Response to Office Action

PTO- 1957

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

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.

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PTO- 1957

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

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.

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90021671 PR PHOTOROOM (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9002167 1/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Software; Interactive software; Downloadable software; Software; Computer software; Application software; Software for electronic tablets; Software and applications for mobile devices; Downloadable software applications; Downloadable computer software applications; Downloadable applications for mobile devices; Downloadable mobile applications for portable computing devices; Downloadable mobile applications for data management; Downloadable mobile applications for data transmission; Downloadable mobile applications for transmitting information; Downloadable mobile applications for information management; Software for use as an application programming interface (API); Downloadable software for transmitting information; Downloadable software for data management; Downloadable software and applications for sending and receiving electronic messages, graphics, images, audio and audiovisual content via the Internet and communication networks; Downloadable electronic publications; Cross-platform software and applications; Downloadable photo design software and applications; Downloadable software and applications for transmitting and sending photos and videos; Downloadable software and applications for editing photographs; Downloadable video design software and applications; Downloadable photo and video editing software and applications; Downloadable software and applications for modifying the appearance of photos; Downloadable software and applications for collecting, editing, organizing, modifying, transmitting, storing and sharing data, photos, music, videos and information; Software for transforming, editing and downloading multimedia content, in particular videos, sound data and images; Downloadable photo recordings in the nature of creative tutorials in the field of social media advertising; Filters for photography; Software for smartphones
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[ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Software; Software, namely, Interactive software, Downloadable software, Computer software, Application software, Software for electronic tablets, Software and applications for mobile devices, Downloadable software applications, Downloadable computer software applications, Downloadable applications for mobile devices, Downloadable mobile applications for portable computing devices, all the aforementioned goods for photo and video editing; Interactive software; Downloadable mobile applications for data management; Downloadable software; Downloadable mobile applications for data transmission; Software; Downloadable mobile applications for transmitting information; Computer software; Downloadable mobile applications for information management; Application software; Downloadable computer software for use as an application programming interface (API); Software for electronic tablets; Downloadable software for transmitting information; Software and applications for mobile devices; Downloadable software for data management; Downloadable software applications; Downloadable software and applications for sending and receiving electronic messages, graphics, images, audio and audiovisual content via the Internet and communication networks; Downloadable computer software applications; Downloadable electronic publications in the nature of downloadable mobile applications in the field of photo and video editing; Downloadable applications for mobile devices; Downloadable photo design software and applications; Downloadable mobile applications for portable computing devices; Downloadable computer application software for transmitting and sending photos and videos; Downloadable computer application software for editing photographs; Downloadable computer application software for video design; Downloadable computer application software for photo and video editing; Downloadable computer application software for modifying the appearance of photos; Software for use as an application programming interface (API); Downloadable computer application software for collecting, editing, organizing, modifying, transmitting, storing and sharing data, photos, music, videos and information; Downloadable computer software for transforming, editing and downloading multimedia content, in particular videos, sound data and images; Downloadable photo recordings in the nature of creative tutorials in the field of social media advertising; Filters for use in photography, namely, for photo and video editing in connection with mobile applications; Downloadable electronic publications; Cross-platform software and applications; Downloadable software and applications for transmitting and sending photos and videos; Downloadable software and applications for editing photographs; Downloadable video design software and applications; Downloadable photo and video editing software and applications; Downloadable software and applications for modifying the appearance of photos; Downloadable software and applications for collecting, editing, organizing, modifying, transmitting, storing and sharing data, photos, music, videos and information; Software for transforming, editing and downloading multimedia content, in particular videos, sound data and images; Filters for photography; Software for smartphonesClass 009 for Software, namely, Interactive software, Downloadable software, Computer software, Application software, Software for electronic tablets, Software and applications for mobile devices, Downloadable software applications, Downloadable computer software applications, Downloadable applications for mobile devices, Downloadable mobile applications for portable computing devices, all the aforementioned goods for photo and video editing; Downloadable mobile applications for data management; Downloadable mobile applications for data transmission; Downloadable mobile applications for transmitting information; Downloadable mobile applications for information management; Downloadable computer software for use as an application programming interface (API); Downloadable software for transmitting information; Downloadable software for data management; Downloadable software and applications for sending and receiving electronic messages, graphics, images, audio and audiovisual content via the Internet and communication networks; Downloadable electronic publications in the nature of downloadable mobile applications in the field of photo and video editing; Downloadable photo design software and applications; Downloadable computer application software for transmitting and sending photos and videos; Downloadable computer application software for editing photographs; Downloadable computer application software for video design; Downloadable computer application software for photo and video editing; Downloadable computer application software for modifying the appearance of photos; Downloadable computer application software for collecting, editing, organizing, modifying, transmitting, storing and sharing data, photos, music, videos and information; Downloadable computer software for transforming, editing and downloading multimedia content, in particular videos, sound data and images; Downloadable photo recordings in the nature of creative tutorials in the field of social media advertising; Filters for use in photography, namely, for photo and video editing in connection with mobile applications
Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 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 018252919 registered 10/21/2020 with a renewal date of __________ and an expiration date of 06/12/2030 ], 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:
FRU0-71163154108-13260542 0_._otoRoom_and_Design_-_ EU_Certificate_of_Registr ation_-_part_1.pdf
Converted PDF file(s) ( 7 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7

