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. 88300465 STATUS(Standard Characters, see http://uspto.report/TM/88300465/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Non-downloadable computer software for use in relation to compliance and risk management; non-downloadable computer software for use in relation to third party due diligence; non-downloadable computer software for use in connection with legal, regulatory, policy, and standards compliance; non-downloadable computer software for use in connection with employment screening; Software as a Service (SaaS) for use in relation to compliance and risk management; Software as a Service (SaaS) for use in relation to third party due diligence; Software as a Service (SaaS) for use in connection with legal, regulatory, policy, and standards compliance; Software as a Service (SaaS) for use in connection with employment screening; computer programming and consulting services for the implementation and modification of computer software; cloud computing services; hosting services; electronic data storage services; computer software maintenance services; computer software development services; computer software diagnostics services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Non-downloadable computer software for use in relation to compliance and risk management; Providing online non-downloadable computer software for use in relation to compliance and risk management; non-downloadable computer software for use in relation to third party due diligence; Providing online non-downloadable computer software for use in relation to third party due diligence; non-downloadable computer software for use in connection with legal, regulatory, policy, and standards compliance; Providing online non-downloadable computer software for use in connection with legal, regulatory, policy, and standards compliance; non-downloadable computer software for use in connection with employment screening; Providing online non-downloadable computer software for use in connection with employment screening; Software as a Service (SaaS) for use in relation to compliance and risk management; Software as a Service (SaaS) featuring software for use in relation to compliance and risk management; Software as a Service (SaaS) for use in relation to third party due diligence; Software as a Service (SaaS) featuring software for use in relation to third party due diligence; Software as a Service (SaaS) for use in connection with legal, regulatory, policy, and standards compliance; Software as a Service (SaaS) featuring software for use in connection with legal, regulatory, policy, and standards compliance; Software as a Service (SaaS) for use in connection with employment screening; Software as a Service (SaaS) featuring software for use in connection with employment screening; computer programming and consulting services for the implementation and modification of computer software; cloud computing services; consulting services in the field of cloud computing; hosting services; web site hosting services; electronic data storage services; computer software maintenance services; computer software development services; computer software diagnostics services; computer software diagnostics services.Class 042 for Providing online non-downloadable computer software for use in relation to compliance and risk management; Providing online non-downloadable computer software for use in relation to third party due diligence; Providing online non-downloadable computer software for use in connection with legal, regulatory, policy, and standards compliance; Providing online non-downloadable computer software for use in connection with employment screening; Software as a Service (SaaS) featuring software for use in relation to compliance and risk management; Software as a Service (SaaS) featuring software for use in relation to third party due diligence; Software as a Service (SaaS) featuring software for use in connection with legal, regulatory, policy, and standards compliance; Software as a Service (SaaS) featuring software for use in connection with employment screening; computer programming and consulting services for the implementation and modification of computer software; consulting services in the field of cloud computing; web site hosting services; electronic data storage services; computer software maintenance services; computer software development services; computer software diagnostics services.
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: /ils/     Date: 05/11/2019
Signatory's Name: Ian L. Saffer
Signatory's Position: Attorney of record, CO bar member

Signatory's Phone Number: 303-268-0066

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: 88300465
Internet Transmission Date: Mon May 13 11:29:01 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201905131129012
26277-88300465-6203e1cef6f45231602183203
4e3d1631af5dc7e3d14ab7d91919d4c4492786be
-N/A-N/A-20190509112937626402