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. 88165971 PERKALEAD(Standard Characters, see http://uspto.report/TM/88165971/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 041 for Providing online portals for online marketplace games, contests, giveaways, sweepstakes, competitions and incentive award programs designed to recognize, reward, encourage and engage individuals and groups to perform marketing activities, surveys and market research; marketing services; consumer market research services; promoting goods and services of others by means of word-of-mouth marketing programs; advertising and publicity services, namely, promoting goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and online media; promoting goods and services of others via computer and communication networks; dissemination of advertising for others via the Internet and in person; advertising and directory services; promoting goods and services of others by providing a website featuring links to websites of others; providing online directory of services featuring business and personal directory information; translation services

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for contact center management; software for use in developing interactive user interfaces; e-reward cards, loyalty cards, incentive cards, coupons, bonus point cards and discount cards
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[ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software for contact center management; software for use in developing interactive user interfaces; e-reward cards, loyalty cards, incentive cards, coupons, bonus point cards and discount cards; magnetically encoded loyalty reward cards, loyalty incentive reward cards, loyalty bonus point incentive reward cards and discount cards; consumer coupons dowloaded from the internetClass 009 for Computer software for contact center management; software for use in developing interactive user interfaces; magnetically encoded loyalty reward cards, loyalty incentive reward cards, loyalty bonus point incentive reward cards and discount cards; consumer coupons dowloaded from the internet
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 [ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Developing and implementing engagement and incentive programs for the goods, services and brands of third parties and the clients of advertising agencies; arranging and conducting engagement and incentive reward programs to promote the sale of the goods and services of third parties; providing engagement and incentive award programs for customers through the issuance and processing of online games, contests, giveaways, sweepstakes, competitions, engagements, reward and loyalty programs and through incentive solutions for driving new sales; administration of consumer loyalty programs, customer loyalty services and customer club services, for promotional purposes; promotion of merchandise sales and services by way of the distribution of promotions and arranging and conducting of promotional contests; Promoting the goods and services of others through the design, conduct, management and administration of promotional online games, contests, giveaways, sweepstakes, competitions and engagements; promoting the goods and services of others through the online distribution and administration of promotional games, contests, giveaways, sweepstakes, competitions and engagements via a global computer network; promoting the sale of goods and services of third parties through promotional contests and the distribution of related printed material; promotional contests and activities in and for restaurants, retail outlets, grocery stores and on websites and in social media; providing promotional information in the field of social media; providing marketing in the field of social media; promoting goods and services of others through the distribution of prizes, discount cards and coupons; providing marketing strategies and information for others; statistical evaluation services of marketing data; providing consumer product information via the Internet and in person; sampling services in the field of advertising and promoting the goods and services of third parties; digital couponing services in the field of advertising and promoting the goods and services of third parties; operation of call centers and call center support services for the advertisement and promotion of the goods and services of third parties; designing and managing for others outbound marketing campaigns and providing online reporting of such campaigns
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[ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Developing and implementing engagement and incentive programs for the goods, services and brands of third parties and the clients of advertising agencies; Developing and implementing customer engagement and incentive programs for the goods, services and brands of third parties and the clients of advertising agencies; arranging and conducting engagement and incentive reward programs to promote the sale of the goods and services of third parties; arranging and conducting customer engagement and incentive reward programs to promote the sale of the goods and services of third parties; providing engagement and incentive award programs for customers through the issuance and processing of online games, contests, giveaways, sweepstakes, competitions, engagements, reward and loyalty programs and through incentive solutions for driving new sales; providing customer engagement and incentive award programs for customers through the issuance and processing of online games, contests, giveaways, sweepstakes, competitions, customer engagement promotional events, reward and loyalty programs and through incentive solutions for driving new sales; administration of consumer loyalty programs, customer loyalty services and customer club services, for promotional purposes; promotion of merchandise sales and services by way of the distribution of promotions and arranging and conducting of promotional contests; Promoting the goods and services of others through the design, conduct, management and administration of promotional online games, contests, giveaways, sweepstakes, competitions and engagements; Promoting the goods and services of others through the design, conduct, management and administration of promotional online games, contests, giveaways, sweepstakes, competitions and customer engagement promotional events; promoting the goods and services of others through the online distribution and administration of promotional games, contests, giveaways, sweepstakes, competitions and engagements via a global computer network; promoting the goods and services of others through the online distribution and administration of promotional games, contests, giveaways, sweepstakes, competitions and customer engagement promotional events via a global computer network; promoting the sale of goods and services of third parties through promotional contests and the distribution of related printed material; promotional contests