Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

---

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86929886 GOOGLE (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86929886/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 038 for computer services, namely, providing a voice-controlled search engine for obtaining data, images, audio and video via a global computer network, namely, providing the following: satellite imagery, street maps, real-time traffic conditions, and route planning information, weather information, business and financial information; information, news and commentary in the fields of entertainment, cultural events, sporting events, popular culture, educational activities and events, recreational events, and technology; music, electronic books, and video clips, language translations, local business location information and recommendations, food and restaurant information; provision of Internet search engines; non-downloadable computer software used to provide voice-controlled information and communications; providing personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, all provided by voice-controlled inquiries via a mobile phone, computer, tablet, or other electronic communication device, namely, adding and accessing calendar appointments, alarms, timers, reminders; and making restaurant, travel, and hotel reservations; online social networking services

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer software used for the control of voice controlled information and communication devices; voice recognition software; computer software for accessing and searching online databases and websites; software for searching a user's mobile phone, computer, tablet, or other electronic communication device for documents, files, and other stored 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.

Proposed:
Tracked Text Description: computer software used for the control of voice controlled information and communication devices; voice recognition software; computer software for accessing and searching online databases and websites; software for searching a user's mobile phone, computer, tablet, or other electronic communication device for documents, files, and other stored information; software for searching a user's mobile phone, computer, tablet computer, or other electronic communication device for documents, files, and other stored information; providing online downloadable music; providing online downloadable electronic books in the fields of arts, photography, biographies, memoirs, children's books, history, literature, fiction, mystery, suspense, romance, science-fiction, fantasy, teen, and young adult; providing online downloadable videos in the field of action, adventure, drama, exercise, fitness, comedy, children, family, fantasy, documentaries and science-fictionClass 009 for computer software used for the control of voice controlled information and communication devices; voice recognition software; computer software for accessing and searching online databases and websites; software for searching a user's mobile phone, computer, tablet computer, or other electronic communication device for documents, files, and other stored information; providing online downloadable music; providing online downloadable electronic books in the fields of arts, photography, biographies, memoirs, children's books, history, literature, fiction, mystery, suspense, romance, science-fiction, fantasy, teen, and young adult; providing online downloadable videos in the field of action, adventure, drama, exercise, fitness, comedy, children, family, fantasy, documentaries and science-fiction
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 035 for providing on-line consumer information concerning local business location information for business purposes; providing a web site featuring recommendations on products and services for commercial purposes posted by users; providing consumer product and service information relating to food or drink products and restaurants
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 039 for travel transportation reservation 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for providing information, news and commentary in the fields of entertainment, cultural events, sporting events, popular culture, educational activities and events, recreation activities; providing on-line music, not downloadable; providing online non-downloadable electronic books in the fields of arts, photography, biographies, memoirs, children's books, history, literature, fiction, mystery, suspense, romance, science-fiction, fantasy, teen, and young adult, and providing a website featuring non-downloadable videos in the field of action, adventure, drama, exercise, fitness, comedy, children, family, fantasy, documentaries and science-fiction, language translations
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 computer services, namely, providing a website featuring a voice-controlled search engine for obtaining data, images, audio and video via a global computer network in the nature of satellite imagery, street maps, real-time traffic conditions, and route planning information, weather information, business and financial information; providing technology information in the fields of wearable technology products, mobile phones, computers, computer software, computer hardware, telecommunications, virtual reality, cloud computing, energy, and robotics; provision of Internet search engines; providing temporary use of non-downloadable computer software used to provide voice-controlled information and communications
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 043 for making restaurant and hotel reservations
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 providing personal concierge services for others comprising making requested personal arrangements and reservations and providing customer-specific information to meet individual needs, all provided by voice-controlled inquiries via a mobile phone, computer, tablet computer, or other electronic communication device, namely, adding and accessing calendar appointments, alarms, timers, reminders; online social networking 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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a motion mark in color. The nature of the motion is that of the word "Google" appearing from left to right, by letter, respectively in blue, red, yellow, blue, green and red which dissolves into four small solid colored circles of, from left to right, blue, red, yellow and green which slightly undulate then dissolve into four short vertical lines of differing lengths which are, from left to right, blue, red, yellow and green, forming the image of an equalizer. The vertical lines dissolve back into four small solid colored circles of, from left to right, blue, red, yellow and green which sharply bounce and come to a rest, ending the animation.

FEE(S)
Fee(s) in the amount of $1650 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: /Monique E. Liburd/      Date: 08/22/2016
Signatory's Name: Monique E. Liburd
Signatory's Position: Trademark Counsel, District of Columbia bar member
Signatory's Phone Number: 6502530000


Response Signature
Signature: /Monique E. Liburd/     Date: 08/22/2016
Signatory's Name: Monique E. Liburd
Signatory's Position: Attorney of record, District of Columbia bar member.

Signatory's Phone Number: 6502530000

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.

        
RAM Sale Number: 86929886
RAM Accounting Date: 08/23/2016
        
Serial Number: 86929886
Internet Transmission Date: Tue Aug 23 13:33:23 EDT 2016
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2016082313332367
8785-86929886-550f05cede3f45f470408e4a2e
72fcb9d5e45c5fb387956cfe167d9db5ce2ac-DA
-11416-20160822170003823659