TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88312606 COMPHEALTH(Standard Characters, see http://uspto.report/TM/88312606/mark.png) has been amended as follows:

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

RESPONSE TO FINAL OFFICE ACTION AND REQUEST FOR RECONSIDERATION

In the Office Action issued on March 9, 2020, the Examining Attorney refused registration of the applied-for mark for indefinite goods and services.

FINAL - IDENTIFICATION OF GOODS AND SERVICES

The Examining Attorney asserts the identification of the goods and services are indefinite and must be clarified because applicant has included both downloadable and non-downloadable software in Class 9. Applicant amends the identification of the goods and services as follows:

Class 9 Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning.

Class 42 Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning.

In view of the foregoing remarks, Applicant respectfully asserts the applied-for mark is entitled to registration and requests that is be promptly allowed for publication.

If the Examining Attorney requires any changes to the application that could be made by Examiner’s Amendment, Applicant respectfully requests that she telephone the undersigned attorney at: (801) 533-9800. The Commissioner for Trademarks is authorized to charge any additional fees associated with this response to Deposit Account No. 23-3178.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning
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 and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable and non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planningClass 009 for Downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning
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 Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers
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: Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning.Class 042 for Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning.
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: CHG Management, Inc., a corporation of Delaware, having an address of
      7259 Bingham Jct. Blvd
      Midvale, Utah 84047
      United States

Proposed: CHG Management, Inc., a corporation of Delaware, having an address of
      7259 Bingham Jct. Blvd
      Midvale, Utah 84047
      United States
      Email Address: XXXX
Correspondence Information (current):
      John C. Stringham
      PRIMARY EMAIL FOR CORRESPONDENCE: jstringham@wnlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@wnlaw.com

The docket/reference number is 15704.2.2.
Correspondence Information (proposed):
      John C. Stringham
      PRIMARY EMAIL FOR CORRESPONDENCE: jstringham@wnlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docketing@wnlaw.com

The docket/reference number is 15704.2.2.

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)
Request for Reconsideration Signature
Signature: /John C. Stringham/     Date: 06/04/2020
Signatory's Name: John C. Stringham
Signatory's Position: Attorney for Applicant, Utah Bar Member

Signatory's Phone Number: 8015339800

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    John C. Stringham
   Workman Nydegger
   
   60 East South Temple, Suite 1000
   Salt Lake City, Utah 84111
Mailing Address:    John C. Stringham
   Workman Nydegger
   60 East South Temple, Suite 1000
   Salt Lake City, Utah 84111
        
Serial Number: 88312606
Internet Transmission Date: Thu Jun 04 18:34:53 ET 2020
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2020060418345303
0065-88312606-7103b2dfbb6e79249ea80db627
b7734ba871db4f1f956df7dd6213da8904e17dd9
-N/A-N/A-20200602133728809091