Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 78765979 has been amended as follows:
Classification and Listing of Goods/Services

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 009 for Computer database and computer software for inputting, storing, processing and retrieving information relating to the operation of a personnel staffing services business; software for evaluating and training employees and job candidates; Software in the field of human resource management; software in the filed of employee procurement; Computer software for assessing job, business, contact center, customer service, clerical accounting, basic accounting, word processing, and/or office automation software skills; computer software for use in job, business, word processing, and/or office automation software training; computer software of all kinds;Computer database and computer software for inputting, storing, processing and retrieving information relating to the operation of a personnel staffing services business; software for evaluating and training employees and job candidates; Software in the field of human resource management; software in the filed of employee procurement
Original Filing Basis: 1(b); and 44(d).
Proposed: Class 009 for Computer database and computer software for inputting, storing, processing and retrieving information relating to the operation of a personnel staffing services business; software for evaluating and training employees and job candidates; Software in the field of human resource management; software in the field of employee procurement; Computer software for assessing job, business, contact center, customer service, clerical accounting, basic accounting, word processing, and office automation software skills; computer software for use in job, business, word processing, and office automation software training; Computer database and computer software for inputting, storing, processing and retrieving information relating to the operation of a personnel staffing services business; software for evaluating and training employees and job candidates; Software in the field of human resource management; software in the field of employee procurement
Filing Basis: 1(b); and 44(d).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 016 for Printed testing materials for use in assessing job skills; printed instructional materials for use in job skill training; printed instructional materials in the field of human resources; structured interview forms used to interview job applicants over the telephone to determine verbal communication skills, including pace, volume, sound quality, enunciation, and command of the language; interview forms, instruction sheets, and audio cassette tapes sold and used as a unit for training the interviewers; structured job skills form used to identify and record employment skills and skill levels and to create employment career development plans for job applicants, and instructional manuals for use therewith, distributed as a unit; Printed testing materials used to evaluate employee skills at tasks needed for light industrial work and instructional manuals sold together as a unit; written test and scoring materials, and sample audiocassette dictation tapes furnished therewith as a unit, for evaluating the proficiency of computerized office equipment operators; printed employee intake forms; business forms; printed and partially printed forms; printed training manuals for job skill training; printed monographs, newsletters and bulletins, all in the field of human resources; Magazines and Newsletters, reports and printed instructional materials featuring articles about career management, career placement, career recruiting, employment counseling, employment outplacement, human resource consultation, personnel management consultation, personnel retention consultation, career management consultation, retirement counseling and planning; Printed materials and instructional texts
Original Filing Basis: 1(b); and 44(d).
Proposed: Class 016 for Printed testing materials for use in assessing job skills; printed instructional materials for use in job skill training; printed instructional materials in the field of human resources; structured interview forms used to interview job applicants over the telephone to determine verbal communication skills, including pace, volume, sound quality, enunciation, and command of the language; interview forms, instruction sheets, and audio cassette tapes sold and used as a unit for training the interviewers; structured job skills form used to identify and record employment skills and skill levels and to create employment career development plans for job applicants, and instructional manuals for use therewith, distributed as a unit; Printed testing materials used to evaluate employee skills at tasks needed for light industrial work and instructional manuals sold together as a unit; written test and scoring materials, and sample audiocassette dictation tapes furnished therewith as a unit, for evaluating the proficiency of computerized office equipment operators; printed employee intake forms; business forms; printed and partially printed forms; printed training manuals for job skill training; printed monographs, newsletters and bulletins, all in the field of human resources; Magazines and Newsletters, reports and printed instructional materials featuring articles about career management, career placement, career recruiting, employment counseling, employment outplacement, human resource consultation, personnel management consultation, personnel retention consultation, career management consultation, retirement counseling and planning;
