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. 88001867 ACE(Standard Characters, see http://uspto.report/TM/88001867/mark.png) 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 Argument and internet evidence has been attached.
Original PDF file:
evi_637747130-20190315175504217157_._ACE_oa_response.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_637747130-20190315175504217157_._internet_evidence.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8

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 use in the capture, organization, analysis, and management of vehicle information to support automobile dealership services; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, trade-in vehicles, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service sales leads and communicate with customers through multiple channels; Downloadable software for use in customer relationship management (CRM); Downloadable software for managing documents and forms in the automotive retail sales process including contract creation and management, namely, software for creating, archiving, and organizing documents and forms; Downloadable software for use in network management; Downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer hardware, namely, computers, personal computers, computer terminals, computers for network management, networking equipment, servers, computer peripherals, and printers; telephones; bar code scanners
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 use in the capture, organization, analysis, and management of vehicle information to support automobile dealership services; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, trade-in vehicles, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service sales leads and communicate with customers through multiple channels; Downloadable software for managing documents and forms in the automotive retail sales process including contract creation and management, namely, software for creating, archiving, and organizing documents and forms; Downloadable software for use in customer relationship management (CRM); Downloadable software for use in network management; Downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer hardware, namely, computers, personal computers, computer terminals, computers for network management, networking equipment, servers, computer peripherals, and printers; telephones; bar code scannersClass 009 for Computer software for use in the capture, organization, analysis, and management of vehicle information to support automobile dealership services; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, trade-in vehicles, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Downloadable software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service sales leads and communicate with customers through multiple channels; Downloadable software for managing documents and forms in the automotive retail sales process including contract creation and management, namely, software for creating, archiving, and organizing documents and forms; Downloadable software for use in network management; Downloadable software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface
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 online non-downloadable software for organizing, managing, storing, tracking, analyzing and creating reports on information related to relationship management, sales, promotion and marketing; computer services, namely, design, development, implementation, installation, maintenance, and updating of computer software, providing technical support, namely, troubleshooting of computer hardware and software problems, and providing consultation for the aforesaid; providing online information regarding computer software and services; Providing online, non-downloadable software for use by automotive dealerships that allows users to perform internet lead management, customer relationship management, contract management, inventory management, and trade-in management; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service and sales leads and communicate with customers through multiple channels; Software as a service (SAAS) services, namely, software for use in customer relationship management (CRM); Software as a service (SAAS) services, namely, software for managing documents, forms and contracts in the automotive retail sales and financing process, namely, software for creating, archiving, and organizing documents and forms; Software as a service (SAAS) services, namely, software for use in network management; Software as a service (SAAS) services, namely, software that provide real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software; Computer software design, development, and programming services for others; Computer services, namely, designing, implementing, and maintaining web site for others; Hosting the web sites of others on computer servers for a global computer network; Installation of computer software
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 online non-downloadable software for organizing, managing, storing, tracking, analyzing and creating reports on information related to relationship management, sales, promotion and marketing; computer services, namely, design, development, implementation, installation, maintenance, and updating of computer software, providing technical support, namely, troubleshooting of computer hardware and software problems, and providing consultation for the aforesaid; computer services, namely, design, development, implementation, installation, maintenance, and updating of computer software, and providing consultation for the aforesaid; Providing online information regarding computer software and services; Providing online, non-downloadable software for use by automotive dealerships that allows users to perform internet lead management, customer relationship management, contract management, inventory management, and trade-in management; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track advertising and marketing campaigns; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service and sales leads and communicate with customers through multiple channels; Software as a service (SAAS) services, namely, software for managing documents, forms and contracts in the automotive retail sales and financing process, namely, software for creating, archiving, and organizing documents and forms; Software as a service (SAAS) services, namely, software for use in customer relationship management (CRM); Software as a service (SAAS) services, namely, software for use in network management; Software as a service (SAAS) services, namely, software that provide real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer software design, development, and programming services for others; Computer services, namely, designing, implementing, and maintaining web site for others; Technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software; Hosting the web sites of others on computer servers for a global computer network; Installation of computer softwareClass 042 for Providing temporary use of online non-downloadable software for organizing, managing, storing, tracking, analyzing and creating reports on information related to relationship management, sales, promotion and marketing; computer services, namely, design, development, implementation, installation, maintenance, and updating of computer software, and providing consultation for the aforesaid; Providing online information regarding computer software and services; Providing online, non-downloadable software for use by automotive dealerships that allows users to perform internet lead management, customer relationship management, contract management, inventory management, and trade-in management; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to manage and track sales, financing, inventory, insurance, warranties, storage, parts supply, repair, and maintenance information; Software as a service (SAAS) services, namely, software for retailers of automobiles, minivans, light trucks, sport utility vehicles, heavy trucks, construction equipment, agricultural equipment, motorcycles, boats, marine vehicles, powersports vehicles and recreational vehicles to create and manage service and sales leads and communicate with customers through multiple channels; Software as a service (SAAS) services, namely, software for managing documents, forms and contracts in the automotive retail sales and financing process, namely, software for creating, archiving, and organizing documents and forms; Software as a service (SAAS) services, namely, software for use in network management; Software as a service (SAAS) services, namely, software that provide real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; Computer software design, development, and programming services for others; Computer services, namely, designing, implementing, and maintaining web site for others; Hosting the web sites of others on computer servers for a global computer network; Installation of computer software
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: /HSA/     Date: 03/15/2019
Signatory's Name: Hadi S. Al-Shathir
Signatory's Position: Attorney of record, Missouri bar member

Signatory's Phone Number: 3145526000

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: 88001867
Internet Transmission Date: Fri Mar 15 17:59:32 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20190315175932568
585-88001867-620255b68a1c898a3b967c05b28
c9dff66ba5fde271a3763649217d85a0fa683859
-N/A-N/A-20190315175504217157