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. 88099592 1RIVET(Standard Characters, see http://uspto.report/TM/88099592/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 035 for Managing employment hiring, recruiting, placement, and staffing services for others; consulting services in the fields of business management and employment; outsourcing services, namely, providing businesses with outsourced employees; business management; business project management services; business consulting services in the field of customer acquisition and retention strategy; outsourcing services in the fields of mailroom services, printing services, information technology, conference room management, receptionist services, hospitality services, supply management, system development and testing, imaging and records management, audio and visual services, facilities management, and graphic design
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/27/2015 and first used in commerce at least as early as 10/27/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Managing employment hiring, recruiting, placement, and staffing services for others; Employment staffing and recruiting consultation services, namely, managing employment hiring, recruiting, placement, and staffing services for others; consulting services in the fields of business management and employment; outsourcing services, namely, providing businesses with outsourced employees; business management; business project management services; business consulting services in the field of customer acquisition and retention strategy; outsourcing services in the fields of mailroom services, printing services, information technology, conference room management, receptionist services, hospitality services, supply management, system development and testing, imaging and records management, audio and visual services, facilities management, and graphic designClass 035 for Employment staffing and recruiting consultation services, namely, managing employment hiring, recruiting, placement, and staffing services for others; consulting services in the fields of business management and employment; outsourcing services, namely, providing businesses with outsourced employees; business management; business project management services; business consulting services in the field of customer acquisition and retention strategy; outsourcing services in the fields of mailroom services, printing services, information technology, conference room management, receptionist services, hospitality services, supply management, system development and testing, imaging and records management, audio and visual services, facilities management, and graphic design
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/27/2015 and first used in commerce at least as early as 10/27/2015 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software development, testing, and support for others; consulting in the fields of information technology, cloud and application customer strategy development and deployments, system and data integration, data analytics, artificial intelligence, and data visualization; non-downloadable software for business management; non-downloadable software for managing business projects and associated documents; non-downloadable software for tracking database migration and performing large-scale data comparisons; non-downloadable software for use in tracking business task requests, namely, requests for printing, conference room bookings, and business asset management; non-downloadable software for managing authentication information and providing secure access to business applications; non-downloadable software for use by governmental entities to manage governmental processes and functions; non-downloadable software for use in assessing, collecting, processing, and managing governmental fees, taxes, duties, and tariffs
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: Software development, testing, and support for others; Computer software development, computer software testing, and technical support for others in the nature of troubleshooting of computer software problems; consulting in the fields of information technology, cloud and application customer strategy development and deployments, system and data integration, data analytics, artificial intelligence, and data visualization; computer software and IT consulting services, namely, consulting in the fields of information technology, cloud and application customer strategy development and deployments, system and data integration, data analytics, artificial intelligence, and data visualization; non-downloadable software for business management; providing temporary use of online, non-downloadable software for business management; non-downloadable software for managing business projects and associated documents; providing temporary use of online, non-downloadable software for managing business projects and associated documents; non-downloadable software for tracking database migration and performing large-scale data comparisons; providing temporary use of online, non-downloadable software for tracking database migration and performing large-scale data comparisons; non-downloadable software for use in tracking business task requests, namely, requests for printing, conference room bookings, and business asset management; providing temporary use of online, non-downloadable software for use in tracking business task requests, namely, requests for printing, conference room bookings, and business asset management; non-downloadable software for managing authentication information and providing secure access to business applications; providing temporary use of online, non-downloadable software for managing authentication information and providing secure access to business applications; non-downloadable software for use by governmental entities to manage governmental processes and functions; providing temporary use of online, non-downloadable software for use by governmental entities to manage governmental processes and functions; non-downloadable software for use in assessing, collecting, processing, and managing governmental fees, taxes, duties, and tariffs; providing temporary use of online, non-downloadable software for use in assessing, collecting, processing, and managing governmental fees, taxes, duties, and tariffs.Class 042 for Computer software development, computer software testing, and technical support for others in the nature of troubleshooting of computer software problems; computer software and IT consulting services, namely, consulting in the fields of information technology, cloud and application customer strategy development and deployments, system and data integration, data analytics, artificial intelligence, and data visualization; providing temporary use of online, non-downloadable software for business management; providing temporary use of online, non-downloadable software for managing business projects and associated documents; providing temporary use of online, non-downloadable software for tracking database migration and performing large-scale data comparisons; providing temporary use of online, non-downloadable software for use in tracking business task requests, namely, requests for printing, conference room bookings, and business asset management; providing temporary use of online, non-downloadable software for managing authentication information and providing secure access to business applications; providing temporary use of online, non-downloadable software for use by governmental entities to manage governmental processes and functions; providing temporary use of online, non-downloadable software for use in assessing, collecting, processing, and managing governmental fees, taxes, duties, and tariffs.
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: /Jon E. Holland/     Date: 06/18/2019
Signatory's Name: Jon E. Holland
Signatory's Position: Attorney of Record, AL Bar Member

Signatory's Phone Number: 256-551-0171

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: 88099592
Internet Transmission Date: Tue Jun 18 15:32:32 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019061815323261
8691-88099592-620b7895cc32b33b14b467e962
acf5a68eb26634012c021bd2951f15597988d6a4
0-N/A-N/A-20190618152959226257