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. 88129835 METRO (Stylized and/or with Design, see http://uspto.report/TM/88129835/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of (1) Argument; (2) Petition for Cancellation filed 01/17/19 regarding U.S. Trademark Reg. No. 2885673; (3) Notice of Default issued 03/14/19 in T-Mobile USA, Inc. v. Spok, Inc. has been attached.
Original PDF file:
evi_2062917653-20190417182459393031_._Argument.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_2062917653-20190417182459393031_._ttabvue-92070402-CAN-1.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_2062917653-20190417182459393031_._ttabvue-92070402-CAN-4.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Wireless telephones; cellular telephones; smartphones; wireless local area networks access points configured as onboard diagnostic system dongles; onboard diagnostic system dongles that provide wireless connectivity to a cellular telecommunications network; internet of things (IoT) devices; SIM cards; memory cards; memory card readers; carrying cases for wireless telecommunications devices; gel skins in the nature of rubber coverings for protecting wireless telephones and smartphones; removable back covers for wireless phones and smartphones; protective transparent display coverings, namely, plastic transparent films for covering and providing a scratch proof barrier or protection for displays on wireless telephones and smartphones; USB cables; high-definition multimedia interface adapters and cables; wired and wireless hands-free microphone and earphone adapters; stereo headphones; ear buds; ear bud covers; car battery chargers; wall battery chargers; power adaptors; belt clip holsters for carrying wireless phones and smartphones; docking stations for recharging of wireless phones and smartphones; in-vehicle holders for holding and charging wireless phones and smartphones; fitted wireless phone and smartphone pouches; near field communications (NFC) tags; downloadable data files consisting of audio, video and multimedia works containing music and ringtones; software for use in controlling and monitoring prepaid wireless services; software for mobile wallet services and mobile commerce; software for downloading and playing data files consisting of audio recordings of voicemail messages; software for locating, triggering an alarm on, locking access to, erasing data and media on and initiation of backup of data and media on misplaced or stolen wireless telecommunications devices; software for blocking incoming telephonic and data communications from third parties; software for receiving and presenting text, audio, images and video consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts; software for monitoring the location of onboard diagnostic system dongles and providing updates and alerts concerning the location of onboard diagnostic system dongles; software for receiving and viewing updates and alerts concerning performance metrics of motor vehicles; software for receiving and viewing updates and alerts concerning the driving behavior of motor vehicle operators; computer software for establishing geofencing boundaries, establishing rules for the generation of alerts associated with geofenced boundaries, and receiving and viewing alerts associated with geofenced boundaries; computer software for receiving and viewing motor vehicle trip data
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.

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[ Trinidad and Tobago application number 54308 filed 07/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Wireless telephones; cellular telephones; smartphones; wireless local area networks access points configured as onboard diagnostic system dongles; onboard diagnostic system dongles that provide wireless connectivity to a cellular telecommunications network; internet of things (IoT) devices; internet of things (IoT) devices, namely, cellular enabled GPS tracking devices; SIM cards; memory cards; memory card readers; carrying cases for wireless telecommunications devices; gel skins in the nature of rubber coverings for protecting wireless telephones and smartphones; removable back covers for wireless phones and smartphones; protective transparent display coverings, namely, plastic transparent films for covering and providing a scratch proof barrier or protection for displays on wireless telephones and smartphones; USB cables; high-definition multimedia interface adapters and cables; wired and wireless hands-free microphone and earphone adapters; stereo headphones; ear buds; ear bud covers; car battery chargers; wall battery chargers; power adaptors; belt clip holsters for carrying wireless phones and smartphones; docking stations for recharging of wireless phones and smartphones; in-vehicle holders for holding and charging wireless phones and smartphones; fitted wireless phone and smartphone pouches; near field communications (NFC) tags; blank near field communications (NFC) tags; downloadable data files consisting of audio, video and multimedia works containing music and ringtones; software for use in controlling and monitoring prepaid wireless services; software for mobile wallet services and mobile commerce; software for downloading and playing data files consisting of audio recordings of voicemail messages; software for locating, triggering an alarm on, locking access to, erasing data and media on and initiation of backup of data and media on misplaced or stolen wireless telecommunications devices; software for blocking incoming telephonic and data communications from third parties; software for receiving and presenting text, audio, images and video consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts; software for monitoring the location of onboard diagnostic system dongles and providing updates and alerts concerning the location of onboard diagnostic system dongles; software for receiving and viewing updates and alerts concerning performance metrics of motor vehicles; software for receiving and viewing updates and alerts concerning the driving behavior of motor vehicle operators; computer software for establishing geofencing boundaries, establishing rules for the generation of alerts associated with geofenced boundaries, and receiving and viewing alerts associated with geofenced boundaries; computer software for receiving and viewing motor vehicle trip dataClass 009 for Wireless telephones; cellular telephones; smartphones; wireless local area networks access points configured as onboard diagnostic system dongles; onboard diagnostic system dongles that provide wireless connectivity to a cellular telecommunications network; internet of things (IoT) devices, namely, cellular enabled GPS tracking devices; SIM cards; memory cards; memory card readers; carrying cases for wireless telecommunications devices; gel skins in the nature of rubber coverings for protecting wireless telephones and smartphones; removable back covers for wireless phones and smartphones; protective transparent display coverings, namely, plastic transparent films for covering and providing a scratch proof barrier or protection for displays on wireless telephones and smartphones; USB cables; high-definition multimedia interface adapters and cables; wired and wireless hands-free microphone and earphone adapters; stereo headphones; ear buds; ear bud covers; car battery chargers; wall battery chargers; power adaptors; belt clip holsters for carrying wireless phones and smartphones; docking stations for recharging of wireless phones and smartphones; in-vehicle holders for holding and charging wireless phones and smartphones; fitted wireless phone and smartphone pouches; blank near field communications (NFC) tags; downloadable data files consisting of audio, video and multimedia works containing music and ringtones; software for use in controlling and monitoring prepaid wireless services; software for mobile wallet services and mobile commerce; software for downloading and playing data files consisting of audio recordings of voicemail messages; software for locating, triggering an alarm on, locking access to, erasing data and media on and initiation of backup of data and media on misplaced or stolen wireless telecommunications devices; software for blocking incoming telephonic and data communications from third parties; software for receiving and presenting text, audio, images and video consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts; software for monitoring the location of onboard diagnostic system dongles and providing updates and alerts concerning the location of onboard diagnostic system dongles; software for receiving and viewing updates and alerts concerning performance metrics of motor vehicles; software for receiving and viewing updates and alerts concerning the driving behavior of motor vehicle operators; computer software for establishing geofencing boundaries, establishing rules for the generation of alerts associated with geofenced boundaries, and receiving and viewing alerts associated with geofenced boundaries; computer software for receiving and viewing motor vehicle trip data
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 [ Trinidad and Tobago application number 54308 filed 07/27/2018]. 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 035 for Retail store services and online retail store services in the field of wireless telecommunications devices, accessories and services; online retail store services featuring downloadable data files consisting of audio, video and multimedia works
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.

