PTO Form 1957 (Rev 9/2005) |
OMB No. 0651-0050 (Exp. 07/31/2017) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
86261984 |
LAW OFFICE ASSIGNED |
LAW OFFICE 104 |
MARK SECTION |
MARK |
http://uspto.report/TM/86261984/mark.png |
LITERAL ELEMENT |
CORTANA |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
In an Office Action issued July 17, 2014, the Examining Attorney (A) objects to the goods and services lisitings, (B) requires a claim of ownership to an existing
registration; (C) identifies requirements for adding a class; (D) identifies requirements under Section 44(e); and (E) refuses registration in Classes 9 and 42 under Section 2(d). The applicant
herein amends the application to resolve the Examining Attorney’s objections, and asserts that the application is in condition for approval.
A. Ownership of Prior Registration
The Examining Attorney requires a claim of ownership to U.S. Reg. No. 2841558. Applicant has amended the application to include such a claim. Accordingly, this issue has
been satisfied.
B. Identification of Goods and Services
The Examining Attorney objects to several clauses in the goods and services descriptions. Applicant has amended the goods and services in response to the examiner’s
comments, and believes the amended descriptions are acceptable. Applicant invites the Examining Attorney to contact the undersigned with any questions or remaining issues.
C. Requirements for Combined Application
The Examining Attorney identifies requirements should applicant add a class to the application. By this amendment, applicant adds Class 36 to the application. One
additional filing fee is submitted herewith. Applicant believes these requirements have been satisfied.
D. Section 44(e) Requirement
The Examining Attorney identifies requirements associated with registration under Section 44(e). Applicant drops Section 44(e) as a basis for registration, and will proceed
to registration based solely on Section 1(b)/1(a). Accordingly, this issue is moot.
E. Section 2(d) Refusal
The Examining Attorney refuses registration under Section 2(d) to only the goods in Class 9 and services in Class 42. Applicant thanks the examiner for considering the
application closely and finding that the application is in condition for approval under Section 2(d) with respect to all the other services listed in the application. Applicant believes the Section
2(d) refusal should be withdrawn.
Applicant’s mark CORTANA is initially refused registration based on coexisting registrations for the marks CORTINA, CORTONA and CERTONA. Applicant makes an initial comment
that the three registrations, in and of themselves, establish that a one-letter difference between three marks can have a significant enough effect in terms of appearance, sound and/or commercial
impression to prevent consumer confusion and allow the marks to be simultaneously registered. As explained below, these same types of differences are sufficient to provide for registration of
applicant’s CORTANA mark for the amended goods and services in Classes 9 and 42.
Comparison of the Marks
Although similar, applicant asserts that the differences in the marks are more than sufficient to prevent consumer confusion in connection with the goods and services as
amended. Accordingly, applicant requests that the Examining Attorney review the amendments, reconsider the issue and withdraw the refusal.
Considering the marks’ appearance, sound and commercial impression, both CORTINA and CORTONA begin with the identical prefix “Cort.” One ends with “Tina” and the other with
“Tona.” They are both registered. Similarly, applicant’s mark ends with “Tana.” Applicant’s “Tana” suffix is sufficiently different and readily distinguishable from both “Tina” and “Tona” such that
consumer confusion is not likely, especially when the goods and services are not identical or closely related. Further, both CORTONA and CERTONA end with the identical suffix “Tona.” They are both
registered. None of the cited registrations ends with the suffice “TANA.” Accordingly, although two of the cited registrations share the prefix “Cort” and two of the cited registrations share the
suffice “Tona,” none of them shares applicant’s “TANA” suffice. As summarized above, this distinction is sufficient to allow ordinary consumers to readily distinguish applicant’s goods and services
from the goods and services associated with the cited registrations.
Comparison of the Goods in Class 9 and the Services in Class 42
In comparing the goods in the original application, the Examining Attorney notes that “applicant has applied for goods broadly consisting of ‘computer software’ … and
computer services … such as ‘computer programming’ and ‘design and development of computer hardware and software’.” In its amendment, applicant has deleted the unrestricted goods and services
“computer software,” “computer programming” and “design and development of computer hardware and software.” As such, the overly broad and, arguably, overlapping goods and services have been
eliminated from the application.
With respect to CORTINA and CORTINA SYSTEMS, the registered goods are “computer software for controlling and programming semiconductor chips for use in the field of
data and telecommunications networks; computer and telecommunications hardware, namely, modules, chips and sub-systems for use in connection with data and telecommunication networks.” The
generic terms have been removed from applicant’s goods description; and the semiconductor chips, modules, sub-systems and software for controlling the same in connection with data/telecommunication
networks are not related to applicant’s amended goods and do not create any potential for confusion. Due to such differences in goods, combined with the differences in the marks themselves, the
CORTINA and CORTINA SYSTEMS registrations should be withdrawn.
With respect to CORTONA, the registration covers “Computer software for database management and data manipulation in the field of creation, optimization, visualization,
interaction, animation, collaboration, and communication of three-dimensional graphical data in either a single-user or multi-user format; computer software development tools in the field of
creation, optimization, visualization, interaction/animation, collaboration, and communication of three-dimensional graphical data in either a single-user or multi-user format; electronic
publications, recorded on computer media, about computer software in the field of creation, optimization, three-dimensional graphical data in either a single-user or multi-user format, namely
books, manuals, newsletters and magazines.” The generic terms have been removed from applicant’s goods description; and the three-dimensional graphical data and related software are not closely
related to applicant’s amended goods and do not crate any potential for confusion. Due to such differences in goods, combined with differences in the marks themselves, the CORTONA registration should
be withdrawn.
