Response to Office Action

MASTERMINDING SECURITY AWARENESS

Terranova Worldwide Corporation

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88052748
LAW OFFICE ASSIGNED LAW OFFICE 119
MARK SECTION
MARK http://uspto.report/TM/88052748/mark.png
LITERAL ELEMENT MASTERMINDING SECURITY AWARENESS
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (009)(class deleted)
GOODS AND/OR SERVICES SECTION (041)(no change)
GOODS AND/OR SERVICES SECTION (042)(class added)
INTERNATIONAL CLASS 042
DESCRIPTION
Safekeeping of personal information and organization privacy, namely, electronic data storage
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 1909171
       FOREIGN APPLICATION COUNTRY Canada
        FOREIGN FILING DATE 07/17/2018
       INTENT TO
       PERFECT 44(d)
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
CORRESPONDENCE SECTION
ORIGINAL ADDRESS MARK HARRISON
VENABLE LLP
P.O. BOX 34385
WASHINGTON
District of Columbia
US
20043-9998
NEW CORRESPONDENCE SECTION
NAME MARK HARRISON
FIRM NAME VENABLE LLP
DOCKET/REFERENCE NUMBER 37114-434388
STREET P.O. BOX 34385
CITY WASHINGTON
STATE District of Columbia
ZIP/POSTAL CODE 20043-9998
COUNTRY United States
PHONE 202-344-4976
EMAIL trademark@venable.com;rliebowitz@venable.com; klwilliams@venable.com
AUTHORIZED EMAIL COMMUNICATION Yes
PAYMENT SECTION
TOTAL FEES DUE The filing Attorney has elected not to submit a fee payment for the class(es), believing no fee payment is required under the Trademark Rules of Practice.
SIGNATURE SECTION
DECLARATION SIGNATURE The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
RESPONSE SIGNATURE /kelly l. williams/
SIGNATORY'S NAME Kelly L. Williams
SIGNATORY'S POSITION Associate Attorney, Venable, LLP, MD Bar Member
SIGNATORY'S PHONE NUMBER 202-344-4041
DATE SIGNED 05/13/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Mon May 13 13:44:44 EDT 2019
TEAS STAMP USPTO/ROA-XXX.XX.XXX.XXX-
20190513134444792681-8805
2748-6201280b4179d4727259
9accf6b77161e3b138669aae4
ba7e36a3e5ef63298b1-N/A-N
/A-20190513133912769680



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. 88052748 MASTERMINDING SECURITY AWARENESS(Standard Characters, see http://uspto.report/TM/88052748/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Downloadable video recordings featuring training in the field of information security; printed training materials, namely, newsletters and posters in the field of information security

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Safekeeping of personal information and organization privacy, namely, electronic data storage
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1909171 filed 07/17/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
MARK HARRISON
VENABLE LLP
P.O. BOX 34385
WASHINGTON
District of Columbia
US
20043-9998

Proposed:
MARK HARRISON of VENABLE LLP, having an address of
P.O. BOX 34385 WASHINGTON, District of Columbia 20043-9998
United States
trademark@venable.com;rliebowitz@venable.com; klwilliams@venable.com
202-344-4976
The docket/reference number is 37114-434388 .




I hereby elect to by-pass any fee edit for an added class(es), because I believe the original fee payment was sufficient. I understand that the examining attorney could still, upon later review, require a fee payment.
SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /kelly l. williams/     Date: 05/13/2019
Signatory's Name: Kelly L. Williams
Signatory's Position: Associate Attorney, Venable, LLP, MD Bar Member

Signatory's Phone Number: 202-344-4041

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:    MARK HARRISON
   VENABLE LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
        
Serial Number: 88052748
Internet Transmission Date: Mon May 13 13:44:44 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201905131344447
92681-88052748-6201280b4179d47272599accf
6b77161e3b138669aae4ba7e36a3e5ef63298b1-
N/A-N/A-20190513133912769680



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