Response to Office Action

PTO Form 1957 (Rev 9/2005)

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

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PTO Form 1957 (Rev 9/2005)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86425996 AMAZON (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86425996/large) has been amended as follows:

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

Applicant respectfully requests reconsideration of the 2(d) refusal based on US. Reg. No. 2264038 in light of the ID amendments submitted herewith.  Applicant elects to defer arguments in regard to the prior-filed applications the Examining Attorney has identified.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising services, namely, dissemination of advertising for others via an on-line electronic communications network; marketing services; retail store services; online retail store services; providing consumer product information via the Internet or other communications networks; computerized processing of on-line purchase orders; compilation of business information into searchable databases available via a global computer network; compilation of advertising information featuring the goods and services of other on-line vendors, into an on-line advertising guide; providing an on-line commercial information directory; providing a searchable on-line advertising guide featuring the goods and services of others; on-line ordering services; customer loyalty program services; customer loyalty program services featuring rewards in the form of discounted shipping services; administration of a discount program; retail services, namely, administration of a discount program for enabling participants to obtain discounts on shipping services through use of a discount membership program and variable rate shipping program; Advertising; Business management; Business administration; Office functions; Business intermediary services for the sale and purchase of goods and services; Classified advertising services; Mail order sales; Retail sale services provided by means of a global computer network; Sales promotion for others; Business information services; Retail department stores; Retail on-line department stores; retail online services; Retail convenience stores; Retail on-line convenience stores; Computerized on-line ordering featuring general merchandise, consumables and household goods, and general consumer goods; Providing an on-line commercial information directory; Providing a searchable database in the field of business information available via a global computer network; Providing a searchable on-line advertising guide featuring the goods and services of other on-line vendors; Database management services; Computer services, namely, providing directories for contact information for people, places, and organizations; database services to enable others to conveniently view and services from a website; Data storage and retrieval services for transmitting, displaying and storing transaction, identification and financial information; On-line retail and wholesale distributorship services featuring general merchandise, consumables and household goods, and general consumer goods; Automated and computerized trading services; On-line trading services; Information services, namely, providing information about retail products to customers; Online business and commercial information services; online business information services, namely analyzing an individual's preferences and providing product reviews and recommendations; automated and computerized trading of goods and services for others provided over a global communication information network; computer consultancy; e-commerce services; website hosting; sales and auction services relating to a wide range of consumer goods; product maintenance and extended guarantee services; Subscriptions to books, reviews, or comic books; advertising services, namely, promoting the goods and services of others; providing a searchable on-line database featuring screenplays, music, movies, television shows, multimedia presentations, computer software, audio files, comic books, and publications; consultancy in the field of entertainment and the entertainment industry; market research and information services; compiling of information into computer databases; market research and business marketing information services, namely, facilitating sharing of relevant information about entertainment and the entertainment industry; Retail store services featuring electronic games, computer games, video games, electronic game software, computer game software, and video game software; Online retail store services featuring streamed and downloadable pre-recorded electronic games; Advertising services, namely, dissemination of advertising for others via an on-line electronic communications network and providing an on-line commercial information directory for electronic game enthusiasts; -advertising and promotional services for others; managing and tracking credit card, debit card, gift card, pre-paid card, deferred payment card, and other forms of payment transactions for business purposes; issuing and providing receipts for electronic payments and payment transactions; providing a web-based system and online portals in the field of consumer-to-business commerce; business information management, namely, electronic reporting of business information; business analytics, namely, information and analytics regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for others
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/25/2000 and first used in commerce at least as early as 01/25/2000 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Advertising services, namely, dissemination of advertising for others via an on-line electronic communications network; Retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; marketing services; online retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; retail store services; providing consumer product information via the Internet or other communications networks; online retail store services; computerized electronic processing of on-line purchase orders; compilation of business information into searchable computer databases available via a global computer network; computerized processing of on-line purchase orders; providing an on-line commercial information directory on the Internet; compilation of business information into searchable databases available via a global computer network; administration of customer loyalty program services which enable participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; compilation of advertising information featuring the goods and services of other on-line vendors, into an on-line advertising guide; customer loyalty program services featuring rewards in the form of discounted shipping services; providing an on-line commercial information directory; administration of a discount program enabling participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; providing a searchable on-line advertising guide featuring the goods and services of others; retail services, namely, administration of a discount program for enabling participants to obtain discounts on shipping services through use of a discount membership program and variable rate shipping program; on-line ordering services; Business management; customer loyalty program services; Business administration; Providing office functions; administration of a discount program; Business intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods, and/or services; Sales promotion for others; Advertising; Business information services; Retail department stores; Retail on-line department stores; Office functions; Retail convenience stores; Business intermediary services for the sale and purchase of goods and services; Retail on-line convenience stores; Classified advertising services; Computerized on-line ordering featuring general consumer merchandise, consumables and household goods, and general consumer goods; Mail order sales; Providing a searchable database in the field of business information available via a global computer network. Database management services; Retail sale services provided by means of a global computer network; Computer services, namely, providing online directories for contact information for people, places, and organizations; online searchable database services to enable others to conveniently view local home services providers from a website; On-line retail and wholesale distributorship services featuring general consumer merchandise, consumables and household goods, and general consumer goods; On-line trading services, namely operating on-line marketplaces for sellers and buyers of goods and/or services; Information services, namely, providing information about retail products to customers; retail online services; Online business and commercial information services; online business information services, namely analyzing an individual's preferences and providing product reviews and recommendations; Automated and computerized trading of goods and services for others provided over a global communication information network, namely operating on-line marketplaces for sellers and buyers of goods and/or services; Computerized on-line ordering featuring general merchandise, consumables and household goods, and general consumer goods; e-commerce services, namely, providing information about products via telecommunication networks for sales purposes; Providing an on-line commercial information directory; sales promotion and auction services relating to a wide range of consumer goods; Providing a searchable database in the field of business information available via a global computer network; Product maintenance, namely, arranging for others the replacement of consumer goods; Providing a searchable