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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88315507 |
LAW OFFICE ASSIGNED |
LAW OFFICE 105 |
MARK SECTION |
MARK |
http://uspto.report/TM/88315507/mark.png |
LITERAL ELEMENT |
FATHOM |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
Please see the actual argument text attached within the Evidence section. |
EVIDENCE SECTION |
EVIDENCE FILE NAME(S) |
ORIGINAL PDF FILE |
evi_19822100222-20190521133240798566_._FATHOM_-_OAR.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\155\88315507\xml4\ROA0002.JPG |
|
\\TICRS\EXPORT17\IMAGEOUT17\883\155\88315507\xml4\ROA0003.JPG |
DESCRIPTION OF EVIDENCE FILE |
Response to Office Action |
GOODS AND/OR SERVICES SECTION (035)(current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
Business consultancy and research services in the field of fisheries management; Tracking and monitoring maritime vessels for
commercial purposes |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (035)(proposed) |
INTERNATIONAL CLASS |
035 |
TRACKED TEXT DESCRIPTION |
Business consultancy and research services in the field of fisheries management; Tracking
and monitoring maritime vessels for commercial purposes; providing commercial research, monitoring information for commercial purposes, and associated alerts
in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity; providing business research, monitoring information for business purposes, and associated alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel
identification and activity, and satellite data pertaining to marine vessel activity |
FINAL DESCRIPTION |
Business consultancy and research services in the field of fisheries management; Tracking and monitoring maritime vessels for
commercial purposes; providing commercial research, monitoring information for commercial purposes, and associated alerts in the form of reports relating to illegal and suspect fishing operations,
marine vessel identification and activity, and satellite data pertaining to marine vessel activity; providing business research, monitoring information for business purposes, and associated alerts in
the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Providing temporary use of non-downloadable computer software for detecting and monitoring illegal fishing operations and suspect
maritime activity; Providing temporary use of non-downloadable computer software for analyzing data from satellites and marine vessel records and developing intelligence regarding ocean vessel
identification and coordinates in connection with fishing and other maritime operations; providing temporary use of non-downloadable computer software for generating information regarding fishing
practices and compliance with fishing and other maritime laws and regulations; providing temporary use of non-downloadable computer software for generating information and alerts regarding the
identification and coordinates of vessels based on satellite data, vessel records, and fishery regulations; Providing temporary use of non-downloadable computer software for detecting illegal fishing
operations; providing research, monitoring information, and alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite
data pertaining to marine vessel activity |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Providing temporary use of non-downloadable computer software for detecting and monitoring illegal fishing operations
and suspect maritime activity; Providing temporary use of non-downloadable computer software for analyzing data from satellites and marine vessel records and developing
intelligence regarding ocean vessel identification and coordinates in connection with fishing and other maritime operations; providing temporary use of non-downloadable
computer software for generating information regarding fishing practices and compliance with fishing and other maritime laws and regulations; providing temporary use of
non-downloadable computer software for generating information and alerts regarding the identification and coordinates of vessels based on satellite data, vessel records, and fishery
regulations; Providing temporary use of non-downloadable computer software for detecting illegal fishing operations; providing
research, monitoring information, and alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to
marine vessel activity; providing technical research and associated alerts in the form of reports relating to illegal and suspect fishing operations, marine
vessel identification and activity, and satellite data pertaining to marine vessel activity |
FINAL DESCRIPTION |
Providing temporary use of non-downloadable computer software for detecting and monitoring illegal fishing operations and suspect
maritime activity; Providing temporary use of non-downloadable computer software for analyzing data from satellites and marine vessel records and developing intelligence regarding ocean vessel
identification and coordinates in connection with fishing and other maritime operations; providing temporary use of non-downloadable computer software for generating information regarding fishing
practices and compliance with fishing and other maritime laws and regulations; providing temporary use of non-downloadable computer software for generating information and alerts regarding the
identification and coordinates of vessels based on satellite data, vessel records, and fishery regulations; Providing temporary use of non-downloadable computer software for detecting illegal fishing
operations; providing technical research and associated alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data
pertaining to marine vessel activity |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (045)(class added) |
INTERNATIONAL CLASS |
045 |
DESCRIPTION |
providing monitoring information for security, compliance with regulations, and legal purposes, and associated alerts in the form of
reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity |
FILING BASIS |
Section 1(b) |
PAYMENT SECTION |
NUMBER OF CLASSES |
1 |
APPLICATION FOR REGISTRATION PER CLASS |
275 |
TOTAL FEES DUE |
275 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Stefan B. Blum/ |
SIGNATORY'S NAME |
Stefan B. Blum |
SIGNATORY'S POSITION |
Attorney of record, Washington State bar member |
SIGNATORY'S PHONE NUMBER |
206-359-8000 |
DATE SIGNED |
05/21/2019 |
RESPONSE SIGNATURE |
/Stefan B. Blum/ |
SIGNATORY'S NAME |
Stefan B. Blum |
SIGNATORY'S POSITION |
Attorney of record, Washington State bar member |
SIGNATORY'S PHONE NUMBER |
206-359-8000 |
DATE SIGNED |
05/21/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Tue May 21 17:31:36 EDT 2019 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20190521173136920467-8831
5507-620a4103d6c8cc661d82
962647979b686b1384dc89f1e
bc958defc18176afe58b78-CC
-4225-2019052113324079856
6 |
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.