With respect to CERTONA, the Examining Attorney notes that “applicant’s identification of services uses identical language and lists broad listings that encompass the more
specific services of the registrant and is therefore viewed as essentially identical to the services of the registrant. Unrestricted and broad identifications are presumed to encompass all
services of the type described.” In particular, the examiner identifies applicant’s unrestricted ASP services, programming and software design services, and consulting services. Applicant has amended
the recitation of services to remove the unrestricted terms “computer programming” and “design and development of computer hardware and software,” remove broad “consulting services,” and narrow the
recitation to clarify that such services are assisting others in the use and operation of their electronic devices. These differences in services, combined with the fact that applicant’s mark shares
neither the “Cert” prefix nor the “Tona” suffix with the registered mark, will prevent a likelihood of confusion. As such, the CERTONA registration should be withdrawn.
F. Conclusion
As explained above, applicant asserts that the amendments made with this submission resolve each of the outstanding objections and rejections, and respectfully requests that
the Examining Attorney reconsider the application and approve the mark for publication. If questions remain, the Examining Attorney is invited to contact Applicant’s
counsel, Kevin S. Costanza by email at KevinC.Docketing@SeedIP.com or by telephone at (206) 622-4900.
|
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Computer software |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02321 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Computer software; Computer software to assist a user in
operating a computerized handheld device; computer software for initiating and receiving telephone calls, and for accessing, storing, retrieving, managing,
processing and using information; computer software for voice recognition, processing voice commands and converting between speech and text; computer software for creating, sending, receiving and managing voicemail and email; computer software for scheduling and managing
appointments, reminders, events and calendar entries on an electronic calendar; computer software for operating audio-visual information; computer software for processing and managing mapping and directional information; computer software for use in note-taking, namely,
computer software for recording and organizing audio information in electronic form; computer software for personal information management; computer software for organizing and accessing phone numbers, addresses, and other personal contact information; computer software for
accessing, browsing and searching online databases; computer software for providing consumer resources for searching, locating, rating, evaluating and
providing directions for the purchase, consumption and use of a wide range of consumer products, services, and information over a global communications network and using any connected access mode in
any format, namely mobile communication devices, desktop internet, email, voice or social media channels; computer software for global positioning and for
providing travel directions; computer software for enabling hands-free use of a mobile phone through voice recognition; computer software for making travel arrangements; computer software to assist in making reservations at hotels and restaurants |
FINAL DESCRIPTION |
Computer software to assist a user in operating a computerized handheld device; computer software for initiating and receiving
telephone calls, and for accessing, storing, retrieving, managing, processing and using information; computer software for voice recognition, processing voice commands and converting between speech
and text; computer software for creating, sending, receiving and managing voicemail and email; computer software for scheduling and managing appointments, reminders, events and calendar entries on an
electronic calendar; computer software for operating audio-visual information; computer software for processing and managing mapping and directional information; computer software for use in
note-taking, namely, computer software for recording and organizing audio information in electronic form; computer software for personal information management; computer software for organizing and
accessing phone numbers, addresses, and other personal contact information; computer software for accessing, browsing and searching online databases; computer software for providing consumer
resources for searching, locating, rating, evaluating and providing directions for the purchase, consumption and use of a wide range of consumer products, services, and information over a global
communications network and using any connected access mode in any format, namely mobile communication devices, desktop internet, email, voice or social media channels; computer software for global
positioning and for providing travel directions; computer software for enabling hands-free use of a mobile phone through voice recognition; computer software for making travel arrangements; computer
software to assist in making reservations at hotels and restaurants |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Advertising, marketing, and promotion services; advertising and marketing services, namely, promoting the goods and services of others;
design, creation, preparation, production, and dissemination of advertisements and advertising material for others; computerized database and file management; data processing services; creating
indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others; promoting the goods and services of others by
providing, searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others; promoting the
goods and services of others by organizing content of business information provided over a global computer network and other electronic and communications networks according to user preferences;
providing business, consumer product, and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the
purchase and sale of a wide variety of products and services of others; promoting the goods and services of others by compiling business and commercial information directories for publishing on the
Internet and other electronic, computer and communications networks; retail store and online retail store services featuring a wide variety of consumer goods of others; retail store and online retail
store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other consumer electronics,
computer software, and accessories, peripherals, and carrying cases for such products; providing consumer product information for the purpose of selecting general consumer merchandise to meet the
consumer's specifications; providing retail store and prepaid subscription services featuring downloadable; providing information via voice or text controlled inquiries |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02322 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
TRACKED TEXT DESCRIPTION |
Advertising, marketing, and promotion services; advertising and marketing services, namely,
promoting the goods and services of others; design, creation, preparation, production, and dissemination of advertisements and advertising material for others;
computerized database and file management; data processing services; creating indexes of information, sites and
other resources available on global computer networks and other electronic and communications networks for others; promoting the goods and services of others by providing,
searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others; promoting the goods and services of others by organizing content of business information provided over a global computer network and other electronic and communications networks according to
user preferences; providing business, consumer product, and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; promoting the goods
and services of others by compiling business and commercial information directories for publishing on the Internet and other electronic, computer and communications networks; retail store and online retail store services featuring a wide variety of consumer goods of others; retail store and online retail store services featuring
computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other consumer electronics, computer software, and
accessories, peripherals, and carrying cases for such products; providing consumer product information for the purpose of selecting general consumer merchandise to meet
the consumer's specifications; providing retail store and prepaid subscription services featuring downloadable, pre-recorded text, data, image, audio, video,
and multimedia files, provided via the internet and other electronic and communications networks; providing retail store and prepaid subscription services
featuring downloadable; compiling of information into computer databases, namely, compiling of internet based information and providing such information in
response to voice or text controlled inquiries; providing information via voice or text controlled inquiries |
FINAL DESCRIPTION |
Advertising, marketing, and promotion services; advertising and marketing services, namely, promoting the goods and services of others;
design, creation, preparation, production, and dissemination of advertisements and advertising material for others; computerized database and file management; data processing services; promoting the