and activities in and for restaurants, retail outlets, grocery stores and on websites and in social media; advertising, promotion and marketing services, namely conducting promotional contests and activities in and for restaurants, retail outlets, grocery stores and on websites and in social media; providing promotional information in the field of social media; providing marketing in the field of social media; providing marketing services in the field of social media; promoting goods and services of others through the distribution of prizes, discount cards and coupons; promoting the goods and services of others through the distribution of prizes, discount cards and coupons; providing marketing strategies and information for others; statistical evaluation services of marketing data; providing consumer product information via the Internet and in person; sampling services in the field of advertising and promoting the goods and services of third parties; distribution of advertising and promotional materials in the nature of samples to advertise and promote the goods and services of third parties; digital couponing services in the field of advertising and promoting the goods and services of third parties; advertising and promoting the goods and services of third parties by distributing digital coupons; operation of call centers and call center support services for the advertisement and promotion of the goods and services of third parties; operation and management of telephone call centers and call center support services for the advertisement and promotion of the goods and services of third parties; designing and managing for others outbound marketing campaigns and providing online reporting of such campaigns; Promoting and marketing the goods and services of others by providing online portals for online marketplace games, contests, giveaways, sweepstakes, competitions and incentive award programs designed to recognize, reward, encourage and engage individuals and groups to perform marketing activities, surveys and market research; marketing services; consumer market research services; promoting goods and services of others by means of word-of-mouth marketing programs; advertising and publicity services, namely, promoting goods, services, brand identity and commercial information and news of third parties hrough print, audio, video, digital and online media; promoting goods and services of others via computer and communication networks dissemination of advertising for others via the Internet and in person; advertising and providing on-line web directory services featuring hyperlinks to the websites of others; promoting goods and services of others by providing a website featuring links to websites of others; providing online directory of services featuring business and personal directory information; translation services; design, conduct, management and administration of promotional on-line games, contests, giveaways sweepstakes, competitions and customer engagement promotional events; creative marketing design servicesClass 035 for Developing and implementing customer engagement and incentive programs for the goods, services and brands of third parties and the clients of advertising agencies; arranging and conducting customer engagement and incentive reward programs to promote the sale of the goods and services of third parties; providing customer engagement and incentive award programs for customers through the issuance and processing of online games, contests, giveaways, sweepstakes, competitions, customer engagement promotional events, reward and loyalty programs and through incentive solutions for driving new sales; administration of consumer loyalty programs, customer loyalty services and customer club services, for promotional purposes; promotion of merchandise sales and services by way of the distribution of promotions and arranging and conducting of promotional contests; Promoting the goods and services of others through the design, conduct, management and administration of promotional online games, contests, giveaways, sweepstakes, competitions and customer engagement promotional events; promoting the goods and services of others through the online distribution and administration of promotional games, contests, giveaways, sweepstakes, competitions and customer engagement promotional events via a global computer network; promoting the sale of goods and services of third parties through promotional contests and the distribution of related printed material; advertising, promotion and marketing services, namely conducting promotional contests and activities in and for restaurants, retail outlets, grocery stores and on websites and in social media; providing promotional information in the field of social media; providing marketing services in the field of social media; promoting the goods and services of others through the distribution of prizes, discount cards and coupons; providing marketing strategies and information for others; statistical evaluation services of marketing data; providing consumer product information via the Internet and in person; distribution of advertising and promotional materials in the nature of samples to advertise and promote the goods and services of third parties; advertising and promoting the goods and services of third parties by distributing digital coupons; operation and management of telephone call centers and call center support services for the advertisement and promotion of the goods and services of third parties; designing and managing for others outbound marketing campaigns and providing online reporting of such campaigns;Promoting and marketing the goods and services of others by providing online portals for online marketplace games, contests, giveaways, sweepstakes, competitions and incentive award programs designed to recognize, reward, encourage and engage individuals and groups to perform marketing activities, surveys and market research;marketing services;consumer market research services; promoting goods and services of others by means of word-of-mouth marketing programs; advertising and publicity services, namely, promoting goods, services, brand identity and commercial information and news of third parties hrough print, audio, video, digital and online media; promoting goods and services of others via computer and communication networks dissemination of advertising for others via the Internet and in person; advertising and providing on-line web directory services featuring hyperlinks to the websites of others; promoting goods and services of others by providing a website featuring links to websites of others; providing online directory of services featuring business and personal directory information; translation services; design, conduct, management and administration of promotional on-line games, contests, giveaways sweepstakes, competitions and customer engagement promotional events;creative marketing design services
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 [ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Mobile application development services in the field of advertising and promoting the goods and services of third parties
