PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/30/2011)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`77613150
`
`LAW OFFICE 115
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`Section 2(d) Refusal
`The Examining Attorney has cited Registration No. 1,571,632 as a bar to registration under Section 2(d) of the Trademark Act.(cid:160) Applicant
`understands that the cited mark has been abandoned by the registrant and expects the registration to be canceled in due course.
`
`Registration Basis
`In response to the Examining Attorney's inquiry, Applicant intends only to rely on Section 1 as a basis for registration, but wishes to maintain
`its priority under Section 44(d).
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`009
`
`Computer hardware; computer software; computer programming software; computer operating system software; computer development
`software; computer utility software; computer software to develop other computer software; handheld and mobile digital electronic devices for
`the sending and receiving of telephone calls, faxes, voice mail, electronic mail, and other digital data; MP3 and other digital format audio
`players; handheld computers; personal digital assistants; electronic organizers; electronic notepads; magnetic data carriers; telephones; mobile
`phones; computer gaming machines; videophones; cameras; computer programs for personal information management, database management
`software, electronic mail, and voice mail; messaging software, paging software, database synchronization software, computer programs for
`accessing, browsing and searching online databases; computer software and firmware, namely operating system programs, data
`synchronization programs, and application development tool programs for personal and handheld computers and mobile phones; computer
`software and computer peripherals for communication between multiple computers and between computers and local and global computer
`networks; computer software for communication between computers and home entertainment systems; multimedia computer software for the
`reproduction, processing and streaming of audio, video, and other digital content; computer hardware and software for data backup; computer
`hardware and software for protecting, restoring and recovering data; computer memory hardware; computer disc drives; optical disc drives
`
`FILING BASIS
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FOREIGN APPLICATION NUMBER
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN APPLICATION COUNTRY
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FOREIGN FILING DATE
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`Section 1(b)
`
`Section 44(d)
`
`39816
`
`Trinidad and Tobago
`
`05/13/2008
`
`009
`
`Computer hardware; computer software; computer software, namely, computer application software for mobile phones and for portable and
`handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image,
`audio and video files, software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing,
`storing and organizing text, data, audio, video and still images, software for DVD authoring, software for website development, software for
`the automatic configuration of computer networks, programs, peripherals, hardware and other computer devices, internet browsing software,
`computer game software; computer programming software; computer operating system software; computer programming software and
`
`

`
`computer development software, namely, software development tools for the creation of software applications; computer development
`software; computer utility software; computer software to develop other computer software; portable and handheld digital electronic devices
`for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video files, telephone
`calls, faxes, voice mail, and electronic mail; handheld and mobile digital electronic devices for the sending and receiving of telephone calls,
`faxes, voice mail, electronic mail, and other digital data; MP3 and digital audio players; MP3 and other digital format audio players; handheld
`computers; personal digital assistants; electronic organizers; electronic notepads; prerecorded magnetic data carriers featuring computer
`software; magnetic data carriers; telephones; mobile phones; computer gaming machines; videophones; cameras; computer programs for
`personal information management; computer programs for personal information management, database management software, electronic
`mail, and voice mail; computer programs for database management; messaging software, paging software, database synchronization software,
`computer programs for accessing, browsing and searching online databases; electronic mail, voice mail, and instant messaging software;
`paging software; database synchronization software; computer programs for accessing, browsing and searching online databases; computer
`software and firmware, namely operating system programs, data synchronization programs, and application development tool programs for
`personal and handheld computers and mobile phones; computer software and computer peripherals for communication between multiple
`computers and between computers and local and global computer networks; computer software for communication between computers and
`home entertainment systems; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital
`content; computer hardware and software for data backup; computer hardware and software for protecting, restoring and recovering data;
`computer memory hardware; computer disc drives; optical disc drives
`
`FINAL(cid:160)DESCRIPTION
`
`Computer hardware; computer software, namely, computer application software for mobile phones and for portable and handheld digital
`electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video
