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)

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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. 86804170 WHATSAPP(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86804170/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; SIM cards; Computer software; Computer hardware; Downloadable software in the nature of a mobile application; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Downloadable e-commerce computer software to allow users to perform electronic business transactions via a global computer and communication networks; Computer software for personal information management, and data synchronization software; Computer software development tools; Computer software for use as an application programming interface (API)
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: Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; SIM cards; Computer software; Computer hardware; Downloadable software in the nature of a messaging application; Downloadable software in the nature of a mobile application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Downloadable e-commerce computer software to allow users to perform electronic business transactions via a global computer and communication networks; Computer software for personal information management, and data synchronization software; Computer software development tools; Computer software for use as an application programming interface (API)Class 009 for Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; SIM cards; Computer hardware; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; Downloadable e-commerce computer software to allow users to perform electronic business transactions via a global computer and communication networks; Computer software for personal information management, and data synchronization software; Computer software development tools; Computer software for use as an application programming interface (API)
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 Telecommunication services, namely, data transmission and reception services via telecommunication networks; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Telecommunication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Audio, text and video broadcasting services over computer or other communication networks; Providing online forums for communication on topics of general interest; Providing online communications links that transfer mobile device and Internet users to other local and global online locations
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: Telecommunication services, namely, data transmission and reception services via telecommunication networks; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Telecommunication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Audio, text and video broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Audio, text and video broadcasting services over computer or other communication networks; Providing online forums for communication on topics of general interest; Providing online communications links that transfer mobile device and Internet users to other local and global online locationsClass 038 for Telecommunication services, namely, data transmission and reception services via telecommunication networks; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Audio, text and video broadcasting services over computer or other communication networks, namely, uploading, posting, displaying, modifying, tagging, and electronically transmitting data, information, audio and video; Providing online forums for communication on topics of general interest; Providing online communications links that transfer mobile device and Internet users to other local and global online locations
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 Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for interactive discussions via communication networks; Providing online non-downloadable software; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP); Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identity data with and among multiple online facilities; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via global computer network; Computer services, in particular, application service provider featuring application programming interface (API) software to allow users to perform electronic business transactions via a global computer network; Software as a service (SAAS) services featuring software for sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network
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: Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for interactive discussions via communication networks; Providing online non-downloadable software; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP); Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identity data with and among multiple online facilities; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via global computer network; Computer services, in particular, application service provider featuring application programming interface (API) software to allow users to perform electronic business transactions via a global computer network; Software as a service (SAAS) services featuring software for sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer networkClass 042 for Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for interactive discussions via communication networks; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing an online network service that enables users to transfer personal identity data to and share personal identity data with and among multiple online facilities; Providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via global computer network; Computer services, in particular, application service provider featuring application programming interface (API) software to allow users to perform electronic business transactions via a global computer network; Software as a service (SAAS) services featuring software for sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network
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 Online social networking services; Identification verification services, namely, providing authentication of personal identification information; Social introduction and networking services; User verification services; Identification verification 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.

Proposed:
Tracked Text Description: Online social networking services; Identification verification services, namely, providing authentication of personal identification information; Social introduction and networking services; User verification services; User verification services, namely, providing authentication of company and personal identification information; Identification verification services; Identification verification services, namely, providing authentication of company identification informationClass 045 for Online social networking services; Identification verification services, namely, providing authentication of personal identification information; Social introduction and networking services; User verification services, namely, providing authentication of company and personal identification information; Identification verification services, namely, providing authentication of company identification information
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
Miscellaneous Statement
The Examining Attorney has suggested amending Applicant's "Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices" terms in Class 42 to ""Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers laptops and mobile electronic devices". Applicant respectfully requests the Examining Attorney to reconsider the objection as the above language is consistent with the language that was accepted for Applicant's Registration No. 3939463 (WHATSAPP). Applicant respectfully requests the above language be accepted for this Application as well. If the Examining Attorney has any remaining concerns about the Identification of Goods and services, he is encouraged to contact Applicant's attorney, Karen Webb, at 650-335-7656.


SIGNATURE(S)
Response Signature
Signature: /kaw/     Date: 08/23/2016
Signatory's Name: Karen A. Webb
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 650-988-8500

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.

        
Serial Number: 86804170
Internet Transmission Date: Tue Aug 23 21:28:05 EDT 2016
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20160823212805420
517-86804170-550c332eca99bc14523dcb4dbb1
75fe83a20d52c5d544647fe5712493142458585-
N/A-N/A-20160822170244094603