Applicant proposes to amend the following:

Current:
Class 038 for Telecommunications; Electronic data transmission; Electronic transmission of messages; Electronic image transmission services; Electronic document transmission services; Electronic transmission of images, photos, illustrations and graphic images over a global computer network; Data dissemination services; Audio, text and video broadcasting service on the Internet or other communication networks; Transmission of messages; Providing user access to global computer networks; Rental of access time to global computer networks; Streaming data transmission; Transmission of digital files; Online chat room services for social networks; Providing access to online computer databases; Broadcasting services on computer or other communication networks, namely, downloading, display, and electronic transmission of data, information, messages, graphics and images; Instant messaging services; Photo sharing, video sharing and data sharing services, namely, electronic transmission of digital photo, audio, video, audiovisual and graphic content files between users; Photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audiovisual content and data between Internet users and mobile devices
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[ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Telecommunications; Telecommunications in the nature of telecommunication consultation; Electronic data transmission; Electronic transmission of messages; Electronic image transmission services; Electronic document transmission services; Electronic transmission of images, photos, illustrations and graphic images over a global computer network; Data dissemination services; Audio, text and video broadcasting service on the Internet or other communication networks; Transmission of messages; Providing user access to global computer networks; Rental of access time to global computer networks; Electronic transmission of digital files; Streaming data transmission; Providing online chat room services for social networking; Transmission of digital files; Providing access to online computer databases; Online chat room services for social networks; Instant messaging services; Photo sharing, video sharing and data sharing services, namely, electronic transmission of digital photo, audio, video, audiovisual and graphic content files between users; Broadcasting services on computer or other communication networks, namely, downloading, display, and electronic transmission of data, information, messages, graphics and images; Photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audiovisual content and data between Internet users and mobile devicesClass 038 for Telecommunications in the nature of telecommunication consultation; Electronic data transmission; Electronic transmission of messages; Electronic image transmission services; Electronic document transmission services; Electronic transmission of images, photos, illustrations and graphic images over a global computer network; Audio, text and video broadcasting service on the Internet or other communication networks; Transmission of messages; Providing user access to global computer networks; Rental of access time to global computer networks; Electronic transmission of digital files; Providing online chat room services for social networking; Providing access to online computer databases; Instant messaging services; Photo sharing, video sharing and data sharing services, namely, electronic transmission of digital photo, audio, video, audiovisual and graphic content files between users; Photo sharing and data sharing services, namely, electronic transmission of digital photo files, videos, audiovisual content and data between Internet users and mobile devices
Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 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 018252919 registered 10/21/2020 with a renewal date of __________ and an expiration date of 06/12/2030 ], 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:
FRU1-71163154108-13260542 0_._otoRoom_and_Design_-_ EU_Certificate_of_Registr ation_-_part_1.pdf
Converted PDF file(s) ( 7 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7

Applicant proposes to amend the following:

Current:
Class 041 for Entertainment; Production and editing of multimedia content, animations, video sequences, photos on mobile electronic devices; Providing entertainment information via the Internet; Providing information relating to entertainment; Entertainment information; Photography services; Recording studio services; Movie studio services; Photo studio services; Photographic composition for third parties; Entertainment services provided online; Provision of non-downloadable online electronic publications
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[ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Entertainment; Entertainment services in the nature of live photo and video editing performances; Production and editing of multimedia content, animations, video sequences, photos on mobile electronic devices; Production and editing of photo and video in the nature of multimedia content, animations, video sequences, photos on mobile electronic devices; Providing entertainment information via the Internet; Providing information relating to entertainment; Providing information in the field of entertainment; Entertainment information; Photography services; Recording studio services; Movie studio services; Photo studio services; Photo studio services in the nature of photography services; Photographic composition for third parties; Entertainment services provided online; Provision of non-downloadable online electronic publications in the nature of magazines and newsletters in the field of photo and video editing; Provision of non-downloadable online electronic publicationsClass 041 for Entertainment services in the nature of live photo and video editing performances; Production and editing of photo and video in the nature of multimedia content, animations, video sequences, photos on mobile electronic devices; Providing entertainment information via the Internet; Providing information in the field of entertainment; Entertainment information; Photography services; Recording studio services; Movie studio services; Photo studio services in the nature of photography services; Photographic composition for third parties; Provision of non-downloadable online electronic publications in the nature of magazines and newsletters in the field of photo and video editing
Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 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 018252919 registered 10/21/2020 with a renewal date of __________ and an expiration date of 06/12/2030 ], 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:
FRU2-71163154108-13260542 0_._otoRoom_and_Design_-_ EU_Certificate_of_Registr ation_-_part_1.pdf
Converted PDF file(s) ( 7 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7

