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. 88254028 SOLFL(Standard Characters, see http://uspto.report/TM/88254028/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of please see the attached has been attached.
Original PDF file:
evi_20671224226-20190919150636722312_._Response_to_Office_Action_-_SOLFL__F3210826x96B9E_.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_20671224226-20190919150636722312_._TSDR_Printouts_for_Response_to_OA__F3210111x96B9E_.pdf
Converted PDF file(s) ( 26 pages)
Evidence-1
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; business information services; incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others; providing office support services; online business networking services; business consultation services in the nature of office space design; business management and organization consultancy; business data analysis; market analysis; market analysis and research services; real estate marketing analysis; providing electronic tracking of real estate assets to others for business purposes; planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties; providing office support staff services; project management services for others; business consulting services in the fields of spatial layout and infrastructure architecture and interior design; consulting services in the field of spatial management to optimize business process efficiency and decision-making; computer-aided optimization and management, namely, managing logistics and physical spaces; convenience stores, on-line convenience stores, computer services, namely, services to facilitate the sales of goods and services via the global electronic communications network; providing an on-line searchable database for the sale of goods and services of others; providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; gift and sundries retail services; advertising; business management; business administration; office functions
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[ Mauritius application number MU/M/2018/28 filed 11/15/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; business information services; providing business information; incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others; providing office support services; providing office functions support services; online business networking services; business consultation services in the nature of office space design; business management and organization consultancy; business data analysis; market analysis; market analysis and research services; real estate marketing analysis; providing electronic tracking of real estate assets to others for business purposes; planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties; planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties for business purposes; providing office support staff services; project management services for others; business project management services for others; business consulting services in the fields of spatial layout and infrastructure architecture and interior design; consulting services in the field of spatial management to optimize business process efficiency and decision-making; business consulting services in the field of spatial management to optimize business process efficiency and decision-making; computer-aided optimization and management, namely, managing logistics and physical spaces; computer-aided optimization and management, namely, managing logistics and physical spaces for business purposes; convenience stores, on-line convenience stores, computer services, namely, services to facilitate the sales of goods and services via the global electronic communications network; retail convenience stores, on-line retail convenience stores, and providing an on-line searchable database for the sale of goods and services of others; providing an on-line searchable database for the sale of goods and services of others; providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; gift and sundries retail store services; gift and sundries retail services; advertising services; advertising; business management; business administration; providing office functions; office functionsClass 035 for Providing co-working facilities equipped with desks, private offices, office equipment, mailroom, printing center, receptionist, kitchen, meeting rooms, telecommunications equipment and other office amenities; providing business information; incubation services, namely, providing work space containing business equipment and other amenities to emerging, start-up and existing companies; business development services, namely, providing start-up support for businesses of others; providing office functions support services; online business networking services; business consultation services in the nature of office space design; business management and organization consultancy; business data analysis; market analysis; market analysis and research services; real estate marketing analysis; providing electronic tracking of real estate assets to others for business purposes; planning, design, development, maintenance, tracking and reporting of real estate construction projects for third parties for business purposes; providing office support staff services; business project management services for others; business consulting services in the fields of spatial layout and infrastructure architecture and interior design; business consulting services in the field of spatial management to optimize business process efficiency and decision-making; computer-aided optimization and management, namely, managing logistics and physical spaces for business purposes; retail convenience stores, on-line retail convenience stores, and providing an on-line searchable database for the sale of goods and services of others; providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; gift and sundries retail store services; advertising services; business management; business administration; providing office functions
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 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 [ Mauritius application number MU/M/2018/28 filed 11/15/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Real estate management services; real estate leasing; leasing of office space; real estate renting of apartments, condominiums and office space; real estate brokerage
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[ Mauritius application number MU/M/2018/28 filed 11/15/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 036 for Real estate management services; real estate leasing; leasing of office space; real estate renting of apartments, condominiums and office space; real estate brokerage
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 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 [ Mauritius application number MU/M/2018/28 filed 11/15/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Educational services; educational services, namely, developing curriculum for teachers; educational services in the nature of operating an educational institution; entertainment services, namely, providing podcasts
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[ Mauritius application number MU/M/2018/28 filed 11/15/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Educational services; Educational services namely, conducting educational seminars, conferences, workshops, lectures, webcasts, TV, podcasts and radio programs in the field of technology, entertainment, design, business science, culture, arts, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, social issues and cultural issues in the field of unleashing new ideas; educational services, namely, developing curriculum for teachers; educational services in the nature of operating an educational institution; educational services in the nature of operating an educational institution in the field of computer programming and computer coding; entertainment services, namely, providing podcasts; educational services in the nature of operating an educational institution providing kindergarten through grade 5 classroom instruction; educational services, namely, providing kindergarten through grade 5 classroom instruction; educational services in the nature of operating an educational institution providing grade 6 through grade 12 classroom instruction; educational services, namely, providing grade 6 through grade 12 classroom instruction; entertainment services, namely, providing podcasts in the field of technology, entertainment, design, business science, culture, arts, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, social issues and cultural issues in the field of unleashing new ideasClass 041 for Educational services namely, conducting educational seminars, conferences, workshops, lectures, webcasts, TV, podcasts and radio programs in the field of technology, entertainment, design, business science, culture, arts, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, social issues and cultural issues in the field of unleashing new ideas; educational services, namely, developing curriculum for teachers; educational services in the nature of operating an educational institution in the field of computer programming and computer coding; educational services in the nature of operating an educational institution providing kindergarten through grade 5 classroom instruction; educational services, namely, providing kindergarten through grade 5 classroom instruction; educational services in the nature of operating an educational institution providing grade 6 through grade 12 classroom instruction; educational services, namely, providing grade 6 through grade 12 classroom instruction; entertainment services, namely, providing podcasts in the field of technology, entertainment, design, business science, culture, arts, global issues, health, economics, the environment, politics, the humanities, leadership, public policy, social issues and cultural issues in the field of unleashing new ideas
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 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 [ Mauritius application number MU/M/2018/28 filed 11/15/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: THE WE COMPANY MC LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      115 WEST 18TH STREET
      NEW YORK, New York 10011
      United States