goods and services of others by providing, searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications
networks for others; promoting the goods and services of others by organizing content of business information provided over a global computer network and other electronic and communications networks
according to user preferences; providing business, consumer product, and commercial information over computer networks and global communication networks; business services, namely, providing computer
databases regarding the purchase and sale of a wide variety of products and services of others; promoting the goods and services of others by compiling business and commercial information directories
for publishing on the Internet and other electronic, computer and communications networks; retail store and online retail store services featuring a wide variety of consumer goods of others; retail
store and online retail store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other
consumer electronics, computer software, and accessories, peripherals, and carrying cases for such products; providing consumer product information for the purpose of selecting general consumer
merchandise to meet the consumer's specifications; providing retail store and prepaid subscription services featuring downloadable, pre-recorded text, data, image, audio, video, and multimedia files,
provided via the internet and other electronic and communications networks; compiling of information into computer databases, namely, compiling of internet based information and providing such
information in response to voice or text controlled inquiries |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (038)(current) |
INTERNATIONAL CLASS |
038 |
DESCRIPTION |
Communication and telecommunication services, namely, electronic transmission and retrieval of data, images, audio, video and
documents, including text, messages, and electronic mail, over local or global communications networks, including the internet, intranets, extranets, mobile communication, cellular and satellite
networks; telecommunication access services; communications by computer terminals; communication between computer terminals; delivery of digital music by telecommunications; electronic transmission
of streamed and downloadable audio and video files via computer and other communications networks; delivery of messages by electronic transmission; electronic mail services; streaming of video
materials via a global computer network; electronic transmission of audio and video files via communications networks; information, advisory and consultancy services relating to all the
aforesaid |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02323 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (038)(proposed) |
INTERNATIONAL CLASS |
038 |
DESCRIPTION |
Communication and telecommunication services, namely, electronic transmission and retrieval of data, images, audio, video and
documents, including text, messages, and electronic mail, over local or global communications networks, including the internet, intranets, extranets, mobile communication, cellular and satellite
networks; telecommunication access services; communications by computer terminals; communication between computer terminals; delivery of digital music by telecommunications; electronic transmission
of streamed and downloadable audio and video files via computer and other communications networks; delivery of messages by electronic transmission; electronic mail services; streaming of video
materials via a global computer network; electronic transmission of audio and video files via communications networks; information, advisory and consultancy services relating to all the
aforesaid |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (039)(current) |
INTERNATIONAL CLASS |
039 |
DESCRIPTION |
Physical storage of electronic data, text, images, audio, and video; providing information and consultation services regarding the
physical storage of electronic data, text, images, audio, and video; providing consultation services regarding the physical storage of electronic data, text, audio, and video; transportation
reservation and travel ticket reservation services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02324 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (039)(proposed) |
INTERNATIONAL CLASS |
039 |
DESCRIPTION |
Physical storage of electronic data, text, images, audio, and video; providing information and consultation services regarding the
physical storage of electronic data, text, images, audio, and video; providing consultation services regarding the physical storage of electronic data, text, audio, and video; transportation
reservation and travel ticket reservation services |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (041)(current) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Providing information, news and commentary in the fields of entertainment, popular culture, recreation and leisure activities, sports
and sporting events, educational services, concerts, cultural events, and live theatrical productions; providing information relating to the organizing of educational, cultural, sporting, and
entertainment exhibitions, and community, sporting and cultural activities, contests and games; providing non-downloadable audio publications over computer networks, namely, books, periodicals, and
reports on the subjects of education, entertainment, popular culture, recreation and leisure activities, sports and sporting events, technology, concerts, cultural events, and live theatrical
productions; providing advice and information in the field of educational and entertainment activities and events for children; educational services, namely, providing online instruction in the
fields of elementary, secondary, and university-level subjects; providing classes, workshops, and instruction in using voice-enabled software applications; providing non-downloadable prerecorded
music |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02325 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (041)(proposed) |
INTERNATIONAL CLASS |
041 |
DESCRIPTION |
Providing information, news and commentary in the fields of entertainment, popular culture, recreation and leisure activities, sports
and sporting events, educational services, concerts, cultural events, and live theatrical productions; providing information relating to the organizing of educational, cultural, sporting, and
entertainment exhibitions, and community, sporting and cultural activities, contests and games; providing non-downloadable audio publications over computer networks, namely, books, periodicals, and
reports on the subjects of education, entertainment, popular culture, recreation and leisure activities, sports and sporting events, technology, concerts, cultural events, and live theatrical
productions; providing advice and information in the field of educational and entertainment activities and events for children; educational services, namely, providing online instruction in the
fields of elementary, secondary, and university-level subjects; providing classes, workshops, and instruction in using voice-enabled software applications; providing non-downloadable prerecorded
music |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Computer programming; design and development of computer hardware and software; design, development and maintenance of proprietary
computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; consulting services related to the implementation, use and operation of
computer hardware, computer software, and consumer electronics for others; technical support services, namely, troubleshooting of computer software problems; technical support and consultation
services for developing computer systems, databases and applications; providing information in the fields of computer hardware and software development; application service provider (ASP) services
featuring hosting computer software applications of others. application service provider (ASP) services featuring computer software and providing online non-downloadable software, namely, computer
software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images,
audio, video, and multimedia content, and electronic publications, computer software for personal information management, database management software, database synchronization software, character
recognition software, voice recognition software, speech to text conversion software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software, computer
software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from
a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice commands, computer software for dictation,
computer software for scheduling appointments, reminders, and events on an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal
contact information, computer software for global positioning and for providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer
software for making travel arrangements, computer software for making reservations at hotels and restaurants, and computer game software; providing search engines for obtaining data via the internet
and other electronic communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; providing information, news and
commentary in the field of computer and information technology. providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the
