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. 88293706 FIND A TABLE FOR ANYTHING(Standard Characters, see http://uspto.report/TM/88293706/mark.png) has been amended as follows:

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

This response is submitted in reply to the Office Action issued March 14, 2019.  The Office Action requested amendments to the goods and services identifications.  Applicant thanks the Examining Attorney Advisor for her guidance and hereby submits the following amendments:

 

Class 9:

 

computer software and mobile device software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; computer software and mobile device software for providing an online platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; computer software and mobile device software for customer relationship management, marketing, and yield management in the food service and hospitality industries; computer software and mobile device software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; computer software and mobile device software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information in the fields of restaurants, bars, food, and hospitality over the Internet or other communications network

 

Class 35:

 

providing online business directories featuring restaurants and bars and promoting the goods and services of others by providing an online platform featuring online restaurant and bar menus, availability, pricing, ratings, reviews and other restaurant and bar information; advertising and promotional services; advertising services, namely, promoting the restaurant and bar services of others; promoting the goods and services of others by providing an online platform featuring user generated and user submitted content promotional services, namely, promoting the services of others by providing online restaurant and bar menus, availability, pricing, and other restaurant and bar information; promoting the services of others by providing coupons and vouchers to consumers; providing food information in the nature of consumer product information relating to food products; providing ratings and reviews about bars and restaurants for consumer and commercial purposes

 

Class 36:

 

processing credit card, debit card, gift card and other forms of payment transactions via a global computer network; financial transaction services, namely, providing secure commercial transactions and payment options

 

Class 42:

 

providing temporary use of non-downloadable software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; providing an online software platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; providing temporary use of non-downloadable software for customer relationship management, marketing, and yield management in the food service and hospitality industries; providing temporary use of non-downloadable software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; providing temporary use of non-downloadable software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information in the fields of restaurants, bars, food, and hospitality over the Internet or other communications network; design, development, and configuration of hospitality rewards computer software programs for use in customer relationship management in the restaurant, bar, and hospitality industries

 

Class 43:

 

restaurant and bar reservation and booking services; providing restaurant and bar reservation and restaurant, bar, food, and hospitality industry information to others; providing reviews of restaurants and bars; providing ratings of restaurant and bar characteristics and qualities

 

Applicant notes that the Office Action requested clarification of “providing” electronic media or information in Classes 9 and 42.  However, Applicant notes that “providing information in the field of ___” is generally accepted in the Trademark ID Manual (e.g., Providing information in the fields of forensic science via the Internet).  In addition, the Office Action requested clarification of “electronic media” in Classes 9 and 42.  However, that language is also generally accepted in the Trademark ID Manual (e.g., Pre-recorded electronic media devices featuring {indicate subject matter} [excluding gaming apparatus]).  Applicant accordingly requests the Examining Attorney Advisor to reconsider the clarification requirements in view of the amendments listed above.

 

Applicant notes that the Examining Attorney searched the Office records and found no prior registered or pending mark that would bar registration of Applicant’s mark under Section 2(d).  Upon submission of this response, it is therefore believed that this application will be in condition for publication.  Such action is respectfully requested.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer software and mobile device software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; computer software and mobile device software for providing an online platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; computer software and mobile device software for customer relationship management, marketing, and yield management in the food service and hospitality industries; computer software and mobile device software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; computer software and mobile device software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications 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.

