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)

---

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. 87900970 PROJECTOR(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87900970/large) has been amended as follows:

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

In the Office Action, the Examining Attorney refused registration because he believed that there was a likelihood of confusion with US Registration No. 4040163 for PROJECTOR, which covers ?application service provider (ASP) featuring software for use in the management of project based services organizations, including tracking time and expenses, invoicing, scheduling resources and project management.? The Examining Attorney was particularly concerned about Applicant?s ?editing and collaboration software,? which he believed was related to the registrant?s ?project management software.? As Applicant has now deleted the goods and services of concern to the Examining Attorney, Applicant respectfully submits that any likelihood of confusion that may have existed with the cited registration no longer exists. Therefore, Applicant requests that the Examining Attorney withdraw the refusal and approve the mark for publication.

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 creative authoring and collaborative storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations and iconography, collaborating with other users and editing documents in real time, and measuring engagement and impact with a user's audience
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 creative authoring and collaborative storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations and iconography, collaborating with other users and editing documents in real time, and measuring engagement and impact with a user's audience; Computer software for creative authoring and storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations and iconography, and measuring engagement and impact with a user's audienceClass 009 for Computer software for creative authoring and storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations and iconography, and measuring engagement and impact with a user's audience
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 Software as a Service (SAAS) services featuring software for creative authoring and collaborative storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations, and iconography, collaborating with other users and editing documents in real time, and measuring engagement and impact with a user's audience
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: Software as a Service (SAAS) services featuring software for creative authoring and collaborative storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations, and iconography, collaborating with other users and editing documents in real time, and measuring engagement and impact with a user's audience; Software as a Service (SAAS) services featuring software for creative authoring and storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations, and iconography, and measuring engagement and impact with a user's audienceClass 042 for Software as a Service (SAAS) services featuring software for creative authoring and storytelling, namely, software for crafting narrative structures, incorporating photographs, data visuals, video, animations, and iconography, and measuring engagement and impact with a user's audience
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: /alongobucco/     Date: 02/27/2019
Signatory's Name: Anne Marie Longobucco
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 6509888500

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: 87900970
Internet Transmission Date: Wed Feb 27 18:24:23 EST 2019
TEAS Stamp: USPTO/ROA-X.XX.XXX.XXX-20190227182423924
569-87900970-6207872256dd6a36291146802f4
2d21eaa714b24f226ca93b7ff4d2016dd33784-N
/A-N/A-20190227175834889945