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[ Trinidad and Tobago application number 54308 filed 07/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 035 for Retail store services and online retail store services in the field of wireless telecommunications devices, accessories and services; online retail store services featuring downloadable data files consisting of audio, video and multimedia works
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 [ Trinidad and Tobago application number 54308 filed 07/27/2018]. 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 036 for Cellular telecommunications rate plans; prepaid cellular telecommunications calling card services; cellular telecommunications payment services; insurance administration services for mobile telecommunications devices; providing extended warranties for mobile telecommunications devices; financing of purchases; equipment financing services; bill payment services; cellular telecommunications payment services, namely, cellular rate plans that exempt music streaming data from cellular rate plan data limits; cellular telecommunications payment services, namely, an adjustable cellular rate plan payment feature that permits a cellular subscriber to exempt data consisting of streamed video content from cellular rate plan data limitations via an opt-in/opt-out interface that activates or deactivates a video resolution limitation
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.

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[ Trinidad and Tobago application number 54308 filed 07/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Cellular telecommunications rate plans; Wireless telephone payment services, namely, cellular telecommunications rate plans; prepaid cellular telecommunications calling card services; issuing prepaid cellular telecommunications calling cards; cellular telecommunications payment services; cellular telecommunications payment services, namely, prepaid card services in the nature of making payment for adding airtime to prepaid or pay-as-you-go wireless services; insurance administration services for mobile telecommunications devices; providing extended warranties for mobile telecommunications devices; financing of purchases; equipment financing services; bill payment services; cellular telecommunications payment services, namely, cellular rate plans that exempt music streaming data from cellular rate plan data limits; cellular telecommunications payment services, namely, an adjustable cellular rate plan payment feature that permits a cellular subscriber to exempt data consisting of streamed video content from cellular rate plan data limitations via an opt-in/opt-out interface that activates or deactivates a video resolution limitationClass 036 for Wireless telephone payment services, namely, cellular telecommunications rate plans; issuing prepaid cellular telecommunications calling cards; cellular telecommunications payment services, namely, prepaid card services in the nature of making payment for adding airtime to prepaid or pay-as-you-go wireless services; insurance administration services for mobile telecommunications devices; providing extended warranties for mobile telecommunications devices; financing of purchases; equipment financing services; bill payment services; cellular telecommunications payment services, namely, cellular rate plans that exempt music streaming data from cellular rate plan data limits; cellular telecommunications payment services, namely, an adjustable cellular rate plan payment feature that permits a cellular subscriber to exempt data consisting of streamed video content from cellular rate plan data limitations via an opt-in/opt-out interface that activates or deactivates a video resolution limitation
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 [ Trinidad and Tobago application number 54308 filed 07/27/2018]. 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 038 for Cellular telecommunications services; cellular telecommunications services, namely, transmission of voice, audio, data, text, images, video, music, information, facsimiles, advertising, gaming and graphics via cellular telecommunications networks and the Internet; cellular telecommunications services, namely, two-way real-time transmission of voice, audio, video and data between wireless telecommunications devices; text messaging services; multimedia messaging services; providing multiple-user access to a global computer network; providing technical support regarding the usage of cellular telecommunications services and equipment; wireless roaming services; electronic mail services; ringback tone services; electronic voice messaging services, namely, recording and subsequent transmission of audio messages and transmitting textual transcriptions of audio messages; cellular telecommunications services, namely, filtering and blocking of incoming voice telecommunications; cellular telecommunications services, namely, providing transmission of text, audio, images and video content consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts over a cellular telecommunications network; wireless telecommunications services, namely, providing cellular telecommunications network connectivity to a cellular-enabled onboard diagnostic system dongle; wireless telecommunications services, namely, transmitting data consisting of updates and alerts concerning performance metrics of motor vehicles, the driving behavior of motor vehicle operators, motor vehicle location and trip information, and driver performance information
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.

