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. 88209286 TRANSCOM (Stylized and/or with Design, see http://uspto.report/TM/88209286/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of In an Office Action dated March 5, 2019, the Examiner refused registration of the captioned mark on grounds of likelihood of confusion with Registration No. 2465397, TRANS.COM PAYMENT SERVICES and Registration No. 2465398, TRANS.COM. However, since the likelihood of confusion refusal only relates to Class 36 of the instant application, and in light of the deletion hereby of Class 36 in its entirety from the instant application, Applicant hereby asserts that no likelihood of confusion with the cited marks exists. Applicant therefore respectfully requests that the Examiner withdraw his refusal of the instant application based on Section 2(d) of the Trademark Act and approve the instant application for publication. has been attached.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 036 for Insurance; financial affairs; monetary affairs; debt collection services; debt recovery services; financial management and credit monitoring; financial consulting and assistance (financial services) in connection with credit; financial analysis; financial consultancy; capital investments; banking; credit management services

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising; business management; business administration; business management assistance; business management and organization consultancy; professional business consultancy; efficiency experts; marketing studies; collection of statistics; business inquiries; business information; business investigations; price comparison services; sales promotion for others; cost price analysis; public and market opinion polling; public relations; marketing research; economic forecasting; writing of advertising texts; arranging subscriptions to telecommunication services for others; telemarketing services; management of customer loyalty, incentive or promotional schemes; advice and information about customer services; customer relationship management (CRM) services; customer relationship management (CRM) strategies, implementation of CRM strategies and processes and advice in relation thereto; management of telephone call centers for others; management of virtual call centers for work-at-home agents
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2012 and first used in commerce at least as early as 12/01/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Advertising; Advertising services; business management; business administration; business administration services; business management assistance; business management and organization consultancy; professional business consultancy; efficiency experts; business efficiency expert services; marketing studies; conducting marketing studies; collection of statistics; compilation of statistics for business or commercial purposes; business inquiries; business information; business investigations; price comparison services; sales promotion for others; cost price analysis; public and market opinion polling; public relations; marketing research; economic forecasting; economic forecasting services; writing of advertising texts; writing of advertising texts, namely, advertising copywriting; arranging subscriptions to telecommunication services for others; telemarketing services; management of customer loyalty, incentive or promotional schemes; management of a customer loyalty program for promotional purposes, namely, incentive award programs to promote the sale of products and services of others; advice and information about customer services; advice and information about customer services in connection with purchases made over the internet; customer relationship management (CRM) services; customer relationship management services; customer relationship management (CRM) strategies, implementation of CRM strategies and processes and advice in relation thereto; customer relationship management, namely, implementation of customer relationship management strategies and processes and advice in relation thereto; management of telephone call centers for others; management of virtual call centers for work-at-home agentsClass 035 for Advertising services; business management; business administration services; business management assistance; business management and organization consultancy; professional business consultancy; business efficiency expert services; conducting marketing studies; compilation of statistics for business or commercial purposes; business inquiries; business information; business investigations; price comparison services; sales promotion for others; cost price analysis; public and market opinion polling; public relations; marketing research; economic forecasting services; writing of advertising texts, namely, advertising copywriting; arranging subscriptions to telecommunication services for others; telemarketing services; management of a customer loyalty program for promotional purposes, namely, incentive award programs to promote the sale of products and services of others; advice and information about customer services in connection with purchases made over the internet; customer relationship management services; customer relationship management, namely, implementation of customer relationship management strategies and processes and advice in relation thereto; management of telephone call centers for others; management of virtual call centers for work-at-home agents
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2012 and first used in commerce at least as early as 12/01/2012 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunications; communications by telephone; communications by computer terminals; communications by fiber optic networks; providing user access to a global computer network; providing access to databases; voice and electronic messaging services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2012 and first used in commerce at least as early as 12/01/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Telecommunications; Digital network telecommunication services; communications by telephone; communications by computer terminals; communications by fiber optic networks; providing user access to a global computer network; providing access to databases; voice and electronic messaging services; telephone voice messaging services; electronic messaging servicesClass 038 for Digital network telecommunication services; communications by telephone; communications by computer terminals; communications by fiber optic networks; providing user access to a global computer network; providing access to databases; telephone voice messaging services; electronic messaging services
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2012 and first used in commerce at least as early as 12/01/2012 , and is now in use in such commerce.
APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Transcom Worldwide AB having an address of
      Rålambsvägen 17
      Stockholm, 11259
      Sweden

Proposed: Transcom Worldwide AB, aktiebolag (ab) legally organized under the laws of Sweden, having an address of
      Rålambsvägen 17
      Stockholm, 11259
      Sweden

ADDITIONAL STATEMENTS
Miscellaneous Statement
In an Office Action dated March 5, 2019, the Examiner refused registration of the captioned mark on grounds the specimen submitted did not establish use of the TRANSCOM mark in connection with the covered Class 38 services. Applicant respectfully disagrees and hereby asserts that the specimen submitted clearly depicts the TRANSCOM mark in connection with Applicant's provision of, inter alia, "Live Chat," "Virtual Robot," "Robotic Process Automation" and "Conversational Analytics" functionalities which, in Applicant's opinion, all qualify as any one or more of the following, including but not limited to: "digital network telecommunications services; communications by computer terminals; communications by fiber optics networks; providing user access to a global computer network; providing access to databases; electronic messaging services" as covered by Class 38. Accordingly, Applicant hereby respectfully requests the Examiner withdraw the Class 38 specimen refusal and approve the instant application for publication.


SIGNATURE(S)
Response Signature
Signature: /Lindsey E. Utrata/     Date: 04/25/2019
Signatory's Name: Lindsey E. Utrata
Signatory's Position: Attorney of Record, Authorized Attorney, New York Bar Member

Signatory's Phone Number: 212.626.4242

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: 88209286
Internet Transmission Date: Thu Apr 25 16:56:33 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190425165633
999140-88209286-6207a8935f8b5b4497db38dc
d8b3f478bad7532eb8c73fcd3ca2661d12b8a772
0-N/A-N/A-20190425162618792486