`files, software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and
`organizing text, data, audio, video and still images, software for DVD authoring, software for website development, software for the automatic
`configuration of computer networks, programs, peripherals, hardware and other computer devices, internet browsing software, computer game
`software; computer operating system software; computer programming software and computer development software, namely, software
`development tools for the creation of software applications; computer utility software; computer software to develop other computer software;
`portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text,
`data, image, audio and video files, telephone calls, faxes, voice mail, and electronic mail; MP3 and digital audio players; handheld computers;
`personal digital assistants; electronic organizers; electronic notepads; prerecorded magnetic data carriers featuring computer software;
`telephones; mobile phones; computer gaming machines; videophones; cameras; computer programs for personal information management;
`computer programs for database management; electronic mail, voice mail, and instant messaging software; paging software; database
`synchronization software; computer programs for accessing, browsing and searching online databases; computer software and firmware,
`namely operating system programs, data synchronization programs, and application development tool programs for personal and handheld
`computers and mobile phones; computer software and computer peripherals for communication between multiple computers and between
`computers and local and global computer networks; computer software for communication between computers and home entertainment
`systems; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; computer
`hardware and software for data backup; computer hardware and software for protecting, restoring and recovering data; computer memory
`hardware; computer disc drives; optical disc drives
`
`FILING BASIS
`
`FILING BASIS
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN APPLICATION NUMBER
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN APPLICATION COUNTRY
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FOREIGN FILING DATE
`
`ADDITIONAL STATEMENTS SECTION
`
`Section 1(b)
`
`Section 44(d)
`
`39816
`
`Trinidad and Tobago
`
`05/13/2008
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`No claim is made to the exclusive right to use OS apart from the mark as shown.
`
`The filing Attorney has elected not to submit the signed declaration, believing no
`supporting declaration is required under the Trademark Rules of Practice.
`
`/Lisa G. Widup/
`
`Lisa G. Widup
`
`Intellectual Property Counsel
`
`07/20/2009
`
`

`
`AUTHORIZED SIGNATORY
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Mon Jul 20 15:43:33 EDT 2009
`
`USPTO/ROA-XX.XXX.XX.XXX-2
`0090720154333141847-77613
`150-43080f2b373df453771a2
`469fe0b411b8c5-N/A-N/A-20
`090720142518925681
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 04/30/2011)
`
`Response to Office Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77613150 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Section 2(d) Refusal
`The Examining Attorney has cited Registration No. 1,571,632 as a bar to registration under Section 2(d) of the Trademark Act.(cid:160) Applicant
`understands that the cited mark has been abandoned by the registrant and expects the registration to be canceled in due course.
`
`Registration Basis
`In response to the Examining Attorney's inquiry, Applicant intends only to rely on Section 1 as a basis for registration, but wishes to maintain its
`priority under Section 44(d).
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 009 for Computer hardware; computer software; computer programming software; computer operating system software;
`computer development software; computer utility software; computer software to develop other computer software; handheld and mobile digital
`electronic devices for the sending and receiving of telephone calls, faxes, voice mail, electronic mail, and other digital data; MP3 and other
`digital format audio players; handheld computers; personal digital assistants; electronic organizers; electronic notepads; magnetic data carriers;
`telephones; mobile phones; computer gaming machines; videophones; cameras; computer programs for personal information management,
`database management software, electronic mail, and voice mail; messaging software, paging software, database synchronization software,
`computer programs for accessing, browsing and searching online databases; computer software and firmware, namely operating system
`programs, data synchronization programs, and application development tool programs for personal and handheld computers and mobile phones;
`computer software and computer peripherals for communication between multiple computers and between computers and local and global
`computer networks; computer software for communication between computers and home entertainment systems; multimedia computer software
`for the reproduction, processing and streaming of audio, video, and other digital content; computer hardware and software for data backup;
`computer hardware and software for protecting, restoring and recovering data; computer memory hardware; computer disc drives; optical disc
`drives
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or
`licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C.
`Section 1051(b)).
`
`Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in
`connection with the identified goods and/or services, and asserts a claim of priority based on [Trinidad and Tobago application number 39816
`filed 05/13/2008]. 15 U.S.C.Section 1126(d), as amended.
