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. 88239206 ZII(Standard Characters, see http://uspto.report/TM/88239206/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 029 for Providing an interactive website in the field of corporate travel; providing an interactive website through which corporations can coordinate travel arrangements for employees, namely, making airline travel reservations, hotel reservations, car reservations and rail bookings; providing an interactive website on which corporate users can manage their profile, view videos to better understand travel policy, how to book, how to travel safely and comfortably, obtain information on their corporation's travel policies, view prior and upcoming itineraries, download their itineraries and invoices, manage their corporate loyalty points, view travel deals offered by their corporation, view their travel ranking within the corporation and score obtained for each trip; providing an interactive website through which a corporation can obtain information on the amount spent on air, hotel and car rentals per department and on an individual basis; providing an interactive website through which Executive Assistants and travel arrangers and authorized individuals at a corporation can book air, hotel, car, rail for their colleagues and superiors

Applicant hereby adds the following class of goods/services to the application:
New: Class 039 (Original Class: 029 ) for Providing an interactive website featuring travel information in the field of corporate travel; Providing an interactive website through which corporations can coordinate travel transportation arrangements for employees, namely, providing airline travel ticket reservation services, rental car reservations and booking of tickets for train travel; Providing an interactive website for transportation arrangement and booking of travel, namely, through which Executive Assistants and travel arrangers and authorized individuals at a corporation can book air, and rail transportation and car rental reservations for their colleagues and superiors
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 06/01/2018 and first used in commerce at least as early as 06/01/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 039 . The specimen(s) submitted consists of Screen shots of Applicant's web site. .
"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:
SPU0-3814217352-20190917174127076462_._ZII_Specinen.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

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 1,907,001 filed 06/29/2018]. 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 042 for Providing an interactive website featuring technology that enables corporate users to manage their profile, view videos to better understand travel policy, how to book, and how to travel safely and comfortably, to obtain information on their corporation's travel policies, view prior and upcoming itineraries, download their itineraries and invoices, manage their corporate loyalty points, view travel deals offered by their corporation, and view their travel ranking within the corporation and score obtained for each trip; Providing an interactive website featuring technology that enables corporate users to access information on the amount spent on travel arrangements namely air, hotel and car rentals per department and on an individual basis
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 06/01/2018 and first used in commerce at least as early as 06/01/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042 . The specimen(s) submitted consists of Screen shots of Applicant's web site. .
"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:
SPN0-3814217352-20190917174127076462_._ZII_Specinen.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

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 1907001 filed 06/29/2018]. 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 043 for Providing an interactive website through which corporations make hotel reservations for others.
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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. The mark was first used at least as early as 06/01/2018 and first used in commerce at least as early as 06/01/2018 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 043 . The specimen(s) submitted consists of Screen shot of Applicant's web site. .
"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:
SPN1-3814217352-20190917174127076462_._ZII_Specinen.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

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 1907001 filed 06/29/2018]. 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.

The applicant's current attorney information: Brent E. Routman. Brent E. Routman of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      US
The docket/reference number is 9555.236US01.

The phone number is 612-332-5300.

The fax number is 6123329081.

The email address is dockmpls@merchantgould.com

The applicants proposed attorney information: Brent E. Routman. Brent E. Routman of MERCHANT & GOULD P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      United States
The docket/reference number is 9555.236US01.

The phone number is 612-332-5300.

The fax number is 6123329081.

The email address is dockmpls@merchantgould.com

Brent E. Routman submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: BRENT E. ROUTMAN. BRENT E. ROUTMAN of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      US
The docket/reference number is 9555.236US01.

The phone number is 612-332-5300.

The fax number is 6123329081.

The email address is dockmpls@merchantgould.com; broutman@merchantgould.com

The applicants proposed correspondence information: Brent E. Routman. Brent E. Routman of MERCHANT & GOULD P.C., is located at

      P.O. BOX 2910
      MINNEAPOLIS, Minnesota 55402-0910
      United States
The docket/reference number is 9555.236US01.

The phone number is 612-332-5300.

The fax number is 6123329081.

The email address is broutman@merchantgould.com; dockmpls@merchantgould.com

FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /ber/      Date: 09/17/2019
Signatory's Name: Brent E. Routman
Signatory's Position: Attorney for Applicant
Signatory's Phone Number: 612.336.4619


Response Signature
Signature: /ber/     Date: 09/17/2019
Signatory's Name: Brent E. Routman
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 612.336.4619

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:    BRENT E. ROUTMAN
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
Mailing Address:    Brent E. Routman
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
        
RAM Sale Number: 88239206
RAM Accounting Date: 09/17/2019
        
Serial Number: 88239206
Internet Transmission Date: Tue Sep 17 17:55:04 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019091717550413
2827-88239206-6108199e8fd97246d9b9c4852b
214a83c189cba674b1b6b428ec63528f6d7f5e2a
-DA-55035158-20190917174127076462