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. 88074258 VOICEA(Standard Characters, see http://uspto.report/TM/88074258/mark.png) has been amended as follows:

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

In the Office Action mailed June 22, 2019, the Examining Attorney raised questions about the specimens of use submitted with Applicant’s Statement of Use in Class 9.

Specimens are not Mockups

The Examining Attorney questioned whether Applicant’s specimens of use were mockups, not reflecting the actual current use of the mark. The specimens of use consisted of screenshots taken from the mobile application software and download page and pasted into a Microsoft Word document to enable the inclusion of explanatory captions for each image. The Word document was printed to PDF for filing.

Screenshot Capture Process

Each of the screenshots was captured by the undersigned on a mobile phone running the Android operating system. They show the full screen displayed by the respective application, including the Android notification bar at the top. The images were captured using one of the standard methods on a Samsung Galaxy S7: either swiping the edge of one’s palm across the screen, or pressing the power button and home button simultaneously. As indicated in the file names, the screenshots were captured on May 29, 2019.


In light of the foregoing, Applicant requests that the Statement of Use be accepted and the application approved for registration.

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 facilitating meeting activation and follow up; mobile applications for use in facilitating meeting activation and follow up; computer software for generating email messages, including meeting reminders and meeting recaps; mobile applications for generating email messages, including meeting reminders and meeting recaps; computer software for transcribing comments made during meetings and summarizing action items and key takeaways; mobile applications for transcribing comments made during meetings and summarizing action items and key takeaways; computer software for searching meeting notes, creating and editing annotations, and sharing meeting highlights with others; mobile applications for searching meeting notes, creating and editing annotations, and sharing meeting highlights with others
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 009, the mark was first used at least as early as 12/20/2018 and first used in commerce at least as early as 12/20/2018 .

Proposed: Class 009 for computer software for use in facilitating meeting activation and follow up; mobile applications for use in facilitating meeting activation and follow up; computer software for generating email messages, including meeting reminders and meeting recaps; mobile applications for generating email messages, including meeting reminders and meeting recaps; computer software for transcribing comments made during meetings and summarizing action items and key takeaways; mobile applications for transcribing comments made during meetings and summarizing action items and key takeaways; computer software for searching meeting notes, creating and editing annotations, and sharing meeting highlights with others; mobile applications for searching meeting notes, creating and editing annotations, and sharing meeting highlights with others

Deleted Filing Basis: 1(b)
In International Class 009, the mark was first used at least as early as 12/20/2018 . and first used in commerce at least as early as 12/20/2018 .

Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of "SPU0-2410440161-20190716171816547251_._Screenshot_20190529-185253_Voicea.jpg" is a screen capture of the login screen for the VOICEA software; "SPU0-2410440161-20190716171816547251_._Screenshot_20190529-182825_Google_Play_Store.jpg" and "SPU0-2410440161-20190716171816547251_._Screenshot_20190529-182838_Google_Play_Store.jpg" are screen captures of different portion of the download page in the Google Play app .
"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
Specimen File3

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: /JeffersonScher/      Date: 07/16/2019
Signatory's Name: Jefferson F. Scher
Signatory's Position: Attorney of record, California bar member
Signatory's Phone Number: 650-812-3400


Response Signature
Signature: /JeffersonScher/     Date: 07/16/2019
Signatory's Name: Jefferson F. Scher
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 650-812-3400

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: 88074258
Internet Transmission Date: Tue Jul 16 18:17:50 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019071618175022
0087-88074258-620458c35b5e413c104a1ed5ed
cfcbc169a7b7821fa51ddf43decc11fc0124918-
N/A-N/A-20190716171816547251