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. 88252293 ATOS SYNTEL (Stylized and/or with Design, see http://uspto.report/TM/88252293/mark.png) has been amended as follows:

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



CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Advertising ; business management ; business administration ; clerical services ; business organization and management consultancy ; business information in administrative, commercial, management and organizational field, in particular in the field of information technology, telecommunications and payment/financial transactions ; data entry and data processing ; distribution of leaflets and samples for advertising purposes ; book-keeping ; document reproduction services ; data processing management ; organization of exhibitions for commercial or advertising purpose ; computerized file management ; rental of computer files ; outsourcing the processing of documents and data for a company, namely, compilation of information in computer databases, input and processing of data, information, images and documents, updating of databases and image banks ; business consultation services, namely, consultation relating to business strategy, including assessing a company's existing operations, and advising on the development of technology-related methodologies in the field of project management; consultation relating to outsourcing of computerized business functions; business consultation relating to the fields of electronic commerce and electronic business; business consultation relating to the field of on-line business transactions, namely, marketing, order processing, and order fulfillment; customer relationship management; and employee leasing services, namely, providing information technology professionals to others

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Scientific (except for medical), surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments ; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity ; apparatus for recording, transmission or reproduction of sound or images ; magnetic data carriers, recording discs ; compact discs, DVDs and other digital recording media ; coin-operated mechanisms ; cash registers, calculating machines, data processing equipment, computers ; software ; fire extinguishers ; devices for entry, recording, storage, manipulation, transmission, reproduction of sound, data, images; electronic cards for processing images; camcorders; interface circuits for video cameras; magnetic, optical, digital data carriers; transmitters and receivers for radio broadcasting, broadcasting and remote transmission; satellites; read-only discs (digital compact discs) ; phonograph records ; data processing equipment ; terminals including home terminals; computers including personal computers and calculating microcomputer; microprocessor devices and microprocessor systems; downloadable computer programs and application software ; computers, microcomputers, computer terminals ; control desks; keyboards; display screens; printers; cassettes; memories and generators of images, lines or characters; image synthesizers ; entertainment and educational devices connected to a television receiver or telematics terminal; radio pagers and transmitters ; answering machines ; computer software packages ; telephone apparatus ; mobile telephones and fixed location telephones ; visual display units ; audiovisual apparatus ; telecommunication apparatus ; equipment for entering, storing, processing information or data ; carriers for recording and reproduction of sounds, pictures, signals and data ; connecting hardware for computer equipment (modems) ; apparatus for data transmission, collection, processing; printed circuit board sets ; peripherals for computers ; software and software applications for mobile devices (telephone, smartphone); software for the security of people and property, the security of financial transactions; payment terminals
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.

