Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79223002 XERO(Standard Characters, see http://uspto.report/TM/79223002/mark.png) 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
Evidence in the nature of Office Action response has been attached.
Original PDF file:
evi_67187121133-20180626131256760554_._XERO_Response_to_Office_Action__Likelihood_of_Confusion_.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 025 for Clothing; clothing for babies; footwear; headgear; caps headwear; tops; pyjamas

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computers; computer keyboards; rechargeable batteries; power banks; computer software and hardware; computer peripherals; mobile phones and related parts and accessories; headphones; sleeves for laptops; earbuds; calculators; lanyards for cameras; lanyards for mobile phones; lanyards for holding spectacles; eyeglass lanyards
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Computers; computer keyboards; rechargeable batteries; power banks; power banks being battery chargers for mobile phones and portable electronic devices; computer software and hardware; computer software and hardware in the fields of accounting, management and reporting for accountants, tax management, financial and annual reporting, documentation, online training, and subscription management; computer peripherals; mobile phones and related parts and accessories; mobile phones and related parts and accessories, namely, cell phone backplates, cell phone covers, cell phone cases, carrying cases for cell phones; headphones; sleeves for laptops; earbuds; calculators; lanyards for cameras; lanyards specially adapted for cameras; lanyards for mobile phones; lanyards specially adapted for mobile phones; lanyards for holding spectacles; lanyards specially adapted for holding spectacles; eyeglass lanyardsClass 009 for Computers; computer keyboards; rechargeable batteries; power banks being battery chargers for mobile phones and portable electronic devices; computer software and hardware in the fields of accounting, management and reporting for accountants, tax management, financial and annual reporting, documentation, online training, and subscription management; computer peripherals; mobile phones and related parts and accessories, namely, cell phone backplates, cell phone covers, cell phone cases, carrying cases for cell phones; headphones; sleeves for laptops; earbuds; calculators; lanyards specially adapted for cameras; lanyards specially adapted for mobile phones; lanyards specially adapted for holding spectacles; eyeglass lanyards

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Paper and cardboard; printed matter; stationery; notebooks; notebook paper; books; calendars; clipboards; ink; pens; correction pens; cases for pens; pencils; stickers; decals; laptop decals; 3D decals for use on any surface; stickers stationery; sticker books; desktop business card holders; brochures; printed brochures
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Paper and cardboard; Printed matter, namely, photographs, magazines, books, printed periodicals, newsletters, brochures in the fields of accounting, management and reporting for accountants, tax management, financial and annual reporting, documentation, online training, and subscription management; printed matter; stationery; notebooks; notebook paper; books in the fields of for accounting, management and reporting for accountants, tax management, financial and annual reporting, documentation, online training, and subscription management; books; calendars; clipboards; ink; pens; correction pens; cases for pens; pencils; stickers; decals; laptop decals; 3D decals for use on any surface; stickers being stationery; stickers stationery; sticker books; desktop business card holders; brochures; printed brochuresClass 016 for Printed matter, namely, photographs, magazines, books, printed periodicals, newsletters, brochures in the fields of accounting, management and reporting for accountants, tax management, financial and annual reporting, documentation, online training, and subscription management; stationery; notebooks; notebook paper; books in the fields of for accounting, management and reporting for accountants, tax management, financial and annual reporting, documentation, online training, and subscription management; calendars; clipboards; ink; pens; correction pens; cases for pens; pencils; stickers; decals; laptop decals; 3D decals for use on any surface; stickers being stationery; sticker books; desktop business card holders

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 018 for Backpacks; bags; leather bags; messenger bags; shoulder bags; tote bags; cross-body bags; satchels; luggage tags; umbrellas; wallets; card wallets; credit card cases wallets; suitcases; umbrellas
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Backpacks; bags; bags, namely, bags for computers; leather bags; messenger bags; shoulder bags; tote bags; cross-body bags; satchels; luggage tags;  umbrellas; umbrellas; wallets; card wallets; credit card cases being wallets; credit card cases wallets; suitcases; umbrellasClass 018 for Backpacks; bags, namely, bags for computers; leather bags; messenger bags; shoulder bags; tote bags; cross-body bags; satchels; umbrellas; wallets; card wallets; credit card cases being wallets

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 021 for Household or kitchen utensils and containers; glassware; cups; coffee cups; mugs; drinking cups; glass drinking cup; bottles; aluminium bottles; wall plaques made of acrylic
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Household or kitchen utensils and containers; Household containers; glassware; beverage glassware; cups; coffee cups; mugs; drinking cups; glass drinking cup; bottles; bottles, sold empty; aluminium bottles; aluminum bottles, sold empty; wall plaques made of acrylicClass 021 for Household containers; beverage glassware; cups; coffee cups; mugs; drinking cups; glass drinking cup; bottles, sold empty; aluminum bottles, sold empty; wall plaques made of acrylic

