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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87943460 FIELD(Standard Characters, see http://uspto.report/TM/87943460/mark.png) has been amended as follows:

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

The subject Application is refused registration as being descriptive of the goods. Applicant respectfully disagrees and requests reconsideration. The subject mark is Field. The dictionary definitions of field are noun an expanse of open or cleared ground, especially a piece of land suitable or used for pasture or tillage. Sports a piece of ground devoted to sports or contests; playing field. (in betting) all the contestants or numbers that are grouped together as one: to bet on the field in a horse race. (in football) the players on the playing ground. the area in which field events are held. verb (used with object) Baseball , Cricket . to catch or pick up (the ball) in play: The shortstop fielded the grounder and threw to first for the out. to place (a player, group of players, or a team) in the field to play. to place in competition: to field a candidate for governor. verb (used without object) Baseball, Cricket. to act as a fielder; field the ball. to take to the field. (retrieved from http://www.dictionary.com/browse/field) Applicant goods and services are, inter alia: database management software for use in freelancer operating on-line marketplaces for sellers and buyers of goods and/or services. providing a website portal featuring on-line non-downloadable software that enables users to manage freelancers and/or independent contractors have nothing to do with a "field." To classify it as descriptive because of a "field of endeavor" is improper. The subject mark does not in ANY way "immediately brings to mind an important quality, characteristic, feature, function or use of applicant?s field management software" as asserted in the refusal. Because the applied for mark is not descriptive of the goods/services, Applicant respectfully requests reconsideration and withdrawal of this refusal.

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 for freelancer and/or independent contractor management, payroll services, a marketplace of service providers, and to facilitate talent discovery, hiring, submissions, management, communication, payments, contracts, as well as providing real-time workforce management, communication and analytics reporting tools
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Computer software for freelancer and/or independent contractor management, payroll services, a marketplace of service providers, and to facilitate talent discovery, hiring, submissions, management, communication, payments, contracts, as well as providing real-time workforce management, communication and analytics reporting tools; database management software for use in freelancer and/or independent contractor management, payroll¶
services, a marketplace of service providers, talent discovery, hiring, submissions, management, communication, payments, contracts,¶
real-time workforce management, communication and analytics reporting tools.Class 009 for database management software for use in freelancer and/or independent contractor management, payroll services, a marketplace of service providers, talent discovery, hiring, submissions, management, communication, payments, contracts, real-time workforce management, communication and analytics reporting tools.
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 Operating on-line marketplaces for sellers and buyers of goods and/or 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: Class 035 for Operating on-line marketplaces for sellers and buyers of goods and/or services
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing on-line non-downloadable software for freelancer and/or independent contractor management, payroll services, a marketplace of service providers, and to facilitate talent discovery, hiring, submissions, management, communication, payments, contracts, as well as providing real-time workforce management, communication and analytics reporting tools
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: Providing on-line non-downloadable software for freelancer and/or independent contractor management, payroll services, a marketplace of service providers, and to facilitate talent discovery, hiring, submissions, management, communication, payments, contracts, as well as providing real-time workforce management, communication and analytics reporting tools; providing a website portal featuring on-line non-downloadable software that enables users to manage¶
freelancers and/or independent contractors, payroll services, a marketplace of service providers, to facilitate talent discovery, hiring,¶
submissions, management, communication, payments and contracts, and to provide real-time workforce management, communication¶
and analytics reporting tools.Class 042 for providing a website portal featuring on-line non-downloadable software that enables users to manage freelancers and/or independent contractors, payroll services, a marketplace of service providers, to facilitate talent discovery, hiring, submissions, management, communication, payments and contracts, and to provide real-time workforce management, communication and analytics reporting tools.
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)
Response Signature
Signature: /David W. Barman/     Date: 01/16/2019
Signatory's Name: David W. Barman
Signatory's Position: Attorney of Record, Florida Bar member

Signatory's Phone Number: 786-361-6579

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: 87943460
Internet Transmission Date: Wed Jan 16 16:12:53 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2019011616125366
6504-87943460-620241a645f4bce91605e287c3
039e1fb63e95d802890d278714c7bf3198278fb6
f-N/A-N/A-20190116160118446618