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. 88239235 TRAIL BLAZER(Standard Characters, see http://uspto.report/TM/88239235/mark.png) has been amended as follows:

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

The March 22, 2019 Office Action contained an advisory concerning a potential likelihood of confusion objection as to two prior pending applications (Serial Nos. 88130797 and 88131259). As indicated elsewhere in its response, Applicant owns U.S. Reg. No. 2148177 for the mark TRAIL BLAZER, issued by the PTO on March 31, 1998, for use in connection with "computer software, namely, applications software for the planning, tracking, and management of political campaigns" in International Class 9. The prior filed applications referenced in the Office Action were filed on September 25, 2018, and one of the applications claims priority to an application filed in Canada on April 19, 2018. Applicant's existing TRAIL BLAZER registration was issued on March 31, 1998, over twenty years prior to the filing date and effective filing date of the prior pending applications referenced in the Office Action. The software and software services identified in Applicant's present application are within the zone of natural expansion of the software identified in Applicant's registration. Applicant respectfully requests the present application be approved for publication in light of the foregoing facts.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer application software for desktop computers, mobile phones, and online web portals, namely, software for use in contact relationship management (CRM), fundraising, donor, volunteer, event, ticket sales, and grant tracking and communication in field of non-profit (nonprofit) or NGOs
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 01/01/2007 and first used in commerce at least as early as 07/31/2007 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Computer application software for desktop computers, mobile phones, and online web portals, namely, software for use in contact relationship management (CRM), fundraising, donor, volunteer, event, ticket sales, and grant tracking and communication in field of non-profit (nonprofit) or NGOs; Computer application software for desktop computers, mobile phones, and online web portals, namely, software for use in contact relationship management (CRM), fundraising, event planning, ticket sales, grant tracking, communication and management of donor, voter and volunteer data in field of political campaigns, political parties, political action committees, non-profit organizations or nongovernment organizations (NGOs)Class 009 for Computer application software for desktop computers, mobile phones, and online web portals, namely, software for use in contact relationship management (CRM), fundraising, event planning, ticket sales, grant tracking, communication and management of donor, voter and volunteer data in field of political campaigns, political parties, political action committees, non-profit organizations or nongovernment organizations (NGOs)
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 01/01/2007 and first used in commerce at least as early as 07/31/2007 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of screen captures showing the software in operation .
"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 File1
Specimen File2

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) services featuring software for use in contact relationship management (CRM), fundraising, donor, volunteer, event, ticket sales, and grant tracking and communication in field of non-profit (nonprofit) or NGOs
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 01/01/2007 and first used in commerce at least as early as 07/31/2007 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Software as a service (SAAS) services featuring software for use in contact relationship management (CRM), fundraising, donor, volunteer, event, ticket sales, and grant tracking and communication in field of non-profit (nonprofit) or NGOs; Software as a service (SAAS) services featuring software for use in contact relationship management (CRM), fundraising, event planning, ticket sales, grant tracking, communication and management of donor, voter and volunteer data in field of political campaigns, political parties, political action committees, non-profit organizations or nongovernment organizations (NGOs)Class 042 for Software as a service (SAAS) services featuring software for use in contact relationship management (CRM), fundraising, event planning, ticket sales, grant tracking, communication and management of donor, voter and volunteer data in field of political campaigns, political parties, political action committees, non-profit organizations or nongovernment organizations (NGOs)
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 01/01/2007 and first used in commerce at least as early as 07/31/2007 , and is now in use in such commerce.
ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Sean Ploen of Ploen Law Firm, PC, having an address of
1595 Selby Avenue, Suite 300 Saint Paul, Minnesota 55104-6384
United States
docketing@ploen.com
651-894-6800
651-894-6801
The attorney docket/reference number is TRA-601 .
The Other Appointed Attorney(s): Colman Sutter.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
TRAIL BLAZER CAMPAIGN SERVICES, INC
TRAIL BLAZER CAMPAIGN SERVICES, INC
620 MENDELSSOHN AVE. N., #186
GOLDEN VALLEY
Minnesota
US
55427

Proposed:
Sean Ploen of Ploen Law Firm, PC, having an address of
1595 Selby Avenue, Suite 300 Saint Paul, Minnesota 55104-6384
United States
docketing@ploen.com;sploen@ploen.com; csutter@ploen.com
651-894-6800
651-894-6801
The docket/reference number is TRA-601 .



ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2148177.


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: /Sean Ploen/      Date: 05/23/2019
Signatory's Name: Sean Ploen
Signatory's Position: Attorney of record, Minnesota bar member
Signatory's Phone Number: 651-894-6800


Response Signature
Signature: /Sean Ploen/     Date: 05/23/2019
Signatory's Name: Sean Ploen
Signatory's Position: Attorney of record, Minnesota bar member

Signatory's Phone Number: 651-894-6800

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.

Mailing Address:    Sean Ploen
   Ploen Law Firm, PC
   1595 Selby Avenue, Suite 300
   Saint Paul, Minnesota 55104-6384
        
Serial Number: 88239235
Internet Transmission Date: Thu May 23 11:18:41 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-201905231118419245
35-88239235-62020d49d685dea13a25f5761afb
fbcfedaa95a46037bb04b1e1a5d5f97512c22-N/
A-N/A-20190522141248855991