| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Input Field |
Entered |
| SERIAL NUMBER | 76598660 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Identification of Services The Office Action has stated that Applicant's identification of Goods and Services is indefinite. In response, Applicant has amended its Class 35 description to clarify the scope of the services identified. Applicant notes that it has essentially adopted Examining Attorney's suggested identification, with the addition of services believed to be in conformance with the Manual of Acceptable Identifications of Goods and Services. Should the Examining Attorney disagree that the identification of services proposed herein is acceptable, Applicant requests that Examining Attorney contact Applicant's Attorney by telephone.
Specimen The Office Action has stated that the previously submitted substitute specimen did not show use of the mark in the appropriate classes. In response, the Applicant herewith submits new substitute specimens which provide better clarity and show the subject mark in use with all of the appropriate services identified in the application. Should the Examining Attorney feel the specimens submitted herewith are inadequate, Applicant invites Examining Attorney to contact Applicant's Attorney.
Conclusion Applicant believes that the amendments proposed herein will render the Application suitable for registration and respectfully requests the same. |
|
| GOODS AND/OR SERVICES SECTION (1st class)(current) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Licensing of computer software; software subscription services; electronic commerce services, namely provision of software over the Internet | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 10/14/2002 |
| GOODS AND/OR SERVICES SECTION (1st class)(proposed) | |
| INTERNATIONAL CLASS | 035 |
| DESCRIPTION | |
| Licensing of computer software; online computer software ordering services featuring downloadable computer software; subscription to a computer service, namely provision of downloadable computer software on a subscription basis | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 10/14/2002 |
| FIRST USE IN COMMERCE DATE | 10/14/2002 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\TICRS\EXPORT10\IMAGEOUT 10\765\986\76598660\xml4\ ROA0002.JPG |
| SPECIMEN DESCRIPTION | Screen capture of Applicant's website showing software subscription services. |
| GOODS AND/OR SERVICES SECTION (2nd class)(current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Computer software services for others, namely coordinating and facilitating the design, development and customization of computer software components and applications; Designing, developing, and customizing computer software components and applications for others | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 04/09/2002 |
| FIRST USE IN COMMERCE DATE | 04/09/2002 |
| GOODS AND/OR SERVICES SECTION (2nd class)(proposed) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Computer software services for others, namely coordinating and facilitating the design, development and customization of computer software components and applications; Designing, developing, and customizing computer software components and applications for others | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | 04/09/2002 |
| FIRST USE IN COMMERCE DATE | 04/09/2002 |
| STATEMENT TYPE | The substitute specimen(s) was in use in commerce as of the filing date of the application. |
| SPECIMEN FILE NAME(S) | \\TICRS\EXPORT10\IMAGEOUT 10\765\986\76598660\xml4\ ROA0003.JPG |
| \\TICRS\EXPORT10\IMAGEOUT 10\765\986\76598660\xml4\ ROA0004.JPG | |
| \\TICRS\EXPORT10\IMAGEOUT 10\765\986\76598660\xml4\ ROA0005.JPG | |
| \\TICRS\EXPORT10\IMAGEOUT 10\765\986\76598660\xml4\ ROA0006.JPG | |
| \\TICRS\EXPORT10\IMAGEOUT 10\765\986\76598660\xml4\ ROA0007.JPG | |
| SPECIMEN DESCRIPTION | Screen capture of Applicant's website. |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /robhughes/ |
| SIGNATORY NAME | Robert Hughes |
| SIGNATORY POSITION | President |
| SIGNATURE DATE | 07/11/2005 |
| RESPONSE SIGNATURE | /Miguel Danielson/ |
| SIGNATORY NAME | Miguel Danielson |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 07/11/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 11 19:58:26 EDT 2005 |
| TEAS STAMP | USPTO/OA-XXXXXXXX-2005071 1195826380375-76598660-20 0356f9a679a87057be916995b aba8fb-N-N-20050708202115 979732 |
| PTO Form 1957 (Rev 8/2005) |
| OMB Control #0651-0050 (Exp. 04/30/2006) |
| Application serial no. 76598660 is amended as follows: | |
| Argument(s) | |
| In response to the substantive refusal(s), please note the following: | |
|
Identification of Services The Office Action has stated that Applicant's identification of Goods and Services is indefinite. In response, Applicant has amended its Class 35 description to clarify the scope of the services identified. Applicant notes that it has essentially adopted Examining Attorney's suggested identification, with the addition of services believed to be in conformance with the Manual of Acceptable Identifications of Goods and Services. Should the Examining Attorney disagree that the identification of services proposed herein is acceptable, Applicant requests that Examining Attorney contact Applicant's Attorney by telephone.
Specimen The Office Action has stated that the previously submitted substitute specimen did not show use of the mark in the appropriate classes. In response, the Applicant herewith submits new substitute specimens which provide better clarity and show the subject mark in use with all of the appropriate services identified in the application. Should the Examining Attorney feel the specimens submitted herewith are inadequate, Applicant invites Examining Attorney to contact Applicant's Attorney.
Conclusion Applicant believes that the amendments proposed herein will render the Application suitable for registration and respectfully requests the same. |
|
| Classification and Listing of Goods/Services | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 035 for Licensing of computer software; software subscription services; electronic commerce services, namely provision of software over the Internet | |
| Original Filing Basis: 1(a). | |
| Proposed: Class 035 for Licensing of computer software; online computer software ordering services featuring downloadable computer software; subscription to a computer service, namely provision of downloadable computer software on a subscription basis | |
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/14/2002 and first used in commerce at least as early as 10/14/2002, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 035. | |
| The specimen(s) submitted consists of Screen capture of Applicant's website showing software subscription services.. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Applicant hereby amends the following class of goods/services in the application as follows: | |
| Current: Class 042 for Computer software services for others, namely coordinating and facilitating the design, development and customization of computer software components and applications; Designing, developing, and customizing computer software components and applications for others | |
| Original Filing Basis: 1(a). | |
| Proposed: Class 042 for Computer software services for others, namely coordinating and facilitating the design, development and customization of computer software components and applications; Designing, developing, and customizing computer software components and applications for others | |
| Section 1(a), Use in Commerce: Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, or the applicant's predecessor in interest used the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/09/2002 and first used in commerce at least as early as 04/09/2002, and is now in use in such commerce. | |
| Applicant hereby submits a specimen for Class 042. | |
| The specimen(s) submitted consists of Screen capture of Applicant's website.. |
|
| For an application based on 1(a), Use in Commerce, "The substitute specimen(s) was in use in commerce as of the filing date of the application." | |
| Specimen-1 | |
| Specimen-2 | |
| Specimen-3 | |
| Specimen-4 | |
| Specimen-5 | |
| Declaration Signature |
|
| If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had 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. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true. | |
| Signature: /robhughes/ Date: 07/11/2005 | |
| Signatory's Name: Robert Hughes | |
| Signatory's Position: President | |
| Response Signature | |
| Signature: /Miguel Danielson/ Date: 07/11/2005 | |
| Signatory's Name: Miguel Danielson | |
| Signatory's Position: Attorney for Applicant | |
| Serial Number: 76598660 | |
| Internet Transmission Date: Mon Jul 11 19:58:26 EDT 2005 | |
| TEAS Stamp: USPTO/OA-XXXXXXXX-20050711195826380375-7 6598660-200356f9a679a87057be916995baba8f b-N-N-20050708202115979732 |
