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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
87260059 |
LAW OFFICE ASSIGNED |
LAW OFFICE 107 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/87260059/mark.png |
LITERAL ELEMENT |
AWIN |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
ARGUMENT(S) |
The Applicant advises the Examining Attorney that the corresponding EU application has not yet matured to registration. Accordingly, Applicant requests its application be suspended pending
receipt of the EU Certificate of Registration.
|
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Computer software and computer hardware; electronic publications and/or data downloaded or downloadable via the Internet or other
remote communications device; interactive entertainment software; social networking software; community software; virtual worlds software; education software; entertainment software; marketing
software; computer software for advertising; computer software for marketing; computer software for market research; computer software for business security; computer software for business
consultancy; computer software for affiliate marketing; computer software for affiliate marketing network services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
015914245 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
10/11/2016 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Computer software and computer hardware; Computer software for use
in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services; electronic
publications and/or data downloaded or downloadable via the Internet or other remote communications device; computer hardware; interactive entertainment software; electronic publications downloaded or downloadable via the Internet or other remote communications device, namely,
newsletters, journals and books in the field of performance marketing, affiliate marketing and advertising services; social networking software;
Electronic data files downloaded or downloadable via the Internet or other remote communications device featuring data for analyzing consumer behavior and
facilitating online advertising; community software; interactive entertainment software, namely, game software for use in
performance marketing, affiliate marketing and advertising services; virtual worlds software; social networking software
for use in performance marketing, affiliate marketing and advertising services; education software; community software
for use in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services; entertainment software; virtual worlds software for use in database management, use as a spreadsheet and word processing in the field of performance
marketing, affiliate marketing and advertising services; marketing software; education software featuring instruction
in performance marketing, affiliate marketing and advertising services; computer software for advertising; entertainment software for use in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services;
computer software for marketing; marketing software for use in database management, use as a spreadsheet and word processing
in the field of performance marketing, affiliate marketing and advertising services; computer software for market research; computer software for use in database management, use as a spreadsheet and word processing for advertising in the field of performance marketing and affiliate marketing; computer software for business security; computer software for use in database management, use as a spreadsheet and word processing for
marketing in the field of performance marketing, affiliate marketing and advertising services; computer software for business consultancy; computer software for market research for performance marketing, affiliate marketing and advertising services; computer software for
affiliate marketing; computer software for business security, namely, software for ensuring the security of electronic communications; computer software for affiliate marketing network services; computer software for use in database management, use as a spreadsheet and word
processing for business consultancy in the field of performance marketing, affiliate marketing and online advertising; computer software for affiliate
marketing for analyzing consumer behavior and facilitating online advertising; computer software for affiliate marketing network services for analyzing
consumer behavior and facilitating online advertising |
FINAL DESCRIPTION |
Computer software for use in database management, use as a spreadsheet and word processing in the field of performance marketing,
affiliate marketing and advertising services; computer hardware; electronic publications downloaded or downloadable via the Internet or other remote communications device, namely, newsletters,
journals and books in the field of performance marketing, affiliate marketing and advertising services; Electronic data files downloaded or downloadable via the Internet or other remote
communications device featuring data for analyzing consumer behavior and facilitating online advertising; interactive entertainment software, namely, game software for use in performance marketing,
affiliate marketing and advertising services; social networking software for use in performance marketing, affiliate marketing and advertising services; community software for use in database
management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services; virtual worlds software for use in database management, use
as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services; education software featuring instruction in performance marketing, affiliate
marketing and advertising services; entertainment software for use in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and
advertising services; marketing software for use in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services;
computer software for use in database management, use as a spreadsheet and word processing for advertising in the field of performance marketing and affiliate marketing; computer software for use in
database management, use as a spreadsheet and word processing for marketing in the field of performance marketing, affiliate marketing and advertising services; computer software for market research