on-line advertising guide featuring the goods and services of other on-line vendors; Subscriptions to books, reviews, or comic books; Database management services; market research and market research information services; Computer services, namely, providing directories for contact information for people, places, and organizations; compiling of information into computer databases; database services to enable others to conveniently view and services from a website; market research and business marketing information services, namely, facilitating sharing of relevant information about entertainment and the entertainment industry; Data storage and retrieval services for transmitting, displaying and storing transaction, identification and financial information; Retail store services featuring electronic games, computer games, video games, electronic game software, computer game software, and video game software; On-line retail and wholesale distributorship services featuring general merchandise, consumables and household goods, and general consumer goods; Online retail store services featuring streamed and downloadable pre-recorded electronic games; Automated and computerized trading services; providing a web-based system and online portals in the field of consumer-to-business commerce for consumers to enter, manage and modify a payment and delivery profile and for sellers to enter, manage and modify their product listings; On-line trading services; business information management, namely, electronic reporting of business information; business data analytics services regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing business and financial reports for others regarding the sale of products and services of others; automated and computerized trading of goods and services for others provided over a global communication information network; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; computer consultancy; electronic processing of orders for others; e-commerce services; website hosting; sales and auction services relating to a wide range of consumer goods; product maintenance and extended guarantee services; advertising services, namely, promoting the goods and services of others; providing a searchable on-line database featuring screenplays, music, movies, television shows, multimedia presentations, computer software, audio files, comic books, and publications; consultancy in the field of entertainment and the entertainment industry; market research and information services; Advertising services, namely, dissemination of advertising for others via an on-line electronic communications network and providing an on-line commercial information directory for electronic game enthusiasts; -advertising and promotional services for others; managing and tracking credit card, debit card, gift card, pre-paid card, deferred payment card, and other forms of payment transactions for business purposes; issuing and providing receipts for electronic payments and payment transactions; providing a web-based system and online portals in the field of consumer-to-business commerce; business analytics, namely, information and analytics regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparing reports for others regarding the sale of products and services of othersClass 035 for Retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; online retail store services featuring electronics, computer hardware, e-readers, tablets, phones, set-top boxes, cameras, home automation products, office supplies, CD's, DVD's, computer software, books, automotive and industrial supplies, jewelry, clothing, shoes, games, toys, sporting goods, tools, home and garden supplies, baby goods, beauty and health supplies, groceries, pet supplies, art, art and craft supplies, home furnishings, bedding and bath supplies, lighting fixtures, kitchen and bath fixtures and a wide variety of consumer goods; providing consumer product information via the Internet or other communications networks; computerized electronic processing of on-line purchase orders; compilation of business information into searchable computer databases available via a global computer network; providing an on-line commercial information directory on the Internet; administration of customer loyalty program services which enable participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; customer loyalty program services featuring rewards in the form of discounted shipping services; administration of a discount program enabling participants to obtain discounts on goods and services, discounted shipping, expedited shipping and early access to sales events; retail services, namely, administration of a discount program for enabling participants to obtain discounts on shipping services through use of a discount membership program and variable rate shipping program; Business management; Business administration; Providing office functions; Business intermediary services for the sale and purchase of goods and services, namely, facilitating transactions between buyers and sellers through providing buyers with information about sellers, goods, and/or services; Sales promotion for others; Business information services; Retail department stores; Retail on-line department stores; Retail convenience stores; Retail on-line convenience stores; Computerized on-line ordering featuring general consumer merchandise, consumables and household goods, and general consumer goods; Providing a searchable database in the field of business information available via a global computer network. Database management services; Computer services, namely, providing online directories for contact information for people, places, and organizations; online searchable database services to enable others to conveniently view local home services providers from a website; On-line retail and wholesale distributorship services featuring general consumer merchandise, consumables and household goods, and general consumer goods; On-line trading services, namely operating on-line marketplaces for sellers and buyers of goods and/or services; Information services, namely, providing information about retail products to customers; Online business and commercial information services; online business information services, namely analyzing an individual's preferences and providing product reviews and recommendations; Automated and computerized trading of goods and services for others provided over a global communication information network, namely operating on-line marketplaces for sellers and buyers of goods and/or services; e-commerce services, namely, providing information about products via telecommunication networks for sales purposes; sales promotion and auction services relating to a wide range of consumer goods; Product maintenance, namely, arranging for others the replacement of consumer goods; Subscriptions to books, reviews, or comic books; market research and market research information services; compiling of information into computer databases; market research and business marketing information services, namely, facilitating sharing of relevant information about entertainment and the entertainment industry; Retail store services featuring electronic games, computer games, video games, electronic game software, computer game software, and video game software; Online retail store services featuring streamed and downloadable pre-recorded electronic games; providing a web-based system and online portals in the field of consumer-to-business commerce for consumers to enter, manage and modify a payment and delivery profile and for sellers to enter, manage and modify their product listings; business information management, namely, electronic reporting of business information; business data analytics services regarding the sale of products and services of others, and regarding the authenticating, processing and management of mobile payments; preparation of business reports; preparing business and financial reports for others regarding the sale of products and services of others; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication and tracking; electronic processing of orders for others
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/25/2000 and first used in commerce at least as early as 01/25/2000 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 036 for E-commerce services, namely, credit card and payment card services and payment transaction processing services; payment processing services, namely, managing and tracking credit card, debit card, gift card, pre-paid card, deferred payment card, and other forms of payment transactions for business purposes; payment processing services, namely, issuing and providing receipts for electronic payments and payment transactions
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Providing a searchable on-line database featuring screenplays, music, movies, television shows, comic books, and publications
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 042 for Electronic data storage and retrieval services for transmitting, displaying and storing transaction, identification and financial information; providing a searchable on-line database featuring computer software and audio files
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 045 for E-commerce services, namely, providing user authentication services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
James F. Struthers of Richard Law Group, having an address of
8411 Preston Rd., Ste 890 Dallas, Texas 75225
United States
clarissa@richardlawgroup.com
214 206-4300
214 206-4330
The attorney docket/reference number is TMKM4704 AMZN-0499 .
The Other Appointed Attorney(s): Molly Buck Richard, David J. Diamond.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
AMAZON TECHNOLOGIES, INC.
AMAZON TECHNOLOGIES, INC.
PO BOX 8102
RENO
Nevada (NV)
US
89507-8102