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 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[ France application number 4490479 filed 10/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Scientific (except for medical), surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electrical relays and transformers; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank recording discs; magnetic data carriers, recording discs; blank compact discs; compact discs, DVDs and other digital recording media; cash registers, calculating machines, data processing equipment in the nature of couplers; coin-operated mechanisms; computers; cash registers, calculating machines, data processing equipment, computers; downloadable software for use in database management and file management in the field of information technology, telecommunication, payment transaction and cloud computing; software; fire extinguishers; devices for entry, recording, storage, manipulation, transmission, reproduction of sound, data, images, namely, electronic key cards, audio recorders, blank flash drives and apparatus for transmission of communication; devices for entry, recording, storage, manipulation, transmission, reproduction of sound, data, images; electronic cards for processing images; camcorders; interface circuits for video cameras; blank magnetic, optical, digital data carriers; magnetic, optical, digital data carriers; radio transmitters and receivers for radio broadcasting, broadcasting and remote transmission; transmitters and receivers for radio broadcasting, broadcasting and remote transmission; satellites; read-only discs in the nature of blank digital compact discs; read-only discs (digital compact discs); data processing equipment, namely, computer hardware for high-speed processing and storage of data using multiple CPUs; phonograph records; terminals, namely, home computer terminals; data processing equipment; computers, namely, personal computers and calculating microcomputers; terminals including home terminals; microprocessor devices in the nature of microprocessors and microprocessor systems; computers including personal computers and calculating microcomputer; downloadable computer programs for use in database management and file management in the field of information technology, telecommunication, payment transaction and cloud computing and downloadable computer application software for handheld computers and mobile devices including telephones and smartphones, namely, software for use in database management; microprocessor devices and microprocessor systems; computers, microcomputers, computer terminals; downloadable computer programs and application software; control desks in the nature of electrical controllers and electric control panels; keyboards; control desks; flat panel display screens; computer printers; display screens; recorded tape cassettes; printers; memories and generators of images, lines or characters, namely, computer memories; cassettes; image frequency synthesizers; memories and generators of images, lines or characters; entertainment and educational devices connected to a television receiver or telematics terminal, namely, hand-held electronic dictionaries; image synthesizers; radio pagers and transmitters; entertainment and educational devices connected to a television receiver or telematics terminal; answering machines; computer software packages featuring downloadable computer software that manages databases; telephone apparatus; computer software packages; mobile telephones and fixed location telephones; visual display units in the nature of electronic LCD advertisement display units with multi-networking (TCP/IP) capabilities; audiovisual apparatus, namely, audiovisual receivers; visual display units; telecommunication apparatus in the nature of transmitting sets; audiovisual apparatus; equipment for entering, storing, processing information or data, namely, computers and microcomputers; telecommunication apparatus; blank optical data carriers for recording and reproduction of sounds, pictures, signals and data; equipment for entering, storing, processing information or data; connecting hardware for computer equipment in the nature of modems; carriers for recording and reproduction of sounds, pictures, signals and data; apparatus for data transmission, collection, processing, namely, electronic communications systems comprised of computer hardware and software for the transmission of data between two points; connecting hardware for computer equipment (modems); printed circuit board sets in the nature of circuit boards; apparatus for data transmission, collection, processing; peripherals for computers, namely, USB cables; printed circuit board sets; downloadable computer software and software applications for mobile devices, namely, software for use in electronic storage of data; peripherals for computers; downloadable computer software for managing the security of people and property and the security of financial transactions; software and software applications for mobile devices (telephone, smartphone); electronic payment terminals; software for the security of people and property, the security of financial transactions; payment terminalsClass 009 for Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electrical relays and transformers; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers, blank recording discs; blank compact discs; cash registers, calculating machines, data processing equipment in the nature of couplers; computers; downloadable software for use in database management and file management in the field of information technology, telecommunication, payment transaction and cloud computing; fire extinguishers; devices for entry, recording, storage, manipulation, transmission, reproduction of sound, data, images, namely, electronic key cards, audio recorders, blank flash drives and apparatus for transmission of communication; electronic cards for processing images; camcorders; interface circuits for video cameras; blank magnetic, optical, digital data carriers; radio transmitters and receivers for radio broadcasting, broadcasting and remote transmission; satellites; read-only discs in the nature of blank digital compact discs; data processing equipment, namely, computer hardware for high-speed processing and storage of data using multiple CPUs; terminals, namely, home computer terminals; computers, namely, personal computers and calculating microcomputers; microprocessor devices in the nature of microprocessors and microprocessor systems; downloadable computer programs for use in database management and file management in the field of information technology, telecommunication, payment transaction and cloud computing and downloadable computer application software for handheld computers and mobile devices including telephones and smartphones, namely, software for use in database management; computers, microcomputers, computer terminals; control desks in the nature of electrical controllers and electric control panels; keyboards; flat panel display screens; computer printers; recorded tape cassettes; memories and generators of images, lines or characters, namely, computer memories; image frequency synthesizers; entertainment and educational devices connected to a television receiver or telematics terminal, namely, hand-held electronic dictionaries; radio pagers and transmitters; answering machines; computer software packages featuring downloadable computer software that manages databases; telephone apparatus; mobile telephones and fixed location telephones; visual display units in the nature of electronic LCD advertisement display units with multi-networking (TCP/IP) capabilities; audiovisual apparatus, namely, audiovisual receivers; telecommunication apparatus in the nature of transmitting sets; equipment for entering, storing, processing information or data, namely, computers and microcomputers; blank optical data carriers for recording and reproduction of sounds, pictures, signals and data; connecting hardware for computer equipment in the nature of modems; apparatus for data transmission, collection, processing, namely, electronic communications systems comprised of computer hardware and software for the transmission of data between two points; printed circuit board sets in the nature of circuit boards; peripherals for computers, namely, USB cables; downloadable computer software and software applications for mobile devices, namely, software for use in electronic storage of data; downloadable computer software for managing the security of people and property and the security of financial transactions; electronic payment terminals
Deleted Filing Basis: 1(b)
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 [ France application number 4490479 filed 10/11/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184490479 registered 10/11/2018 with a renewal date of __________ and an expiration date of 10/11/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-216759226-131753981_._ATOS_SYNTEL_logo.pdf
Converted PDF file(s) ( 6 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Insurance services; banking; monetary affairs; real estate affairs; electronic payment and financial transaction services ; online payment services ; finance services ; Processing of payments made via banking cards, payment cards and cheques; Management of payment transactions (debits, credits and cancellations); card services ; consultation and financial information relating to the above-mentioned services
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.