for performance marketing, affiliate marketing and advertising services; computer software for business security, namely, software for ensuring the security of electronic communications; computer
software for use in database management, use as a spreadsheet and word processing for business consultancy in the field of performance marketing, affiliate marketing and online advertising; computer
software for affiliate marketing for analyzing consumer behavior and facilitating online advertising; computer software for affiliate marketing network services for analyzing consumer behavior and
facilitating online advertising |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
015914245 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
10/11/2016 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section
44(e) as a basis for registration, a valid claim of priority may be retained. |
DELETED FILING BASIS |
1(b) |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Advertising and promotion services; business consultancy; compilation of information into databases; business research; marketing,
planning of marketing strategies; trade and promotional marketing including marketing research and marketing studies; computerised information storage; dissemination and retrieval of information and
data; business/commercial management of communication networks; business information services; business services provided on line from a computer database or the internet; compilation of
advertisement for use as web pages on the Internet; business recommendation services; provision of commercial information; marketing services agency; business account management; business data
analysis; business data analysis for the provision of advice in relation to business security; marketing information; marketing consultancy; marketing forecasting; marketing studies; marketing
analysis; marketing research; business consultancy services related to marketing; advertising agency services; affiliate marketing services; affiliate marketing network services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
015914245 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
10/11/2016 |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
TRACKED TEXT DESCRIPTION |
Advertising and promotion services; business consultancy; compilation of information into databases; business research; marketing, planning of marketing strategies; trade
and promotional marketing including marketing research and marketing studies; computerised information storage; dissemination and retrieval of information and data, namely, performance marketing, affiliate marketing and online advertising; dissemination and
retrieval of information and data; business/commercial management of communication networks, namely, the operation and administration of telecommunication
systems and networks for others; business/commercial management of communication networks; business information services;
business services provided on line from a computer database or the internet, namely, providing computer databases regarding the purchase and sale of a wide variety of
products and services of others; business services provided on line from a computer database or the internet; compilation of
advertisement for use as web pages on the Internet; business recommendation services, namely, analyzing consumer behavior and facilitating online
advertising; business recommendation services; provision of commercial information; marketing services
agency; business account management, namely, administration, billing and reconciliation of accounts on behalf of others; business account management; business data analysis; business data analysis for the provision of advice in relation to business
security; marketing information; marketing consultancy; marketing forecasting; marketing studies; marketing analysis; marketing research; business consultancy services related to
marketing; advertising agency services; affiliate marketing services; affiliate marketing network
services |
FINAL DESCRIPTION |
Advertising and promotion services; business consultancy; compilation of information into databases; business research; marketing,
planning of marketing strategies; trade and promotional marketing including marketing research and marketing studies; dissemination and retrieval of information and data, namely, performance
marketing, affiliate marketing and online advertising; business/commercial management of communication networks, namely, the operation and administration of telecommunication systems and networks for
others; business information services; business services provided on line from a computer database or the internet, namely, providing computer databases regarding the purchase and sale of a wide
variety of products and services of others; compilation of advertisement for use as web pages on the Internet; business recommendation services, namely, analyzing consumer behavior and facilitating
online advertising; provision of commercial information; marketing services agency; business account management, namely, administration, billing and reconciliation of accounts on behalf of others;
business data analysis; business data analysis for the provision of advice in relation to business security; marketing information; marketing consultancy; marketing forecasting; marketing studies;
marketing analysis; marketing research; business consultancy services related to marketing; advertising agency services; affiliate marketing services; affiliate marketing network services |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
015914245 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
10/11/2016 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section
44(e) as a basis for registration, a valid claim of priority may be retained. |
DELETED FILING BASIS |
1(b) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Software development, design, maintenance, software programming, engineering, research and writing; advisory and consultancy services
relating to computer software and computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance,
consultancy, programming, engineering, research and writing; computer and video games development; development of computer software for advertising; development of computer software for marketing;