Filing Basis: 1(b); and 44(d).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 035 for Employment agency services; temporary and permanent employment agency services; employee leasing; employment related services, namely providing job placement, career development, employment recruitment, and general employment information to others; business management and consulting services, namely, assisting businesses in managing workforce changes, namely, mergers, acquisitions, amalgamations, downsizing, and expansion; personnel management, human resources management; employment outplacement consultation services for personnel affected by workforce changes; supplying to others on a temporary and permanent basis engineers, computer programmers, draftsmen, and skilled technical personnel; providing and managing contract personnel programs; analyzing and consulting on personnel needs; providing contract, temporary, and permanent personnel staffing services; arranging for and managing the provision of temporary contract personnel; personnel management and consultancy services; providing information and consultancy services on the procurement of temporary, contract, and permanent personnel; computer on-line ordering via a global information network, and providing computer on-line reports via a global information network, all in the field of personnel procurement; human resources consulting on recruiting and testing of employees; contract and permanent staffing agency services featuring staff professionals in finance, information technology, engineering, scientific and technical personnel, as well as office administrative staff, factory staff, industrial staff and call center staff; serving as a human resource department for others; employment outplacement services; testing to determine employment skills; employment counseling; workforce development services, namely, personnel management services; providing career information via a website on a global information network; providing information on jobs via a website on a global information network; providing an on-line computer database in the fields of contract and permanent personnel staffing; providing employee screening and assessment tools via a website on a global information network; Resume listing services; Resume matching services; Relocation services for to people and groups of people who are being transferred by their employers from one geographical area to another, intentional and domestic, namely, providing information and counseling on finding a new home, providing pre-decision destination information, providing information and counseling for family members~ job search, providing destination area information; Relocation services for individuals, intentional and domestic, namely, providing information and counseling on finding a new home, providing pre-decision destination information, providing information and counseling for family members' job search, providing destination area information; Counseling, and/or tours to relocating people in order to find a new home to buy or rent; Audit and tax preparation services; business process outsourcing servicesProvision of testing services designed to determine the industrial skills, dexterity and hand-eye coordination of employee and temporary help personnel; consultancy services in the field of technology, including computer software and computer hardware; computer system security auditing services; consultancy services in the field of computer system security and system integrity; computer programming; personality testing and profiling services; Temporary personnel services; placement of temporary personnel; placement of permanent personnel; personnel recruitment; employment agency services; psychological testing for the selection of personnel to determine their suitability for employment; testing of individuals to determine employment skills; provision of job candidate evaluation and selection services; demonstration and sales promotion services; administrative management of a commercial enterprise; advertising; business
Original Filing Basis: 1(b); and 44(d).
Proposed: Class 035 for Employment agency services; temporary and permanent employment agency services; employee leasing; employment related services, namely providing job placement, career development, employment recruitment, and general employment information to others; business management and consulting services, namely, assisting businesses in managing workforce changes, namely, mergers, acquisitions, amalgamations, downsizing, and expansion; personnel management, human resources management; employment outplacement consultation services for personnel affected by workforce changes; supplying to others on a temporary and permanent basis engineers, computer programmers, draftsmen, and skilled technical personnel; providing and managing contract personnel programs; analyzing and consulting on personnel needs; providing contract, temporary, and permanent personnel staffing services; arranging for and managing the provision of temporary contract personnel; personnel management and consultancy services; providing information and consultancy services on the procurement of temporary, contract, and permanent personnel; computer on-line ordering via a global information network, and providing computer on-line reports via a global information network, all in the field of personnel procurement; human resources consulting on recruiting and testing of employees; contract and permanent staffing agency services featuring staff professionals in finance, information technology, engineering, scientific and technical personnel, as well as office administrative staff, factory staff, industrial staff and call center staff; serving as a human resource department for others; employment outplacement services; testing to determine employment skills; employment counseling; workforce development services, namely, personnel management services; providing career information via a website on a global information network; providing information on jobs via a website on a global information network; providing an on-line computer database in the fields of contract and permanent personnel staffing; providing employee screening and assessment tools via a website on a global information network; Resume listing services; Resume matching services; Relocation services for people and groups of people who are being transferred by their employers from one geographical area to another, international and domestic, namely, providing information and counseling on finding a new home, providing pre-decision destination information used in connection with