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
`
`85120231
`
`LAW OFFICE 113
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(1 page)
`
`evi_1721214887-181043975_._e_Action_Response_Arguments_-
`_Ser._No._85120231_APPLE_cl._45.pdf
`
`\\TICRS\EXPORT11\IMAGEOUT11\851\202\85120231\xml4\ROA0002.JPG
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`GOODS AND/OR SERVICES SECTION (current)
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`INTERNATIONAL CLASS
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`DESCRIPTION
`
`045
`
`Personal and social services rendered by others to meet the needs of individuals, namely, online social networking and introduction services;
`online social networking services, namely, facilitating social interaction among individuals, social introductions, and for finding persons with
`particular hobbies, interests and backgrounds; providing a social networking website; security services for the protection of property, namely,
`monitoring of computerized data for security purposes
`
`FILING BASIS
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`GOODS AND/OR SERVICES SECTION (proposed)
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`INTERNATIONAL CLASS
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`TRACKED TEXT DESCRIPTION
`
`Section 1(b)
`
`045
`
`Personal and social services rendered by others to meet the needs of individuals, namely, online social networking and introduction services;
`online social networking services, namely, facilitating social interaction among individuals, social introductions, and for finding persons with
`particular hobbies, interests and backgrounds; providing a social networking website; providing a social networking website for entertainment
`purposes; security services for the protection of property, namely, monitoring of computerized data for security purposes
`
`FINAL(cid:160)DESCRIPTION
`
`Personal and social services rendered by others to meet the needs of individuals, namely, online social networking and introduction services;
`online social networking services, namely, facilitating social interaction among individuals, social introductions, and for finding persons with
`particular hobbies, interests and backgrounds; providing a social networking website for entertainment purposes; security services for the
`protection of property, namely, monitoring of computerized data for security purposes
`
`FILING BASIS
`
`SIGNATURE SECTION
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`RESPONSE SIGNATURE
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`SIGNATORY'S NAME
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`SIGNATORY'S POSITION
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`Section 1(b)
`
`/Yuka Sugar/
`
`Yuka Sugar
`
`Attorney of record, CA bar member
`
`

`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`01/14/2011
`
`YES
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Fri Jan 14 18:40:20 EST 2011
`
`USPTO/ROA-XX.XXX.XXX.XX-2
`0110114184020103122-85120
`231-4703e1916bae26336d289
`ed4722fceeb46-N/A-N/A-201
`10114181043975782
`
`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. 85120231 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE
`
`Original PDF file:
`evi_1721214887-181043975_._e_Action_Response_Arguments_-_Ser._No._85120231_APPLE_cl._45.pdf
`Converted PDF file(s) (1 page)
`Evidence-1
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 045 for Personal and social services rendered by others to meet the needs of individuals, namely, online social networking and
`introduction services; online social networking services, namely, facilitating social interaction among individuals, social introductions, and for
`finding persons with particular hobbies, interests and backgrounds; providing a social networking website; security services for the protection of
`property, namely, monitoring of computerized data for security purposes
`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)).
`
`Proposed:
`Tracked Text Description: Personal and social services rendered by others to meet the needs of individuals, namely, online social networking
`and introduction services; online social networking services, namely, facilitating social interaction among individuals, social introductions, and
`for finding persons with particular hobbies, interests and backgrounds; providing a social networking website; providing a social networking
`website for entertainment purposes; security services for the protection of property, namely, monitoring of computerized data for security
`purposes
`
`Class 045 for Personal and social services rendered by others to meet the needs of individuals, namely, online social networking and introduction
`services; online social networking services, namely, facilitating social interaction among individuals, social introductions, and for finding persons
`with particular hobbies, interests and backgrounds; providing a social networking website for entertainment purposes; security services for the
`protection of property, namely, monitoring of computerized data for security purposes
`
`

`
`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)).
`
`SIGNATURE(S)
`Response Signature
`Signature: /Yuka Sugar/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 01/14/2011
`Signatory's Name: Yuka Sugar
`Signatory's Position: Attorney of record, CA bar member
`
`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: 85120231
`Internet Transmission Date: Fri Jan 14 18:40:20 EST 2011
`TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2011011418402010
`3122-85120231-4703e1916bae26336d289ed472
`2fceeb46-N/A-N/A-20110114181043975782
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`
`Potential Section 2(d) Refusal and Request for Suspension:
`
`In the Office
`This is in response to the Office Action dated December 20, 2010.
`Action, the examiner identified prior pending trademark application Serial Nos.
`77779664 and 77779673 (the "Cited Applications") as potential bars to
`registration of applicant's present application for APPLE. Applicant has filed
`oppositions against the Cited Applications based on its longstanding prior
`registered and common law rights in its famous APPLE trademark and Apple
`Logo mark. These oppositions are currently pending before the U.S. Trademark
`Trial and Appeal Board (Opp. No. 91195633). Applicant is confident that, in view
`of its senior and superior trademark rights, it will prevail in these oppositions and
`that the Cited Applications will ultimately be rejected. Consequently, applicant
`requests suspension of the present application while the oppositions against the
`Cited Applications remain pending.
`
`Identification of Services:
`
`We accept the Examiner's suggestion for an amendment of the services to add
`"for entertainment purposes," and hereby amend the identification to:
`
`"Personal and social services rendered by others to meet the needs of
`individuals, namely, online social networking and introduction services; online
`social networking services, namely, facilitating social interaction among
`individuals, social introductions, and for finding persons with particular hobbies,
`interests and backgrounds; providing a social networking website for
`entertainment purposes; security services for the protection of property, namely,
`monitoring of computerized data for security purposes."