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. 88307782 SOLVE(Standard Characters, see http://uspto.report/TM/88307782/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: arguments and third-party software using the term "Solve"
Original PDF file:
evi_4714522220-2020061723 2403229073_._SOLVE_-_Clas s_9_and_42_-_Office_Actio n_Response.pdf
Converted PDF file(s) ( 10 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10
Original PDF file:
evi_4714522220-2020061723 2403229073_._ROA_-_Attach ment_A.pdf
Converted PDF file(s) ( 9 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software applications for transmitting videos and films in the fields of drama, live action, and comedy entertainment to wireless devices via a global computer network; Computer software, namely, downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment
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 computer software applications for transmitting videos and films in the fields of drama, live action, and comedy entertainment to wireless devices via a global computer network; Downloadable computer software applications for transmitting videos and films in the fields of touch-controlled interactive drama and audience-controlled scripted drama to wireless devices via a global computer network; Computer software, namely, downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment; Computer software, namely, downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices for viewing audio-visual media content in the fields of touch-controlled interactive drama and audience-controlled scripted dramaClass 009 for Downloadable computer software applications for transmitting videos and films in the fields of touch-controlled interactive drama and audience-controlled scripted drama to wireless devices via a global computer network; Computer software, namely, downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices for viewing audio-visual media content in the fields of touch-controlled interactive drama and audience-controlled scripted drama
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:

Current:
Class 042 for Providing temporary use of non-downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment
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 computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices and to downloadable media players for viewing audio-visual media content in the fields of drama, live action, and comedy entertainment; Providing temporary use of non-downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices for viewing audio-visual media content in the fields of touch controlled interactive drama and audience-controlled scripted dramaClass 042 for Providing temporary use of non-downloadable computer software for streaming audio-visual media content via the Internet to mobile digital electronic devices for viewing audio-visual media content in the fields of touch controlled interactive drama and audience-controlled scripted drama
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.
Correspondence Information (current):
      John Paul Oleksiuk
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): eyu@cooley.com

The docket/reference number is 335152-20000.
Correspondence Information (proposed):
      John Paul Oleksiuk
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@cooley.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): eyu@cooley.com; mpeterson@cooley.com; jpo@cooley.com

The docket/reference number is 335152-20000.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Marcus Peterson/     Date: 06/17/2020
Signatory's Name: Marcus Peterson
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 310-883-6400

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:    John Paul Oleksiuk
   COOLEY LLP
   
   1299 PENNSYLVANIA AVENUE, NW, SUITE 700
   WASHINGTON, District of Columbia 20004-2400
Mailing Address:    John Paul Oleksiuk
   COOLEY LLP
   1299 PENNSYLVANIA AVENUE, NW, SUITE 700
   WASHINGTON, District of Columbia 20004-2400
        
Serial Number: 88307782
Internet Transmission Date: Wed Jun 17 23:39:50 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020061723395033
0050-88307782-710cd7854ac7c0efc6ea58d19a
a109cbd8bc21f48deea2db0dbd681c5c5b8c82-N
/A-N/A-20200617232403229073