Proposed:
James F. Struthers of Richard Law Group, having an address of
8411 Preston Rd., Ste 890 Dallas, Texas 75225
United States
clarissa@richardlawgroup.com;jim@richardlawgroup.com;docket@amazon.com
214 206-4300
214 206-4330
The docket/reference number is TMKM4704 AMZN-0499 .



FEE(S)
Fee(s) in the amount of $1300 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. § 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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have 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/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /aimee mahan/      Date: 07/30/2015
Signatory's Name: Aimee Mahan
Signatory's Position: Assistant Secretary

Response Signature
Signature: /James F. Struthers/     Date: 07/30/2015
Signatory's Name: James F. Struthers
Signatory's Position: Attorney of Record, TX Bar Member

Signatory's Phone Number: 214 206-4300

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

Mailing Address:    James F. Struthers
   Richard Law Group
   8411 Preston Rd., Ste 890
   Dallas, Texas 75225
        
RAM Sale Number: 86425996
RAM Accounting Date: 07/31/2015
        
Serial Number: 86425996
Internet Transmission Date: Thu Jul 30 15:21:04 EDT 2015
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2015073015210466
0121-86425996-5408bf2988f5aa9ce4615474f4
a355855cd426b7e978a1b6c3e5d323a2ecfe7e4-
CC-1785-20150730142858030707