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. 86120787 FACEBOOK (Stylized and/or with Design, see http://uspto.report/TM/86120787/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: FACEBOOK (Stylized and/or with Design, see http://uspto.report/TM/86120787/mark.png)
Proposed: FACEBOOK (Stylized and/or with Design, see mark)
The color(s) white, blue and dark blue is/are claimed as a feature of the mark.
The mark consists of the word FACEBOOK in white followed by a series of three designs in dark blue. The design on the left consists of a silhouette of two stylized figures, one figure overlapping the other. The design in the middle consists of a silhouette of two stylized boxes with rounded corners, one box overlapping the other, with triangle shapes extending from the bottom of each box. The design on the right consists of a silhouette of a stylized globe image. The background and continents on the globe are all depicted in blue.

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

             Applicant Facebook, Inc. ("Applicant"), by and through its counsel, hereby responds to the Office Action dated December 11, 2013 issued in connection with Application Serial Number 86/120,787 (the "Application") for the mark FACEBOOK and Design (the "Mark").  The Examining Attorney has initially refused to accept the specimen Applicant submitted for Class 45, which lists the following services (as amended): "Internet-based social introduction, networking and dating services; Providing access to computer databases in the fields of social networking, social introduction and dating."  The Examining Attorney states that the specimen "does not show the applied-for mark used in connection with any of the goods and/or services specified in Class 45" and that "there is not an obvious connection between the specimen and such services."  Applicant respectfully disagrees and requests that the Examining Attorney withdraw her specimen refusal.

 

            Applicant is the world's largest social networking platform, with more than 1.2 billion monthly active users.  See http://newsroom.fb.com/company-info/ (last visited June 10, 2014).  A social networking service is defined, in part, as an online service that allows users to share information and create connections with one another.  See, e.g., the definitions at Wikipedia.org, http://en.wikipedia.org/wiki/Social_networking_service (last visited June 10, 2014), and Techopedia.org, http://www.techopedia.com/definition/4956/social-networking-site-sns (last visited June 10, 2014).  The specimen Applicant submitted for Class 45 plainly states that "Facebook's mission is to give people the power to share and make the world more open and connected."  The specimen further shows photographs and messages that Facebook has shared on its page, as well as links to additional photographs, videos and other content.  Accordingly, the specimen demonstrates a direct and obvious connection to the social networking services listed in Class 45 of the Application.

 