Proposed: WeWork Companies LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      115 WEST 18TH STREET
      NEW YORK, New York 10011
      United States
      XXXX (not authorized)

The applicant's current attorney information: Allison Strickland Ricketts. Allison Strickland Ricketts of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      4 TIMES SQUARE, 17TH FLOOR
      NEW YORK, New York 10036
      US
The docket/reference number is WEWO 1813140.

The applicants proposed attorney information: Allison Strickland Ricketts. Other appointed attorneys are Lawrence E. Apolzon, Andrew N. Fredbeck, Nancy Sabarra, Karen Lim, Charles T.J. Weigell, Ashford Tucker, Tamar Niv Bessinger, Julia Belagorudsky. Allison Strickland Ricketts of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      151 West 42nd St., 17th Fl
      New York, New York 10036
      United States
The docket/reference number is WEWO 1813140.

The phone number is 2128135967.

The email address is ricketts-docket@fzlz.com

Allison Strickland Ricketts 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: ALLISON STRICKLAND RICKETTS. ALLISON STRICKLAND RICKETTS of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      4 TIMES SQUARE, 17TH FLOOR
      NEW YORK, New York 10036
      US
The docket/reference number is WEWO 1813140.

The phone number is 212-813-5967.

The email address is ricketts-docket@fzlz.com

The applicants proposed correspondence information: Allison Strickland Ricketts. Allison Strickland Ricketts of FROSS ZELNICK LEHRMAN & ZISSU, P.C., is located at

      151 West 42nd St., 17th Fl
      New York, New York 10036
      United States
The docket/reference number is WEWO 1813140.

The phone number is 2128135967.

The email address is ricketts-docket@fzlz.com

SIGNATURE(S)
Response Signature
Signature: /Julia Belagorudsky/     Date: 09/19/2019
Signatory's Name: Julia Belagorudsky
Signatory's Position: Associate Attorney, Fross Zelnick Lehrman & Zissu, New York Bar member

Signatory's Phone Number: 21281359600

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:    ALLISON STRICKLAND RICKETTS
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   4 TIMES SQUARE, 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Allison Strickland Ricketts
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 West 42nd St., 17th Fl
   New York, New York 10036
        
Serial Number: 88254028
Internet Transmission Date: Thu Sep 19 17:39:32 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201909191739323
22594-88254028-610b88895e1b8a574326aa3e2
bf296e74733bce6bef28b3805b114d2d6b8aa65-
N/A-N/A-20190919163928464036