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 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[ France application number 4490479 filed 10/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Insurance services; Banking; monetary affairs, namely, financial information, management and analysis services; monetary affairs; electronic payment and financial transaction services, namely, electronic processing and subsequent transmission of payment data; real estate affairs; online payment services, namely, processing of debit card payments; electronic payment and financial transaction services; finance services in the nature of financing services; online payment services; Processing of payments made via banking cards, payment cards and checks; finance services; Management of payment transactions and payment cancellations made with debit cards and credit cards; Processing of payments made via banking cards, payment cards and cheques; debit card transaction processing services; Management of payment transactions (debits, credits and cancellations); consultation and financial information relating to the above-mentioned services; card servicesClass 036 for Banking; monetary affairs, namely, financial information, management and analysis services; electronic payment and financial transaction services, namely, electronic processing and subsequent transmission of payment data; online payment services, namely, processing of debit card payments; finance services in the nature of financing services; Processing of payments made via banking cards, payment cards and checks; Management of payment transactions and payment cancellations made with debit cards and credit cards; debit card transaction processing services; consultation and financial information relating to the above-mentioned services
Deleted Filing Basis: 1(b)
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 [ France application number 4490479 filed 10/11/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184490479 registered 10/11/2018 with a renewal date of __________ and an expiration date of 10/11/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Providing access to databases; Telecommunication ; communications by computer terminals ; provision of access to on line services ; Providing access for the computerised management of systems for data transmission and telecommunications systems for processing data; Transmission of electronic mail; computer-aided transmission of data ; communication services for commercial interaction in the field of global computer networks; leasing access time to computer database servers ; services for providing user access to computers for business management ; Providing secure access to computer networks, servers and to the Internet; telecommunication for the security of people and of goods for secure remote transactions and payment; providing of access for the computerized management of secure remote transactions and payment system; Electronic transmission of e-commerce transaction data and information; Providing of temporary access to computer software; Providing temporary use of online, non-downloadable software; transmission of data via satellites
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.

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 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[ France application number 4490479 filed 10/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing access to databases; Telecommunication; Telecommunication access services; communications by computer terminals; provision of access to on line services; provision of access to online services via provision of access to the internet; Providing access for the computerised management of systems for data transmission and telecommunications systems for processing data; Providing access to the internet and databases for the computerized management of systems for data transmission and telecommunications systems for processing data; Transmission of electronic mail; computer-aided transmission of data; computer-aided transmission of data in the nature of messages and images; communication services for commercial interaction in the field of global computer networks; communication services for commercial interaction in the field of global computer networks, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; leasing access time to computer database servers; providing access to databases; services for providing user access to computers for business management; services for providing user access to computers for business management, namely, providing user access to global computer networks; Providing secure access to computer networks, servers and to the Internet; Providing secure user access to global computer networks, servers and to the Internet; telecommunication for the security of people and of goods for secure remote transactions and payment; telecommunication access services for the security of people and of goods for secure remote transactions and payment; providing of access for the computerized management of secure remote transactions and payment system; providing of internet access for the computerized management of secure remote transactions and payment system; Electronic transmission of e-commerce transaction data and information; Electronic transmission of e-commerce transaction data and information via a global computer network; Providing of temporary access to computer software; Providing temporary use of online, non-downloadable software; transmission of data via satellitesClass 038 for Providing access to databases; Telecommunication access services; communications by computer terminals; provision of access to online services via provision of access to the internet; Providing access to the internet and databases for the computerized management of systems for data transmission and telecommunications systems for processing data; Transmission of electronic mail; computer-aided transmission of data in the nature of messages and images; communication services for commercial interaction in the field of global computer networks, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; providing access to databases; services for providing user access to computers for business management, namely, providing user access to global computer networks; Providing secure user access to global computer networks, servers and to the Internet; telecommunication access services for the security of people and of goods for secure remote transactions and payment; providing of internet access for the computerized management of secure remote transactions and payment system; Electronic transmission of e-commerce transaction data and information via a global computer network; Providing of temporary access to computer software; transmission of data via satellites
Deleted Filing Basis: 1(b)
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 [ France application number 4490479 filed 10/11/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184490479 registered 10/11/2018 with a renewal date of __________ and an expiration date of 10/11/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Teaching; entertainment services; coaching; organization of conferences, seminars and exhibitions for cultural or educational purposes ; production of radio and television programs; Sporting and cultural activities; organization and leading of conferences, symposiums, congresses; leading of cultural or educative purposes exhibitions
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.