development of computer software for market research; development of computer software for business security; development of computer software for business consultancy; development of computer
software for affiliate marketing; development of computer software for affiliate marketing network services; creation of computer graphics; computer game design; design and development services in
relation to computer and video games and interactive entertainment products; design services relating to the production of computer and video games and interactive entertainment products; social
network software and virtual worlds software development, hosting and management; hosting online web facilities for others; creating, maintaining and hosting websites of others; hosting facilities
for online meetings; hosting facilities for interactive discussions; design services |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
015914245 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
10/11/2016 |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Software development, design, maintenance, software programming, engineering, research and writing;
advisory and consultancy services relating to computer software and computer software development, design, maintenance, consultancy, programming, engineering, research and
writing; computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer and video
games development; development of computer software for advertising; development of computer software for marketing; development of computer software for market research; development of computer software for business security; development of computer
software for business consultancy; development of computer software for affiliate marketing; development of computer software for affiliate
marketing network services; creation of computer graphics; computer game design; design and development
services in relation to computer and video games and interactive entertainment products; design and development services in relation to computer and video games
and interactive entertainment products in the nature of computer software; design services relating to the production of computer and video games and
interactive entertainment products; design services relating to the production of computer and video games for use in connection with performance marketing,
affiliate marketing and advertising services; social network software and virtual worlds software development, hosting and management; social network software and virtual worlds software development, hosting and management of computer software applications of others; hosting
online web facilities for others; hosting online web facilities for others for performance marketing, affiliate marketing and advertising services;
creating, maintaining and hosting websites of others; creating, maintaining and hosting marketing and advertising websites of
others; hosting facilities for online meetings; computer services, namely, hosting on-line web facilities for others
for organizing and conducting online meetings; hosting facilities for interactive discussions; computer services,
namely, hosting on-line web facilities for others for organizing and conducting interactive discussions; design services; design services in the field of computer systems relating to performance marketing, affiliate marketing and advertising services; computerised
information storage |
FINAL DESCRIPTION |
Software development, design, maintenance, software programming, engineering, research and writing; advisory and consultancy services
relating to computer software and computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance,
consultancy, programming, engineering, research and writing; computer and video games development; development of computer software for advertising; development of computer software for marketing;
development of computer software for market research; development of computer software for business security; development of computer software for business consultancy; development of computer
software for affiliate marketing; development of computer software for affiliate marketing network services; creation of computer graphics; computer game design; design and development services in
relation to computer and video games and interactive entertainment products in the nature of computer software; design services relating to the production of computer and video games for use in
connection with performance marketing, affiliate marketing and advertising services; social network software and virtual worlds software development, hosting and management of computer software
applications of others; hosting online web facilities for others for performance marketing, affiliate marketing and advertising services; creating, maintaining and hosting marketing and advertising
websites of others; computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings; computer services, namely, hosting on-line web facilities for
others for organizing and conducting interactive discussions; design services in the field of computer systems relating to performance marketing, affiliate marketing and advertising services;
computerised information storage |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
015914245 |
FOREIGN APPLICATION COUNTRY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
10/11/2016 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section
44(e) as a basis for registration, a valid claim of priority may be retained. |
DELETED FILING BASIS |
1(b) |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Lawrence R. Robins/ |
SIGNATORY'S NAME |
Lawrence R. Robins |
SIGNATORY'S POSITION |
Attorney of record, Massachusetts bar member |
SIGNATORY'S PHONE NUMBER |
617-338-2803 |
DATE SIGNED |
05/11/2017 |
RESPONSE SIGNATURE |
/Lawrence R. Robins/ |
SIGNATORY'S NAME |
Lawrence R. Robins |
SIGNATORY'S POSITION |
Attorney of record, Massachusetts bar member |
SIGNATORY'S PHONE NUMBER |
617-338-2803 |
DATE SIGNED |
05/11/2017 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu May 11 12:27:43 EDT 2017 |
TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XX-20
170511122743869950-872600
59-590a2b637d71f8ab37be67
a9e15431b2324ac6deeb8ab24
97db12346ed7b1a-N/A-N/A-2
0170511121847196191 |
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.
