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. 88317955 GOOGLE STREAM(Standard Characters, see http://uspto.report/TM/88317955/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for PROVIDING TEMPORARY USE OF ONLINE NON-DOWNLOADABLE SOFTWARE FOR GAMING; APPLICATION SERVICE PROVIDER (ASP), NAMELY, HOSTING COMPUTER SOFTWARE APPLICATIONS OF OTHERS; PLATFORM-AS-A-SERVICE (PAAS) SERVICES FEATURING COMPUTER SOFTWARE PLATFORMS FOR CREATING AND COLLABORATING WITH OTHERS TO CREATE GAMES AND GAMING APPLICATIONS AND FOR UPLOADING, POSTING, SHOWING, DISPLAYING, SHARING OR OTHERWISE PROVIDING ELECTRONIC MEDIA OR INFORMATION REGARDING THE FIELDS OF ELECTRONIC GAMING, ENTERTAINMENT AND GENERAL INTEREST VIA THE INTERNET; COMPUTER SERVICES, NAMELY, CREATING WEBSITE-BASED INDEXES OF INFORMATION FOR OTHERS USING INFORMATION TECHNOLOGY; PROVIDING NON-DOWNLOADABLE COMPUTER SOFTWARE, NAMELY, COMPUTER SOFTWARE FOR IMPLEMENTING A COMPUTER PROGRAMMING LANGUAGE, COMPUTER SOFTWARE DEVELOPMENT TOOLS, AND COMPUTER SOFTWARE LIBRARIES FOR USE IN MANIPULATIONS OF COLLECTIONS OF DATA; ELECTRONIC DATA STORAGE, NAMELY, STORAGE AND ARCHIVAL OF DATA, ELECTRONIC MEDIA, AND DIGITAL CONTENT
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 ONLINE NON-DOWNLOADABLE SOFTWARE FOR GAMING; APPLICATION SERVICE PROVIDER (ASP), NAMELY, HOSTING COMPUTER SOFTWARE APPLICATIONS OF OTHERS; PLATFORM-AS-A-SERVICE (PAAS) SERVICES FEATURING COMPUTER SOFTWARE PLATFORMS FOR CREATING AND COLLABORATING WITH OTHERS TO CREATE GAMES AND GAMING APPLICATIONS AND FOR UPLOADING, POSTING, SHOWING, DISPLAYING, SHARING OR OTHERWISE PROVIDING ELECTRONIC MEDIA OR INFORMATION REGARDING THE FIELDS OF ELECTRONIC GAMING, ENTERTAINMENT AND GENERAL INTEREST VIA THE INTERNET; COMPUTER SERVICES, NAMELY, CREATING WEBSITE-BASED INDEXES OF INFORMATION FOR OTHERS USING INFORMATION TECHNOLOGY; PROVIDING ONLINE NON-DOWNLOADABLE COMPUTER SOFTWARE, NAMELY, COMPUTER SOFTWARE FOR IMPLEMENTING A COMPUTER PROGRAMMING LANGUAGE, COMPUTER SOFTWARE DEVELOPMENT TOOLS, AND COMPUTER SOFTWARE LIBRARIES FOR USE IN MANIPULATIONS OF COLLECTIONS OF DATA; PROVIDING NON-DOWNLOADABLE COMPUTER SOFTWARE, NAMELY, COMPUTER SOFTWARE FOR IMPLEMENTING A COMPUTER PROGRAMMING LANGUAGE, COMPUTER SOFTWARE DEVELOPMENT TOOLS, AND COMPUTER SOFTWARE LIBRARIES FOR USE IN MANIPULATIONS OF COLLECTIONS OF DATA; ELECTRONIC DATA STORAGE, NAMELY, STORAGE AND ARCHIVAL OF DATA, ELECTRONIC MEDIA, AND DIGITAL CONTENTClass 042 for APPLICATION SERVICE PROVIDER (ASP), NAMELY, HOSTING COMPUTER SOFTWARE APPLICATIONS OF OTHERS; PLATFORM-AS-A-SERVICE (PAAS) SERVICES FEATURING COMPUTER SOFTWARE PLATFORMS FOR CREATING AND COLLABORATING WITH OTHERS TO CREATE GAMES AND GAMING APPLICATIONS AND FOR UPLOADING, POSTING, SHOWING, DISPLAYING, SHARING OR OTHERWISE PROVIDING ELECTRONIC MEDIA OR INFORMATION REGARDING THE FIELDS OF ELECTRONIC GAMING, ENTERTAINMENT AND GENERAL INTEREST VIA THE INTERNET; COMPUTER SERVICES, NAMELY, CREATING WEBSITE-BASED INDEXES OF INFORMATION FOR OTHERS USING INFORMATION TECHNOLOGY; PROVIDING ONLINE NON-DOWNLOADABLE COMPUTER SOFTWARE, NAMELY, COMPUTER SOFTWARE FOR IMPLEMENTING A COMPUTER PROGRAMMING LANGUAGE, COMPUTER SOFTWARE DEVELOPMENT TOOLS, AND COMPUTER SOFTWARE LIBRARIES FOR USE IN MANIPULATIONS OF COLLECTIONS OF DATA; ELECTRONIC DATA STORAGE, NAMELY, STORAGE AND ARCHIVAL OF DATA, ELECTRONIC MEDIA, AND DIGITAL CONTENT
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 041 for PROVIDING TEMPORARY USE OF ONLINE NON-DOWNLOADABLE SOFTWARE FOR GAMING
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.

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 [ Tonga application number TO/M/2018/03643 filed 09/07/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

The owner's/holder's proposed attorney information: Giselle C.W. Huron. Giselle C.W. Huron, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1600 Amphitheatre Parkway
      Mountain View, California 94043
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
      The phone number is 6502530000.
      The email address is tmdocket@google.com

Giselle C.W. Huron 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.Correspondence Information (current):
      GOOGLE LLC
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@google.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Giselle C.W. Huron
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocket@google.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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).

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: /Giselle C.W. Huron/      Date: 06/03/2020
Signatory's Name: Giselle C.W. Huron
Signatory's Position: Trademark Counsel at Google LLC, New York Bar Member
Signatory's Phone Number: 6502530000


Response Signature
Signature: /Giselle C.W. Huron/     Date: 06/03/2020
Signatory's Name: Giselle C.W. Huron
Signatory's Position: Trademark Counsel at Google LLC, New York Bar Member

Signatory's Phone Number: 6502530000

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:    GOOGLE LLC
   
   
   1600 AMPHITHEATRE PARKWAY
   MOUNTAIN VIEW, California 94043
Mailing Address:    Giselle C.W. Huron
   1600 Amphitheatre Parkway
   Mountain View, California 94043
        
RAM Sale Number: 88317955
RAM Accounting Date: 06/03/2020
        
Serial Number: 88317955
Internet Transmission Date: Wed Jun 03 23:23:19 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXX:XXXX:XXXX:XXXX:XX
X:XXXX-20200603232319050060-88317955-710
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