Internet; information, advisory and consultancy services relating to all the aforesaid; providing weather information |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02326 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Computer programming; Design, development and maintenance of proprietary
computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; design and development of
computer hardware and software; computer services, namely, assisting others with the implementation, use and operation of computer hardware, computer software,
and consumer electronics; technical support services, namely, troubleshooting of computer software problems; consulting services
related to the implementation, use and operation of computer hardware, computer software, and consumer electronics for others; computer services, namely,
providing assistance in developing computer systems, databases and applications; providing information in the fields of computer hardware and software development;
technical support and consultation services for developing computer systems, databases and applications; application service
provider (ASP) services featuring hosting computer software applications of others; application service provider (ASP) services featuring computer software and
providing online non-downloadable software, namely, computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding,
displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer software for personal information management, database
management software, database synchronization software, character recognition software, voice recognition software, speech to text conversion software, voice-enabled software applications, electronic
mail and messaging software, mobile telephone software, computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail,
and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio
responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on an electronic calendar, computer software for storing,
organizing, and accessing phone numbers, addresses, and other personal contact information, computer software for global positioning and for providing travel directions, computer software for
enabling hands-free use of a mobile phone through voice recognition, computer software for making travel arrangements, computer software to assist in making reservations at hotels and restaurants,
and computer game software; application service provider (ASP) services featuring hosting computer software applications of others. application service
provider (ASP) services featuring computer software and providing online non-downloadable software, namely, computer software for creating, authoring, distributing, downloading, transmitting,
receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer
software for personal information management, database management software, database synchronization software, character recognition software, voice recognition software, speech to text conversion
software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software, computer software for accessing, browsing and searching online databases, computer
software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server,
computer software used to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on
an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal contact information, computer software for global positioning and for
providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer software for making travel arrangements, computer software for making
reservations at hotels and restaurants, and computer game software; providing search engines for obtaining data via the internet and other electronic communications
networks; creating indexes of online information, sites and other resources available on global computer networks for others; providing information, news and commentary in the field of computer and information technology; providing information, news and commentary in the
field of computer and information technology. providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the Internet;
providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the Internet; information, advisory and consultancy services relating to all the aforesaid; providing weather information |
FINAL DESCRIPTION |
Design, development and maintenance of proprietary computer software in the field of natural language, speech, speaker, language, voice
recognition, and voice-print recognition; computer services, namely, assisting others with the implementation, use and operation of computer hardware, computer software, and consumer electronics;
technical support services, namely, troubleshooting of computer software problems; computer services, namely, providing assistance in developing computer systems, databases and applications;
providing information in the fields of computer hardware and software development; application service provider (ASP) services featuring hosting computer software applications of others; application
service provider (ASP) services featuring computer software and providing online non-downloadable software, namely, computer software for creating, authoring, distributing, downloading, transmitting,
receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer
software for personal information management, database management software, database synchronization software, character recognition software, voice recognition software, speech to text conversion
software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software, computer software for accessing, browsing and searching online databases, computer
software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server,
computer software used to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on
an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal contact information, computer software for global positioning and for
providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer software for making travel arrangements, computer software to assist
in making reservations at hotels and restaurants, and computer game software; providing search engines for obtaining data via the internet and other electronic communications networks; creating
indexes of online information, sites and other resources available on global computer networks for others; providing information, news and commentary in the field of computer and information
technology; providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the Internet; information, advisory and consultancy
services relating to all the aforesaid; providing weather information |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (043)(current) |
INTERNATIONAL CLASS |
043 |
DESCRIPTION |
Hotel reservation services; restaurant reservation services; travel agency services, namely, making reservations and booking for
temporary lodging; sommelier services, namely, providing information on wine; providing information, advice, news, reviews, and commentary in the fields of dining, hotels, and temporary
accommodations for travelers |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02327 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (043)(proposed) |
INTERNATIONAL CLASS |
043 |
DESCRIPTION |
Hotel reservation services; restaurant reservation services; travel agency services, namely, making reservations and booking for
temporary lodging; sommelier services, namely, providing information on wine; providing information, advice, news, reviews, and commentary in the fields of dining, hotels, and temporary
accommodations for travelers |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (045)(current) |
INTERNATIONAL CLASS |
045 |
DESCRIPTION |
Personal concierge services for others comprising making requested personal arrangements and reservations and providing
customer-specific information to meet individual needs, rendered online; online social networking services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2014/02328 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
01/30/2014 |
GOODS AND/OR SERVICES SECTION (045)(proposed) |
INTERNATIONAL CLASS |
045 |
DESCRIPTION |
Personal concierge services for others comprising making requested personal arrangements and reservations and providing
customer-specific information to meet individual needs, rendered online; online social networking services |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (036)(class added) |
INTERNATIONAL CLASS |
036 |
DESCRIPTION |
Providing stock market information via voice or text controlled inquiries |
FILING BASIS |
Section 1(b) |
ADDITIONAL STATEMENTS SECTION |
ACTIVE PRIOR REGISTRATION(S) |
The applicant claims ownership of U.S. Registration Number(s) 2841558. |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
FEE PER CLASS |
325 |
TOTAL FEES DUE |
325 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Kevin S. Costanza/ |
SIGNATORY'S NAME |
Kevin S. Costanza |
SIGNATORY'S POSITION |
Attorney for Applicant, Washington State Bar Member |
SIGNATORY'S PHONE NUMBER |
206-622-4900 |
DATE SIGNED |
01/16/2015 |
RESPONSE SIGNATURE |
/Kevin S. Costanza/ |
SIGNATORY'S NAME |
Kevin S. Costanza |
SIGNATORY'S POSITION |
Attorney of record, Washington bar member. |
SIGNATORY'S PHONE NUMBER |
206-6224900 |
DATE SIGNED |
01/16/2015 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Jan 16 18:05:54 EST 2015 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XXX-
20150116180554367184-8626
1984-50080d1aa1896dd43425
a5af3673d6c2fea334ac362f2
a7e38c44279ede9475-CC-492
7-20150116145757291915 |
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.
