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. 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, 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
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.


Proposed:

Tracked Text Description: 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; Software, namely, downloadable interactive software, downloadable software, downloadable computer software, downloadable application software, downloadable software for electronic tablets, downloadable software and applications for mobile devices, downloadable software applications, downloadable computer software applications, downloadable software applications for mobile devices, downloadable mobile applications for portable computing devices, all the aforementioned software used 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 electronic publications in the nature of newsletters, magazines, and journals 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 applicationsClass 009 for Software, namely, downloadable interactive software, downloadable software, downloadable computer software, downloadable application software, downloadable software for electronic tablets, downloadable software and applications for mobile devices, downloadable software applications, downloadable computer software applications, downloadable software applications for mobile devices, downloadable mobile applications for portable computing devices, all the aforementioned software used 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 newsletters, magazines, and journals 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(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, before the application may proceed to registration. 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.

Applicant proposes to amend the following:

Current:
Class 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
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.


Proposed:

Tracked Text Description: 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; Instant electronic 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 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 electronic 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(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, before the application may proceed to registration. 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.

Applicant proposes to amend the following:

Current:
Class 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
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.


Proposed:

Tracked Text Description: 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; Production 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 editingClass 041 for Entertainment services in the nature of live photo and video editing performances; Production 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(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, before the application may proceed to registration. 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.

Applicant proposes to amend the following:

Current:
Class 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
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.


Proposed:

Tracked Text Description: 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; Provision, for temporary use, of online non-downloadable software and computer application software for creation, visualization, 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, 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(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, before the application may proceed to registration. 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.

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, namely, Licensing of photo and video editing; Providing information in the form of databases containing information in the field of online social networking services
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.


Proposed:

Tracked Text Description: Online social networking services; Online social networking services accessible through downloadable mobile applications; Licensing services, namely, Licensing of photo and video editing; Licensing authority services, namely, licensing of photo and video editing; Providing information in the form of databases containing information in the field of online social networking servicesClass 045 for Online social networking services; Online social networking services accessible through downloadable mobile applications; Licensing authority 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(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, before the application may proceed to registration. 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.
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)
Response Signature
Signature: /Yuka Kobayashi/     Date: 07/16/2021
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: Fri Jul 16 16:01:12 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202107161601128
10978-90021671-78095a3a5855c49fb527b847c
a55824991f65589a671554598434d0eba6e53c23
-N/A-N/A-20210716153259656374