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. 88312076 ONEEDGE (Stylized and/or with Design, see http://uspto.report/TM/88312076/mark.png) has been amended as follows:

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

The Examiner states that the filing date of Application Serial No. 88005849 precedes applicant?s filing date and there may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. ?1052(d). Applicant respectfully submits that the cited application was assigned to the Applicant of this pending application and recorded at the USPTO at Reel/Frame: 6757/0127. In view of this, Applicant respectfully submits that the prior filed application is no longer an issue.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Software and embedded software for global IoT and machine-to-machine (M2M) deployment, connectivity and management
Original Filing Basis:
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[ European Union Trademark - EUTM application number 018026877 filed 02/22/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Software and embedded software for global IoT and machine-to-machine (M2M) deployment, connectivity and management; Recorded computer software and embedded software for global IoT and machine-to-machine (M2M) deployment, connectivity and managementClass 009 for Recorded computer software and embedded software for global IoT and machine-to-machine (M2M) deployment, connectivity and management
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 [ European Union Trademark - EUTM application number 018026877 filed 02/22/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018026877 registered 07/06/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-1082912599-101832022_._EUIPO_Registration_Certificate_7490587.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a services (SAAS) services for global IoT and machine-to-machine (M2M) deployment, connectivity and management
Original Filing Basis:
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[ European Union Trademark - EUTM application number 018026877 filed 02/22/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Software as a services (SAAS) services for global IoT and machine-to-machine (M2M) deployment, connectivity and management; Software as a service (SAAS) services featuring software for global IoT and machine-to-machine (M2M) deployment, connectivity and managementClass 042 for Software as a service (SAAS) services featuring software for global IoT and machine-to-machine (M2M) deployment, connectivity and management
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 [ European Union Trademark - EUTM application number 018026877 filed 02/22/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018026877 registered 07/06/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-1082912599-101832022_._EUIPO_Registration_Certificate_7490587.pdf
Converted PDF file(s) ( 3 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3

The applicant's current attorney information: Jacqueline Zion. Jacqueline Zion of PEARL COHEN ZEDEK LATZER BARATZ LLP, is located at

      1500 BROADWAY, 12TH FL
      NEW YORK, New York 10036
      US
The docket/reference number is T-585582-US.

The phone number is 646-878-0800.

The fax number is 646-878-0801.

The email address is tm-uspto@pearlcohen.com

The applicants proposed attorney information: Jacqueline Zion. Other appointed attorneys are Todd J. Braverman and Dor Cohen Zedek. Jacqueline Zion of Pearl Cohen Zedek Latzer Baratz LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1500 Broadway, 12th Fl
      New York, New York 10036
      United States
The docket/reference number is T-585582-US.

The phone number is 646-878-0800.

The fax number is 646-878-0801.

The email address is tm-uspto@pearlcohen.com

Jacqueline Zion 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: JACQUELINE ZION. JACQUELINE ZION of PEARL COHEN ZEDEK LATZER BARATZ LLP, is located at

      1500 BROADWAY, 12TH FL
      NEW YORK, New York 10036
      US
The docket/reference number is T-585582-US.

The phone number is 646-878-0800.

The fax number is 646-878-0801.

The email address is tm-uspto@pearlcohen.com; jzion@pearlcohen.com

The applicants proposed correspondence information: Jacqueline Zion. Jacqueline Zion of Pearl Cohen Zedek Latzer Baratz LLP, is located at

      1500 Broadway, 12th Fl
      New York, New York 10036
      United States
The docket/reference number is T-585582-US.

The phone number is 646-878-0800.

The fax number is 646-878-0801.

The email address is tm-uspto@pearlcohen.com; jzion@pearlcohen.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
ONEEDGE appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /JZ/     Date: 11/04/2019
Signatory's Name: Jacqueline Zion
Signatory's Position: Attorney (NY bar member)

Signatory's Phone Number: 6468780800

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:    JACQUELINE ZION
   PEARL COHEN ZEDEK LATZER BARATZ LLP
   
   1500 BROADWAY, 12TH FL
   NEW YORK, New York 10036
Mailing Address:    Jacqueline Zion
   Pearl Cohen Zedek Latzer Baratz LLP
   1500 Broadway, 12th Fl
   New York, New York 10036
        
Serial Number: 88312076
Internet Transmission Date: Mon Nov 04 10:31:54 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019110410315440
9381-88312076-7002546bbce5196d4c219f7bf7
41b1a36f5be1d1e531bedee8e37bf293cc48e9-N
/A-N/A-20191104101832022332