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. 87679726 SOGO(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87679726/large) has been amended as follows:

EVIDENCE
Evidence in the nature of Please see the actual argument text attached within the Evidence section. has been attached.
Original PDF file:
evi_10718118118-20180912192715663496_._SOGO_Response_to_Office_Action.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer hardware and computer peripherals; Wearable action trackers; Magnetic coded identification bracelet; Intelligent watches (data processing); Network communication equipment; Monitor; Electronic monitoring device, camera (photography); Apparatus for speech recording and replaying; mobile phones; portable media players; On-line bracelet (measuring instrument); Electronic recorder; E-book reader; telecontroller equipment; Computer software (recorded); Downloadable software; Electronic publications (downloadable); Computer application software for handheld computers, software for voice, speech and command recognition, conversion; Computer game software for use on computer, mobile and cellular phones; Computer search engine software; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Data processing apparatus; Downloadable software for accessing, browsing and searching online databases; Global positioning system (GPS) and equipment; Alarm; Battery; Shell for mobile phone; Robots for personal, educational and hobby use and structural parts therefor
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 hardware and computer peripherals; Wearable action trackers; Wearable activity trackers; Magnetic coded identification bracelet; Magnetic encoded identification bracelet; Intelligent watches (data processing); Smart watches; Network communication equipment; Network communication equipment, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; Monitor; Computer, touchscreen, television and video monitors; Electronic monitoring device, camera (photography); Electronic monitoring device, namely, energy meters for monitoring energy usage; Photographic camera; Apparatus for speech recording and replaying; mobile phones; On-line bracelet (measuring instrument); portable media players; Electronic recorder; On-line length measuring instrument for use with bracelets; E-book reader; Electronic data recorder; telecontroller equipment; Electronic book reader; Computer software (recorded); telecontroller equipment, namely, remote controls for electronic terminals, namely, computers, computer peripherals, mobile devices, mobile telephones, robots, smart watches, wearable devices, earphones, headphones, set top boxes, audio and video players and recorders, home theater systems, and entertainment systems; Downloadable software; Computer software recorded on data media for use in accessing, transmitting, storing, processing, and sharing data and information; Electronic publications (downloadable); Downloadable software for use in programming, organizing, and accessing audio, video, text, multimedia content and third-party computer software programs; Computer application software for handheld computers, software for voice, speech and command recognition, conversion; Downloadable electronic publications, namely, books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; Computer application software for handheld computers, namely, software for voice, speech and command recognition, conversion; Computer game software for use on computer, mobile and cellular phones; Computer search engine software; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Data processing apparatus; Global positioning system (GPS) and equipment; Downloadable software for accessing, browsing and searching online databases; Alarm; Global positioning system (GPS) and parts therefore; Battery; Sound alarms; Shell for mobile phone; Batteries; Protective cases, namely, shells for mobile phone; Robots for personal, educational and hobby use and structural parts thereforClass 009 for Computer hardware and computer peripherals; Wearable activity trackers; Magnetic encoded identification bracelet; Smart watches; Network communication equipment, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; Computer, touchscreen, television and video monitors; Electronic monitoring device, namely, energy meters for monitoring energy usage; Photographic camera; Apparatus for speech recording and replaying; mobile phones; portable media players; On-line length measuring instrument for use with bracelets; Electronic data recorder; Electronic book reader; telecontroller equipment, namely, remote controls for electronic terminals, namely, computers, computer peripherals, mobile devices, mobile telephones, robots, smart watches, wearable devices, earphones, headphones, set top boxes, audio and video players and recorders, home theater systems, and entertainment systems; Computer software recorded on data media for use in accessing, transmitting, storing, processing, and sharing data and information; Downloadable software for use in programming, organizing, and accessing audio, video, text, multimedia content and third-party computer software programs; Downloadable electronic publications, namely, books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; Computer application software for handheld computers, namely, software for voice, speech and command recognition, conversion; Computer game software for use on computer, mobile and cellular phones; Computer search engine software; Computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; Data processing apparatus; Downloadable software for accessing, browsing and searching online databases; Global positioning system (GPS) and parts therefore; Sound alarms; Batteries; Protective cases, namely, shells for mobile phone; Robots for personal, educational and hobby use and structural parts therefor
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 services; Advisory services relating to business management and business operations; Business appraisals; Business investigations; Compiling and analyzing statistics, data and other sources of information for business purposes; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and home shopping services; Search engine optimization; On-line advertising on a computer network; Personnel recruitment; Professional business consultancy; Providing business information via a web site; Sales promotion for others; Sponsorship search; Systemization of information into computer databases