Applicant proposes to amend the following:

Current:
Class 042 for Interactive hosting services allowing users to publish and share their own content and images online; Provision, for temporary use, of downloadable software and applications for creation, visualization, editing, management, indexing, sorting, organization, storage, transfer, printing, as well as the exchange of digital photographs, graphic and digital images, data, texts, audio sequences, video sequences, documents and multimedia and interactive works; Design and development of software in the field of mobile applications
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[ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Interactive hosting services allowing users to publish and share their own content and images online; Computer services, namely, interactive hosting services allowing users to publish and share their own content and images online; Provision, for temporary use, of downloadable software and applications for creation, visualization, editing, management, indexing, sorting, organization, storage, transfer, printing, as well as the exchange of digital photographs, graphic and digital images, data, texts, audio sequences, video sequences, documents and multimedia and interactive works; Provision, for temporary use, of online non-downloadable software and computer application software for creation, visualization, editing, management, indexing, sorting, organization, storage, transfer, printing, and the exchange of digital photographs, graphic and digital images, data, texts, audio sequences, video sequences, documents and multimedia and interactive works; Design and development of software in the field of mobile applicationsClass 042 for Computer services, namely, interactive hosting services allowing users to publish and share their own content and images online; Provision, for temporary use, of online non-downloadable software and computer application software for creation, visualization, editing, management, indexing, sorting, organization, storage, transfer, printing, and the exchange of digital photographs, graphic and digital images, data, texts, audio sequences, video sequences, documents and multimedia and interactive works; Design and development of software in the field of mobile applications
Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 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 018252919 registered 10/21/2020 with a renewal date of __________ and an expiration date of 06/12/2030 ], 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:
FRU3-71163154108-13260542 0_._otoRoom_and_Design_-_ EU_Certificate_of_Registr ation_-_part_1.pdf
Converted PDF file(s) ( 7 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7

Applicant proposes to amend the following:

Current:
Class 045 for Online social networking services; Online social networking services accessible through downloadable mobile applications; Licensing services; Providing information in the form of databases containing information in the field of online social networks; Security services for the protection of individuals, namely, user identification services and user verification services
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[ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Online social networking services; Online social networking services accessible through downloadable mobile applications; Licensing services; Licensing services, namely, Licensing of photo and video editing; Providing information in the form of databases containing information in the field of online social networks; Providing information in the form of databases containing information in the field of online social networking services; Security services for the protection of individuals, namely, user identification services and user verification servicesClass 045 for Online social networking services; Online social networking services accessible through downloadable mobile applications; Licensing services, namely, Licensing of photo and video editing; Providing information in the form of databases containing information in the field of online social networking services
Webpage URL: None Provided
Webpage Date of Access: None Provided


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 [ European Union Trademark - EUTM application number 018252919 filed 06/12/2020]. 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 018252919 registered 10/21/2020 with a renewal date of __________ and an expiration date of 06/12/2030 ], 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:
FRU4-71163154108-13260542 0_._otoRoom_and_Design_-_ EU_Certificate_of_Registr ation_-_part_1.pdf
Converted PDF file(s) ( 7 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5Foreign Registration-6Foreign Registration-7

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: ARTIZANS OF PHOTO VIDEO BACKGROUND EDITOR APP, a corporation of France, having an address of
      7 place de l'Hôtel de ville
      Aulnay-sous-Bois, 93600
      France
      Email Address: XXXX

Proposed: ARTIZANS OF PHOTO VIDEO BACKGROUND EDITOR APP, a corporation of France, having an address of
      7 place de l'Hôtel de ville
      Aulnay-sous-Bois, 93600
      France
      Email Address: XXXX
Correspondence Information (current):
      M. SCOTT ALPRIN
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@alprinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 0261003.
Correspondence Information (proposed):
      M. Scott Alprin
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@alprinlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 0261003.

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: /Yuka Kobayashi/      Date: 01/06/2021
Signatory's Name: Yuka Kobayashi
Signatory's Position: Attorney of record, Virginia Bar member
Signatory's Phone Number: 202-659-8225

Signature method: Signed directly within the form

Response Signature
Signature: /Yuka Kobayashi/     Date: 01/06/2021
Signatory's Name: Yuka Kobayashi
Signatory's Position: Attorney of record, Virginia Bar member

Signatory's Phone Number: 202-659-8225 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:    M. SCOTT ALPRIN
   
   
   5 PINEHURST CIRCLE, N.W.
   WASHINGTON, District of Columbia 20015
Mailing Address:    M. Scott Alprin
   5 PINEHURST CIRCLE, N.W.
   WASHINGTON, District of Columbia 20015
        
Serial Number: 90021671
Internet Transmission Date: Wed Jan 06 14:13:25 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202101061413254
66164-90021671-7602afd173863deae956ee027
80816edfd3f9c2f053982dd55148199482d52f4a
c1-N/A-N/A-20210106132605420055