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail and wholesale services; marketing services provided in the nature of incentive programmes and schemes, privileges and loyalty recognition programmes, customer loyalty incentive programmes and schemes; organisation, operation and supervision of incentive schemes and information for issuing of tokens of value, benefits, incentive and other ancillary services; market analysis relating to frequent use bonus incentive schemes; organisation and management of incentive and sales promotion programmes (frequent buyer programmes); retail and wholesale services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases wallets, suitcases, umbrellas, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminium bottles, wall plaques made of acrylic, clothing, clothing for babies, footwear, headgear, caps headwear, tops, pyjamas; the provision of the foregoing services online
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Retail and wholesale services; Incentive award programs to promote the sale of products and services of others, namely, marketing services provided in the nature of incentive programmes and schemes, privileges and loyalty recognition programmes, customer loyalty incentive programmes and schemes; marketing services provided in the nature of incentive programmes and schemes, privileges and loyalty recognition programmes, customer loyalty incentive programmes and schemes; organisation, operation and supervision of incentive schemes in the nature of an incentive awards program and information for issuing of tokens of value, benefits, incentive and other ancillary services related to such incentive awards program; organisation, operation and supervision of incentive schemes and information for issuing of tokens of value, benefits, incentive and other ancillary services; market analysis relating to frequent use bonus incentive schemes; organisation and management of incentive awards program and sales promotion programmes being frequent buyer programmes; organisation and management of incentive and sales promotion programmes (frequent buyer programmes); retail and wholesale store services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases being wallets, suitcases, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminum bottles, wall plaques made of acrylic; retail and wholesale services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases wallets, suitcases, umbrellas, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminium bottles, wall plaques made of acrylic, clothing, clothing for babies, footwear, headgear, caps headwear, tops, pyjamas; the provision of the foregoing services onlineClass 035 for Incentive award programs to promote the sale of products and services of others, namely, marketing services provided in the nature of incentive programmes and schemes, privileges and loyalty recognition programmes, customer loyalty incentive programmes and schemes; organisation, operation and supervision of incentive schemes in the nature of an incentive awards program and information for issuing of tokens of value, benefits, incentive and other ancillary services related to such incentive awards program; market analysis relating to frequent use bonus incentive schemes; organisation and management of incentive awards program and sales promotion programmes being frequent buyer programmes; retail and wholesale store services in relation to consumer goods, computers, computer keyboards, rechargeable batteries, powerbanks, computer software and hardware, computer peripherals, mobile phones and related parts and accessories, headphones, sleeves for laptops, earbuds, calculators, lanyards for cameras, lanyards for mobile phones, lanyards for holding spectacles, eyeglass lanyards, paper and cardboard, printed matter, stationery, notebooks, notebook paper, books, calendars, clipboards, ink, pens, correction pens, cases for pens, pencils, stickers, decals, laptop decals, 3D decals for use on any surface, stickers stationery, sticker books, desktop business card holders, brochures, printed brochures, backpacks, bags, leather bags, messenger bags, shoulder bags, tote bags, cross-body bags, satchels, luggage tags, umbrellas, wallets, card wallets, credit card cases being wallets, suitcases, household or kitchen utensils and containers, glassware, cups, coffee cups, mugs, drinking cups, glass drinking cup, bottles, aluminum bottles, wall plaques made of acrylic; the provision of the foregoing services online

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Randy Michels of Trust Tree Legal, P.C., having an address of
1321 Adams Street Nashville, Tennessee 37208
United States
randy@trust-tree.com
6154690438
The Other Appointed Attorney(s): Bill Ferrell; Kevin Hartley.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
JAMES & WELLS
Level 12, KPMG Centre,
85 Alexandra Street
Hamilton
NZ

Proposed:
Randy Michels of Trust Tree Legal, P.C., having an address of
1321 Adams Street Nashville, Tennessee 37208
United States
randy@trust-tree.com;docket@trust-tree.com
6154690438



SIGNATURE(S)
Response Signature
Signature: /Randy Michels/     Date: 06/26/2018
Signatory's Name: Randy Michels
Signatory's Position: Attorney of record, Tennessee bar member

Signatory's Phone Number: 6154690438

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

Mailing Address:    Randy Michels
   Trust Tree Legal, P.C.
   1321 Adams Street
   Nashville, Tennessee 37208
        
Serial Number: 79223002
Internet Transmission Date: Tue Jun 26 13:18:26 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201806261318266
07581-79223002-61061c783744d9a47dcc6448c
713cc858f8183cfaa413b381e7d669c4973175e7
-N/A-N/A-20180626131256760554