolution of the cancellation proceeding. See Trademark Manual of Examining Procedure Sec. 716.02(a).

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; software applications for mobile devices for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; software applications for mobile devices for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows
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: Computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; Downloadable computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; software applications for mobile devices for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; downloadable software applications for mobile devices for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; downloadable computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; software applications for mobile devices for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; downloadable software applications for mobile devices for streaming audio, visual, and audiovisual content, music, movies, videos, or television showsClass 009 for Downloadable computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; downloadable software applications for mobile devices for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; downloadable computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; downloadable software applications for mobile devices for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows
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.

Applicant proposes to amend the following:
Current: Class 042 for Non-downloadable computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; platform as a service (PaaS) featuring computer software platforms for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; non-downloadable computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; platform as a service (PaaS) featuring computer software platforms for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows
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: Non-downloadable computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; Providing online, non-downloadable computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; platform as a service (PaaS) featuring computer software platforms for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; non-downloadable computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; providing online, non-downloadable computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; platform as a service (PaaS) featuring computer software platforms for streaming audio, visual, and audiovisual content, music, movies, videos, or television showsClass 042 for Providing online, non-downloadable computer software for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; platform as a service (PaaS) featuring computer software platforms for viewing of audio, visual, and audiovisual content, music, movies, videos, or television shows; providing online, non-downloadable computer software for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows; platform as a service (PaaS) featuring computer software platforms for streaming audio, visual, and audiovisual content, music, movies, videos, or television shows
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ABS-CBN International, a corporation of California, having an address of
      2001 Junipero Serra Blvd., Suite 200
      Daly City, California 94014
      United States

Proposed: ABS-CBN International, a corporation of California, having an address of
      2001 Junipero Serra Blvd., Suite 200
      Daly City, California 94014
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Denis V. Shamo. Denis V. Shamo of BAKER & MCKENZIE LLP, is located at

      1900 NORTH PEARL STREET; SUITE 1500
      DALLAS, Texas 75201
      United States
The docket/reference number is 10055064-TBD.
      The phone number is 214-978-3000.
      The fax number is 214-978-3099.
      The email address is dallastrademarks@bakermckenzie.com

The owner's/holder's proposed attorney information: Denis V. Shamo. Other appointed attorneys are Dyan M. House. Denis V. Shamo of BAKER & MCKENZIE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1900 North Pearl Street; Suite 1500
      Dallas, Texas 75201
      United States
The docket/reference number is 10055064-TBD.
      The phone number is 214-978-3000.
      The fax number is 214-978-3099.
      The email address is dallastrademarks@bakermckenzie.com

Denis V. Shamo 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):
      DENIS V. SHAMO
      PRIMARY EMAIL FOR CORRESPONDENCE: dallastrademarks@bakermckenzie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): GIPSCOfficeSupport@bakermckenzie.com

The docket/reference number is 10055064-TBD.
Correspondence Information (proposed):
      Denis V. Shamo
      PRIMARY EMAIL FOR CORRESPONDENCE: dallastrademarks@bakermckenzie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): GIPSCOfficeSupport@bakermckenzie.com

The docket/reference number is 10055064-TBD.

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_104129196114-140320315_._IWANT_Declaration.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Pam B. Castillo
Signatory's Position: Regional Marketing Head - NOLA

Response Signature
Signature: /Denis V. Shamo/     Date: 02/24/2020
Signatory's Name: Denis V. Shamo
Signatory's Position: Attorney of Record, Michigan Bar member

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:    DENIS V. SHAMO
   BAKER & MCKENZIE LLP
   
   1900 NORTH PEARL STREET; SUITE 1500
   DALLAS, Texas 75201
Mailing Address:    Denis V. Shamo
   BAKER & MCKENZIE LLP
   1900 North Pearl Street; Suite 1500
   Dallas, Texas 75201
        
Serial Number: 88454480
Internet Transmission Date: Mon Feb 24 14:11:37 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200224141137
290635-88454480-710d1044d9c7b861d070e31f
729c7f2fc96b9c9c6c2ce147c12b870fd3177e-N
/A-N/A-20200224140320315611