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. 88292601 EDEN (Stylized and/or with Design, see http://uspto.report/TM/88292601/mark.png) has been amended as follows:

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

Examiner has cited a prior-filed application number 88214100.  This application has been deemed abandoned and no longer presents an issue.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for - Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Downloadable computer database management software for use in personalizing the content of e-mail communications; digital stationary software and services; software and services for capturing user reactions to messaging; messaging platform facilitating messaging and communications adhering to a social contract of predefined tenor and content; Telecommunication services, namely, data transmission and reception services via telecommunication networks; Telecommunications services, namely, personal communication services; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with intent to maintain and strengthen relationships; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer mobile device and Internet users to other local and global online locations; - Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; Online social networking services; Identification verification services, namely, providing authentication of personal identification information
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: - Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Telecommunication services, namely, data transmission and reception services via telecommunication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Telecommunications services, namely, personal communication services; Downloadable software in the nature of a messaging application; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Instant messaging services; Downloadable software in the nature of a mobile application for messaging; Mobile phone communication services; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Voice over internet protocol (VOIP) services; Software for communication to maintain and strengthen relationships; Audio teleconferencing; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Teleconferencing services; Downloadable computer database management software for use in personalizing the content of e-mail communications; Web messaging; digital stationary software and services; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; software and services for capturing user reactions to messaging; Providing access to computer, electronic and online databases; messaging platform facilitating messaging and communications adhering to a social contract of predefined tenor and content; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards for social networking; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with intent to maintain and strengthen relationships; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer mobile device and Internet users to other local and global online locations; Video teleconferencing; Providing online chat rooms, instant messaging services, and electronic bulletin boards; - Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and web sites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; Online social networking services; Identification verification services, namely, providing authentication of personal identification informationClass 038 for Telecommunication services, namely, data transmission and reception services via telecommunication networks; Telecommunications services, namely, personal communication services; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Web messaging; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards for social networking; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with intent to maintain and strengthen relationships; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer mobile device and Internet users to other local and global online locations;
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Brian R. Coleman. Brian R. Coleman of PERKINS COIE LLP, is located at

      3150 PORTER DRIVE
      PALO ALTO, California 95765
      US
The docket/reference number is 126194.4006.

The phone number is 650-838-4300.

The fax number is 650-838-4350.

The email address is pctrademarks@perkinscoie.com

The applicants proposed attorney information: Brian R. Coleman. Brian R. Coleman of PERKINS COIE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      3150 PORTER DRIVE
      PALO ALTO, California 95765
      United States
The docket/reference number is 126194.4006.

The phone number is 650-838-4300.

The fax number is 650-838-4350.

The email address is pctrademarks@perkinscoie.com

Brian R. Coleman 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: BRIAN R. COLEMAN. BRIAN R. COLEMAN of PERKINS COIE LLP, is located at

      3150 PORTER DRIVE
      PALO ALTO, California 95765
      US
The docket/reference number is 126194.4006.

The phone number is 650-838-4300.

The fax number is 650-838-4350.

The email address is pctrademarks@perkinscoie.com; bcoleman@perkinscoie.com; aichang@perkinscoie.com; kthompson@perkinscoie.com

The applicants proposed correspondence information: Brian R. Coleman. Brian R. Coleman of PERKINS COIE LLP, is located at

      3150 PORTER DRIVE
      PALO ALTO, California 95765
      United States
The docket/reference number is 126194.4006.

The phone number is 650-838-4300.

The fax number is 650-838-4350.

The email address is pctrademarks@perkinscoie.com; bcoleman@perkinscoie.com; dsuh@perkinscoie.com; kthompson@perkinscoie.com

SIGNATURE(S)
Response Signature
Signature: /brian r. coleman/     Date: 10/25/2019
Signatory's Name: Brian R. Coleman
Signatory's Position: Counsel for Applicant, Cal Bar 199955

Signatory's Phone Number: 650 838 4300

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:    BRIAN R. COLEMAN
   PERKINS COIE LLP
   
   3150 PORTER DRIVE
   PALO ALTO, California 95765
Mailing Address:    Brian R. Coleman
   PERKINS COIE LLP
   3150 PORTER DRIVE
   PALO ALTO, California 95765
        
Serial Number: 88292601
Internet Transmission Date: Fri Oct 25 14:47:25 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201910251447257
18407-88292601-6106befa77f431f29ec3dfb26
e578c86ab199ac9d869f346859923993abec53db
4-N/A-N/A-20191025131900069215