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. 85843279 ENCOMPASS (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85843279) 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 Computer programs for use as searching directories; computer programs (downloadable software); computer software; computer software (programs); computer software downloaded from the Internet; computer software for analysing market information; computer software for processing market information; computer software products; computer software programs; data processing software; data processing software for graphic representations; interactive computer software; none of the foregoing goods designed for use by hospitals or healthcare organisations or for use in relation to patient information or for billing or insurances purposes including receiving government and insurance reimbursement
Original Filing Basis:
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[ Australia application number 1539155 filed 02/05/2013]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer programs for use as searching directories; computer programs (downloadable software); downloadable computer programs for use as searching directories; computer software; computer software for use in aggregating data sets from internal and external sources; computer software (programs); computer software programs for analyzing and displaying connections between people, property and assets; computer software downloaded from the Internet; downloadable computer software for analyzing and displaying connections between people, property and assets; computer software for analysing market information; computer software for processing market information; computer software products; computer software programs for searching, reviewing and managing commercial data; computer software programs; computer software programs for aggregating information from a range of sources to provide users with a full and accurate picture of a company's or person's commercial circumstances; data processing software; data processing software for graphic representations; interactive computer software; interactive computer software for analyzing and displaying connections between people, property and assets; none of the foregoing goods designed for use by hospitals or healthcare organisations or for use in relation to patient information or for billing or insurances purposes including receiving government and insurance reimbursementClass 009 for Computer programs for use as searching directories; downloadable computer programs for use as searching directories; computer software for use in aggregating data sets from internal and external sources; computer software programs for analyzing and displaying connections between people, property and assets; downloadable computer software for analyzing and displaying connections between people, property and assets; computer software for analysing market information; computer software for processing market information; computer software programs for searching, reviewing and managing commercial data; computer software programs for aggregating information from a range of sources to provide users with a full and accurate picture of a company's or person's commercial circumstances; data processing software; data processing software for graphic representations; interactive computer software for analyzing and displaying connections between people, property and assets; none of the foregoing goods designed for use by hospitals or healthcare organisations or for use in relation to patient information or for billing or insurances purposes including receiving government and insurance reimbursement
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 [ Australia application number 1539155 filed 02/05/2013]. 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 Online provision of web-based software; provision of online non-downloadable software (application service provider); none of the foregoing services being for use by hospitals or healthcare organisations or for use in relation to patient information or for billing or insurances purposes including receiving government and insurance reimbursement
Original Filing Basis:
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: Online provision of web-based software; Providing temporary use of non-downloadable computer software for use as searching directories, for use in aggregating data sets from internal and external sources, for analyzing and displaying connections between people, property and assets, for analyzing market information, for processing market information, for searching, reviewing and managing commercial data, for data processing, for processing data for graphic representations, and for aggregating information from a range of sources to provide users with a full and accurate picture of a company's or person's commercial circumstances; provision of online non-downloadable software (application service provider); none of the foregoing services being for use by hospitals or healthcare organisations or for use in relation to patient information or for billing or insurances purposes including receiving government and insurance reimbursementClass 042 for Providing temporary use of non-downloadable computer software for use as searching directories, for use in aggregating data sets from internal and external sources, for analyzing and displaying connections between people, property and assets, for analyzing market information, for processing market information, for searching, reviewing and managing commercial data, for data processing, for processing data for graphic representations, and for aggregating information from a range of sources to provide users with a full and accurate picture of a company's or person's commercial circumstances; none of the foregoing services being for use by hospitals or healthcare organisations or for use in relation to patient information or for billing or insurances purposes including receiving government and insurance reimbursement
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.

ADDITIONAL STATEMENTS
Color Claim
The color(s) white, dark blue, light blue and dark grey is/are claimed as a feature of the mark.

Description of mark
The mark consists of a gem in the colours with white, dark blue and light blue sections to give the gem a three-dimensional appearance; to the right of the gem is the stylised word 'ENCOMPASS' in dark grey.

SIGNATURE(S)
Response Signature
Signature: /jmenker/     Date: 08/31/2013
Signatory's Name: James R Menker
Signatory's Position: Attorney of record, Virginia bar member

Signatory's Phone Number: 9042472620

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.

        
Serial Number: 85843279
Internet Transmission Date: Sat Aug 31 13:06:26 EDT 2013
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2013083113062678
8235-85843279-5001b5e664c61e2a4a10604ce5
ff169d167e4bd85f6d60dca331c4e2bdfe849c1f
-N/A-N/A-20130831124933896510