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[ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 038 for Mobile application development services in the field of advertising and promoting the goods and services of third parties
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 [ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Warehousing and fulfillment services
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[ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Warehousing and fulfillment services; Warehousing and order fulfillment servicesClass 039 for Warehousing and order fulfillment services
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 [ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design, conduct, management and administration of promotional online games, contests, giveaways, sweepstakes, competitions and engagements; creative design services; software-as-a-service (SAAS) services, featuring software accessible by mobile phones, computers, computer tablets and the internet which assists sales, marketing, strategy and product teams to deliver market, company and topic profiles, comparisons, summary digests, insight cards and activity feeds by combining information shared by co-workers with information obtained from the internet in the fields of promotional online games, contests, giveaways, sweepstakes, competitions and engagements; Providing temporary use of non-downloadable software for use in developing interactive user interfaces; providing online non-downloadable cloud computing software for contact center management; software as a service (SAAS) featuring software for contact center management; customization and implementation of computer software for contact center management; consulting services in the field of design and customization of software for contact center management
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[ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Design, conduct, management and administration of promotional online games, contests, giveaways, sweepstakes, competitions and engagements; Software-as-a-service (SAAS) services, featuring software accessible by mobile phones, computers, computer tablets and the internet which assists sales, marketing, strategy and product teams to deliver market, company and topic profiles, comparisons, summary digests, insight cards and activity feeds by combining information shared by co-workers with information obtained from the internet in the fields of promotional online games, contests, giveaways, sweepstakes, competitions and customer engagement promotional events; creative design services; Providing temporary use of non-downloadable software for use in developing interactive user interfaces; software-as-a-service (SAAS) services, featuring software accessible by mobile phones, computers, computer tablets and the internet which assists sales, marketing, strategy and product teams to deliver market, company and topic profiles, comparisons, summary digests, insight cards and activity feeds by combining information shared by co-workers with information obtained from the internet in the fields of promotional online games, contests, giveaways, sweepstakes, competitions and engagements; providing online non-downloadable cloud computing software for contact center management; software as a service (SAAS) featuring software for contact center management; customization and implementation of computer software for contact center management; consulting services in the field of design and customization of software for contact center managementClass 042 for Software-as-a-service (SAAS) services, featuring software accessible by mobile phones, computers, computer tablets and the internet which assists sales, marketing, strategy and product teams to deliver market, company and topic profiles, comparisons, summary digests, insight cards and activity feeds by combining information shared by co-workers with information obtained from the internet in the fields of promotional online games, contests, giveaways, sweepstakes, competitions and customer engagement promotional events; Providing temporary use of non-downloadable software for use in developing interactive user interfaces; providing online non-downloadable cloud computing software for contact center management; software as a service (SAAS) featuring software for contact center management; customization and implementation of computer software for contact center management; consulting services in the field of design and customization of software for contact center management
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 [ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Consulting services for legal and compliance services in the field of advertising and promoting the goods and services of third parties; providing review services in respect of standards and practices to assure compliance for promotional programs and activities
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[ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Consulting services for legal and compliance services in the field of advertising and promoting the goods and services of third parties; Consulting services for legal and regulatory compliance services in the field of advertising and promoting the goods and services of third parties; providing review services in respect of standards and practices to assure compliance for promotional programs and activities; providing review services in respect of standards and practices to assure legal and regulatory compliance for promotional programs and activitiesClass 045 for Consulting services for legal and regulatory compliance services in the field of advertising and promoting the goods and services of third parties; providing review services in respect of standards and practices to assure legal and regulatory compliance for promotional programs and activities
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 [ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant hereby adds the following class of goods/services to the application:
New: Class 016 (Original Class: 041 ) for Cards not magnetically encoded for use in business transactions, namely, loyalty reward cards, loyalty incentive award cards, loyalty bonus point incentive award cards and discount 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 [ Canada application number 1896784 filed 05/01/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

SIGNATURE(S)
Response Signature
Signature: /Frank L. Politano/     Date: 03/12/2019
Signatory's Name: Frank L. Politano
Signatory's Position: Applicant's Attorney of record, Admitted New York and New Jersey

Signatory's Phone Number: 973-848-4150

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: 88165971
Internet Transmission Date: Tue Mar 12 15:47:21 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20190312154721782
932-88165971-620b548584cb8bc75181bdc4ff9
58ab3755f7cc7135b2e93e80a1e2976d93d3adaa
-N/A-N/A-20190312150310836998