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. 88021983 NEXT(Standard Characters, see http://uspto.report/TM/88021983/mark.png) has been amended as follows:

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

I. INTRODUCTION. Applicant?s mark is not likely to cause confusion for the following reasons: 1) Applicant?s description of goods as altered distinguishes the mark from the cited marks, making it unlikely to cause confusion. 2) The large number of registered marks that incorporate the word ?NEXT? is evidence that the word ?NEXT? when used in connection with other words (such as NEXTSOURCE) is not the dominant feature of the mark and less likely to cause confusion. For these reasons, as explained more fully below, Applicant?s mark should be allowed to proceed to registration. II. APPLICANT'S DESCRIPTION OF GOODS NEEDS TO BE CORRECTED. Applicant?s original application listed its software as a service in class 35: ?Providing use of on-line non- downloadable software for scheduling temporary employment shifts.? This description however is inaccurate as its mobile application is actually a downloadable mobile application software product and should be moved to Class 9. In order to clarify the actual function of the mobile application, Applicant further requests that the description of its goods be modified to the following: "Downloadable mobile application that creates a virtual pool of labor across the locations owned by a business and uses data science and learning algorithms to deliver intelligent matching of qualified, available and interested existing employees of that business, who are looking for extra work, to shifts where help is needed at the business's locations due to terminations, illness, breakage and disconnects inherent in a static periodic scheduling process." With these corrections to the description of goods, Applicant?s mark is not confusingly similar to the marks cited by the examiner. III. APPLICANT'S MARK IS NOT LIKELY TO CAUSE CONFUSION WITH THE CITED MARKS. The Examiner asserts that Applicant?s mark is confusingly similar to NEXTSOURCE for ?Application service provider (ASP) featuring software in the field of employee and project personnel staffing and personnel staffing vendor management? in class 35. The marks are not confusingly similar for a variety of reasons. First, references to the ?staffing? of personnel or staffing services typically refers to the provision of temporary employees by an outside vendor, such that the temporary employees are employed by the staffing vendor and not the business engaging them. (See Exhibits 1 and 2 concerning definitions of staffing solutions and services.) Business who supply such temporary employees are known as ?staffing agencies.? (See Exhibit 3.) The examiner?s evidence also supports this distinction. For example, the SHRM article attached by examiner refers to streamlining ?staffing services? and goes on to discuss a software solution that allowed a hospital system to manage a smaller group of approved "vendors," to approach the vendors as a single voice, and to avoid bidding against each other for the same nurses. Not once does the article refer to dealing with existing employees or matching them to open shifts. The hr-software.net article on the other hand refers to ?workforce management? systems that can manage payroll and scheduling for companies, but not once does the article refer to staffing from outside agencies. The bullhorn.com article also refers to scheduling, but does not mention staffing at all. These are two separate concepts in the HR world. The NEXTSOURCE description of services also refers to ?staffing VENDOR management? (emphasis added) indicating that its software is for managing staffing from such third-party entities. Applicant?s goods on the other hand are limited to simply matching existing employees to open shifts, a completely different concept. Additionally, the word NEXT is not the dominant feature of the mark NEXTSOURCE. With that mark, NEXT is an adjective that describes the noun SOURCE, i.e. a source to come or a source that comes next. The large number of registered marks that incorporate the word ?NEXT?, including many with services similar to NEXTSOURCE and the other marks cited by the examiner, show that NEXT is not the dominant feature of such marks. For example, there are existing registrations for the following marks incorporating the word NEXT: NEXTHIRE (Reg. No. 4596442) for among other things ?Employment recruiting consultation; Executive recruiting services; Personnel placement and recruitment; Professional staffing and recruiting services.? (Exhibit 4.) NEXTCREW (Reg. No. 4194376) for ?Employment agency services, namely, filling the temporary staffing needs of businesses and individuals.? (Exhibit 5.) NEXTJOB (Reg. No. 3589968) for ?Employment agency services; recruitment and placement of temporary and permanent personnel; testing of perspective personnel, namely, skills, typing, computer, office equipment, and customer service testing; employment outplacement services.? (Exhibit 6.) NEXTUP (Reg. No. 5026918) for employment recruiting services. (Exhibit 7.) NEXTWORK (Reg. No. 5565466) for business collaboration services to generate job opportunities for students and to assist employers with finding qualified local employees. (Exhibit 8.) NEXTAFF (Reg. No. 2920094) for Employment hiring, recruiting, placement, staffing and career networking services. (Exhibit 9.) NEXT LEVEL STAFFING 3791070 C 035. US 100 101 102. G & S: Employment Agency services, namely, filling the temporary and permanent staffing needs of businesses. (Exhibit 10.) NEXTMAPPING (Reg. No. 5683337) for business consulting for employee recruiting and retention. (Exhibit 11.) NEXT MOVE (Reg. No. 5379409 for charitable services, namely, employment counseling services for obtaining, maintaining and advancing in employment opportunities. (Exhibit 12.) NEXT RIDGELINE (Reg. No. 5304906 for Charitable services for the provision of online employment information. (Exhibit 13.) For these same reasons, the NEXTOPEN and NEXTSHIFT marks cited by the examiner are not confusingly similar because the word NEXT is not the dominant feature of the mark. The cases cited by Examiner refer to marks that were names (?Barr?) or were otherwise distinctive (?Veuve?) and were not adjectives. Applicant?s mark on the other hand is the single word NEXT which does not qualify any other noun or word and is thus distinctive in its own right and not likely to cause confusion with NEXTSOURCE or any of the other marks cited by examiner. This is especially true in this case where the goods are limited to downloadable mobile applications dealing with a business? existing employee shifts and which does not deal with recruiting or staffing services as typically understood. The only other mark cited by examiner that is a single word is ?NEXXT? (currently suspended) in class 35 for ?Providing computer online information in the fields of employment, recruitment, careers, employment counseling related careers and worklife, job resources, job listings and resumes; providing online interactive employment counseling and personnel recruitment services; providing online employment placement services, namely, resume matching services via a global computer network; employment placement and staffing services; computer services, namely, providing databases and indexes of information featuring recruitment and employment information, employment and job posting advertisements, employment counseling information and resources, resume creation, educational information in the field of employment hiring, recruiting, placement, staffing, resume transmittals and communication of responses thereto via a global computer network; providing worklife services in the nature of providing information on employment and guidance relating thereto.? Once again, this mark covers job search and placement matters and does not cover a downloadable mobile application dealing with matching existing employees of a business with open shifts in that same business. Because the services are different, and the mark contains double XXs, there is no likelihood of confusion. IV. CONCLUSION Because the NEXT mark is not confusingly similar to NEXTSOURCE or any of the other marks cited by Examiner, the NEXT mark should be allowed to proceed to registration.