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: Advertising services; Advisory services relating to business management and business operations; Business appraisals; Business investigations; Compiling and analyzing statistics, data and other sources of information for business purposes; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and home shopping services; Search engine optimization; Search engine optimization for sales promotion; On-line advertising on a computer network; Personnel recruitment; Professional business consultancy; Providing business information via a web site; Sales promotion for others; Sponsorship search; Systemization of information into computer databasesClass 035 for Advertising services; Advisory services relating to business management and business operations; Business appraisals; Business investigations; Compiling and analyzing statistics, data and other sources of information for business purposes; Demonstration of goods and services by electronic means, also for the benefit of the so-called teleshopping and home shopping services; Search engine optimization for sales promotion; On-line advertising on a computer network; Personnel recruitment; Professional business consultancy; Providing business information via a web site; Sales promotion for others; Sponsorship search; Systemization of information into computer databases
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Broadcast of cable television programs; Electronic message sending; Communications by computer terminals; Electronic, electric, and digital transmission of voice, data, images, signals, and messages; Electronic mail services; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; Providing telecommunications connections to a global computer network; Providing multiple-user access to a global computer information network; Providing internet chat rooms; Voice mail 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: Broadcast of cable television programs; Electronic message sending; Communications by computer terminals; Electronic, electric, and digital transmission of voice, data, images, signals, and messages; Electronic mail services; Electronic transmission of e-mail; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; Providing telecommunications connections to a global computer network; Providing multiple-user access to a global computer information network; Providing internet chat rooms; Voice mail servicesClass 038 for Broadcast of cable television programs; Electronic message sending; Communications by computer terminals; Electronic, electric, and digital transmission of voice, data, images, signals, and messages; Electronic transmission of e-mail; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; Providing telecommunications connections to a global computer network; Providing multiple-user access to a global computer information network; Providing internet chat rooms; Voice mail 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 041 for Arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; Arranging and conducting conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Arranging, organizing, conducting, and hosting social entertainment events; Bookmobile services; Arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Education services, namely, providing on-line classes, seminars, workshops in the fields of sports, general interest; Health club services, namely, providing instruction and equipment in the field of physical exercise; Layout services other than for advertising purposes; Production of radio and television programs; Providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; Providing on-line music and entertainment information
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: Arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; Arranging and conducting conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Arranging and conducting educational conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Arranging, organizing, conducting, and hosting social entertainment events; Bookmobile services; Arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Education services, namely, providing on-line classes, seminars, workshops in the fields of sports, general interest; Education services, namely, providing on-line classes, seminars, workshops in the fields of sports and current events; Health club services, namely, providing instruction and equipment in the field of physical exercise; Layout services other than for advertising purposes; Production of radio and television programs; Providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; Providing on-line music and entertainment informationClass 041 for Arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; Arranging and conducting educational conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Arranging, organizing, conducting, and hosting social entertainment events; Bookmobile services; Arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; Education services, namely, providing on-line classes, seminars, workshops in the fields of sports and current events; Health club services, namely, providing instruction and equipment in the field of physical exercise; Layout services other than for advertising purposes; Production of radio and television programs; Providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; Providing on-line music and entertainment information
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Technical research; 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; 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 servicesClass 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
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: /Andrew J. Ferren/     Date: 09/12/2018
Signatory's Name: Andrew J. Ferren
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 617-482-1776

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: 87679726
Internet Transmission Date: Wed Sep 12 19:36:32 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201809121936321
12080-87679726-6103256949e74d31996e2e476
e878c58918348635164adc4533a1021a0c9cde5f
0-N/A-N/A-20180912192715663496