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. 88105658  (Stylized and/or with Design, see http://uspto.report/TM/88105658/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 Advertising agency services; Commercial information services, namely, advertisement management by providing reports, advertisement targeting, and management of electronically stored advertising, for use on the global computer network; promoting the goods and services of others by preparing and placing on-line advertisements on a network of web pages on the global computer, as well as via e-mail; consulting in the field of on-line advertising; Providing online exchanges and online auctions for buying or selling advertising; advertising services for matching buyers and sellers of advertising, for tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; advertising and marketing consultancy services; commercial information services, namely, advertisement management by providing reports, advertisement targeting, and management of electronically stored advertising, for use on the global computer network; creating and developing advertising campaigns for others; advertising and marketing consultancy services
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 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.

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 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[ Tonga application number TOM201803590 filed 06/05/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Advertising agency services; Commercial information services, namely, advertisement management by providing reports, advertisement targeting, and management of electronically stored advertising, for use on the global computer network; Commercial information services, namely, advertisement management by providing data and analytics reports, advertisement targeting information, and management of electronic advertising for use on the internet; promoting the goods and services of others by preparing and placing on-line advertisements on a network of web pages on the global computer, as well as via e-mail; promoting the goods and services of others by preparing and placing on-line advertisements on web pages on the Internet; advertising, promotion and marketing services in the nature of e-mail campaigns for others; Providing online exchanges and online auctions for buying or selling advertising; consulting in the field of on-line advertising; advertising services for matching buyers and sellers of advertising, for tracking advertising performance, for managing, distributing and serving advertising, for analyzing advertising data, for reporting advertising data, and for optimizing advertising performance; providing a website featuring online marketplaces and online auctions for buying and selling advertising; online advertising matching services for connecting buyers and sellers of advertising; commercial information services, namely, advertisement management by providing reports, advertisement targeting, and management of electronically stored advertising, for use on the global computer network; advertising services featuring tracking of advertising performance, managing, distributing, and serving advertising, analyzing advertising data, reporting advertising data, and for optimizing advertising performance; advertising and marketing consultancy services; advertising and marketing consultancy services; creating and developing advertising campaigns for others; providing an online database featuring information in the field of advertisingClass 035 for Advertising agency services; Commercial information services, namely, advertisement management by providing data and analytics reports, advertisement targeting information, and management of electronic advertising for use on the internet; promoting the goods and services of others by preparing and placing on-line advertisements on web pages on the Internet; advertising, promotion and marketing services in the nature of e-mail campaigns for others; consulting in the field of on-line advertising; providing a website featuring online marketplaces and online auctions for buying and selling advertising; online advertising matching services for connecting buyers and sellers of advertising; advertising services featuring tracking of advertising performance, managing, distributing, and serving advertising, analyzing advertising data, reporting advertising data, and for optimizing advertising performance; advertising and marketing consultancy services; creating and developing advertising campaigns for others; providing an online database featuring information in the field of advertising
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 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of Applicant's website depicting the mark in promoting and rendering the identified 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].
Original PDF file:
SPU0-10413211111-20190125190324521673_._88105658.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

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 [ Tonga application number TOM201803590 filed 06/05/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Leasing time to an interactive computer database in the field of advertising; Computer services, namely, providing a website featuring technology that enables users to administer online exchanges and online auctions for buying and selling advertising, match buyers and sellers of advertising, track advertising performance, manage, distribute and serving advertising, analyzing advertising data, reporting advertising data, and optimizing advertising performance; Providing temporary use of online non-downloadable software for use in generating online marketing programs; providing temporary use of on-line, non-downloadable software for analyzing and reporting on Internet traffic and keyword placement, for analyzing the effectiveness of web site marketing, and for searching and viewing marketing research; application service provider (ASP), namely, hosting computer software applications of others; application service provider (ASP) featuring software for tracking web site activity and managing, monitoring, tracking and optimizing the performance and effectiveness of web sites, online marketing campaigns and keyword search performance
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 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.

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 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[ Tonga application number TOM201803590 filed 06/05/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Leasing time to an interactive computer database in the field of advertising; Computer services, namely, providing a website featuring technology that enables users to administer online exchanges and online auctions for buying and selling advertising, to match buyers and sellers of advertising, to track advertising performance, to manage, distribute and serve advertising, to analyze advertising data, to report advertising data, and to optimize advertising performance; Computer services, namely, providing a website featuring technology that enables users to administer online exchanges and online auctions for buying and selling advertising, match buyers and sellers of advertising, track advertising performance, manage, distribute and serving advertising, analyzing advertising data, reporting advertising data, and optimizing advertising performance; providing temporary use of online non-downloadable software for use in generating online marketing programs; providing temporary use of on-line, non-downloadable software for analyzing and reporting on Internet traffic and keyword placement, for analyzing the effectiveness of web site marketing, and for searching and viewing marketing research; application service provider (ASP), namely, hosting computer software applications of others; application service provider (ASP) featuring software for tracking web site activity and managing, monitoring, tracking and optimizing the performance and effectiveness of web sites, online marketing campaigns and keyword search performanceClass 042 for Computer services, namely, providing a website featuring technology that enables users to administer online exchanges and online auctions for buying and selling advertising, to match buyers and sellers of advertising, to track advertising performance, to manage, distribute and serve advertising, to analyze advertising data, to report advertising data, and to optimize advertising performance; providing temporary use of online non-downloadable software for use in generating online marketing programs; providing temporary use of on-line, non-downloadable software for analyzing and reporting on Internet traffic and keyword placement, for analyzing the effectiveness of web site marketing, and for searching and viewing marketing research; application service provider (ASP), namely, hosting computer software applications of others; application service provider (ASP) featuring software for tracking web site activity and managing, monitoring, tracking and optimizing the performance and effectiveness of web sites, online marketing campaigns and keyword search performance
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 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.
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 [ Tonga application number TOM201803590 filed 06/05/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a stylized representation of a circle featuring colored sections, the longest of which is blue followed by red, then yellow and ending with a green circle where the blue and yellow portions overlap. The color white represents background and does not form part of the mark.

Miscellaneous Statement
Applicant respectfully submits that its existing specimen is acceptable as it shows use of the mark in promoting the identified services (which may be rendered online and through other platforms). In an abundance of caution, however, Applicant submits an additional specimen here, clearly showing use of the mark as part of the rendering of the identified services.


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: /GLC/      Date: 01/28/2019
Signatory's Name: Gavin Charlston
Signatory's Position: Senior Trademark Counsel, CA bar member
Signatory's Phone Number: N/A


Response Signature
Signature: /GLC/     Date: 01/28/2019
Signatory's Name: Gavin Charlston
Signatory's Position: Attorney of record, CA bar member

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: 88105658
Internet Transmission Date: Mon Jan 28 13:54:11 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201901281354115
11435-88105658-620b2612e4d87cb217396d2b2
09ca6b1c1e36ac8dc37ffc4d7d9cf4efe129e6c-
N/A-N/A-20190125190324521673