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 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[ France application number 4490479 filed 10/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Teaching; Production of radio and television programs; entertainment services; Sporting and cultural activities, namely, organizing community sporting and cultural events; coaching; leading of cultural or educative purposed exhibitions; organization of conferences, seminars and exhibitions for cultural or educational purposes; Sporting and cultural activities; organization and leading of conferences, symposiums, congresses; leading of cultural or educative purposes exhibitionsClass 041 for Production of radio and television programs; Sporting and cultural activities, namely, organizing community sporting and cultural events; leading of cultural or educative purposed exhibitions
Deleted Filing Basis: 1(b)
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 [ France application number 4490479 filed 10/11/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184490479 registered 10/11/2018 with a renewal date of __________ and an expiration date of 10/11/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or 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 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; Design, development, maintenance and updating of computer software, computers and computer peripherals; computer programming, software programming, integration of computer systems and of networks in the fields of information technologies, telecommunications, payment transactions and cloud computing; Management of computer servers, facilities management, namely, hosting of computer servers; Computer software programming for making financial transactions secure, Consultancy and information relating to the aforesaid services; technological advisory services relating to computer programs; Design, installation, testing and maintenance of computer software, and information security in relation to business interaction via the computer network (programming); Technical project studies in the field of computer hardware and software ; consultancy in the field of computer hardware ; computer systems analysis services ; advice and consulting relating to use of internet ; rental of computers and computer software ; duplication of computer programs ; scientific and industrial research services, namely, research and development of new products for third parties and technical research ; collection, interpretation and processing of data; provision of online information and data through land, sea and air monitoring; website services, including rental of website access time, website design, website hosting, website development ; Computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of operating environment, development of operating environment, development and integration of interactive content and design, and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services via telephone, email, facsimile, pager, and in person and enabling legacy applications for use on the world wide web
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.

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 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[ France application number 4490479 filed 10/11/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Scientific and technological services and research and design relating thereto; Design and development of computer hardware and software; industrial analysis and research services; computer programming; Design, development, maintenance and updating of computer software; design and development of computers; Design, development, maintenance and updating of computer software, computers and computer peripherals; computer programming services, software programming; computer programming, software programming, integration of computer systems and of networks in the fields of information technologies, telecommunications, payment transactions and cloud computing; integration of computer systems and of networks in the fields of information technologies, telecommunications, payment transactions and cloud computing; Management of computer servers, facilities management, namely, hosting of computer servers; Management of computer servers, facilities management, namely, hosting of computer servers on a global computer network for the purpose f facilitating e-commerce via such server; Computer software programming for making financial transactions secure, Consultancy and information relating to the aforesaid services; Computer software programming for making financial transactions secure and consultancy and information relating to the aforesaid computer services; technological advisory services relating to computer programs; Design, installation, testing and maintenance of computer software, and information security in relation to business interaction via the computer network (programming); Design, installation, testing and maintenance of computer software, and consulting in the field of computer information security in relation to business interaction via the computer network; Technical project studies in the field of computer hardware and software; Technical project studies in the field of computer hardware and software, namely, development of computer hardware and software; consultancy in the field of computer hardware; consultancy in the field of design and development of computer hardware; computer systems analysis services; advice and consulting relating to use of internet; advice and consulting relating to use of internet, namely, internet security consultancy; rental of computers and computer software; duplication of computer programs; scientific and industrial research services, namely, research and development of new products for third parties and technical research; collection, interpretation and processing of data, namely, data automation and collection services using proprietary software to evaluate, analyze and collect service data; collection, interpretation and processing of data; provision of online information and data in the fields of technology and software development through land, sea and air monitoring; provision of online information and data through land, sea and air monitoring; website services, namely, rental of website access time in the nature of rental of software for internet access, website hosting, website development for others; website services, including rental of website access time, website design, website hosting, website development; Computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of computer software operating environment, development of computer software operating environment, development and integration of interactive computer software content and design, and in the fields of computer software applications, computer software maintenance, and computer software development; Computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of operating environment, development of operating environment, development and integration of interactive content and design, and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services via telephone, email, facsimile, pager, and in person, namely, troubleshooting of computer software problems and enabling legacy applications for use on the world wide web; technical support services via telephone, email, facsimile, pager, and in person and enabling legacy applications for use on the world wide webClass 042 for Design and development of computer hardware and software; computer programming; Design, development, maintenance and updating of computer software; design and development of computers; computer programming services, software programming; integration of computer systems and of networks in the fields of information technologies, telecommunications, payment transactions and cloud computing; Management of computer servers, facilities management, namely, hosting of computer servers on a global computer network for the purpose f facilitating e-commerce via such server; Computer software programming for making financial transactions secure and consultancy and information relating to the aforesaid computer services; technological advisory services relating to computer programs; Design, installation, testing and maintenance of computer software, and consulting in the field of computer information security in relation to business interaction via the computer network; Technical project studies in the field of computer hardware and software, namely, development of computer hardware and software; consultancy in the field of design and development of computer hardware; computer systems analysis services; advice and consulting relating to use of internet, namely, internet security consultancy; rental of computers and computer software; duplication of computer programs; collection, interpretation and processing of data, namely, data automation and collection services using proprietary software to evaluate, analyze and collect service data; provision of online information and data in the fields of technology and software development through land, sea and air monitoring; website services, namely, rental of website access time in the nature of rental of software for internet access, website hosting, website development for others; Computer consultation services in the fields of web site design, web site development, web site maintenance, web site upgrading, web site hosting, web site privacy, web site security, database design, selection of computer software operating environment, development of computer software operating environment, development and integration of interactive computer software content and design, and in the fields of computer software applications, computer software maintenance, and computer software development; technical support services via telephone, email, facsimile, pager, and in person, namely, troubleshooting of computer software problems and enabling legacy applications for use on the world wide web
Deleted Filing Basis: 1(b)
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 [ France application number 4490479 filed 10/11/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ France registration number 184490479 registered 10/11/2018 with a renewal date of __________ and an expiration date of 10/11/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The applicant's current attorney information: Lawrence E. Abelman. Lawrence E. Abelman of ABELMAN, FRAYNE & SCHWAB, is located at

