Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA671743
`ESTTA Tracking number:
`05/12/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91218020
`Defendant
`Grace Films Pty Ltd
`JENIFER DEWOLF PAINE
`PROSKAUER ROSE LLP
`ELEVEN TIMES SQUARE
`NEW YORK, NY 10036-8299
`UNITED STATES
`trademark@proskauer.com
`Other Motions/Papers
`Jenifer deWolf Paine
`trademark@proskauer.com, knye@ngelaw.com
`/Jenifer deWolf Paine/
`05/12/2015
`Motion to Amend Goods and Services.pdf(44288 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`
`
`
`
`Beats Electronics, LLC,
`
`Opposer,
`
`v.
`
`Grace Films Pty Ltd.,
`
`
`
`Applicant.
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91218020
`
`
`
`Serial No.: 79/135,263
`
`
`
`Mark: THE BEAT BUGS
`
`x
`:
`:
`:
`:
`:
`:
`:
`:
`:
`x
`
`
`
`
`
`
`JOINT MOTION TO AMEND GOODS/SERVICES
`
`The parties in the above-referenced matter have entered into a Settlement Agreement.
`
`In accordance with the terms of the settlement, the Applicant has limited its goods and
`
`services in Classes 9 & 42 in connection with International Registration No. 173321. The
`
`USPTO received the Notice of Restriction in March 2015 in connection with the U.S.
`
`Designation. See Exhibit A for a copy of the Notice.
`
`Accordingly, the parties jointly request that the following goods and services be amended
`
`as follows:
`
`Class 09: Scientific, nautical, surveying, electric, photographic, cinematographic, optical,
`
`weighing, measuring, signaling, checking (supervision), life-saving and teaching
`
`apparatus and instruments; electrical apparatus; scientific apparatus; electronic
`
`equipment; audio cassette players; audio cassettes; audio discs; audio recordings; video
`
`recordings; audio and video recordings; baby monitors; bicycle helmets; binoculars;
`
`audio tapes; audio recordings in all media; visual recordings in all media; calculators;
`
`camcorders; cameras; CD players; CD-ROMs; CD-ROM drives (as part of the
`
`computer); CD-ROM writers (as part of the computer); cellular telephone accessories;
`
`
`
`

`
`
`
`cellular telephone cases; face plates for cellular telephones; cellular telephone
`
`apparatuses; cellular telephone decorations specifically adapted for use with handsets;
`
`chips containing musical recordings; compact disc players; compact disc recorders;
`
`compact discs; compasses (directional); computer game programs; computer game
`
`cartridges; computer game discs; computer game software; computer keyboards;
`
`computer monitors; computer mouse; computer disc drives; computer software; computer
`
`software in the field of entertainment and manuals sold therewith, computer software in
`
`the field of games and manuals sold therewith; cordless telephones; decorative magnets;
`
`decorative fridge magnets; digital cameras; digital audio tape recorders; digital video
`
`recorders; video players including digital video players; DVD players; DVD machines;
`
`DVDs; DVD recorders; digital versatile discs; digital video discs; pre-recorded optical
`
`discs; pre-recorded magneto-optical discs; optical disc players for audio, video and/or
`
`computer data; magneto-optical disc players for audio, video and/or computer data;
`
`optical disc recorders for audio, video and/or computer data; magneto-optical disc
`
`recorders for audio, video and/or computer data; electrical cables; optical cables;
`
`electronic personal organizers; eyeglass cases; eyeglasses; accessories in this class for
`
`eyeglasses; eyeglass chains; graduated rulers for office; graduated rulers for stationery;
`
`karaoke machines; microphones; MP3 recorders; mini discs; mini disc players; mini disc
`
`recorders; mobile telephone accessories; mobile telephone cases; face plates for mobile
`
`telephones; mobile telephone apparatuses; mobile telephone decorations specifically
`
`adapted for use with handsets; modems (as part of a computer); mouse pads; motion
`
`picture films; musical recordings; pagers; personal stereos; personal digital assistants;
`
`printers; radios; sunglasses; accessories in this class for sunglasses; sunglass cases;
`
`telephones; television sets; video cameras; video cassette recorders; video cassette
`
`2
`
`

`
`
`
`players; video game cartridges; video game discs; video game software; video tapes;
`
`video cassettes; video discs; videophones; video disc players; video recordings;
`
`downloadable music, ring tones, images, games, computer applications and publications;
`
`walkie-talkies; wrist and arm rests for use with computers; computer keyboard trays;
`
`films and animated films; animated cartoons.
`
`Class 41: Education; providing of training; sporting and cultural activities; entertainment;
`
`entertainment services; entertainment information; providing on-line computer games,
`
`Internet games; organisation of amusements and entertainment for children; provision of
`
`entertainment information; production of entertainment, educational, news, sporting and
`
`cultural programs for provision via communication and computer networks; online
`
`entertainment services; production of entertainment shows and interactive programs for
`
`distribution via television, cable, satellite, audio and video media, cartridges, laser discs,
`
`computer discs and electronic means; production, presentation, distribution and rental of
`
`television and radio programs; production, presentation, distribution and rental of motion
`
`picture films, animated films and cartoons; amusement park and theme park services;
`
`educational and entertainment services rendered in or relating to theme parks; amusement
`
`arcade services; entertainer services; discotheque services; pleasure-ground services;
`
`holiday and sport camp services; live stage shows; presentation of live performances;
`
`theatre productions; organisation of musical and theatrical events, functions and
`
`appearances; competitions and competition shows and programs; provision of
`
`entertainment, cultural and educational exhibitions; entertainment and educational club
`
`services; education services; provision of cinema services and facilities; library services;
`
`book club services; bookmobile services; publishing services; online services in this class
`
`including any of the aforementioned services provided online.
`
`3
`
`

`
`
`
`Upon this motion granted by the Board, the parties respectfully request that the
`
`Opposition be withdrawn without prejudice.
`
`
`
`Respectfully submitted,
`
`Dated: May 12, 2015
`
`PROSKAUER ROSE LLP
`
`NEAL, GERBER & EISENBERG LLP
`
`
`
`
`Jenifer deWolf Paine
`11 Times Square
`New York, New York 10036-8299
`Tel: (212) 969-3000
`Fax: (212) 969-2900
`E-mail: trademark@proskauer.com
`
`Counsel for Grace Films Pty Ltd
`
`
`
`
`
`
`/Katherine Dennis Nye/
`Michael Kelber
`Katherine Dennis Nye
`Two North LaSalle Street, Suite 1700
`Chicago, IL 60602
`Tel: (312) 269-8000
`Fax: (312) 269-1747
`E-mail: mkelber@ngelaw.com,
`DocketMail@ngelaw.com
`
`Counsel for Beats Electronics, LLC
`
`                
`
`4
`
`
`21245993.2