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[ Trinidad and Tobago application number 54308 filed 07/27/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Cellular telecommunications services; Cellular telecommunications services, namely, transmission of voice, audio, data, text, images, video, music, information, facsimiles, advertising, gaming and graphics via cellular telecommunications networks and the Internet; cellular telecommunications services, namely, two-way real-time transmission of voice, audio, video and data between wireless telecommunications devices; text messaging services; multimedia messaging services; providing multiple-user access to a global computer network; wireless roaming services, namely, providing access to a cellular telecommunications network; providing technical support regarding the usage of cellular telecommunications services and equipment; electronic transmission of e-mail; wireless roaming services; telephone communication services in the nature of providing telephone features, namely, ringback tone services; electronic mail services; electronic voice messaging services, namely, recording and subsequent transmission of audio messages and transmitting textual transcriptions of audio messages; ringback tone services; cellular telecommunications services, namely, filtering and blocking of incoming voice telecommunications; cellular telecommunications services, namely, providing transmission of text, audio, images and video content consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts over a cellular telecommunications network; wireless telecommunications services, namely, providing cellular telecommunications network connectivity to a cellular-enabled onboard diagnostic system dongle; wireless telecommunications services, namely, transmitting data consisting of updates and alerts concerning performance metrics of motor vehicles, the driving behavior of motor vehicle operators, motor vehicle location and trip information, and driver performance information; telephone telecommunications services provided via prepaid telephone calling cardsClass 038 for Cellular telecommunications services, namely, transmission of voice, audio, data, text, images, video, music, information, facsimiles, advertising, gaming and graphics via cellular telecommunications networks and the Internet; cellular telecommunications services, namely, two-way real-time transmission of voice, audio, video and data between wireless telecommunications devices; text messaging services; multimedia messaging services; providing multiple-user access to a global computer network; wireless roaming services, namely, providing access to a cellular telecommunications network; electronic transmission of e-mail; telephone communication services in the nature of providing telephone features, namely, ringback tone services; electronic voice messaging services, namely, recording and subsequent transmission of audio messages and transmitting textual transcriptions of audio messages; cellular telecommunications services, namely, filtering and blocking of incoming voice telecommunications; cellular telecommunications services, namely, providing transmission of text, audio, images and video content consisting of updates and information relating to news, sports, entertainment, weather, cellular telecommunications products and services, contests, promotions and discounts over a cellular telecommunications network; wireless telecommunications services, namely, providing cellular telecommunications network connectivity to a cellular-enabled onboard diagnostic system dongle; wireless telecommunications services, namely, transmitting data consisting of updates and alerts concerning performance metrics of motor vehicles, the driving behavior of motor vehicle operators, motor vehicle location and trip information, and driver performance information; telephone telecommunications services provided via prepaid telephone calling cards
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 [ Trinidad and Tobago application number 54308 filed 07/27/2018]. 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 hereby adds the following class of goods/services to the application:
New: Class 037 for Providing technical support regarding the usage of cellular telecommunications equipment, namely, repair of telecommunications equipment
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 [ __________ application number __________ filed __________ ]. 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 hereby adds the following class of goods/services to the application:
New: Class 042 for Providing technical support regarding the usage of cellular telecommunications services and software, namely, troubleshooting of telecommunications software; E-mail system design and implementation for others
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 [ __________ application number __________ filed __________ ]. 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.

FEE(S)
Fee(s) in the amount of $550 is being submitted.

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: /Richard W. Hansen/      Date: 04/17/2019
Signatory's Name: Richard W. Hansen
Signatory's Position: Attorney of record, Washington bar member
Signatory's Phone Number: 425-383-4000


Response Signature
Signature: /Richard W. Hansen/     Date: 04/17/2019
Signatory's Name: Richard W. Hansen
Signatory's Position: Attorney of record, Washington bar member

Signatory's Phone Number: 425-383-4000

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.

        
RAM Sale Number: 88129835
RAM Accounting Date: 04/18/2019
        
Serial Number: 88129835
Internet Transmission Date: Wed Apr 17 19:06:10 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019041719061073
8031-88129835-620ead4fffda591252eaa8fef9
5fee57d434856c3c703aa69060cc468cba768d-C
C-5802-20190417190215125727