86261984 CORTANA(Standard Characters, see http://uspto.report/TM/86261984/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In an Office Action issued July 17, 2014, the Examining Attorney (A) objects to the goods and services lisitings, (B) requires a claim of ownership to an existing
registration; (C) identifies requirements for adding a class; (D) identifies requirements under Section 44(e); and (E) refuses registration in Classes 9 and 42 under Section 2(d). The applicant
herein amends the application to resolve the Examining Attorney’s objections, and asserts that the application is in condition for approval.
A. Ownership of Prior Registration
The Examining Attorney requires a claim of ownership to U.S. Reg. No. 2841558. Applicant has amended the application to include such a claim. Accordingly, this issue has
been satisfied.
B. Identification of Goods and Services
The Examining Attorney objects to several clauses in the goods and services descriptions. Applicant has amended the goods and services in response to the examiner’s
comments, and believes the amended descriptions are acceptable. Applicant invites the Examining Attorney to contact the undersigned with any questions or remaining issues.
C. Requirements for Combined Application
The Examining Attorney identifies requirements should applicant add a class to the application. By this amendment, applicant adds Class 36 to the application. One
additional filing fee is submitted herewith. Applicant believes these requirements have been satisfied.
D. Section 44(e) Requirement
The Examining Attorney identifies requirements associated with registration under Section 44(e). Applicant drops Section 44(e) as a basis for registration, and will proceed
to registration based solely on Section 1(b)/1(a). Accordingly, this issue is moot.
E. Section 2(d) Refusal
The Examining Attorney refuses registration under Section 2(d) to only the goods in Class 9 and services in Class 42. Applicant thanks the examiner for considering the
application closely and finding that the application is in condition for approval under Section 2(d) with respect to all the other services listed in the application. Applicant believes the Section
2(d) refusal should be withdrawn.
Applicant’s mark CORTANA is initially refused registration based on coexisting registrations for the marks CORTINA, CORTONA and CERTONA. Applicant makes an initial comment
that the three registrations, in and of themselves, establish that a one-letter difference between three marks can have a significant enough effect in terms of appearance, sound and/or commercial
impression to prevent consumer confusion and allow the marks to be simultaneously registered. As explained below, these same types of differences are sufficient to provide for registration of
applicant’s CORTANA mark for the amended goods and services in Classes 9 and 42.
Comparison of the Marks
Although similar, applicant asserts that the differences in the marks are more than sufficient to prevent consumer confusion in connection with the goods and services as
amended. Accordingly, applicant requests that the Examining Attorney review the amendments, reconsider the issue and withdraw the refusal.
Considering the marks’ appearance, sound and commercial impression, both CORTINA and CORTONA begin with the identical prefix “Cort.” One ends with “Tina” and the other with
“Tona.” They are both registered. Similarly, applicant’s mark ends with “Tana.” Applicant’s “Tana” suffix is sufficiently different and readily distinguishable from both “Tina” and “Tona” such that
consumer confusion is not likely, especially when the goods and services are not identical or closely related. Further, both CORTONA and CERTONA end with the identical suffix “Tona.” They are both
registered. None of the cited registrations ends with the suffice “TANA.” Accordingly, although two of the cited registrations share the prefix “Cort” and two of the cited registrations share the
suffice “Tona,” none of them shares applicant’s “TANA” suffice. As summarized above, this distinction is sufficient to allow ordinary consumers to readily distinguish applicant’s goods and services
from the goods and services associated with the cited registrations.
Comparison of the Goods in Class 9 and the Services in Class 42
In comparing the goods in the original application, the Examining Attorney notes that “applicant has applied for goods broadly consisting of ‘computer software’ … and
computer services … such as ‘computer programming’ and ‘design and development of computer hardware and software’.” In its amendment, applicant has deleted the unrestricted goods and services
“computer software,” “computer programming” and “design and development of computer hardware and software.” As such, the overly broad and, arguably, overlapping goods and services have been
eliminated from the application.
With respect to CORTINA and CORTINA SYSTEMS, the registered goods are “computer software for controlling and programming semiconductor chips for use in the field of
data and telecommunications networks; computer and telecommunications hardware, namely, modules, chips and sub-systems for use in connection with data and telecommunication networks.” The
generic terms have been removed from applicant’s goods description; and the semiconductor chips, modules, sub-systems and software for controlling the same in connection with data/telecommunication
networks are not related to applicant’s amended goods and do not create any potential for confusion. Due to such differences in goods, combined with the differences in the marks themselves, the
CORTINA and CORTINA SYSTEMS registrations should be withdrawn.
With respect to CORTONA, the registration covers “Computer software for database management and data manipulation in the field of creation, optimization, visualization,
interaction, animation, collaboration, and communication of three-dimensional graphical data in either a single-user or multi-user format; computer software development tools in the field of
creation, optimization, visualization, interaction/animation, collaboration, and communication of three-dimensional graphical data in either a single-user or multi-user format; electronic
publications, recorded on computer media, about computer software in the field of creation, optimization, three-dimensional graphical data in either a single-user or multi-user format, namely
books, manuals, newsletters and magazines.” The generic terms have been removed from applicant’s goods description; and the three-dimensional graphical data and related software are not closely
related to applicant’s amended goods and do not crate any potential for confusion. Due to such differences in goods, combined with differences in the marks themselves, the CORTONA registration should
be withdrawn.
With respect to CERTONA, the Examining Attorney notes that “applicant’s identification of services uses identical language and lists broad listings that encompass the more
specific services of the registrant and is therefore viewed as essentially identical to the services of the registrant. Unrestricted and broad identifications are presumed to encompass all
services of the type described.” In particular, the examiner identifies applicant’s unrestricted ASP services, programming and software design services, and consulting services. Applicant has amended
the recitation of services to remove the unrestricted terms “computer programming” and “design and development of computer hardware and software,” remove broad “consulting services,” and narrow the
recitation to clarify that such services are assisting others in the use and operation of their electronic devices. These differences in services, combined with the fact that applicant’s mark shares
neither the “Cert” prefix nor the “Tona” suffix with the registered mark, will prevent a likelihood of confusion. As such, the CERTONA registration should be withdrawn.
