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)

---

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. 88237454 SIGMA (Stylized and/or with Design, see http://uspto.report/TM/88237454/mark.png) has been amended as follows:

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

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

EVIDENCE
Evidence in the nature of argument has been attached.
Original PDF file:
evi_208185139113-20190425122214772303_._RESPONSE_TO_OFFICE_ACTION.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Administration of a program for enabling participants to obtain discounts on goods and receive improved services; Administration, billing and reconciliation of accounts on behalf of others; Administrative processing of purchase orders; Advertisement and publicity services by television, radio, mail; Advertising and marketing; Advertising services, public relations and marketing services, namely, promoting and marketing the goods and services of others all through public communication means; Analysis of market research data and statistics; Analyzing and compiling business data; Arranging and conducting business conferences; Arranging and conducting of fairs and exhibitions for business and advertising purposes; Arranging for pickup, delivery, storage and transportation of documents, packages, freight and parcels via ground and air carriers; Assistance in management of business activities; Assistance, advice and consultancy with regard to business planning, business analysis, business management and business organization relating to purchasing functions; Brand evaluation services; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Business management assistance; Business marketing services; Business planning; Business supervision; Buying club services; Collection and systematization of information into computer databases; Collection of market research information; Commercial administration of the licensing of the goods and services of others; Comparison shopping services; Conducting business research and surveys; Conducting market surveys; Conducting marketing studies; Conducting public opinion polls; Consumer marketing research and consulting related thereto; Consumer research; Cost analyses; Cost assessment services; Cost price analysis; Customer relationship management; Developing promotional campaigns for business; Direct marketing services; Evaluations relating to commercial matters; Goods import-export agencies; Market analysis; Market research; Marketing services; Office administration services; Organization of exhibitions and trade fairs for business and promotional purposes; Organization of exhibitions for commercial or advertising purposes; Price comparison services; Product demonstration; Product merchandising; Retail and on-line grocery store services featuring home delivery service; Retail grocery stores; Retail convenience stores; Retail delicatessen services; Retail variety stores; Sales demonstration; Sales management services; Sales promotion; Sample distribution; Shoppers' guide information; Supply chain management services; Wholesale distributorships featuring food and beverages
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[ Mexico application number 2142221 filed 12/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Administration of a program for enabling participants to obtain discounts on goods and receive improved services; Administration, billing and reconciliation of accounts on behalf of others; Arranging and conducting business conferences; Administrative processing of purchase orders; Arranging and conducting of fairs and exhibitions for business and advertising purposes; Advertisement and publicity services by television, radio, mail; Conducting business research and surveys; Advertising and marketing; Conducting market surveys; Advertising services, public relations and marketing services, namely, promoting and marketing the goods and services of others all through public communication means; Conducting marketing studies; Analysis of market research data and statistics; Product demonstration; Analyzing and compiling business data; Retail and on-line grocery store services featuring home delivery service; Retail grocery stores; Retail convenience stores; Arranging for pickup, delivery, storage and transportation of documents, packages, freight and parcels via ground and air carriers; Retail delicatessen services; Assistance in management of business activities; Retail variety stores; Assistance, advice and consultancy with regard to business planning, business analysis, business management and business organization relating to purchasing functions; Sales demonstration; Brand evaluation services; Sales management services; Branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; Sales promotion; Business management assistance; Sample distribution; Business marketing services; Shoppers' guide information; Business planning; Supply chain management services; Business supervision; Wholesale distributorships featuring food and beverages; Buying club services; Collection and systematization of information into computer databases; Collection of market research information; Commercial administration of the licensing of the goods and services of others; Comparison shopping services; Conducting public opinion polls; Consumer marketing research and consulting related thereto; Consumer research; Cost analyses; Cost assessment services; Cost price analysis; Customer relationship management; Developing promotional campaigns for business; Direct marketing services; Evaluations relating to commercial matters; Goods import-export agencies; Market analysis; Market research; Marketing services; Office administration services; Organization of exhibitions and trade fairs for business and promotional purposes; Organization of exhibitions for commercial or advertising purposes; Price comparison services; Product merchandisingClass 035 for Administration of a program for enabling participants to obtain discounts on goods and receive improved services; Arranging and conducting business conferences; Arranging and conducting of fairs and exhibitions for business and advertising purposes; Conducting business research and surveys; Conducting market surveys; Conducting marketing studies; Product demonstration; Retail and on-line grocery store services featuring home delivery service; Retail grocery stores; Retail convenience stores; Retail delicatessen services; Retail variety stores; Sales demonstration; Sales management services; Sales promotion; Sample distribution; Shoppers' guide information; Supply chain management services; Wholesale distributorships featuring food and beverages
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 [ Mexico application number 2142221 filed 12/11/2018]. 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: /H. David Starr/     Date: 04/25/2019
Signatory's Name: H. David Starr
Signatory's Position: Attorney for Applicant, District of Columbia bar member

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: 88237454
Internet Transmission Date: Thu Apr 25 12:34:26 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20190425123426
347350-88237454-6203a2c9a91bc65535450ec4
c46bbd37c696be2544358426924cdbef9d7c2a1c
2-N/A-N/A-20190425122214772303