TEAS Response to Suspension Inquiry

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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

---

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 1822 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88144841 TAXLAB (Stylized and/or with Design, see http://uspto.report/TM/88144841/mark.png) has been amended as follows:
PENDING SERIAL NUMBER(S)
Serial number(s) 88142338 should not be used as a citation(s) under Section 2(d), in the event that said serial number(s) mature(s) into a registration(s). The applicant hereby requests removal of this application from suspension, based on the following arguments. If the examining attorney is not persuaded by these arguments, the applicant hereby requests that this application be returned to suspended status, awaiting ultimate disposition of the referenced serial number(s).

ARGUMENT(S)
I. DIFFERENT INTERNATIONAL CLASSES AND CHANNELS OF TRADE: There is no conflict with the prior pending application. The goods and services are not competitive. Prior Application @DIGITALTAXLAB US Serial Number 88142338 has an express limitation to it's scope of INFORMATION, namely, "Providing information in the fields of business innovation process, business management and business opportunities." The phrase "providing information" is in the fields of 1) Business innovation process, 2) Business Management, and 3) Business. The sentence means that this trademark is expressly limited to providing information to each of the three items in the proceeding list. They are only providing information, in IC 035, regarding business information. Because the prior application is only providing information, it is not commercially competitive with my client's goods and services which are SAAS services for pay in the vein of TurboTax. It is a service in IC 042 for money, not merely information. II. THE GOODS AND SERVICES AS AMENDED: Applicant has now changed herein the goods and services description to comport with examiner's suggested language verbatim. Furthermore, applicant has carved out an express exclusion to clearly cut out the description of the prior applicant's mark by adding the following "ALL OF THE ABOVE EXPRESSLY EXCLUDING providing information in the fields of business innovation process, business management and business opportunities." This limitation has been added to the applicant's mark. III. SIGHT SOUND AND MEANING AND PRIMACY: Consumers look at the first words first. @DigitalTaxLab: @-Di-gi-tal is four syllables, which is differentiating from applicant's mark. Tax Lab which is overlapping is only two syllables. Consumers would not be confused. Furthermore, applicant's mark has visual elements a blue check box which has the meaning of checking off parts of a tax form. It is unlikely the prior applicant would add a check box for any reason, since they are merely providing information about business, they are not even providing information about taxes. IV. THE SUSPENSION SHOULD BE LIFTED: Even if the prior application registers, there would be no confusion in commerce, there would be at most a mere theoretical level of confusion, there needs to be at least a real likelihood of confusion, which is lacking herein. 035, and 042 in this instance is not related enough to justify a suspension, which is causing undue harm to my client.
Original PDF file:
PE_16225518282-124215913_._TaxLab.pdf
Converted PDF file(s) (3 pages)
Pending File1
Pending File2
Pending File3
Original PDF file:
PE_16225518282-124215913_.__DigitalTaxLab_88142338.pdf
Converted PDF file(s) (3 pages)
Pending File1
Pending File2
Pending File3
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing temporary use of online non-downloadable software portal for desktop computers, tablets, and mobile devices offering information in the field of finance and tax; Providing temporary use of online non-downloadable software for the purpose of analyzing a user's spending habits and anticipating future spending decisions using, matching tax professionals to users, filling out tax forms, and to analyze and process user data using algorithms, OCR, AI, and Machine Learning; Providing temporary use of online non-downloadable, browser-based, computer software for use in tax planning, tax calculation, and tax return preparation and filing, processing tax payments, and for organizing, tracking and reporting tax-deductible expenses; Providing temporary use of online non-downloadable, browser-based, computer software for tracking charitable donations and calculating charitable tax deductions and fair market value of goods and services; Providing temporary use of online non-downloadable, browser-based, software portal for helping a user with regard to aggregating wage, interest, dividend, and other income and expense information from a wide variety of sources for tax related purposes; Providing temporary use of online non-downloadable software for tax preparation, online banking analysis, and software to pre-populate tax forms with tax data from online banking accounts; maintenance of on-line databases for others, consisting of database integration services and data integration services for financial institutions to integrate tax related data with online banking data; Providing temporary use of online non-downloadable, browser-based, software application for the purpose of organizing, tracking and reporting tax deductible expenses
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed:
Tracked Text Description: Providing temporary use of online non-downloadable software portal for desktop computers, tablets, and mobile devices offering information in the field of finance and tax; Providing temporary use of online non-downloadable software portal for desktop computers, tablets, and mobile devices offering information in the field of financial planning and tax; Providing temporary use of online non-downloadable software for the purpose of analyzing a user's spending habits and anticipating future spending decisions using, matching tax professionals to users, filling out tax forms, and to analyze and process user data using algorithms, OCR, AI, and Machine Learning; Providing temporary use of online non-downloadable, browser-based, computer software for use in tax planning, tax calculation, and tax return preparation and filing, processing tax payments, and for organizing, tracking and reporting tax-deductible expenses; Providing temporary use of online non-downloadable, browser-based, computer software for tracking charitable donations and calculating charitable tax deductions and fair market value of goods and services; Providing temporary use of online non-downloadable, browser-based, software portal for helping a user with regard to aggregating wage, interest, dividend, and other income and expense information from a wide variety of sources for tax related purposes; Providing temporary use of online non-downloadable software for tax preparation, online banking analysis, and software to pre-populate tax forms with tax data from online banking accounts; maintenance of on-line databases for others, consisting of database integration services and data integration services for financial institutions to integrate tax related data with online banking data; Providing temporary use of online non-downloadable, browser-based, software application for the purpose of organizing, tracking and reporting tax deductible expenses; all of the above expressly excluding providing information in the fields of business innovation process, business management and business opportunities.Class 042 for Providing temporary use of online non-downloadable software portal for desktop computers, tablets, and mobile devices offering information in the field of financial planning and tax; Providing temporary use of online non-downloadable software for the purpose of analyzing a user's spending habits and anticipating future spending decisions using, matching tax professionals to users, filling out tax forms, and to analyze and process user data using algorithms, OCR, AI, and Machine Learning; Providing temporary use of online non-downloadable, browser-based, computer software for use in tax planning, tax calculation, and tax return preparation and filing, processing tax payments, and for organizing, tracking and reporting tax-deductible expenses; Providing temporary use of online non-downloadable, browser-based, computer software for tracking charitable donations and calculating charitable tax deductions and fair market value of goods and services; Providing temporary use of online non-downloadable, browser-based, software portal for helping a user with regard to aggregating wage, interest, dividend, and other income and expense information from a wide variety of sources for tax related purposes; Providing temporary use of online non-downloadable software for tax preparation, online banking analysis, and software to pre-populate tax forms with tax data from online banking accounts; maintenance of on-line databases for others, consisting of database integration services and data integration services for financial institutions to integrate tax related data with online banking data; Providing temporary use of online non-downloadable, browser-based, software application for the purpose of organizing, tracking and reporting tax deductible expenses; all of the above expressly excluding providing information in the fields of business innovation process, business management and business opportunities.
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).