`
`Proposed:
`Tracked Text Description: Computer hardware; computer software; computer software, namely, computer application software for mobile
`
`

`
`phones and for portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and
`reviewing text, data, image, audio and video files, software for use in authoring, downloading, transmitting, receiving, editing, extracting,
`encoding, decoding, playing, storing and organizing text, data, audio, video and still images, software for DVD authoring, software for website
`development, software for the automatic configuration of computer networks, programs, peripherals, hardware and other computer devices,
`internet browsing software, computer game software; computer programming software; computer operating system software; computer
`programming software and computer development software, namely, software development tools for the creation of software applications;
`computer development software; computer utility software; computer software to develop other computer software; portable and handheld digital
`electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and video
`files, telephone calls, faxes, voice mail, and electronic mail; handheld and mobile digital electronic devices for the sending and receiving of
`telephone calls, faxes, voice mail, electronic mail, and other digital data; MP3 and digital audio players; MP3 and other digital format audio
`players; handheld computers; personal digital assistants; electronic organizers; electronic notepads; prerecorded magnetic data carriers featuring
`computer software; magnetic data carriers; telephones; mobile phones; computer gaming machines; videophones; cameras; computer programs
`for personal information management; computer programs for personal information management, database management software, electronic
`mail, and voice mail; computer programs for database management; messaging software, paging software, database synchronization software,
`computer programs for accessing, browsing and searching online databases; electronic mail, voice mail, and instant messaging software; paging
`software; database synchronization software; computer programs for accessing, browsing and searching online databases; computer software and
`firmware, namely operating system programs, data synchronization programs, and application development tool programs for personal and
`handheld computers and mobile phones; computer software and computer peripherals for communication between multiple computers and
`between computers and local and global computer networks; computer software for communication between computers and home entertainment
`systems; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; computer
`hardware and software for data backup; computer hardware and software for protecting, restoring and recovering data; computer memory
`hardware; computer disc drives; optical disc drives
`
`Class 009 for Computer hardware; computer software, namely, computer application software for mobile phones and for portable and handheld
`digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data, image, audio and
`video files, software for use in authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and
`organizing text, data, audio, video and still images, software for DVD authoring, software for website development, software for the automatic
`configuration of computer networks, programs, peripherals, hardware and other computer devices, internet browsing software, computer game
`software; computer operating system software; computer programming software and computer development software, namely, software
`development tools for the creation of software applications; computer utility software; computer software to develop other computer software;
`portable and handheld digital electronic devices for recording, organizing, transmitting, receiving, manipulating, playing and reviewing text, data,
`image, audio and video files, telephone calls, faxes, voice mail, and electronic mail; MP3 and digital audio players; handheld computers; personal
`digital assistants; electronic organizers; electronic notepads; prerecorded magnetic data carriers featuring computer software; telephones; mobile
`phones; computer gaming machines; videophones; cameras; computer programs for personal information management; computer programs for
`database management; electronic mail, voice mail, and instant messaging software; paging software; database synchronization software;
`computer programs for accessing, browsing and searching online databases; computer software and firmware, namely operating system
`programs, data synchronization programs, and application development tool programs for personal and handheld computers and mobile phones;
`computer software and computer peripherals for communication between multiple computers and between computers and local and global
`computer networks; computer software for communication between computers and home entertainment systems; multimedia computer software
`for the reproduction, processing and streaming of audio, video, and other digital content; computer hardware and software for data backup;
`computer hardware and software for protecting, restoring and recovering data; computer memory hardware; computer disc drives; optical disc
`drives
`Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or
`licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C.
`Section 1051(b)).
`
`Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in
`connection with the identified goods and/or services, and asserts a claim of priority based on [Trinidad and Tobago application number 39816
`filed 05/13/2008]. 15 U.S.C.Section 1126(d), as amended.
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use OS apart from the mark as shown.
`
`SIGNATURE(S)
`Declaration Signature
`I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I
`understand that the examining attorney could still, upon later review, require a signed declaration.
`Response Signature
`Signature: /Lisa G. Widup/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 07/20/2009
`Signatory's Name: Lisa G. Widup
`
`

`
`Signatory's Position: Intellectual Property Counsel
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 77613150
`Internet Transmission Date: Mon Jul 20 15:43:33 EDT 2009
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2009072015433314
`1847-77613150-43080f2b373df453771a2469fe
`0b411b8c5-N/A-N/A-20090720142518925681
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)