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. 87957583 ZING(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/87957583/large) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Exhibits A through C has been attached.
Original PDF file:
evi_20487401-20181107171931623254_._Response_to_Office_Action_-_ZING.pdf
Converted PDF file(s) ( 39 pages)
Evidence-1
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Evidence-39

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable computer software to allow jewelry industry businesses and their customers to perform electronic business transactions via a global computer network; mobile applications for purchasing and servicing insurance, for facilitating business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customers
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: Downloadable computer software to allow jewelry industry businesses and their customers to perform electronic business transactions via a global computer network; mobile applications for purchasing and servicing insurance, for facilitating related business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customers, the foregoing excluding software for dispatch, route management, and navigation; mobile applications for purchasing and servicing insurance, for facilitating business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customersClass 009 for mobile applications for purchasing and servicing insurance, for facilitating related business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customers, the foregoing excluding software for dispatch, route management, and navigation
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 temporary use of non-downloadable computer software to allow jewelry industry businesses and their customers to perform electronic business transactions via a global computer network; platform as a service (PAAS) featuring computer software platforms for purchasing and servicing insurance, for facilitating business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customers
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 temporary use of non-downloadable computer software to allow jewelry industry businesses and their customers to perform electronic business transactions via a global computer network; platform as a service (PAAS) featuring computer software platforms for purchasing and servicing insurance, for facilitating related business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customers, the foregoing excluding software for dispatch, route management, and navigation; platform as a service (PAAS) featuring computer software platforms for purchasing and servicing insurance, for facilitating business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customersClass 042 for platform as a service (PAAS) featuring computer software platforms for purchasing and servicing insurance, for facilitating related business transactions, and for obtaining shipping solutions, all for jewelry industry businesses and their customers, the foregoing excluding software for dispatch, route management, and navigation
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: /Julie A. McGinnis/     Date: 11/07/2018
Signatory's Name: Julie A. McGinnis
Signatory's Position: Associate Attorney, Foley & Lardner LLP, Wisconsin Bar Member

Signatory's Phone Number: 414.297.5289

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: 87957583
Internet Transmission Date: Wed Nov 07 19:49:32 EST 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-201811071949322046
14-87957583-610fb98598b956ce64b163b5c4ac
c62201035737289e35b0a681472f74b63e883-N/
A-N/A-20181107184348475264