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. 88240747 PASTPORT(Standard Characters, see http://uspto.report/TM/88240747/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 text; Exhibit A - TESS listing of PASSPORT registrations in class 9; Exhibit B - TESS listing of PASSPORT registrations in class 42 has been attached.
Original PDF file:
evi_10777225141-20190925174005731855_._FILE_NFOA_Response_88240747.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_1-10777225141-20190925174005731855_._Exhibit_A.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_1-10777225141-20190925174005731855_._Exhibit_B.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

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 mobile phones, namely, software for capturing and archiving physical items, documents and artwork in digital format; Downloadable software in the nature of a mobile application for capturing and archiving physical items, documents and artwork in digital format; Downloadable mobile applications for capturing and archiving physical items, documents and artwork in digital format; Portable archiving equipment, namely, devices for capturing and archiving physical items, documents and artwork in digital format; Archiving equipment, namely, devices for capturing and archiving physical items, documents and artwork in digital format; Downloadable mobile applications for processing images into a digital archival preservation format
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.

Proposed:
Tracked Text Description: Computer application software for mobile phones, namely, software for capturing and archiving physical items, documents and artwork in digital format; Computer application software for mobile phones, namely, software for capturing and archiving tangible items, documents and artwork in digital format; Downloadable software in the nature of a mobile application for capturing and archiving physical items, documents and artwork in digital format; Downloadable software in the nature of a mobile application for capturing and archiving tangible items, documents and artwork in digital format; Downloadable mobile applications for capturing and archiving physical items, documents and artwork in digital format; Downloadable mobile applications for capturing and archiving tangible items, documents and artwork in digital format; Portable archiving equipment, namely, devices for capturing and archiving physical items, documents and artwork in digital format; Portable archiving equipment, namely, devices comprising a photographic light box for use with a digital camera for capturing and archiving tangible items, documents and artwork in digital format; Archiving equipment, namely, devices for capturing and archiving physical items, documents and artwork in digital format; Archiving equipment, namely, devices comprising a photographic light box for use with a digital camera for capturing and archiving tangible items, documents and artwork in digital format; Downloadable mobile applications for processing images into a digital archival preservation format; Downloadable mobile applications for processing digital images of tangible items, documents and artwork into a digital archival preservation formatClass 009 for Computer application software for mobile phones, namely, software for capturing and archiving tangible items, documents and artwork in digital format; Downloadable software in the nature of a mobile application for capturing and archiving tangible items, documents and artwork in digital format; Downloadable mobile applications for capturing and archiving tangible items, documents and artwork in digital format; Portable archiving equipment, namely, devices comprising a photographic light box for use with a digital camera for capturing and archiving tangible items, documents and artwork in digital format; Archiving equipment, namely, devices comprising a photographic light box for use with a digital camera for capturing and archiving tangible items, documents and artwork in digital format; Downloadable mobile applications for processing digital images of tangible items, documents and artwork into a digital archival preservation format
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.

The applicant's current attorney information: Sean L. Sweeney. Sean L. Sweeney of TREDECIM LLC, is located at

      91-J AUBURN STREET, #1133
      PORTLAND, Maine 04103
      US
The docket/reference number is 4318-PastPor.

The phone number is 207-221-6100.

The fax number is 617-507-5578.

The email address is sean@tredecimlaw.com

The applicants proposed attorney information: Sean L. Sweeney. Sean L. Sweeney of TREDECIM LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      91-J AUBURN STREET, #1133
      PORTLAND, Maine 04103
      United States
The docket/reference number is 4318-PastPor.

The phone number is 207-221-6100.

The fax number is 617-507-5578.

The email address is sean@tredecimlaw.com

Sean L. Sweeney 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: SEAN L. SWEENEY. SEAN L. SWEENEY of TREDECIM LLC, is located at

      91-J AUBURN STREET, #1133
      PORTLAND, Maine 04103
      US
The docket/reference number is 4318-PastPor.

The phone number is 207-221-6100.

The fax number is 617-507-5578.

The email address is sean@tredecimlaw.com; trademark@tredecimlaw.com

The applicants proposed correspondence information: Sean L. Sweeney. Sean L. Sweeney of TREDECIM LLC, is located at

      91-J AUBURN STREET, #1133
      PORTLAND, Maine 04103
      United States
The docket/reference number is 4318-PastPor.

The phone number is 207-221-6100.

The fax number is 617-507-5578.

The email address is sean@tredecimlaw.com; trademark@tredecimlaw.com

SIGNATURE(S)
Response Signature
Signature: /Sean L. Sweeney/     Date: 09/25/2019
Signatory's Name: Sean L. Sweeney
Signatory's Position: Attorney of record, Maine bar member

Signatory's Phone Number: 207-221-6100

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:    SEAN L. SWEENEY
   TREDECIM LLC
   
   91-J AUBURN STREET, #1133
   PORTLAND, Maine 04103
Mailing Address:    Sean L. Sweeney
   TREDECIM LLC
   91-J AUBURN STREET, #1133
   PORTLAND, Maine 04103
        
Serial Number: 88240747
Internet Transmission Date: Wed Sep 25 17:51:40 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909251751409
71617-88240747-610f4ea5d3ece9f93271a2c35
cc927f4491308577537828d851a1c56c1806e998
-N/A-N/A-20190925174005731855