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. 88247571 AIRSIDE(Standard Characters, see http://uspto.report/TM/88247571/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of legal argument and supporting evidence exhibit has been attached.
Original PDF file:
evi_17353118202-20190313110344371521_._Exhibit_A_AIRSIDE_OAR.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_1-17353118202-20190313110344371521_._AIRSIDE_OAR_Final.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable software application for secure storage, management, and sharing of documents and personal information; computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; facial recognition software; personal identity verification software
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: Downloadable software application for secure storage, management, and sharing of documents and personal information; Downloadable computer software application for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; facial recognition software; downloadable computer software, namely, facial recognition software; personal identity verification software; downloadable computer software, namely, personal identity verification software; application programing interface software, namely, for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal informationClass 009 for Downloadable computer software application for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; downloadable computer software, namely, facial recognition software; downloadable computer software, namely, personal identity verification software; application programing interface software, namely, for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Consulting services in the field of travel; advisory services in the field of travel
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: Consulting services in the field of travel; Consulting services in the field of travel, namely, providing guidance and information on technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies; advisory services in the field of travel; advisory services in the field of travel, namely, providing advice technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agenciesClass 039 for Consulting services in the field of travel, namely, providing guidance and information on technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies; advisory services in the field of travel, namely, providing advice technology used during the traveler identification verification process to airports, hotels, cruise lines, and government agencies
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) services for secure storage, management, and sharing of documents and personal information; software as a service (SAAS) services for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; software as a service (SAAS) services for facial recognition; software as a service (SAAS) services for verifying personal identity information; digitization of documents; software design and development
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: Software as a service (SAAS) services for secure storage, management, and sharing of documents and personal information; Software as a service (SAAS) services featuring software for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; software as a service (SAAS) services for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; software as a service (SAAS) services featuring software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; software as a service (SAAS) services for facial recognition; software as a service (SAAS) services featuring software for facial recognition; software as a service (SAAS) services for verifying personal identity information; software as a service (SAAS) services featuring software for verifying personal identity information; digitization of documents; software design and development; Personal identity verification services provided through digital identification technology to authenticate user identity; providing non-downloadable computer software, namely, facial recognition software; providing non-downloadable computer software, namely, personal identity verification software; providing non-downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; providing non- downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; providing non-downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; providing a database with verified personal identification information in the nature of verification of personal identity as part of airline check-in process, airport security process, employment verification, building access management, financial service account verification, know your customer (KYC) verification; digitization of documents; software design and developmentClass 042 for Software as a service (SAAS) services featuring software for secure storage, management, and sharing of personal documents, namely, passports, identification documents, and health records, and personal information; software as a service (SAAS) services featuring software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; software as a service (SAAS) services featuring software for facial recognition; software as a service (SAAS) services featuring software for verifying personal identity information; digitization of documents; software design and development; Personal identity verification services provided through digital identification technology to authenticate user identity; providing non-downloadable computer software, namely, facial recognition software; providing non-downloadable computer software, namely, personal identity verification software; providing non-downloadable computer application software for mobile phones, namely, software for secure storage, management, and sharing of government issued identification documents, personal health records, and business records; providing non- downloadable computer application software for mobile phones, namely, software for assisting travelers with airport and travel services; providing non-downloadable computer application software for desktop computers, kiosk computers, and mobile devices, namely, software for expediting passport control and customs clearance processing; providing a database with verified personal identification information in the nature of verification of personal identity as part of airline check-in process, airport security process, employment verification, building access management, financial service account verification, know your customer (KYC) verification; digitization of documents; software design and development
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Personal identity verification services provided through digital identification technology; providing a database with verified personal identification information; advocacy in the field of travel
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: Personal identity verification services provided through digital identification technology; Advocacy in the field of travel, namely advocating for consistent approaches to traveler identity verification process for the benefit of travelers; providing a database with verified personal identification information; advocacy in the field of travelClass 045 for Advocacy in the field of travel, namely advocating for consistent approaches to traveler identity verification process for the benefit of travelers
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.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
THOMAS F. BERGERT
WILLIAMS MULLEN
321 EAST MAIN STREET, SUITE 400
CHARLOTTESVILLE
Virginia
US
22902-3200

Proposed:
THOMAS F. BERGERT of WILLIAMS MULLEN, having an address of
321 EAST MAIN STREET, SUITE 400 CHARLOTTESVILLE, Virginia 22902-3200
United States
tbergert@williamsmullen.com;ip@williamsmullen.com; charlacher@williamsmullen.com
434-951-5700
434-817-0977
The docket/reference number is 079116.0009 .



SIGNATURE(S)
Response Signature
Signature: /Christel E. Harlacher/     Date: 03/13/2019
Signatory's Name: Christel E. Harlacher
Signatory's Position: Associate Attorney, Williams Mullen, Virginia Bar Member

Signatory's Phone Number: 804-420-6000

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:    THOMAS F. BERGERT
   WILLIAMS MULLEN
   321 EAST MAIN STREET, SUITE 400
   CHARLOTTESVILLE, Virginia 22902-3200
        
Serial Number: 88247571
Internet Transmission Date: Wed Mar 13 11:24:18 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201903131124184
03508-88247571-62054743bfb24de982459317e
17614b0cf26b34ef499165f73445d91982b2bf-N
/A-N/A-20190313110344371521