TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

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

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 87283179 BOTIFY(Standard Characters, see http://uspto.report/TM/87283179/mark.png) 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 Calculators and calculating machines; Computer search engine software; Computer software for accessing information directories that may be downloaded from the global computer network; Computer software for creating searchable databases of information and data; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Electronic data recorders
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 12/3908994 registered 03/29/2012 with a renewal date of 03/28/2022 and an expiration date of 03/28/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 009 for Calculators and calculating machines; Computer search engine software; Computer software for accessing information directories that may be downloaded from the global computer network; Computer software for creating searchable databases of information and data; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Electronic data recorders
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising consultation; Advertising and marketing consultancy; On-line advertising services for others; On-line advertising and marketing services; Search engine optimisation for sales promotion; Digital advertising services; Internet advertising services; Management and compilation of computerised databases; Mobile advertising services for others; Promoting the goods and services of others through search engine referral traffic analysis and reporting; Promotion, advertising and marketing of on-line websites; Web site optimization; Web site traffic optimisation
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 12/3908994 registered 03/29/2012 with a renewal date of 03/28/2022 and an expiration date of 03/28/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 035 for Advertising consultation; Advertising and marketing consultancy; On-line advertising services for others; On-line advertising and marketing services; Search engine optimisation for sales promotion; Digital advertising services; Internet advertising services; Management and compilation of computerised databases; Mobile advertising services for others; Promoting the goods and services of others through search engine referral traffic analysis and reporting; Promotion, advertising and marketing of on-line websites; Web site optimization; Web site traffic optimisation
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Training courses in strategic planning relating to advertising, promotion, marketing and business; Training in the field of design, advertising and communication technologies; Arranging professional workshop and training courses; IT training services
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 12/3908994 registered 03/29/2012 with a renewal date of 03/28/2022 and an expiration date of 03/28/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 041 for Training courses in strategic planning relating to advertising, promotion, marketing and business; Training in the field of design, advertising and communication technologies; Arranging professional workshop and training courses; IT training services
Deleted Filing Basis: 44(e)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer software development; Computer software development and computer programming development for others; Computer and computer software rental; Data automation and collection service using proprietary software to evaluate, analyze and collect service data; Data-acquisition and collection for calibration and coordinate-measurement purposes; Database design and development; Research and development of computer software; Software design and development; Application service provider featuring application programming interface (API) software for Search Engine Optimization; Computer software development in the field of mobile applications; Computer services, namely, monitoring, testing, analyzing, and reporting on the Internet traffic control and content control of the web sites of others; Computer simulation based on computer programs for others; Design of computer databases; Developing computer software; Developing and updating computer software; Development, maintenance and updating of a telecommunication network search engine; Development, updating and maintenance of software and database systems; Maintenance of on-line databases for others; Planning, design, development and maintenance of online websites for third parties; Programming of computer software for others; Providing a website featuring on-line non-downloadable software that enables users to create audio drama series and episodes, write scripts, audition and assign talent, record and mix audio, publish produced audio dramas, track and analyze audio drama statistics, advertise and market audio dramas, and stream and/or download audio dramas; Software as a service (SAAS) services featuring software for Search Engine Optimization; Software as a service (SAAS) services, namely, hosting software for use by others for use of Search Engine Optimization
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ France registration number 12/3908994 registered 03/29/2012 with a renewal date of 03/28/2022 and an expiration date of 03/28/2022 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 042 for Computer software development; Computer software development and computer programming development for others; Computer and computer software rental; Data automation and collection service using proprietary software to evaluate, analyze and collect service data; Data-acquisition and collection for calibration and coordinate-measurement purposes; Database design and development; Research and development of computer software; Software design and development; Application service provider featuring application programming interface (API) software for Search Engine Optimization; Computer software development in the field of mobile applications; Computer services, namely, monitoring, testing, analyzing, and reporting on the Internet traffic control and content control of the web sites of others; Computer simulation based on computer programs for others; Design of computer databases; Developing computer software; Developing and updating computer software; Development, maintenance and updating of a telecommunication network search engine; Development, updating and maintenance of software and database systems; Maintenance of on-line databases for others; Planning, design, development and maintenance of online websites for third parties; Programming of computer software for others; Providing a website featuring on-line non-downloadable software that enables users to create audio drama series and episodes, write scripts, audition and assign talent, record and mix audio, publish produced audio dramas, track and analyze audio drama statistics, advertise and market audio dramas, and stream and/or download audio dramas; Software as a service (SAAS) services featuring software for Search Engine Optimization; Software as a service (SAAS) services, namely, hosting software for use by others for use of Search Engine Optimization
Deleted Filing Basis: 44(e)
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.

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: /Adrien Menard/      Date: 07/26/2017
Signatory's Name: Adrien Menard
Signatory's Position: CEO
Signatory's Phone Number: + 1 646 946 7577


Request for Reconsideration Signature
Signature: /Adrien Menard/     Date: 07/26/2017
Signatory's Name: Adrien Menard
Signatory's Position: CEO

Signatory's Phone Number: + 1 646 946 7577

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 87283179
Internet Transmission Date: Wed Jul 26 12:03:17 EDT 2017
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2017072612031715
5024-87283179-5107fd7271e4abbb1fe75e34a8
bfa9c0c4f33bc8b8e223199b835bae572c23922d
-N/A-N/A-20170726115805058876