F. Conclusion
As explained above, applicant asserts that the amendments made with this submission resolve each of the outstanding objections and rejections, and respectfully requests that
the Examining Attorney reconsider the application and approve the mark for publication. If questions remain, the Examining Attorney is invited to contact Applicant’s
counsel, Kevin S. Costanza by email at KevinC.Docketing@SeedIP.com or by telephone at (206) 622-4900.
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
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[ South Africa application number 2014/02321 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Computer software;
Computer software to assist a user in operating a computerized handheld
device;
computer software for initiating and receiving telephone calls, and for accessing, storing, retrieving, managing, processing and using
information;
computer software for voice recognition, processing voice commands and converting between speech and text;
computer software for creating, sending, receiving and managing voicemail and email;
computer software for scheduling and managing appointments,
reminders, events and calendar entries on an electronic calendar;
computer software for operating audio-visual information;
computer software for processing and managing mapping and directional information;
computer software for use in note-taking, namely, computer software
for recording and organizing audio information in electronic form;
computer software for personal information management;
computer software for organizing and accessing phone numbers, addresses, and other personal contact information;
computer software for accessing,
browsing and searching online databases;
computer software for providing consumer resources for searching, locating, rating, evaluating and providing
directions for the purchase, consumption and use of a wide range of consumer products, services, and information over a global communications network and using any connected access mode in any
format, namely mobile communication devices, desktop internet, email, voice or social media channels;
computer software for global positioning and for
providing travel directions;
computer software for enabling hands-free use of a mobile phone through voice recognition;
computer software for making travel arrangements;
computer software to assist in making reservations at hotels and restaurantsClass 009 for
Computer software to assist a user in operating a computerized handheld device; computer software for initiating and receiving telephone calls, and for accessing, storing, retrieving, managing,
processing and using information; computer software for voice recognition, processing voice commands and converting between speech and text; computer software for creating, sending, receiving and
managing voicemail and email; computer software for scheduling and managing appointments, reminders, events and calendar entries on an electronic calendar; computer software for operating
audio-visual information; computer software for processing and managing mapping and directional information; computer software for use in note-taking, namely, computer software for recording and
organizing audio information in electronic form; computer software for personal information management; computer software for organizing and accessing phone numbers, addresses, and other personal
contact information; computer software for accessing, browsing and searching online databases; computer software for providing consumer resources for searching, locating, rating, evaluating and
providing directions for the purchase, consumption and use of a wide range of consumer products, services, and information over a global communications network and using any connected access mode in
any format, namely mobile communication devices, desktop internet, email, voice or social media channels; computer software for global positioning and for providing travel directions; computer
software for enabling hands-free use of a mobile phone through voice recognition; computer software for making travel arrangements; computer software to assist in making reservations at hotels and
restaurants
Deleted Filing Basis: 44(d)
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 proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising, marketing, and promotion services; advertising and marketing services, namely, promoting the goods and services of others; design, creation, preparation,
production, and dissemination of advertisements and advertising material for others; computerized database and file management; data processing services; creating indexes of information, sites and
other resources available on global computer networks and other electronic and communications networks for others; promoting the goods and services of others by providing, searching, browsing and
retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others; promoting the goods and services of others by
organizing content of business information provided over a global computer network and other electronic and communications networks according to user preferences; providing business, consumer
product, and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety
of products and services of others; promoting the goods and services of others by compiling business and commercial information directories for publishing on the Internet and other electronic,
computer and communications networks; retail store and online retail store services featuring a wide variety of consumer goods of others; retail store and online retail store services featuring
computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other consumer electronics, computer software, and
accessories, peripherals, and carrying cases for such products; providing consumer product information for the purpose of selecting general consumer merchandise to meet the consumer's specifications;
providing retail store and prepaid subscription services featuring downloadable; providing information via voice or text controlled inquiries
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[ South Africa application number 2014/02322 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Advertising, marketing, and promotion services;
advertising and marketing services, namely, promoting the goods and
services of others;
design, creation, preparation, production, and dissemination of advertisements and advertising material for others;
computerized database and file management;
data processing services;
creating indexes of information, sites and other
resources available on global computer networks and other electronic and communications networks for others;
promoting the goods and services of others by providing,
searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others;
promoting the goods and services of others by organizing content of business information provided over a global computer network and other electronic and communications networks according to
user preferences;
providing business, consumer product, and commercial information over computer networks and global communication networks;
business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others;
promoting the goods
and services of others by compiling business and commercial information directories for publishing on the Internet and other electronic, computer and communications networks;
retail store and online retail store services featuring a wide variety of consumer goods of others;
retail store and online retail store services featuring
computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other consumer electronics, computer software, and
accessories, peripherals, and carrying cases for such products;
providing consumer product information for the purpose of selecting general consumer merchandise to meet
the consumer's specifications;
providing retail store and prepaid subscription services featuring downloadable, pre-recorded text, data, image, audio, video,
and multimedia files, provided via the internet and other electronic and communications networks;
providing retail store and prepaid subscription services
featuring downloadable;
compiling of information into computer databases, namely, compiling of internet based information and providing such information in
response to voice or text controlled inquiries;
providing information via voice or text controlled inquiriesClass 035 for Advertising, marketing, and
promotion services; advertising and marketing services, namely, promoting the goods and services of others; design, creation, preparation, production, and dissemination of advertisements and
advertising material for others; computerized database and file management; data processing services; promoting the goods and services of others by providing, searching, browsing and retrieving
information, sites, and other resources available on global computer networks and other electronic and communications networks for others; promoting the goods and services of others by organizing
content of business information provided over a global computer network and other electronic and communications networks according to user preferences; providing business, consumer product, and
commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products
and services of others; promoting the goods and services of others by compiling business and commercial information directories for publishing on the Internet and other electronic, computer and
communications networks; retail store and online retail store services featuring a wide variety of consumer goods of others; retail store and online retail store services featuring computer,
electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other consumer electronics, computer software, and accessories,