Proposed:
Tracked Text Description: computer software and mobile device software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; computer software and mobile device software for providing an online platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; computer software and mobile device software for customer relationship management, marketing, and yield management in the food service and hospitality industries; computer software and mobile device software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; computer software and mobile device software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications network; computer software and mobile device software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information in the fields of restaurants, bars, food, and hospitality over the Internet or other communications networkClass 009 for computer software and mobile device software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; computer software and mobile device software for providing an online platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; computer software and mobile device software for customer relationship management, marketing, and yield management in the food service and hospitality industries; computer software and mobile device software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; computer software and mobile device software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information in the fields of restaurants, bars, food, and hospitality over the Internet or other communications 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for providing online business directories featuring restaurants and bars and promoting the goods and services of others by providing an online platform featuring online restaurant and bar menus, availability, pricing, ratings, reviews and other restaurant and bar information; advertising and promotional services; advertising services, namely, promoting the restaurant and bar services of others; promoting the goods and services of others by providing an online platform featuring user generated and user submitted content promotional services, namely, promoting the services of others by providing online restaurant and bar menus, availability, pricing, and other restaurant and bar information; promoting the services of others by providing coupons and vouchers to consumers
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: providing online business directories featuring restaurants and bars and promoting the goods and services of others by providing an online platform featuring online restaurant and bar menus, availability, pricing, ratings, reviews and other restaurant and bar information; advertising and promotional services; advertising services, namely, promoting the restaurant and bar services of others; promoting the goods and services of others by providing an online platform featuring user generated and user submitted content promotional services, namely, promoting the services of others by providing online restaurant and bar menus, availability, pricing, and other restaurant and bar information; promoting the services of others by providing coupons and vouchers to consumers; providing food information in the nature of consumer product information relating to food products; providing ratings and reviews about bars and restaurants for consumer and commercial purposesClass 035 for providing online business directories featuring restaurants and bars and promoting the goods and services of others by providing an online platform featuring online restaurant and bar menus, availability, pricing, ratings, reviews and other restaurant and bar information; advertising and promotional services; advertising services, namely, promoting the restaurant and bar services of others; promoting the goods and services of others by providing an online platform featuring user generated and user submitted content promotional services, namely, promoting the services of others by providing online restaurant and bar menus, availability, pricing, and other restaurant and bar information; promoting the services of others by providing coupons and vouchers to consumers; providing food information in the nature of consumer product information relating to food products; providing ratings and reviews about bars and restaurants for consumer and commercial purposes
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions via a global computer network; financial transaction services, namely, providing secure commercial transactions and payment options
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: accepting, processing, and reconciling credit card, debit card, gift card and other forms of payment transactions via a global computer network; processing credit card, debit card, gift card and other forms of payment transactions via a global computer network; financial transaction services, namely, providing secure commercial transactions and payment optionsClass 036 for processing credit card, debit card, gift card and other forms of payment transactions via a global computer network; financial transaction services, namely, providing secure commercial transactions and payment options
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for providing temporary use of non-downloadable software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; providing an online software platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; providing temporary use of non-downloadable software for customer relationship management, marketing, and yield management in the food service and hospitality industries; providing temporary use of non-downloadable software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; providing temporary use of non-downloadable software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications network; design, development, and configuration of hospitality rewards computer software programs for use in customer relationship management in the restaurant, bar, and hospitality industries
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: providing temporary use of non-downloadable software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; providing an online software platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; providing temporary use of non-downloadable software for customer relationship management, marketing, and yield management in the food service and hospitality industries; providing temporary use of non-downloadable software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; providing temporary use of non-downloadable software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information over the Internet or other communications network; providing temporary use of non-downloadable software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information in the fields of restaurants, bars, food, and hospitality over the Internet or other communications network; design, development, and configuration of hospitality rewards computer software programs for use in customer relationship management in the restaurant, bar, and hospitality industriesClass 042 for providing temporary use of non-downloadable software for making online restaurant and bar reservations and providing online restaurant and bar reservations and information for others; providing an online software platform for others in the field of locating restaurants and bars, describing restaurant and bar services, providing restaurant and bar availability and pricing; providing temporary use of non-downloadable software for customer relationship management, marketing, and yield management in the food service and hospitality industries; providing temporary use of non-downloadable software for making and processing payment transactions with credit cards, debit cards, gift cards, vouchers, and other payment forms; providing temporary use of non-downloadable software for managing, organizing, displaying, tagging, bookmarking, storing, sharing or otherwise providing electronic media or information in the fields of restaurants, bars, food, and hospitality over the Internet or other communications network; design, development, and configuration of hospitality rewards computer software programs for use in customer relationship management in the restaurant, bar, and hospitality industries
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 043 for restaurant and bar reservation and booking services; providing restaurant and bar reservation and restaurant, bar, food, and hospitality industry information to others; providing ratings and reviews of restaurants and bars
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: restaurant and bar reservation and booking services; providing restaurant and bar reservation and restaurant, bar, food, and hospitality industry information to others; providing ratings and reviews of restaurants and bars; providing reviews of restaurants and bars; providing ratings of restaurant and bar characteristics and qualitiesClass 043 for restaurant and bar reservation and booking services; providing restaurant and bar reservation and restaurant, bar, food, and hospitality industry information to others; providing reviews of restaurants and bars; providing ratings of restaurant and bar characteristics and qualities
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.

SIGNATURE(S)
Response Signature
Signature: /Anna King/     Date: 07/10/2019
Signatory's Name: Anna King
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: (312) 463-5000

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.

        
Serial Number: 88293706
Internet Transmission Date: Wed Jul 10 15:36:05 EDT 2019
TEAS Stamp: USPTO/ROA-X.XX.XX.XXX-201907101536051111
37-88293706-62071ad5328c85a61bdc6da5aad7
9c0f3c615582e26785973abbe5af8b96e1b98-N/
A-N/A-20190710152814740096