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

---

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. 90181546 YADEA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9018154 6/large) has been amended as follows:

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

Please see the argument submitted in the Evidence section.

EVIDENCE
Evidence has been attached: applicant's argument, and confirmation that a request for recordal of change of name has been submitted with respect to cited Registration No. 4230875
Original PDF file:
evi_1725846235-2021070515 1928647430_._YADEA_-_Argu ment.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_1725846235-2021070515 1928647430_._YADEA_-_Fili ng_Receipt_for_Recordal_o f_Name_Change.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer application software for mobile phones, namely, software for using in database management, using in electronic storage of data; electric navigational instruments; electronic navigational and positioning apparatus and instruments; rearview cameras for vehicles; voltage regulators for vehicles; components for electrical mains in the nature of electric wires, connectors, circuit breakers, cables; electrical adapters; protective helmets; parts for anti-theft automotive alarms, namely, electronic sensors, remote control transmitters and receivers for remotely operating land vehicles; locks, electric; batteries, electric, for vehicles
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: Downloadable computer application software for mobile phones, namely, software for using in database management, using in electronic storage of data; Downloadable computer application software for mobile phones, namely, software for database management, and for electronic storage of data; electric navigational instruments; electronic navigational and positioning apparatus and instruments; rearview cameras for vehicles; voltage regulators for vehicles; components for electrical mains in the nature of electric wires, connectors, circuit breakers, cables; electrical adapters; protective helmets; parts for anti-theft automotive alarms, namely, electronic sensors, remote control transmitters and receivers for remotely operating land vehicles; locks, electric; batteries, electric, for vehiclesClass 009 for Downloadable computer application software for mobile phones, namely, software for database management, and for electronic storage of data; electric navigational instruments; electronic navigational and positioning apparatus and instruments; rearview cameras for vehicles; voltage regulators for vehicles; components for electrical mains in the nature of electric wires, connectors, circuit breakers, cables; electrical adapters; protective helmets; parts for anti-theft automotive alarms, namely, electronic sensors, remote control transmitters and receivers for remotely operating land vehicles; locks, electric; batteries, electric, for vehicles
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

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


Applicant proposes to amend the following:

Current:
Class 035 for Online advertising on a computer network; providing business information via a web site; commercial information agency services; import-export agency services; sales promotion for others; marketing services; provision of an online marketplace for buyers and sellers of goods and services; personnel management consultancy; administrative processing of purchase orders; retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies
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: Online advertising on a computer network; providing business information via a web site; commercial information agency services; import-export agency services; sales promotion for others; marketing services; provision of an online marketplace for buyers and sellers of goods and services; personnel management consultancy; administrative processing of purchase orders; retail services for pharmaceutical, veterinary and sanitary preparations and medical suppliesClass 035 for Online advertising on a computer network; providing business information via a web site; commercial information agency services; import-export agency services; sales promotion for others; marketing services; provision of an online marketplace for buyers and sellers of goods and services; personnel management consultancy; administrative processing of purchase orders
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

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


ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4230875.


Significance of wording, letter(s), or numeral(s)
"YADEA" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


Significance of wording, letter(s), or numeral(s)
The word(s) "YADEA" has no meaning in a foreign language.


The owner's/holder's current attorney information: Timothy H. Hiebert. Timothy H. Hiebert of Womble Bond Dickinson (US) LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      470 Atlantic Ave.
      Boston, Massachusetts 02210-2228
      United States
      The phone number is 857-287-3180.
      The email address is timothy.hiebert@wbd-us.com

The owner's/holder's proposed attorney information: Timothy H. Hiebert. Timothy H. Hiebert of Womble Bond Dickinson (US) LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      470 Atlantic Ave.
      Boston, Massachusetts 02210-2228
      United States
      The phone number is 857-287-3180.
      The email address is timothy.hiebert@wbd-us.com

Timothy H. Hiebert 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):
      Timothy H. Hiebert
      PRIMARY EMAIL FOR CORRESPONDENCE: timothy.hiebert@wbd-us.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): lwdemarte@michaelbest.com
Correspondence Information (proposed):
      Timothy H. Hiebert
      PRIMARY EMAIL FOR CORRESPONDENCE: timothy.hiebert@wbd-us.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMdocketing@wbd-us.com

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: /Timothy H. Hiebert/     Date: 07/05/2021
Signatory's Name: Timothy H. Hiebert
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 8572873180 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:    Timothy H. Hiebert
   Womble Bond Dickinson (US) LLP
   
   470 Atlantic Ave.
   Boston, Massachusetts 02210-2228
Mailing Address:    Timothy H. Hiebert
   Womble Bond Dickinson (US) LLP
   470 Atlantic Ave.
   Boston, Massachusetts 02210-2228
        
Serial Number: 90181546
Internet Transmission Date: Mon Jul 05 15:31:22 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2021070515312260
7724-90181546-780cf586cd2ee6bc6acba3bbf5
d5aa18506bdb61cbe64d91c194da94ccde04d-N/
A-N/A-20210705151928647430