      666 THIRD AVENUE
      NEW YORK, New York 10017-5621
      US
The docket/reference number is 879604.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is docket@lawabel.com

The applicants proposed attorney information: Lawrence E. Abelman. Other appointed attorneys are Frank Terranella, Julie Seyler, Marie Anne Mastrovito. Lawrence E. Abelman of ABELMAN, FRAYNE & SCHWAB, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      10th Floor
      666 THIRD AVENUE
      NEW YORK, New York 10017-5621
      United States
The docket/reference number is 879604.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is fterranella@lawabel.com

Lawrence E. Abelman 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: LAWRENCE E. ABELMAN. LAWRENCE E. ABELMAN of ABELMAN, FRAYNE & SCHWAB, is located at

      666 THIRD AVENUE
      NEW YORK, New York 10017-5621
      US
The docket/reference number is 879604.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is docket@lawabel.com; leabelman@lawabel.com

The applicants proposed correspondence information: Lawrence E. Abelman. Lawrence E. Abelman of ABELMAN, FRAYNE & SCHWAB, is located at

      10th Floor
      666 THIRD AVENUE
      NEW YORK, New York 10017-5621
      United States
The docket/reference number is 879604.

The phone number is 212-949-9022.

The fax number is 212-949-9190.

The email address is fterranella@lawabel.com; docket@lawabel.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: /ft/      Date: 09/04/2019
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for Owner, NY Bar member no. 1918697 (1984)
Signatory's Phone Number: 2129499022


Response Signature
Signature: /ft/     Date: 09/04/2019
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for Owner, NY Bar member no. 1918697 (1984)

Signatory's Phone Number: 2129499022

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:    LAWRENCE E. ABELMAN
   ABELMAN, FRAYNE & SCHWAB
   
   666 THIRD AVENUE
   NEW YORK, New York 10017-5621
Mailing Address:    Lawrence E. Abelman
   ABELMAN, FRAYNE & SCHWAB
   10th Floor
   666 THIRD AVENUE
   NEW YORK, New York 10017-5621
        
Serial Number: 88252293
Internet Transmission Date: Wed Sep 04 13:37:59 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20190904133759983
680-88252293-610e98ea3ff92910f83cd8fb1ea
d0ca8de8a9f7db9b6984e3a19f902490c0a7-N/A
-N/A-20190904131753981443