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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88291069 |
LAW OFFICE ASSIGNED |
LAW OFFICE 111 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88291069/mark.png |
LITERAL ELEMENT |
NK |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
ARGUMENT(S) |
In response to the Office Action dated April 18, 2019, regarding Application No. 88291065, in which the Examining Attorney raised the following
issues: 1) identification of goods, 2) classification of goods and services, and 3) dual bases application, Applicant responds as follows. Applicant has amended the description of goods and added
Class 45. At this time, Applicant intends to rely on both Section 1(b) and 44(e) as a basis for registration but the foreign registration forming the basis for Section 44(e) has not yet issued.
Applicant therefore requests that the U.S. application be suspended until a copy of the foreign registration is available. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Mobile device software applications for the provision of time, location and event sensitive electronic communications between users of
a social network; Mobile device software applications for the provision of time, location and event sensitive commercial promotions between users of a social network; Internet-based social networking
services, namely, provision of time, location and event sensitive electronic communications between users of a social network; Internet-based social networking services, namely, provision of time,
location and event sensitive commercial promotions between users of a social network |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1916294 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
08/23/2018 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Mobile device software applications for the provision of time, location and event sensitive electronic
communications between users of a social network; Downloadable mobile device software applications for the provision of time, location and event sensitive
electronic communications between users of a social network; Mobile device software applications for the provision of time, location and event sensitive
commercial promotions between users of a social network; Downloadable mobile device software applications for the provision of time, location and event
sensitive commercial promotions between users of a social network; Internet-based social networking services, namely, provision of time, location and event
sensitive electronic communications between users of a social network; Internet-based social networking services, namely, provision of time, location and event
sensitive commercial promotions between users of a social network |
FINAL DESCRIPTION |
Downloadable mobile device software applications for the provision of time, location and event sensitive electronic communications
between users of a social network; Downloadable mobile device software applications for the provision of time, location and event sensitive commercial promotions between users of a social
network |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1916294 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
08/23/2018 |
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. |
GOODS AND/OR SERVICES SECTION (045)(class added) |
INTERNATIONAL CLASS |
045 |
DESCRIPTION |
Internet-based social networking services, namely, provision of time, location and event sensitive electronic communications between
users of a social network; Internet-based social networking services, namely, provision of time, location and event sensitive commercial promotions between users of a social network |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
1916294 |
FOREIGN APPLICATION COUNTRY |
Canada |
FOREIGN FILING DATE |
08/23/2018 |
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. |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
TOTAL FEES DUE |
275 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Caroline E. Bryce/ |
SIGNATORY'S NAME |
Caroline E. Bryce |
SIGNATORY'S POSITION |
Attorney of Record, Colorado Bar Member |
SIGNATORY'S PHONE NUMBER |
3038639700 |
DATE SIGNED |
06/28/2019 |
RESPONSE SIGNATURE |
/Caroline E. Bryce/ |
SIGNATORY'S NAME |
Caroline E. Bryce |
SIGNATORY'S POSITION |
Attorney of Record, Colorado Bar Member |
SIGNATORY'S PHONE NUMBER |
3038639700 |
DATE SIGNED |
06/28/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Jun 28 18:24:06 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XX-2
0190628182406630797-88291
069-62083f74737853bfdefdb
1eaf9a40eb722f76473a39432
674f17dcc6b1e421edb3-DA-5
885-20190628182255810548 |
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.
88291069 NK (Stylized and/or with Design, see http://uspto.report/TM/88291069/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
In response to the Office Action dated April 18, 2019, regarding Application No. 88291065, in which the Examining Attorney raised the following issues: 1) identification of goods, 2) classification
of goods and services, and 3) dual bases application, Applicant responds as follows. Applicant has amended the description of goods and added Class 45. At this time, Applicant intends to rely on both
Section 1(b) and 44(e) as a basis for registration but the foreign registration forming the basis for Section 44(e) has not yet issued. Applicant therefore requests that the U.S. application be
suspended until a copy of the foreign registration is available.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Mobile device software applications for the provision of time, location and event sensitive electronic communications between users of a social network; Mobile device
software applications for the provision of time, location and event sensitive commercial promotions between users of a social network; Internet-based social networking services, namely, provision of
time, location and event sensitive electronic communications between users of a social network; Internet-based social networking services, namely, provision of time, location and event sensitive
commercial promotions between users of a social network
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[ Canada application number 1916294 filed 08/23/2018]. 15 U.S.C.Section 1126(d), as amended.
Proposed:
Tracked Text Description: Mobile device software applications for the provision of time, location and event sensitive electronic communications between users of
a social network;
Downloadable mobile device software applications for the provision of time, location and event sensitive electronic communications between users
of a social network;
Mobile device software applications for the provision of time, location and event sensitive commercial promotions between users of a social
network;
Downloadable mobile device software applications for the provision of time, location and event sensitive commercial promotions between users of a
social network;
Internet-based social networking services, namely, provision of time, location and event sensitive electronic communications between users of a
social network;
Internet-based social networking services, namely, provision of time, location and event sensitive commercial promotions between users of a
social networkClass 009 for Downloadable mobile device software applications for the provision of time, location and event sensitive electronic communications between users of a social network;
Downloadable mobile device software applications for the provision of time, location and event sensitive commercial promotions between users of a social network
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 [ Canada application number 1916294 filed 08/23/2018]. 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.
Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for Internet-based social networking services, namely, provision of time, location and event sensitive electronic communications between users of a social network;
Internet-based social networking services, namely, provision of time, location and event sensitive commercial promotions between users of a social network
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 [ Canada application number 1916294 filed 08/23/2018]. 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.
FEE(S)
Fee(s) in the amount of $275 is being submitted.
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: /Caroline E. Bryce/ Date: 06/28/2019
Signatory's Name: Caroline E. Bryce
Signatory's Position: Attorney of Record, Colorado Bar Member
Signatory's Phone Number: 3038639700
Response Signature
Signature: /Caroline E. Bryce/ Date: 06/28/2019
Signatory's Name: Caroline E. Bryce
Signatory's Position: Attorney of Record, Colorado Bar Member
Signatory's Phone Number: 3038639700
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another
U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently
filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of
attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in
this matter.
RAM Sale Number: 88291069
RAM Accounting Date: 07/01/2019
Serial Number: 88291069
Internet Transmission Date: Fri Jun 28 18:24:06 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019062818240663
0797-88291069-62083f74737853bfdefdb1eaf9
a40eb722f76473a39432674f17dcc6b1e421edb3
-DA-5885-20190628182255810548