87260059 AWIN (Stylized and/or with Design, see http://uspto.report/TM/87260059/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Applicant advises the Examining Attorney that the corresponding EU application has not yet matured to registration. Accordingly, Applicant requests its application be suspended pending
receipt of the EU Certificate of Registration.
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 and computer hardware; electronic publications and/or data downloaded or downloadable via the Internet or other remote communications device;
interactive entertainment software; social networking software; community software; virtual worlds software; education software; entertainment software; marketing software; computer software for
advertising; computer software for marketing; computer software for market research; computer software for business security; computer software for business consultancy; computer software for
affiliate marketing; computer software for affiliate marketing network 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 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[ European Union Trademark - EUTM application number 015914245 filed 10/11/2016]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Computer software and computer hardware;
Computer software for use in database management, use as
a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services;
electronic publications and/or data
downloaded or downloadable via the Internet or other remote communications device;
computer hardware;
interactive
entertainment software;
electronic publications downloaded or downloadable via the Internet or other remote communications device, namely, newsletters, journals
and books in the field of performance marketing, affiliate marketing and advertising services;
social networking software;
Electronic data files downloaded or downloadable via the Internet or other remote communications device featuring data for analyzing consumer behavior and facilitating online
advertising;
community software;
interactive entertainment software, namely, game software for use in performance
marketing, affiliate marketing and advertising services;
virtual worlds software;
social networking software for use in
performance marketing, affiliate marketing and advertising services;
education software;
community software for use in
database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services;
entertainment software;
virtual worlds software for use in database management, use as a spreadsheet and word processing in the field of performance
marketing, affiliate marketing and advertising services;
marketing software;
education software featuring instruction
in performance marketing, affiliate marketing and advertising services;
computer software for advertising;
entertainment software for use in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services;
computer software for marketing;
marketing software for use in database management, use as a spreadsheet and word processing
in the field of performance marketing, affiliate marketing and advertising services;
computer software for market research;
computer software for use in database management, use as a spreadsheet and word processing for advertising in the field of performance marketing and affiliate marketing;
computer software for business security;
computer software for use in database management, use as a spreadsheet and word processing for
marketing in the field of performance marketing, affiliate marketing and advertising services;
computer software for business consultancy;
computer software for market research for performance marketing, affiliate marketing and advertising services;
computer software for
affiliate marketing;
computer software for business security, namely, software for ensuring the security of electronic communications;
computer software for affiliate marketing network services;
computer software for use in database management, use as a spreadsheet and word
processing for business consultancy in the field of performance marketing, affiliate marketing and online advertising;
computer software for affiliate
marketing for analyzing consumer behavior and facilitating online advertising;
computer software for affiliate marketing network services for analyzing
consumer behavior and facilitating online advertisingClass 009 for Computer software for use in database management, use as a spreadsheet and word processing in the field of performance
marketing, affiliate marketing and advertising services; computer hardware; electronic publications downloaded or downloadable via the Internet or other remote communications device, namely,
newsletters, journals and books in the field of performance marketing, affiliate marketing and advertising services; Electronic data files downloaded or downloadable via the Internet or other remote
communications device featuring data for analyzing consumer behavior and facilitating online advertising; interactive entertainment software, namely, game software for use in performance marketing,
affiliate marketing and advertising services; social networking software for use in performance marketing, affiliate marketing and advertising services; community software for use in database
management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services; virtual worlds software for use in database management, use
as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services; education software featuring instruction in performance marketing, affiliate
marketing and advertising services; entertainment software for use in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and
advertising services; marketing software for use in database management, use as a spreadsheet and word processing in the field of performance marketing, affiliate marketing and advertising services;
computer software for use in database management, use as a spreadsheet and word processing for advertising in the field of performance marketing and affiliate marketing; computer software for use in
database management, use as a spreadsheet and word processing for marketing in the field of performance marketing, affiliate marketing and advertising services; computer software for market research
for performance marketing, affiliate marketing and advertising services; computer software for business security, namely, software for ensuring the security of electronic communications; computer
software for use in database management, use as a spreadsheet and word processing for business consultancy in the field of performance marketing, affiliate marketing and online advertising; computer
software for affiliate marketing for analyzing consumer behavior and facilitating online advertising; computer software for affiliate marketing network services for analyzing consumer behavior and
