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. 85410464 TCS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85410464) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Although the marks were filed as intent-to-use application, the marks are now being used in commerce and amendments to allege use will be filed once the description of goods and services are finalized.  In the interim, we invite the Examiner to review the use of the mark at www.totalcarscore.com.  Upon this review, we believe that it will become apparent that the goods and services being offered by Total Car Score, as described in the amended goods and services description, are vastly different and distinct from the goods and services recited in Serial No. 85030710, 85030790, and 85306199 such that no likelihood of confusion would exist between the marks.   Accordingly, we do not believe that suspension is proper in this instance and that the application is ready to be passed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing on-line information and databases in the field of motor vehicles, namely, providing searchable information on various vehicle makes and models to assist buyers and sellers of motor vehicles; providing information about vehicles for sale over the internet; providing publications and articles written by others on the subject of motor vehicles and motor vehicle sales; collecting and providing analytical information to businesses and consumers related to motor vehicles, including, consumer buying habits, consumer preferences and other analytical data related to consumer purchasing and searching habits; facilitating the exchange of information between businesses, consumers and between businesses and consumers in the field of motor vehicles; and advertising and promotional services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. For a certification 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, and 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Providing on-line information and databases in the field of motor vehicles, namely, providing searchable information on various vehicle makes and models to assist buyers and sellers of motor vehicles; Providing on-line reporting and database information in the field of used and new model motor vehicles available for purchase by others, namely, providing searchable information on various vehicle makes and models to assist buyers and sellers of motor vehicles and providing consumers with objective and subjective standards for assessing vehicle performance, providing overall vehicle rankings and aggregated scoring and reporting information derived by third party reporting agencies and companies; providing information about vehicles for sale over the internet; providing publications and articles written by others on the subject of motor vehicles and motor vehicle sales; market research services, namely, collecting and providing analytical information to businesses and consumers related to motor vehicles, including, consumer buying habits, consumer preferences, vehicle performance, vehicle specifications, vehicle rankings, vehicle safety and other analytical data related to consumer purchasing and searching habits; collecting and providing analytical information to businesses and consumers related to motor vehicles, including, consumer buying habits, consumer preferences and other analytical data related to consumer purchasing and searching habits; and advertising and promotional services.; facilitating the exchange of information between businesses, consumers and between businesses and consumers in the field of motor vehicles; and advertising and promotional servicesClass 035 for Providing on-line reporting and database information in the field of used and new model motor vehicles available for purchase by others, namely, providing searchable information on various vehicle makes and models to assist buyers and sellers of motor vehicles and providing consumers with objective and subjective standards for assessing vehicle performance, providing overall vehicle rankings and aggregated scoring and reporting information derived by third party reporting agencies and companies; providing information about vehicles for sale over the internet; market research services, namely, collecting and providing analytical information to businesses and consumers related to motor vehicles, including, consumer buying habits, consumer preferences, vehicle performance, vehicle specifications, vehicle rankings, vehicle safety and other analytical data related to consumer purchasing and searching habits; and advertising and promotional services.
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. For a certification 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, and 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/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Providing non-downloadable electronic publications, namely articles and product specification, product description and product evaluation reports on the subject of motor vehicles, motor vehicles sales, motor vehicles performance, motor vehicle testing, motor vehicle rankings, motor vehicle safety and motor vehicle awards and recognitions.
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. For a certification 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, and 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/services that meet the certification standards of the applicant.

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

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has 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); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. 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 and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. 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. Section 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. Section 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: /Jennifer H. Hamilton/      Date: 05/18/2012
Signatory's Name: Jennifer H. Hamilton
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 818.488.8141


Response Signature
Signature: /Jennifer H. Hamilton/     Date: 05/18/2012
Signatory's Name: Jennifer H. Hamilton
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 818.488.8141

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: 5519
RAM Accounting Date: 05/21/2012
        
Serial Number: 85410464
Internet Transmission Date: Fri May 18 18:19:54 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201205181819540
74449-85410464-4902920201cc6f394612f7fd3
ded92d31d-CC-5519-20120518165945881959