peripherals, and carrying cases for such products; providing consumer product information for the purpose of selecting general consumer merchandise to meet the consumer's specifications; providing
retail store and prepaid subscription services featuring downloadable, pre-recorded text, data, image, audio, video, and multimedia files, provided via the internet and other electronic and
communications networks; compiling of information into computer databases, namely, compiling of internet based information and providing such information in response to voice or text controlled
inquiries
Deleted Filing Basis: 44(d)
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 proposes to amend the following class of goods/services in the application:
Current: Class 038 for Communication and telecommunication services, namely, electronic transmission and retrieval of data, images, audio, video and documents, including text, messages, and
electronic mail, over local or global communications networks, including the internet, intranets, extranets, mobile communication, cellular and satellite networks; telecommunication access services;
communications by computer terminals; communication between computer terminals; delivery of digital music by telecommunications; electronic transmission of streamed and downloadable audio and video
files via computer and other communications networks; delivery of messages by electronic transmission; electronic mail services; streaming of video materials via a global computer network; electronic
transmission of audio and video files via communications networks; information, advisory and consultancy services relating to all the aforesaid
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[ South Africa application number 2014/02323 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed: Class 038 for Communication and telecommunication services, namely, electronic transmission and retrieval of data, images, audio, video and documents, including text, messages, and
electronic mail, over local or global communications networks, including the internet, intranets, extranets, mobile communication, cellular and satellite networks; telecommunication access services;
communications by computer terminals; communication between computer terminals; delivery of digital music by telecommunications; electronic transmission of streamed and downloadable audio and video
files via computer and other communications networks; delivery of messages by electronic transmission; electronic mail services; streaming of video materials via a global computer network; electronic
transmission of audio and video files via communications networks; information, advisory and consultancy services relating to all the aforesaid
Deleted Filing Basis: 44(d)
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 proposes to amend the following class of goods/services in the application:
Current: Class 039 for Physical storage of electronic data, text, images, audio, and video; providing information and consultation services regarding the physical storage of electronic data,
text, images, audio, and video; providing consultation services regarding the physical storage of electronic data, text, audio, and video; transportation reservation and travel ticket reservation
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.
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[ South Africa application number 2014/02324 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed: Class 039 for Physical storage of electronic data, text, images, audio, and video; providing information and consultation services regarding the physical storage of electronic data,
text, images, audio, and video; providing consultation services regarding the physical storage of electronic data, text, audio, and video; transportation reservation and travel ticket reservation
services
Deleted Filing Basis: 44(d)
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 proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing information, news and commentary in the fields of entertainment, popular culture, recreation and leisure activities, sports and sporting events, educational
services, concerts, cultural events, and live theatrical productions; providing information relating to the organizing of educational, cultural, sporting, and entertainment exhibitions, and
community, sporting and cultural activities, contests and games; providing non-downloadable audio publications over computer networks, namely, books, periodicals, and reports on the subjects of
education, entertainment, popular culture, recreation and leisure activities, sports and sporting events, technology, concerts, cultural events, and live theatrical productions; providing advice and
information in the field of educational and entertainment activities and events for children; educational services, namely, providing online instruction in the fields of elementary, secondary, and
university-level subjects; providing classes, workshops, and instruction in using voice-enabled software applications; providing non-downloadable prerecorded music
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[ South Africa application number 2014/02325 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed: Class 041 for Providing information, news and commentary in the fields of entertainment, popular culture, recreation and leisure activities, sports and sporting events, educational
services, concerts, cultural events, and live theatrical productions; providing information relating to the organizing of educational, cultural, sporting, and entertainment exhibitions, and
community, sporting and cultural activities, contests and games; providing non-downloadable audio publications over computer networks, namely, books, periodicals, and reports on the subjects of
education, entertainment, popular culture, recreation and leisure activities, sports and sporting events, technology, concerts, cultural events, and live theatrical productions; providing advice and
information in the field of educational and entertainment activities and events for children; educational services, namely, providing online instruction in the fields of elementary, secondary, and
university-level subjects; providing classes, workshops, and instruction in using voice-enabled software applications; providing non-downloadable prerecorded music
Deleted Filing Basis: 44(d)
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 proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer programming; design and development of computer hardware and software; design, development and maintenance of proprietary computer software in the field of
natural language, speech, speaker, language, voice recognition, and voice-print recognition; consulting services related to the implementation, use and operation of computer hardware, computer
software, and consumer electronics for others; technical support services, namely, troubleshooting of computer software problems; technical support and consultation services for developing computer
systems, databases and applications; providing information in the fields of computer hardware and software development; application service provider (ASP) services featuring hosting computer software
applications of others. application service provider (ASP) services featuring computer software and providing online non-downloadable software, namely, computer software for creating, authoring,
distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content,
and electronic publications, computer software for personal information management, database management software, database synchronization software, character recognition software, voice recognition
software, speech to text conversion software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software, computer software for accessing, browsing and
searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a
personal computer or a server, computer software used to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling
appointments, reminders, and events on an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal contact information, computer
software for global positioning and for providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer software for making travel
arrangements, computer software for making reservations at hotels and restaurants, and computer game software; providing search engines for obtaining data via the internet and other electronic
communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; providing information, news and commentary in the field of
computer and information technology. providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the Internet; information,
advisory and consultancy services relating to all the aforesaid; providing weather information
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[ South Africa application number 2014/02326 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Computer programming;
Design, development and maintenance of proprietary computer software in the field of
natural language, speech, speaker, language, voice recognition, and voice-print recognition;
design and development of computer hardware and software;
computer services, namely, assisting others with the implementation, use and operation of computer hardware, computer software, and consumer electronics;
technical support services, namely, troubleshooting of computer software problems;
consulting services related to the implementation, use
and operation of computer hardware, computer software, and consumer electronics for others;
computer services, namely, providing assistance in developing
computer systems, databases and applications;
providing information in the fields of computer hardware and software development;
