Response to Office Action

IA

The Internet Association

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88226218
LAW OFFICE ASSIGNED LAW OFFICE 105
MARK SECTION
MARK FILE NAME http://uspto.report/TM/88226218/mark.png
LITERAL ELEMENT IA
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
The color(s) orange is/are claimed as a feature of the mark.
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of the yellow letters "IA" surrounded by a yellow circular design with an open middle that is solid yellow near the inner circumference of the circle and which breaks into small yellow dots at the outer circumference of the circle. The color white represents background and/or transparent areas and is not part of the mark.
OWNER SECTION (current)
NAME The Internet Association
INTERNAL ADDRESS 660 North Capitol Street, NW
MAILING ADDRESS Suite 200
CITY Washington
STATE District of Columbia
ZIP/POSTAL CODE 20001
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
OWNER SECTION (proposed)
NAME The Internet Association
INTERNAL ADDRESS 660 North Capitol Street, NW
MAILING ADDRESS Suite 200
CITY Washington
STATE District of Columbia
ZIP/POSTAL CODE 20001
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
EMAIL XXXX
GOODS AND/OR SERVICES SECTION (035) (current)
INTERNATIONAL CLASS 035
DESCRIPTION
Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 10/00/2012
        FIRST USE IN COMMERCE DATE At least as early as 10/00/2012
GOODS AND/OR SERVICES SECTION (035) (proposed)
INTERNATIONAL CLASS 035
DESCRIPTION
Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 10/00/2012
       FIRST USE IN COMMERCE DATE At least as early as 10/00/2012
       STATEMENT TYPE "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
       SPECIMEN FILE NAME(S)
       ORIGINAL PDF FILE SPU0-19294203254-20200410 135316989583_._INTERNET_A SSOCIATION_Specimen_of_Us e.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\882\262\88226218\xml2\ ROA0002.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\882\262\88226218\xml2\ ROA0003.JPG
       ORIGINAL PDF FILE SPU0-19294203254-20200410 135316989583_._Specimen_o f_Use_INTERNET_ASSOCIATIO N.pdf
       CONVERTED PDF FILE(S)
       (1 page)
\\TICRS\EXPORT18\IMAGEOUT 18\882\262\88226218\xml2\ ROA0004.JPG
       SPECIMEN DESCRIPTION screenshots from Applicant's website showing use of the mark in connection with the services
GOODS AND/OR SERVICES SECTION (200)(class deleted)
ADDITIONAL STATEMENTS SECTION
COLOR(S) CLAIMED
(If applicable)
The color(s) yellow is/are claimed as a feature of the mark.
CORRESPONDENCE INFORMATION (current)
NAME ANDREW D. PRICE
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarkdocket@venable.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) adprice@venable.com; pehopkins@venable.com; pjwyles@venable.com
DOCKET/REFERENCE NUMBER 125970491774
CORRESPONDENCE INFORMATION (proposed)
NAME Andrew D. Price
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE trademarkdocket@venable.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) adprice@venable.com; pehopkins@venable.com; pjwyles@venable.com
DOCKET/REFERENCE NUMBER 125970491774
SIGNATURE SECTION
       ORIGINAL PDF FILE HS_19294203254-135316989_ ._Design_Declaration_to_P erfect_Application_218420 86.1__SIGNED.pdf
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\882\262\88226218\xml2\ ROA0005.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\882\262\88226218\xml2\ ROA0006.JPG
SIGNATORY'S NAME Jonathan Berroya
SIGNATORY'S POSITION Interim President and CEO
RESPONSE SIGNATURE /Paula E. Hopkins/
SIGNATORY'S NAME Paula E. Hopkins
SIGNATORY'S POSITION Attorney of Record, Venable LLP, New York and DC bar member
DATE SIGNED 04/10/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Apr 10 14:07:32 ET 2020
TEAS STAMP USPTO/ROA-XXX.XX.XXX.XXX-
20200410140732383025-8822
6218-710accce36b4c8fce90a
6719b92fc4221ae37ff81d8a2
e2de3ef5beb998ffdda-N/A-N
/A-20200410135316989583



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. 88226218 IA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8822621 8/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 200 for indicating membership in an organization consisting of members of the internet industry

Applicant proposes to amend the following:

Current:
Class 035 for Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users
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 10/00/2012 and first used in commerce at least as early as 10/00/2012 , and is now in use in such commerce.


Proposed:
Class 035 for Association services, namely, promoting the general interests of the internet industry and its global community of users; lobbying services, namely, promoting the interests of the internet industry and its global community of users
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 10/00/2012 and first used in commerce at least as early as 10/00/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of screenshots from Applicant's website showing use of the mark in connection with the services.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-19294203254-20200410 135316989583_._INTERNET_A SSOCIATION_Specimen_of_Us e.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2
Original PDF file:
SPU0-19294203254-20200410 135316989583_._Specimen_o f_Use_INTERNET_ASSOCIATIO N.pdf
Converted PDF file(s) ( 1 page) Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: The Internet Association, a corporation of District of Columbia, having an address of

            660 North Capitol Street, NW      Suite 200
      Washington, District of Columbia 20001
      United States

Proposed: The Internet Association, a corporation of District of Columbia, having an address of
      660 North Capitol Street, NW
      Suite 200
      Washington, District of Columbia 20001
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Color Claim
The color(s) yellow is/are claimed as a feature of the mark.
Correspondence Information (current):
      ANDREW D. PRICE
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): adprice@venable.com; pehopkins@venable.com; pjwyles@venable.com

The docket/reference number is 125970491774.
Correspondence Information (proposed):
      Andrew D. Price
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): adprice@venable.com; pehopkins@venable.com; pjwyles@venable.com

The docket/reference number is 125970491774.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_19294203254-135316989_ ._Design_Declaration_to_P erfect_Application_218420 86.1__SIGNED.pdf
Converted PDF file(s) (2 pages) Signature File1Signature File2
Signatory's Name: Jonathan Berroya
Signatory's Position: Interim President and CEO

Response Signature
Signature: /Paula E. Hopkins/     Date: 04/10/2020
Signatory's Name: Paula E. Hopkins
Signatory's Position: Attorney of Record, Venable LLP, New York and DC bar member

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:    ANDREW D. PRICE
   VENABLE LLP
   
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
Mailing Address:    Andrew D. Price
   VENABLE LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
        
Serial Number: 88226218
Internet Transmission Date: Fri Apr 10 14:07:32 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202004101407323
83025-88226218-710accce36b4c8fce90a6719b
92fc4221ae37ff81d8a2e2de3ef5beb998ffdda-
N/A-N/A-20200410135316989583


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Response to Office Action [image/jpeg]

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