Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85341159 WATTPAD(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85341159) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Software for publishing, distributing, transmitting, transferring, receiving, downloading, displaying, previewing, viewing, sharing, rating, tagging, discussing, commenting on, chatting about, and fanning user generated content, content, text, visual works, audio works, audiovisual works, literary works, data files, documents and electronic works via portable electronic devices, electronic devices and computers; downloadable literary works, audio works, visual works, audiovisual works and electronic publications including user generated content on a variety of topics; software for providing writing contests
Original Filing Basis:
Filing Basis: Section 1(a), 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, 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 05/01/2007 and first used in commerce at least as early as 05/01/2007 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1529435 filed 05/27/2011]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Software for publishing, distributing, transmitting, transferring, receiving, downloading, displaying, previewing, viewing, sharing, rating, tagging, discussing, commenting on, chatting about, and fanning user generated content, content, text, visual works, audio works, audiovisual works, literary works, data files, documents and electronic works via portable electronic devices, electronic devices and computers; downloadable literary works, audio works, visual works, audiovisual works and electronic publications including user generated content on a variety of topics; Downloadable literary works, audio works, visual works, audiovisual works and electronic publications namely user generated content on a variety of topics; software for providing writing contests; Software for providing writing contests between users of a website and mobile applicationClass 009 for Software for publishing, distributing, transmitting, transferring, receiving, downloading, displaying, previewing, viewing, sharing, rating, tagging, discussing, commenting on, chatting about, and fanning user generated content, content, text, visual works, audio works, audiovisual works, literary works, data files, documents and electronic works via portable electronic devices, electronic devices and computers; Downloadable literary works, audio works, visual works, audiovisual works and electronic publications namely user generated content on a variety of topics; Software for providing writing contests between users of a website and mobile application
Filing Basis: Section 1(a), 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, 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 05/01/2007 and first used in commerce at least as early as 05/01/2007 , and is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1529435 filed 05/27/2011]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing a website that gives users of computers, electronic devices or portable electronic devices the ability to publish, distribute, transmit, transfer, receive, download, display, preview, view, share, rate, tag, discuss, comment on, chat about, and become a fan of user generated content, content, text, visual works, audio works, audiovisual works, literary works, data files, documents and electronic works via portable electronic devices, electronic devices and computers; advertising, advertisement, promotion and marketing services for others by providing electronic media, electronic works or information over the Internet or other communications network; writing contests
Original Filing Basis:
Filing Basis: Section 1(a), 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, 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 05/01/2007 and first used in commerce at least as early as 05/01/2007 , and is now in use in such commerce.

Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing a website that gives users of computers, electronic devices or portable electronic devices the ability to publish, distribute, transmit, transfer, receive, download, display, preview, view, share, rate, tag, discuss, comment on, chat about, and become a fan of user generated content, content, text, visual works, audio works, audiovisual works, literary works, data files, documents and electronic works via portable electronic devices, electronic devices and computers; advertising, advertisement, promotion and marketing services for others by providing electronic media, electronic works or information over the Internet or other communications network; writing contestsClass 042 for Providing a website that gives users of computers, electronic devices or portable electronic devices the ability to publish, distribute, transmit, transfer, receive, download, display, preview, view, share, rate, tag, discuss, comment on, chat about, and become a fan of user generated content, content, text, visual works, audio works, audiovisual works, literary works, data files, documents and electronic works via portable electronic devices, electronic devices and computers; writing contests
Filing Basis: Section 1(a), 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, 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 05/01/2007 and first used in commerce at least as early as 05/01/2007 , and is now in use in such commerce.
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Applicant hereby adds the following class of goods/services to the application:
New: Class 035 for Advertising, advertisement, promotion and marketing services for others by providing electronic media, electronic works or information over the Internet or other communications network
Filing Basis: Section 1(a), 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, 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 05/01/2007 and first used in commerce at least as early as 05/01/2007 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 035 . The specimen(s) submitted consists of copy of webpage bearing trademark .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-216183176123-152829837_._WATTPAD_CLASS_35.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1529435 filed 05/27/2011]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The goods and services descriptions in this application have been amended in order to overcome the Examining Attorney's objections. Many, if not most, of the suggestions made by the Examining Attorney have been adopted. However, some changes were made in order to conform the goods and services descriptions in the U.S. application to the goods and services descriptions in the now allowed Canadian priority application (Canadian Appln No. 1 529 435). A copy of the allowed Canadian application is attached. It is believed that in order to avoid potential priority claim issues, it is imperative that the goods and services descriptions in both applications be the same or substantially similar. Accordingly, the Class 9 goods description and the Class 35 and 42 services description are substantially the same as descriptions contained in the allowed Canadian application. The Examining Attorney will note that the Class 42 service description submitted herewith still includes the phrase "chat about". It is presumed that the Class 38 service description suggested by the Examining Attorney was intended to cover the "chat about" term used in the original Class 42 services description. It is noted that the suggested Class 42 service description includes the terminology "discuss, comment on". Since these terms are obviously acceptable in Class 42, it is not understood why the terminology "chat about" is unacceptable. It is submitted that the terms "discuss, comment on, chat about" have similar, but not identical, meanings and all convey similar impressions. The Examining Attorney is requested to reconsider her position and allow the Applicant to maintain this term in the Class 42 description so that it will be consistent with the service description in the Canadian priority application. If the Examining Attorney, after reconsideration, maintains the requirement that the term "chat about" be eliminated from the Class 42 description, then the Examining Attorney is authorized to add the suggested International Class 38 description. Any resulting fee should be charged to the undersigned's Deposit Account 20-0090. In view of the above, the Examining Attorney is requested to approve the amended goods and services descriptions presented herewith so that the descriptions in the eventual U.S. registration will be consistent with those in the Canadian priority application and the eventual Canadian registration.

Original PDF file:
mis-216183176123-152829837_._CANADIAN_1_529_435.pdf
Converted PDF file(s) ( 4 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4

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

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /John R. Hlavka/     Date: 03/16/2012
Signatory's Name: John R. Hlavka
Signatory's Position: Attorney of Record, Ohio bar member

Signatory's Phone Number: 216-621-2234

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.

        
RAM Sale Number: 357
RAM Accounting Date: 03/19/2012
        
Serial Number: 85341159
Internet Transmission Date: Fri Mar 16 14:06:35 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20120316140635
988037-85341159-4904e3d29bf57b6722d00231
734acde23-CC-357-20120316135813098200