EVIDENCE
Evidence in the nature of Exhibit 1: Printout from American Staffing Association website defining staffing. Exhibit 2: Printout of article from Houston Chronicle concerning difference between staffing and placement. Exhibit 3: Printout of article from strategicCFO.com concerning definition of staffing agency. Exhibit 4: TSDR printout of NEXTHIRE trademark registration. Exhibit 5: TSDR printout of NEXTCREW trademark registration. Exhibit 6: TSDR printout of NEXTJOB trademark registration. Exhibit 7: TSDR printout of NEXTUP trademark registration. Exhibit 8: TSDR printout of NEXTWORK trademark registration. Exhibit 9: TSDR printout of NEXTAFF trademark registration. Exhibit 10: TSDR printout of NEXT LEVEL STAFFING trademark registration. Exhibit 11: TSDR printout of NEXTMAPPING trademark registration. Exhibit 12: TSDR printout of NEXT MOVE trademark registration. Exhibit 13: TSDR printout of NEXT RIDGELINE trademark registration. has been attached.
Original PDF file:
evi_12246113186-20190420160152234232_.__Staffing_Solutions___Services_American_Staffing_Association.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._XHIBIT_2_-_Difference_between_Staffing_and_Placement___Chron.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_12246113186-20190420160152234232_._y_Definition___What_is_a_Staffing_Agency___The_Strategic_CFO.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_4_-_NextHire.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_5_-_NextCrew.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_6_-_NextJob.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_7_-_NextUp.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_8_-_NextWork.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_9_-_NEXTAFF.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_10_-_Next_Level_Staffing.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_11_-_NextMapping.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_12_-_Next_Move.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_12246113186-20190420160152234232_._EXHIBIT_13_-_Next_Ridgeline.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Providing use of on-line non-downloadable software for scheduling temporary employment shifts

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 (Original Class: 042 ) for Downloadable mobile application that creates a virtual pool of labor across the locations owned by a business and uses data science and learning algorithms to deliver intelligent matching of qualified, available and interested existing employees of that business, who are looking for extra work, to shifts where help is needed at the business's locations due to terminations, illness, breakage and disconnects inherent in a static periodic scheduling process
Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 10/09/2015 and first used in commerce at least as early as 10/09/2015 , and is now in use in such commerce.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
ALLEN C. OSTERGAR III
OSTERGAR LAW GROUP PC
27101 PUERTA REAL, SUITE 450
MISSION VIEJO
California
US
92691

Proposed:
ALLEN C. OSTERGAR III of OSTERGAR LAW GROUP PC, having an address of
9110 Irvine Center Drive Irvine, California 92618
United States
aostergar@ostergar.com
949-305-4590



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: /Josh Sadoff/      Date: 04/20/2019
Signatory's Name: Josh Sadoff
Signatory's Position: Director

Response Signature
Signature: /Allen C. Ostergar III/     Date: 04/20/2019
Signatory's Name: Allen C. Ostergar III
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 9493054590

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.

Mailing Address:    ALLEN C. OSTERGAR III
   OSTERGAR LAW GROUP PC
   9110 Irvine Center Drive
   Irvine, California 92618
        
Serial Number: 88021983
Internet Transmission Date: Sat Apr 20 16:32:31 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201904201632312
37343-88021983-620cbc23a8ab98ba8c68f0401
1a9fb768d488341862919c577deae5f531f34238
e-N/A-N/A-20190420160152234232