technical support and consultation services for developing computer systems, databases and applications;
application service provider (ASP) services
featuring hosting computer software applications of others;
application service provider (ASP) services featuring computer software and providing online
non-downloadable software, namely, computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing
and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer software for personal information management, database management software, database
synchronization software, character recognition software, voice recognition software, speech to text conversion software, voice-enabled software applications, electronic mail and messaging software,
mobile telephone software, computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or
more electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice
commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on an electronic calendar, computer software for storing, organizing, and accessing
phone numbers, addresses, and other personal contact information, computer software for global positioning and for providing travel directions, computer software for enabling hands-free use of a
mobile phone through voice recognition, computer software for making travel arrangements, computer software to assist in making reservations at hotels and restaurants, and computer game
software;
application service provider (ASP) services featuring hosting computer software applications of others. application service provider (ASP) services
featuring computer software and providing online non-downloadable software, namely, computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing,
extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer software for personal
information management, database management software, database synchronization software, character recognition software, voice recognition software, speech to text conversion software, voice-enabled
software applications, electronic mail and messaging software, mobile telephone software, computer software for accessing, browsing and searching online databases, computer software for the
redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used
to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on an electronic
calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal contact information, computer software for global positioning and for providing travel
directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer software for making travel arrangements, computer software for making reservations at
hotels and restaurants, and computer game software;
providing search engines for obtaining data via the internet and other electronic communications networks;
creating indexes of online information, sites and other resources available on global computer networks for others;
providing
information, news and commentary in the field of computer and information technology;
providing information, news and commentary in the field of computer and
information technology. providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the Internet;
providing customized computer searching services, namely, searching and retrieving information at the user's specific request via the Internet;
information,
advisory and consultancy services relating to all the aforesaid;
providing weather informationClass 042 for Design, development and maintenance of proprietary
computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; computer services, namely, assisting others with the implementation, use
and operation of computer hardware, computer software, and consumer electronics; technical support services, namely, troubleshooting of computer software problems; computer services, namely,
providing assistance in developing computer systems, databases and applications; providing information in the fields of computer hardware and software development; application service provider (ASP)
services featuring hosting computer software applications of others; application service provider (ASP) services featuring computer software and providing online non-downloadable software, namely,
computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics,
images, audio, video, and multimedia content, and electronic publications, computer software for personal information management, database management software, database synchronization software,
character recognition software, voice recognition software, speech to text conversion software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software,
computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld
devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice commands, computer software for
dictation, computer software for scheduling appointments, reminders, and events on an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other
personal contact information, computer software for global positioning and for providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition,
computer software for making travel arrangements, computer software to assist in making reservations at hotels and restaurants, and computer game software; providing search engines for obtaining data
via the internet and other electronic communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; providing
information, news and commentary in the field of computer and information technology; providing customized computer searching services, namely, searching and retrieving information at the user's
specific request via the Internet; information, advisory and consultancy services relating to all the aforesaid; providing weather information
Deleted Filing Basis: 44(d)
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 proposes to amend the following class of goods/services in the application:
Current: Class 043 for Hotel reservation services; restaurant reservation services; travel agency services, namely, making reservations and booking for temporary lodging; sommelier services,
namely, providing information on wine; providing information, advice, news, reviews, and commentary in the fields of dining, hotels, and temporary accommodations for travelers
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[ South Africa application number 2014/02327 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed: Class 043 for Hotel reservation services; restaurant reservation services; travel agency services, namely, making reservations and booking for temporary lodging; sommelier services,
namely, providing information on wine; providing information, advice, news, reviews, and commentary in the fields of dining, hotels, and temporary accommodations for travelers
Deleted Filing Basis: 44(d)
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 proposes to amend the following class of goods/services in the application:
Current: Class 045 for Personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual
needs, rendered online; online social networking 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.
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[ South Africa application number 2014/02328 filed 01/30/2014]. 15
U.S.C.Section 1126(d), as amended.
Proposed: Class 045 for Personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual
needs, rendered online; online social networking services
Deleted Filing Basis: 44(d)
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 036 for Providing stock market information via voice or text controlled inquiries
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.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 2841558.
FEE(S)
Fee(s) in the amount of $325 is being submitted.
SIGNATURE(S)
Declaration Signature
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false
statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or amendment to
allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this
submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the signatory
additionally believes that: the applicant is the owner of the trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in
commerce and has been using the mark in commerce as of the filing date of the application or AAU on or in connection with the goods/services in the application or AAU, and such use by the applicant's
related company or licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in
connection with the goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other person has the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the signatory
additionally believes that: the applicant is entitled to use the mark in commerce; the applicant has a bona fide intention and has had a bona fide intention as of the application filing date to use
or use through the applicant's related company or licensee the mark in commerce on or in connection with the goods/services in the application; and to the best of the signatory's knowledge and
belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of
such other person, to cause confusion or mistake, or to deceive.
Signature: /Kevin S. Costanza/ Date: 01/16/2015
Signatory's Name: Kevin S. Costanza
Signatory's Position: Attorney for Applicant, Washington State Bar Member
Signatory's Phone Number: 206-622-4900
Response Signature
Signature: /Kevin S. Costanza/ Date: 01/16/2015
Signatory's Name: Kevin S. Costanza
Signatory's Position: Attorney of record, Washington bar member.
Signatory's Phone Number: 206-6224900
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: 86261984
RAM Accounting Date: 01/20/2015
Serial Number: 86261984
Internet Transmission Date: Fri Jan 16 18:05:54 EST 2015
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201501161805543
67184-86261984-50080d1aa1896dd43425a5af3
673d6c2fea334ac362f2a7e38c44279ede9475-C
C-4927-20150116145757291915