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 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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 87679726 SOGO(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87679726/large) has been amended as follows:

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

Applicant acknowledges that the only remaining basis for refusal of the mark is pursuant to Section 2(d) on the basis of prior Registration No. 4490614 for SOGOSURVEY with respect to Class 42 only. Applicant respectfully disagrees with the Examining Attorney's conclusion that there is a likelihood of confusion. It appears the Examining Attorney's primary concern is that the description of services in Class 42 of the Application is broad enough to include Registrant's services and, therefore, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great. In order to alleviate the Examining Attorney's concern, Applicant hereby amends the description of services in Class 42 by adding the following language: "none of the foregoing being related to software for use in the administration of surveys, the collection of survey data, enterprise feedback management, or community response management, to software for use in the creation, customization, modification, updating, collection, maintenance, analysis or reporting of surveys, questionnaires and other data collection formats, or to administration or troubleshooting of computer software or web based applications." Applicant believes this amendment addresses the issue raised by the Examining Attorney and provides sufficient grounds for withdrawing the remaining Section 2(d) refusal.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Technical research in the field of the Internet; Research, development, design and upgrading of computer software; Computer services, namely, providing search engines for obtaining data on a global computer network; Computer programming; Computer software design for others; Maintenance of computer software; Computer systems analysis; Design and development of on-line computer software systems; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Creating or maintaining web sites for others; Web site hosting services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Technical research in the field of the Internet; Research, development, design and upgrading of computer software; Computer services, namely, providing search engines for obtaining data on a global computer network; Computer programming; Computer software design for others; Maintenance of computer software; Computer systems analysis; Design and development of on-line computer software systems; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Creating or maintaining web sites for others; Web site hosting services; none of the foregoing being related to software for use in the administration of surveys, the collection of survey data, enterprise feedback management, or community response management, to software for use in the creation, customization, modification, updating, collection, maintenance, analysis or reporting of surveys, questionnaires and other data collection formats, or to administration or troubleshooting of computer software or web based applicationsClass 042 for Technical research in the field of the Internet; Research, development, design and upgrading of computer software; Computer services, namely, providing search engines for obtaining data on a global computer network; Computer programming; Computer software design for others; Maintenance of computer software; Computer systems analysis; Design and development of on-line computer software systems; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Creating or maintaining web sites for others; Web site hosting services; none of the foregoing being related to software for use in the administration of surveys, the collection of survey data, enterprise feedback management, or community response management, to software for use in the creation, customization, modification, updating, collection, maintenance, analysis or reporting of surveys, questionnaires and other data collection formats, or to administration or troubleshooting of computer software or web based applications
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)
Request for Reconsideration Signature
Signature: /Andrew J. Ferren/     Date: 04/17/2019
Signatory's Name: Andrew J. Ferren
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 617-574-3546

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.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 87679726
Internet Transmission Date: Wed Apr 17 15:44:11 EDT 2019
TEAS Stamp: USPTO/RFR-XXX.XXX.XX.XXX-201904171544117
08878-87679726-62046c0d6e53ad038d3673bac
95ccbd62ba87314bf1f7711d8027d9396972ef4a
ac-N/A-N/A-20190417154212791063