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. 88324000 GOTO(Standard Characters, see http://uspto.report/TM/88324000/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for transmitting data, graphics, audio and/or video over electronic communications networks; downloadable computer software creating, offering, hosting and delivering online conferences, meetings, demonstrations, tours, presentations, discussions, trainings and seminars; downloadable computer software for transmitting data, graphics, audio and/or video over electronic communications networks; downloadable computer software for facilitating business transactions conducted via electronic communications networks, namely, generating business leads through hosting video content; downloadable computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions; Downloadable computer software to enable uploading, posting, showing, playing, streaming, viewing, sharing, publishing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content and information via the Internet and other communications networks; downloadable computer software to enable sharing of multimedia content and comments among users; downloadable computer software to enable content providers to track multimedia content; downloadable computer analytics software, namely, software that provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated content
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: Computer software for transmitting data, graphics, audio and/or video over electronic communications networks; downloadable computer software creating, offering, hosting and delivering online conferences, meetings, demonstrations, tours, presentations, discussions, trainings and seminars; downloadable computer software for transmitting data, graphics, audio and/or video over electronic communications networks; downloadable computer software for facilitating business transactions conducted via electronic communications networks, namely, generating business leads through hosting video content; downloadable computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions; Downloadable computer software to enable uploading, posting, showing, playing, streaming, viewing, sharing, publishing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content and information via the Internet and other communications networks; downloadable computer software to enable sharing of multimedia content and comments among users; downloadable computer software to enable content providers to track multimedia content; downloadable computer analytics software, namely, software that provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated contentClass 009 for downloadable computer software creating, offering, hosting and delivering online conferences, meetings, demonstrations, tours, presentations, discussions, trainings and seminars; downloadable computer software for transmitting data, graphics, audio and/or video over electronic communications networks; downloadable computer software for facilitating business transactions conducted via electronic communications networks, namely, generating business leads through hosting video content; downloadable computer software for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, tours, presentations, and discussions; Downloadable computer software to enable uploading, posting, showing, playing, streaming, viewing, sharing, publishing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content and information via the Internet and other communications networks; downloadable computer software to enable sharing of multimedia content and comments among users; downloadable computer software to enable content providers to track multimedia content; downloadable computer analytics software, namely, software that provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated 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 proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service featuring software to access remote computers and computing devices, to upload, download and exchange files, to transmit data, graphics, audio and/or video, to create, offer, host, and deliver online conferences, meetings, demonstrations, tours, presentations and discussions, to provide remote support and monitoring tools for information technology, and to provide a content management systems in the fields of online project management, workplace social networking, workplace collaboration, product development, customer relations management, employee recruiting, event and meeting management and workflow management; computer services, namely, providing temporary use of non-downloadable software and software interfaces available over a network for creating personalized and customizable online web facilities for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, virtual tours, presentations and discussions; providing a website featuring technology that enables users to upload and share videos on a wide variety of topics and subjects; providing a website featuring technology that facilities conducting online conferences, meetings, demonstrations, virtual tours, presentations and interactive discussions; providing temporary use of non-downloadable software to enable uploading, posting, showing, playing, streaming, viewing, sharing, publishing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content and information via the Internet and other communications networks; providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; providing temporary use of non-downloadable software to enable content providers to track multimedia content; providing temporary use of non-downloadable analytics software, namely, software that calculates and provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated content; providing an interactive website featuring non-downloadable software technology that enable users to post, search, watch, share, critique, rate, and comment on, videos and other multimedia content via the Internet and other communications networks; Providing online, non-downloadable computer software for facilitating business transactions conducted via electronic communications networks, namely, generating business leads through hosting video content
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: Class 042 for Software as a service featuring software to access remote computers and computing devices, to upload, download and exchange files, to transmit data, graphics, audio and/or video, to create, offer, host, and deliver online conferences, meetings, demonstrations, tours, presentations and discussions, to provide remote support and monitoring tools for information technology, and to provide a content management systems in the fields of online project management, workplace social networking, workplace collaboration, product development, customer relations management, employee recruiting, event and meeting management and workflow management; computer services, namely, providing temporary use of non-downloadable software and software interfaces available over a network for creating personalized and customizable online web facilities for creating, offering, hosting, and delivering online conferences, meetings, demonstrations, virtual tours, presentations and discussions; providing a website featuring technology that enables users to upload and share videos on a wide variety of topics and subjects; providing a website featuring technology that facilities conducting online conferences, meetings, demonstrations, virtual tours, presentations and interactive discussions; providing temporary use of non-downloadable software to enable uploading, posting, showing, playing, streaming, viewing, sharing, publishing, and otherwise providing electronic media, multimedia content, videos, movies, pictures, images, text, photos, audio content and information via the Internet and other communications networks; providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; providing temporary use of non-downloadable software to enable content providers to track multimedia content; providing temporary use of non-downloadable analytics software, namely, software that calculates and provides statistics about the behavior of viewers of online videos, movies, pictures, images, text, photos, games and other user-generated content; providing an interactive website featuring non-downloadable software technology that enable users to post, search, watch, share, critique, rate, and comment on, videos and other multimedia content via the Internet and other communications networks; Providing online, non-downloadable computer software for facilitating business transactions conducted via electronic communications networks, namely, generating business leads through hosting video 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.

The applicant's current attorney information: Alex P. Garens. Alex P. Garens of DAY PITNEY LLP, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      US
The docket/reference number is 787888-TBD.

The phone number is 617-345-4872.

The fax number is 617-345-4745.

The email address is trademarks@daypitney.com

The applicants proposed attorney information: Alex P. Garens. Alex P. Garens of DAY PITNEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is 787888-TBD.

The phone number is 617-345-4872.

The fax number is 617-345-4745.

The email address is trademarks@daypitney.com

Alex P. Garens 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: ALEX P. GARENS. ALEX P. GARENS of DAY PITNEY LLP, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      US
The docket/reference number is 787888-TBD.

The phone number is 617-345-4872.

The fax number is 617-345-4745.

The email address is trademarks@daypitney.com; colson@daypitney.com; agarens@daypitney.com; gpajer@daypitney.com; tmrecords@daypitney.com

The applicants proposed correspondence information: Alex P. Garens. Alex P. Garens of DAY PITNEY LLP, is located at

      ONE INTERNATIONAL PLACE
      BOSTON, Massachusetts 02110
      United States
The docket/reference number is 787888-TBD.

The phone number is 617-345-4872.

The fax number is 617-345-4745.

The email address is trademarks@daypitney.com

SIGNATURE(S)
Response Signature
Signature: /alex p garens/     Date: 10/21/2019
Signatory's Name: Alex P Garens
Signatory's Position: Attorney of Record, MA Bar

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:    ALEX P. GARENS
   DAY PITNEY LLP
   
   ONE INTERNATIONAL PLACE
   BOSTON, Massachusetts 02110
Mailing Address:    Alex P. Garens
   DAY PITNEY LLP
   ONE INTERNATIONAL PLACE
   BOSTON, Massachusetts 02110
        
Serial Number: 88324000
Internet Transmission Date: Mon Oct 21 13:08:17 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191021130817
863142-88324000-61080987c73b6f47889cbc6c
3eda154291c60ba2edf595a57fe73ce92383e94a
-N/A-N/A-20191021130309821005