facilitating online advertising
Deleted Filing Basis: 1(b)
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 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 [ European Union Trademark - EUTM application number 015914245 filed
10/11/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for
registration, a valid claim of priority may be retained.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising and promotion services; business consultancy; compilation of information into databases; business research; marketing, planning of marketing strategies;
trade and promotional marketing including marketing research and marketing studies; computerised information storage; dissemination and retrieval of information and data; business/commercial
management of communication networks; business information services; business services provided on line from a computer database or the internet; compilation of advertisement for use as web pages on
the Internet; business recommendation services; provision of commercial information; marketing services agency; business account management; business data analysis; business data analysis for the
provision of advice in relation to business security; marketing information; marketing consultancy; marketing forecasting; marketing studies; marketing analysis; marketing research; business
consultancy services related to marketing; advertising agency services; affiliate marketing services; affiliate marketing network 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 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[ European Union Trademark - EUTM application number 015914245 filed 10/11/2016]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Advertising and promotion services;
business consultancy;
compilation of information into
databases;
business research;
marketing, planning of marketing strategies;
trade and promotional marketing including
marketing research and marketing studies;
computerised information storage;
dissemination and retrieval of information
and data, namely, performance marketing, affiliate marketing and online advertising;
dissemination and retrieval of information and data;
business/commercial management of communication networks, namely, the operation and administration of telecommunication systems and networks for others;
business/commercial management of communication networks;
business information services;
business services provided on
line from a computer database or the internet, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others;
business services provided on line from a computer database or the internet;
compilation of advertisement for use as web pages on the Internet;
business recommendation services, namely, analyzing consumer behavior and facilitating online advertising;
business
recommendation services;
provision of commercial information;
marketing services agency;
business account
management, namely, administration, billing and reconciliation of accounts on behalf of others;
business account management;
business data analysis;
business data analysis for the provision of advice in relation to business security;
marketing
information;
marketing consultancy;
marketing forecasting;
marketing studies;
marketing
analysis;
marketing research;
business consultancy services related to marketing;
advertising agency
services;
affiliate marketing services;
affiliate marketing network servicesClass 035 for Advertising and promotion services; business
consultancy; compilation of information into databases; business research; marketing, planning of marketing strategies; trade and promotional marketing including marketing research and marketing
studies; dissemination and retrieval of information and data, namely, performance marketing, affiliate marketing and online advertising; business/commercial management of communication networks,
namely, the operation and administration of telecommunication systems and networks for others; business information services; business services provided on line from a computer database or the
internet, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; compilation of advertisement for use as web pages on the Internet;
business recommendation services, namely, analyzing consumer behavior and facilitating online advertising; provision of commercial information; marketing services agency; business account management,
namely, administration, billing and reconciliation of accounts on behalf of others; business data analysis; business data analysis for the provision of advice in relation to business security;
marketing information; marketing consultancy; marketing forecasting; marketing studies; marketing analysis; marketing research; business consultancy services related to marketing; advertising agency
services; affiliate marketing services; affiliate marketing network services
Deleted Filing Basis: 1(b)
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 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 [ European Union Trademark - EUTM application number 015914245 filed
10/11/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for
registration, a valid claim of priority may be retained.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software development, design, maintenance, software programming, engineering, research and writing; advisory and consultancy services relating to computer software and
computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance, consultancy, programming,
engineering, research and writing; computer and video games development; development of computer software for advertising; development of computer software for marketing; development of computer
software for market research; development of computer software for business security; development of computer software for business consultancy; development of computer software for affiliate
marketing; development of computer software for affiliate marketing network services; creation of computer graphics; computer game design; design and development services in relation to computer and
video games and interactive entertainment products; design services relating to the production of computer and video games and interactive entertainment products; social network software and virtual
worlds software development, hosting and management; hosting online web facilities for others; creating, maintaining and hosting websites of others; hosting facilities for online meetings; hosting
facilities for interactive discussions; design 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 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[ European Union Trademark - EUTM application number 015914245 filed 10/11/2016]. 15 U.S.C.Section
1126(d), as amended.
