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. 88010768  (Stylized and/or with Design, see http://uspto.report/TM/88010768/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing temporary use of on-line non-downloadable software for customer relationship management (CRM), task tracking, business process management, onboarding and training, and workflow management and organization for use by professional service firms; providing temporary use of non-downloadable software for use in exchanging information, data, signatures, documents, and messages between professional services firms and their clients and customers; cloud computing featuring software for customer relationship management (CRM); software platform, namely, providing temporary use of online non-downloadable software used by professional services firms for internal communication by professional services staff and providing services to, and obtaining information from, clients of professional services firms; application service provider featuring interactive software for transmission of documents, and graphical, audio, and video information over electronic communications networks; computer software maintenance; computer software design; website design and development for others; mobile application software design and development for others; technical consultation and technical assistance in the field of computer system software and network 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.

In International Class 042, the mark was first used at least as early as 10/01/2017 and first used in commerce at least as early as 10/01/2017 .

Proposed: Class 042 for Providing temporary use of on-line non-downloadable software for customer relationship management (CRM), task tracking, business process management, onboarding and training, and workflow management and organization for use by professional service firms; providing temporary use of non-downloadable software for use in exchanging information, data, signatures, documents, and messages between professional services firms and their clients and customers; cloud computing featuring software for customer relationship management (CRM); software platform, namely, providing temporary use of online non-downloadable software used by professional services firms for internal communication by professional services staff and providing services to, and obtaining information from, clients of professional services firms; application service provider featuring interactive software for transmission of documents, and graphical, audio, and video information over electronic communications networks; computer software maintenance; computer software design; website design and development for others; mobile application software design and development for others; technical consultation and technical assistance in the field of computer system software and network 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.

In International Class 042, the mark was first used at least as early as 10/01/2017 . and first used in commerce at least as early as 10/01/2017 .

Applicant hereby submits one(or more) specimen(s) for Class 042 . The specimen(s) submitted consists of Series of screenshots showing the applicable mark in use with the listed services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. Specimen File1
Specimen File2

The applicant's current attorney information: Rhett V. Barney. Rhett V. Barney of Lee & Hayes, PC, is located at

      601 W. Riverside Ave. Suite 1400
      Spokane, Washington 99201
      US
The docket/reference number is L135-0003TMU.

The phone number is 509-944-4642.

The fax number is 509-323-8979.

The email address is trademarks@leehayes.com

The applicants proposed attorney information: Rhett V. Barney. Other appointed attorneys are Daniel M. Wadkins, J. Christopher Lynch, David A. Divine, Robert A. Madayag III, Elizabeth L. Zinke, George H. Brunt, Andrew L. Eisenberg, Joshua T. Grandinetti and Ethan B. Vodde. Rhett V. Barney of Lee & Hayes, PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      601 W. Riverside Ave. Suite 1400
      Spokane, Washington 99201
      United States
The docket/reference number is L135-0003TMU.

The phone number is 509-944-4642.

The fax number is 509-323-8979.

The email address is trademarks@leehayes.com

Rhett V. Barney submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Rhett V. Barney. Rhett V. Barney of Lee & Hayes, PC, is located at

      601 W. Riverside Ave. Suite 1400
      Spokane, Washington 99201
      US
The docket/reference number is L135-0003TMU.

The phone number is 509-944-4642.

The fax number is 509-323-8979.

The email address is trademarks@leehayes.com; rhettb@leehayes.com; karig@leehayes.com

The applicants proposed correspondence information: Rhett V. Barney. Rhett V. Barney of Lee & Hayes, PC, is located at

      601 W. Riverside Ave. Suite 1400
      Spokane, Washington 99201
      United States
The docket/reference number is L135-0003TMU.

The phone number is 509-944-4642.

The fax number is 509-323-8979.

The email address is trademarks@leehayes.com; rhettb@leehayes.com; karig@leehayes.com

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Rhett Barney/      Date: 10/03/2019
Signatory's Name: Rhett V. Barney
Signatory's Position: Attorney of Record, WA State Bar
Signatory's Phone Number: 509-944-4642


Response Signature
Signature: /Rhett Barney/     Date: 10/03/2019
Signatory's Name: Rhett V. Barney
Signatory's Position: Attoney of Record, WA State Bar

Signatory's Phone Number: 509-944-4642

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Rhett V. Barney
   Lee & Hayes, PC
   
   601 W. Riverside Ave. Suite 1400
   Spokane, Washington 99201
Mailing Address:    Rhett V. Barney
   Lee & Hayes, PC
   601 W. Riverside Ave. Suite 1400
   Spokane, Washington 99201
        
Serial Number: 88010768
Internet Transmission Date: Thu Oct 03 16:44:52 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019100316445203
7472-88010768-6106d76397c30b457469fd121b
4b90372c2c69364a50d5e715035328cee7b3ab-N
/A-N/A-20191003154609762850