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. 88244096 HR ECOSYSTEM(Standard Characters, see http://uspto.report/TM/88244096/mark.png) has been amended as follows:

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

Dear Examining Attorney: 

Responsive to the Office Action of March 21, 2019, kindly amend the application as follows.

IN THE APPLICATION:

Kindly amend the application to an intent-to-use application under 15 USC 1051 et seq., Section 1(b).

REMARKS

Applicant has amended the application to claim bona fide intent-to-use under Section 1(b) as the basis for the application at this time.  No specimen is therefore required.  Applicant respectfully requests that the refusal to register because of an inadequate specimen be withdrawn.

In light of the above amendments and remarks, applicant submits that the application is ready for allowance and respectfully requests that it be passed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) services featuring cloud based human resources software that integrates payroll administration, employee time and attendance tracking, job postings and applicant tracking, employee recordkeeping and benefits, employee skills tracking, employee scheduling, employee performance management, and report generation
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 09/01/2018 and first used in commerce at least as early as 10/01/2018 , and is now in use in such commerce.

Proposed: Class 042 for Software as a service (SAAS) services featuring cloud based human resources software that integrates payroll administration, employee time and attendance tracking, job postings and applicant tracking, employee recordkeeping and benefits, employee skills tracking, employee scheduling, employee performance management, and report generation
Deleted Filing Basis: 1(a)
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 hereby appoints Gregg S. Scheiferstein. Other appointed attorneys are John H. Platt, Dax Alvarez, J. Damon Ashcraft, David G. Barker, Anne Bolamperti, Robert A. Clarke, David I. Dubin, Jonathan B. Fitzgerald, Andrew Flior, Tyler J. Fortner, R. Lee Fraley, Albin H. Gess, Farris J. Gillman, Deborah Gubernick, Charles F. Hauff, Jr., Andrew Huah, Dwight Kim, Peter Krehbiel, Grant T. Langton, Sid Leach, Jeffrey D. Morton, William F. Mulholland II, Eric M. Nielsen, David P. Nigro, Paul A. Pappalardo, Cynthia L. Pillote, Justin K. Powley, Joseph W. Price, Jr., Simone T. Raess, Ryan D. Ricks, David E. Rogers, C. Matthew Rozier, Gregory Scheiferstein, Howard I. Sobelman, C. Blake Steel, Joseph Teleoglou, Ketan S. Vakil, and Michelle N. Washington. Gregg S. Scheiferstein of Snell & Wilmer L.L.P., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      400 E. Van Buren St.
      Phoenix, Arizona 85004-2202
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 39368.01500.

The phone number is 602-382-6000.

The fax number is 602-382-6070.

The email address is ipdocket@swlaw.com

Gregg S. Scheiferstein 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: . , is located at

      
      ,

The applicants proposed correspondence information: Gregg S. Scheiferstein. Gregg S. Scheiferstein of Snell & Wilmer L.L.P., is located at

      400 E. Van Buren St.
      Phoenix, Arizona 85004-2202
      United States
The docket/reference number is 39368.01500.

The phone number is 602-382-6000.

The fax number is 602-382-6070.

The email address is ipdocket@swlaw.com; jhplatt@swlaw.com; gscheiferstein@swlaw.com; sschahn@swlaw.com; tseidel@swlaw.com

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: /Gregg S. Scheiferstein/      Date: 09/23/2019
Signatory's Name: Gregg S. Scheiferstein
Signatory's Position: Attorney of record, Arizona bar member
Signatory's Phone Number: 602-382-6000


Response Signature
Signature: /Gregg S. Scheiferstein/     Date: 09/23/2019
Signatory's Name: Gregg S. Scheiferstein
Signatory's Position: Attorney of record, Arizona bar member

Signatory's Phone Number: 602-382-6000

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:    
   
   
   
   ,
Mailing Address:    Gregg S. Scheiferstein
   Snell & Wilmer L.L.P.
   400 E. Van Buren St.
   Phoenix, Arizona 85004-2202
        
Serial Number: 88244096
Internet Transmission Date: Mon Sep 23 19:49:24 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019092319492485
0382-88244096-6108384897de3efbbcbf41e5a9
3f965a9054c124a95fd2bd31aa2d05e36685f-N/
A-N/A-20190923192318154976