88315507 FATHOM(Standard Characters, see http://uspto.report/TM/88315507/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
Please see the actual argument text attached within the Evidence section.
EVIDENCE
Evidence in the nature of Response to Office Action has been attached.
Original PDF file:
evi_19822100222-20190521133240798566_._FATHOM_-_OAR.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business consultancy and research services in the field of fisheries management; Tracking and monitoring maritime vessels for commercial purposes
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: Business consultancy and research services in the field of fisheries management;
Tracking and monitoring maritime vessels
for commercial purposes;
providing commercial research, monitoring information for commercial purposes, and associated alerts in the form of reports relating
to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity;
providing
business research, monitoring information for business purposes, and associated alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and
activity, and satellite data pertaining to marine vessel activityClass 035 for Business consultancy and research services in the field of fisheries management; Tracking and monitoring maritime
vessels for commercial purposes; providing commercial research, monitoring information for commercial purposes, and associated alerts in the form of reports relating to illegal and suspect fishing
operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity; providing business research, monitoring information for business purposes, and
associated alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity
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 computer software for detecting and monitoring illegal fishing operations and suspect maritime activity; Providing temporary
use of non-downloadable computer software for analyzing data from satellites and marine vessel records and developing intelligence regarding ocean vessel identification and coordinates in connection
with fishing and other maritime operations; providing temporary use of non-downloadable computer software for generating information regarding fishing practices and compliance with fishing and other
maritime laws and regulations; providing temporary use of non-downloadable computer software for generating information and alerts regarding the identification and coordinates of vessels based on
satellite data, vessel records, and fishery regulations; Providing temporary use of non-downloadable computer software for detecting illegal fishing operations; providing research, monitoring
information, and alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel
activity
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 computer software for detecting and monitoring illegal fishing operations and suspect maritime
activity;
Providing temporary use of non-downloadable computer software for analyzing data from satellites and marine vessel records and developing intelligence regarding
ocean vessel identification and coordinates in connection with fishing and other maritime operations;
providing temporary use of non-downloadable computer software for
generating information regarding fishing practices and compliance with fishing and other maritime laws and regulations;
providing temporary use of non-downloadable computer
software for generating information and alerts regarding the identification and coordinates of vessels based on satellite data, vessel records, and fishery regulations;
Providing temporary use of non-downloadable computer software for detecting illegal fishing operations;
providing research, monitoring information, and
alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity;
providing technical research and associated alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and
satellite data pertaining to marine vessel activityClass 042 for Providing temporary use of non-downloadable computer software for detecting and monitoring illegal fishing operations and
suspect maritime activity; Providing temporary use of non-downloadable computer software for analyzing data from satellites and marine vessel records and developing intelligence regarding ocean
vessel identification and coordinates in connection with fishing and other maritime operations; providing temporary use of non-downloadable computer software for generating information regarding
fishing practices and compliance with fishing and other maritime laws and regulations; providing temporary use of non-downloadable computer software for generating information and alerts regarding
the identification and coordinates of vessels based on satellite data, vessel records, and fishery regulations; Providing temporary use of non-downloadable computer software for detecting illegal
fishing operations; providing technical research and associated alerts in the form of reports relating to illegal and suspect fishing operations, marine vessel identification and activity, and
satellite data pertaining to marine vessel activity
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 hereby adds the following class of goods/services to the application:
New: Class 045 for providing monitoring information for security, compliance with regulations, and legal purposes, and associated alerts in the form of reports relating to illegal and suspect
fishing operations, marine vessel identification and activity, and satellite data pertaining to marine vessel activity
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.
FEE(S)
Fee(s) in the amount of $275 is being submitted.
SIGNATURE(S)
Declaration Signature
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful
false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or
allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this
submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally
believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in
connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of
the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective
membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over
the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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.
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either
in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion
or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C.
§§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark
application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the
mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or
certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention,
and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of
the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other
persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be
likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
Signature: /Stefan B. Blum/ Date: 05/21/2019
Signatory's Name: Stefan B. Blum
Signatory's Position: Attorney of record, Washington State bar member
Signatory's Phone Number: 206-359-8000
Response Signature
Signature: /Stefan B. Blum/ Date: 05/21/2019
Signatory's Name: Stefan B. Blum
Signatory's Position: Attorney of record, Washington State bar member
Signatory's Phone Number: 206-359-8000
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.
RAM Sale Number: 88315507
RAM Accounting Date: 05/22/2019
Serial Number: 88315507
Internet Transmission Date: Tue May 21 17:31:36 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201905211731369
20467-88315507-620a4103d6c8cc661d8296264
7979b686b1384dc89f1ebc958defc18176afe58b
78-CC-4225-20190521133240798566