Proposed:
Tracked Text Description: Software development, design, maintenance, software programming, engineering, research and writing;
advisory and
consultancy services relating to computer software and computer software development, design, maintenance, consultancy, programming, engineering, research and writing;
computer software development, design, maintenance, consultancy, programming, engineering, research and writing;
computer and video games development;
development of computer software for advertising;
development of computer software for marketing;
development of computer
software for market research;
development of computer software for business security;
development of computer software for business
consultancy;
development of computer software for affiliate marketing;
development of computer software for affiliate marketing network
services;
creation of computer graphics;
computer game design;
design and development services in
relation to computer and video games and interactive entertainment products;
design and development services in relation to computer and video games and
interactive entertainment products in the nature of computer software;
design services relating to the production of computer and video games and interactive
entertainment products;
design services relating to the production of computer and video games for use in connection with performance marketing, affiliate
marketing and advertising services;
social network software and virtual worlds software development, hosting and management;
social network software and virtual worlds software development, hosting and management of computer software applications of others;
hosting online
web facilities for others;
hosting online web facilities for others for performance marketing, affiliate marketing and advertising services;
creating, maintaining and hosting websites of others;
creating, maintaining and hosting marketing and advertising websites of
others;
hosting facilities for online meetings;
computer services, namely, hosting on-line web facilities for others
for organizing and conducting online meetings;
hosting facilities for interactive discussions;
computer services,
namely, hosting on-line web facilities for others for organizing and conducting interactive discussions;
design services;
design services in the field of computer systems relating to performance marketing, affiliate marketing and advertising services;
computerised
information storageClass 042 for Software development, design, maintenance, software programming, engineering, research and writing; advisory and consultancy services relating to computer
software and computer software development, design, maintenance, consultancy, programming, engineering, research and writing; computer software development, design, maintenance, consultancy,
programming, engineering, research and writing; computer and video games development; development of computer software for advertising; development of computer software for marketing; development of
computer software for market research; development of computer software for business security; development of computer software for business consultancy; development of computer software for
affiliate marketing; development of computer software for affiliate marketing network services; creation of computer graphics; computer game design; design and development services in relation to
computer and video games and interactive entertainment products in the nature of computer software; design services relating to the production of computer and video games for use in connection with
performance marketing, affiliate marketing and advertising services; social network software and virtual worlds software development, hosting and management of computer software applications of
others; hosting online web facilities for others for performance marketing, affiliate marketing and advertising services; creating, maintaining and hosting marketing and advertising websites of
others; computer services, namely, hosting on-line web facilities for others for organizing and conducting online meetings; computer services, namely, hosting on-line web facilities for others for
organizing and conducting interactive discussions; design services in the field of computer systems relating to performance marketing, affiliate marketing and advertising services; computerised
information storage
Deleted Filing Basis: 1(b)
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 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 [ European Union Trademark - EUTM application number 015914245 filed
10/11/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for
registration, a valid claim of priority may be retained.
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: /Lawrence R. Robins/ Date: 05/11/2017
Signatory's Name: Lawrence R. Robins
Signatory's Position: Attorney of record, Massachusetts bar member
Signatory's Phone Number: 617-338-2803
Response Signature
Signature: /Lawrence R. Robins/ Date: 05/11/2017
Signatory's Name: Lawrence R. Robins
Signatory's Position: Attorney of record, Massachusetts bar member
Signatory's Phone Number: 617-338-2803
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: 87260059
Internet Transmission Date: Thu May 11 12:27:43 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20170511122743869
950-87260059-590a2b637d71f8ab37be67a9e15
431b2324ac6deeb8ab2497db12346ed7b1a-N/A-
N/A-20170511121847196191