ADDITIONAL STATEMENTS
Description of mark
The mark consists of the stylized wording "TAXLAB" and design. The letters "TA" appear in dark gray. The lower half of the letter "X" appears in dark gray and the upper half of the letter "X" is formed by a turquoise check mark. The term "LAB" appears in white within a turquoise miscellaneous design with an overall rectangle shape.

The applicant's current attorney information: Jack Fritz. Other appointed attorneys are Jack Fritz. Jack Fritz of FRITZ LAW GROUP, and the attorney(s) is located at

      87 N RAYMOND AVE STE 927
      PASADENA, California
      US

The phone number is 626-629-8845.

The email address is jack@fritzlawgroup.com

The applicants proposed attorney information: Jack Fritz. Jack Fritz of FRITZ LAW GROUP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      87 N RAYMOND AVE STE 927
      PASADENA, California 91103
      United States

The phone number is 626-629-8845.

The email address is jack@fritzlawgroup.com

Jack Fritz submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JACK FRITZ. Other appointed attorneys are Jack Fritz. JACK FRITZ of FRITZ LAW GROUP, and the attorney(s) is located at

      87 N RAYMOND AVE STE 927
      PASADENA, California
      US

The phone number is 626-629-8845.

The email address is jack@fritzlawgroup.com; isai@bismarktax.com

The applicants proposed correspondence information: Jack Fritz. Jack Fritz of FRITZ LAW GROUP, is located at

      87 N RAYMOND AVE STE 927
      PASADENA, California 91103
      United States

The phone number is 626-629-8845.

The email address is jack@fritzlawgroup.com

Response Suspension Inquiry Signature
Signature: /Jack Fritz/     Date: 09/18/2019
Signatory's Name: Jack Fritz
Signatory's Position: Attorney of Record. CA Bar Member.
Signatory's Phone Number: 6266298845

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JACK FRITZ
   FRITZ LAW GROUP
   
   87 N RAYMOND AVE STE 927
   PASADENA, California
Mailing Address:    Jack Fritz
   FRITZ LAW GROUP
   87 N RAYMOND AVE STE 927
   PASADENA, California 91103
        
Serial Number: 88144841
Internet Transmission Date: Wed Sep 18 13:02:32 EDT 2019
TEAS Stamp: USPTO/RSI-XXX.XXX.XXX.XX-201909181302327
54690-88144841-6105855624e1e3fc3ad122bb8
49f2248fdd3f38f5dd0f94e5451613ad11690a5f
a-N/A-N/A-20190918124215913946