finding a new home or new job, providing information and counseling for family members' job search, providing destination area information in order to find a new home or job; Relocation services for individuals, international and domestic, namely, providing information and counseling on finding a new home, providing pre-decision destination information to aid individuals in finding a new home or new job, providing information and counseling for family members' job search, providing destination area information to aid individuals in finding a new home or job; Counseling, and tours to relocating people in order to find a new home to buy or rent; Audit and tax preparation services; business process outsourcing services; Provision of testing services designed to determine the industrial skills, dexterity and hand-eye coordination of employee and temporary help personnel; auditing services pertaining to computer system security; personality testing and profiling services for use in the field of humans resources; Temporary personnel services; placement of temporary personnel; placement of permanent personnel; personnel recruitment; employment agency services; psychological testing for the selection of personnel to determine their suitability for employment; testing of individuals to determine employment skills; provision of job candidate evaluation and selection services; demonstration and sales promotion services; administrative management of a commercial enterprise; business management; business administration services; office functions; business information and consultancy services relating to the procurement of temporary and contract personnel; personnel management and consulting services in the field of human resources; Business consultation services, namely career management services, career placement services, career recruiting services, employment counseling services, employment outplacement services, human resource consultation services, personnel management consultation services, personnel retention consultation services and career management consultation services; resume listing services; Resume matching services; Audit and tax preparation services; business process outsourcing services; Temporary professional personnel services; placement of temporary professional personnel; recruitment of professional personnel; employment agencies for the placement of professional personnel; testing of individuals to determine employment skills; testing designed to determine the industrial skills, dexterity and hand-eye coordination of employee and temporary help personnel; auditing services pertaining to computer system security; personnel testing of all kinds, namely testing of job and business skills, information technology and software use skills, personality testing and profiling for use in the field of human resources,
Filing Basis: 1(b); and 44(d).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 041 for Providing training in business and job skills and office technology; providing on-line courses of study in the following - information technology, software use, job and business skills via a website on a global information network; career counseling services; Education and training services, namely, providing training in relation to job search, career development, self-marketing, interview skills, research workshops and training of human resource personnel in employment separation issues; Conducting classes, workshops and seminars in the fields of business management, human resource management and corporate and organization training; Workshops, seminars and training in the field of business and personal improvement; Instruction services relating to business and data processing; training services for personnel; provision of skill assessment courses; education and training services
Original Filing Basis: 1(b); and 44(d).
Proposed: Class 041 for Providing training in business and job skills and office technology; providing on-line courses of study in the following - information technology, software use, job and business skills via a website on a global information network; career counseling services; Education and training services, namely, providing training in relation to job search, career development, self-marketing, interview skills, research workshops and training of human resource personnel in employment separation issues; Conducting classes, workshops and seminars in the fields of business management, human resource management and corporate and organization training; Workshops, seminars and training in the field of business and personal improvement; Instruction services relating to business and data processing; training services for personnel, namely, training in accounting skills, information technology skills, office skills; provision of skill assessment courses;
Filing Basis: 1(b); and 44(d).
Applicant hereby adds the following class of goods/services to the application:
New:
Class 042 for consultancy services in the field of technology, namely computer software and computer hardware; computer consultation in the field of computer system security and computer system integrity; computer programming for others
Section 1(b), 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)).

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 [European Community application number 004582342 filed 08/08/2005]. 15 U.S.C.Section 1126(d), as amended.

Additional Statements

"The color(s) blue, green, red and orange is/are claimed as a feature of the mark."

Fees
Fee(s) in the amount of $325 is being submitted.


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: /Jeannine Haas/      Date: 08/31/2006
Signatory's Name: Jeannine Haas
Signatory's Position: Attorney

Response Signature
Signature: /Jeannine Haas/     Date: 08/31/2006
Signatory's Name: Jeannine Haas
Signatory's Position: Attorney
        
RAM Sale Number: 1518
RAM Accounting Date: 08/31/2006
        
Serial Number: 78765979
Internet Transmission Date: Thu Aug 31 11:46:39 EDT 2006
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20060831114639586
093-78765979-3408d29a6fc2835f88dac228d6a
d2e628e-CC-1518-20060831110930781053