            In view of the foregoing, Applicant submits that the Application is condition for prompt publication and respectfully requests such favorable action.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software to enable uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; Computer search engine software; Computer software for accessing, browsing and searching online databases; Computer software for personal information management, and data synchronization software
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Computer software to enable uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; Computer software to enable uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing and otherwise providing electronic media and information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; Computer search engine software; Computer software for accessing, browsing and searching online databases; Computer software for personal information management, and data synchronization softwareClass 009 for Computer software to enable uploading, downloading, accessing, posting, displaying, editing, tagging, blogging, streaming, linking, sharing and otherwise providing electronic media and information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information; Computer search engine software; Computer software for accessing, browsing and searching online databases; Computer software for personal information management, and data synchronization software
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Marketing, advertising and promotion services; Market research and information services; Promoting the goods and services of others via computer and communication networks; Facilitating the exchange and sale of services and products of third parties via computer and communication networks; Online retail store services featuring gift cards and delivery of digital media, namely, pre-recorded music, video, images, text and audiovisual works; Providing online marketplaces for sellers of goods and/or services; Providing online facilities for connecting sellers with buyers; Providing online facilities featuring information for consumers in the field of gifts; Business networking
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Marketing, advertising and promotion services; Market research and information services; Provision of market research information; Promoting the goods and services of others via computer and communication networks; Facilitating the exchange and sale of services and products of third parties via computer and communication networks; Online retail store services featuring gift cards and delivery of digital media, namely, pre-recorded music, video, images, text and audiovisual works; Providing online marketplaces for sellers of goods and/or services; Providing online facilities for connecting sellers with buyers; Providing online facilities featuring information for consumers in the field of gifts; Business networkingClass 035 for Marketing, advertising and promotion services; Provision of market research information; Promoting the goods and services of others via computer and communication networks; Facilitating the exchange and sale of services and products of third parties via computer and communication networks; Online retail store services featuring gift cards and delivery of digital media, namely, pre-recorded music, video, images, text and audiovisual works; Providing online marketplaces for sellers of goods and/or services; Providing online facilities for connecting sellers with buyers; Providing online facilities featuring information for consumers in the field of gifts; Business networking
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among internet users; Providing access to computer, electronic and online databases; Telecommunications services, namely electronic transmission of data, messages, graphics, images, audio, video and information; Providing online forums for communication on topics of general interest; Providing online chat rooms, email and instant messaging services, and electronic bulletin boards; Audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Voice over IP services; Telephony communication services
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among internet users; Providing access to computer, electronic and online databases; Telecommunications services, namely electronic transmission of data, messages, graphics, images, audio, video and information; Providing online forums for communication on topics of general interest; Providing online chat rooms, email and instant messaging services, and electronic bulletin boards; Providing online chat rooms, email and instant messaging services, and electronic bulletin boards for transmission of messages among users in the field of general interest; Audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Audio, text and video broadcasting services over computer and other communication networks namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Voice over IP services; Telephony communication servicesClass 038 for Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among internet users; Providing access to computer, electronic and online databases; Telecommunications services, namely electronic transmission of data, messages, graphics, images, audio, video and information; Providing online forums for communication on topics of general interest; Providing online chat rooms, email and instant messaging services, and electronic bulletin boards for transmission of messages among users in the field of general interest; Audio, text and video broadcasting services over computer and other communication networks namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Voice over IP services; Telephony communication services
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing computer, electronic and online databases in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; Electronic journals and blogs, featuring user generated or specified content; Electronic publishing services for others; Entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; Providing information about online computer games and video games via computer or communication networks
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing computer, electronic and online databases in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; Providing computer, electronic and online databases in the field of entertainment and in the fields of secondary education, collegiate education, social and community interest groups; Electronic journals and blogs, featuring user generated or specified content; Electronic journals and blogs, featuring user generated or specified content in the fields of secondary education, collegiate education, social and community interest groups; Electronic publishing services for others; Publishing of electronic publications for others; Entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; Entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer and communication networks; Providing information about online computer games and video games via computer or communication networks; Providing information about online computer games and video games via computer and communication networksClass 041 for Providing computer, electronic and online databases in the field of entertainment and in the fields of secondary education, collegiate education, social and community interest groups; Electronic journals and blogs, featuring user generated or specified content in the fields of secondary education, collegiate education, social and community interest groups; Publishing of electronic publications for others; Entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer and communication networks; Providing information about online computer games and video games via computer and communication networks
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, modifying, sharing or otherwise providing electronic media or information over communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple online facilities; Providing a online facilities featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple online facilities; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Computer services in the nature of customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networks; Providing search engines for obtaining data via communications networks; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, modifying, sharing or otherwise providing electronic media or information over communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple online facilities; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple online sites; Providing a online facilities featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple online facilities; Providing online sites featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple online sites; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, on computer and communication networks; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, by means of computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Computer services in the nature of customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; Computer services in the nature of providing customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks. Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networks; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networks; Providing online sites that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing search engines for obtaining data via communications networks; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and dataClass 042 for Computer services, namely, creating virtual communities for registered users to organize groups and events, participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for organizing and conducting meetings, events and interactive discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, modifying, sharing or otherwise providing electronic media or information over communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identify data with and among multiple online sites; Providing online sites featuring technology that enables online users to create personal profiles featuring social and business networking information and to transfer and share such information among multiple online sites; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, photographic images and audio visual information, by means of computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Computer services in the nature of providing customized online pages featuring user-defined or specified information, personal profiles, audio, video, photographic images, text, graphics and data; Computer services, namely, providing search engines for obtaining data on a global computer and communication networks. Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer and communication networks; Providing online sites that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Social introduction, networking and dating services; Providing access to computer databases in the fields of social networking, social introduction and dating
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Social introduction, networking and dating services; Internet-based social introduction, networking and dating services; Providing access to computer databases in the fields of social networking, social introduction and datingClass 045 for Internet-based social introduction, networking and dating services; Providing access to computer databases in the fields of social networking, social introduction and dating
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 02/04/2010 and first used in commerce at least as early as 02/04/2010 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3041791, 3122052, 3881770, and others.


SIGNATURE(S)
Response Signature
Signature: /Aaron M. Fennimore/     Date: 06/10/2014
Signatory's Name: Aaron M. Fennimore
Signatory's Position: Attorney of record, California bar member

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: 86120787
Internet Transmission Date: Tue Jun 10 20:02:25 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201406102002252
98121-86120787-500c59632712e04882969cbeb
e389ff57ef62693f52d9decae7e5b1b8a486e3f1
-N/A-N/A-20140610195034243900