Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

---

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. 86136846 PACIFIC(Standard Characters, see http://uspto.report/TM/86136846/mark.png) has been amended as follows:

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

Filing Basis: Applicant does not wish to rely on Section 44(e) as a filing basis for this application, but would like to retain the priority date of its foreign application under Section 44(d).

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer features and applications for individuals with hearing and vision impairments and physical and learning disabilities; computers, computer software
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.

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[ Trinidad and Tobago application number 46948 filed 06/07/2013]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer features and applications for individuals with hearing and vision impairments and physical and learning disabilities; Computer features and applications for individuals with hearing and vision impairments and physical disabilities, namely, computer software used for voice activation, speech recognition, text-to-speech conversion, dictation, virtual magnification, color inversion, Braille display, subtitling, closed captioning, adaptive computer controls, keystroke sensitivity, menu and command simplification, and onscreen keyboard control; computers, computer software; computer software for use in educating individuals with learning disabilities; application development software; computer operating system software; computersClass 009 for Computer features and applications for individuals with hearing and vision impairments and physical disabilities, namely, computer software used for voice activation, speech recognition, text-to-speech conversion, dictation, virtual magnification, color inversion, Braille display, subtitling, closed captioning, adaptive computer controls, keystroke sensitivity, menu and command simplification, and onscreen keyboard control; computer software for use in educating individuals with learning disabilities; application development software; computer operating system software; computers
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.

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 [ Trinidad and Tobago application number 46948 filed 06/07/2013]. 15 U.S.C.Section 1126(d), as amended.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_2041552263-162848875_._PACIFIC_declaration.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: C. Anthony Shippam
Signatory's Position: Manager

Response Signature
Signature: /Stephen Brown/     Date: 09/19/2014
Signatory's Name: Stephen Brown
Signatory's Position: Attorney of record

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: 86136846
Internet Transmission Date: Fri Sep 19 16:41:13 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2014091916411368
7546-86136846-500b8532794bfc26d09b2ecd6c
566b863999cd45a7a21cc88671c7338737388b18
-N/A-N/A-20140919162848875139