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. 88324824 GOAL (Stylized and/or with Design, see http://uspto.report/TM/88324824/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of substantive arguments and exhibits in support thereof has been attached.
Original PDF file:
evi_98220140158-20191122100526323415_._ROA_-_GOAL___Design__No._88324824_.pdf
Converted PDF file(s) ( 11 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Original PDF file:
evi_98220140158-20191122100526323415_._Ex._A_-_Response_to_OA_-_GOAL___Design__No.88324824_.PDF
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Original PDF file:
evi_98220140158-20191122100526323415_._Ex._B_-_Response_to_OA_-_GOAL___Design__No.88324824_.PDF
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_98220140158-20191122100526323415_._Ex._C_-_Response_to_OA_-_GOAL___Design__No.88324824_.PDF
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_98220140158-20191122100526323415_._Ex._D_-_Response_to_OA_-_GOAL___Design__No.88324824_.PDF
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Original PDF file:
evi_98220140158-20191122100526323415_._Ex._E_-_Response_to_OA_-_GOAL___Design__No.88324824_.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 036 for Providing outsourced financial information and advisory services, namely, international tax reclamation for others
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2015 and first used in commerce at least as early as 08/01/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing outsourced financial information and advisory services, namely, international tax reclamation for others; Providing outsourced international tax reclamation financial services for others, the foregoing excluding financial advice, financial management advice, investment advice, investment management advice, investment management, financial planning, financial portfolio analysis and financial portfolio managementClass 036 for Providing outsourced international tax reclamation financial services for others, the foregoing excluding financial advice, financial management advice, investment advice, investment management advice, investment management, financial planning, financial portfolio analysis and financial portfolio management
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2015 and first used in commerce at least as early as 08/01/2015 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 036 . The specimen(s) submitted consists of pages from Applicant's website showing use of the mark in connection with the advertising of the services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-98220140158-20191122100526323415_._GOAL___Design_-_Specimen__Cl_36_.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) featuring software for financial management and document management
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2015 and first used in commerce at least as early as 08/01/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Software as a service (SAAS) featuring software for financial management and document management; Providing online non-downloadable software for document management, namely, software for the management of documents related to the creation, processing, submission, tracking, and reporting of and collection of refunds from tax reclamation claims, and for the management of documents related to the notification, tracking, and reporting of securities class action recovery claimsClass 042 for Providing online non-downloadable software for document management, namely, software for the management of documents related to the creation, processing, submission, tracking, and reporting of and collection of refunds from tax reclamation claims, and for the management of documents related to the notification, tracking, and reporting of securities class action recovery claims
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2015 and first used in commerce at least as early as 08/01/2015 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042 . The specimen(s) submitted consists of (a) login page showing use of the mark in connection with the rendering of the services; and (b) pages from Applicant's website showing use of the mark in connection with the advertising of the services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
JPG file(s):
Specimen File1
Original PDF file:
SPU1-98220140158-20191122100526323415_._GOAL___Design_-_Specimen_2__Cl_42_.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Legal services, namely, representation of clients in securities class action lawsuits
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2015 and first used in commerce at least as early as 08/01/2015 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Legal services, namely, representation of clients in securities class action lawsuits; Legal document preparation and support services, namely, representation of clients in securities class action lawsuits in the nature of notifying, processing, submitting, tracking, and reporting of and collecting monetary compensation from securities class action recovery claimsClass 045 for Legal document preparation and support services, namely, representation of clients in securities class action lawsuits in the nature of notifying, processing, submitting, tracking, and reporting of and collecting monetary compensation from securities class action recovery claims
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/01/2015 and first used in commerce at least as early as 08/01/2015 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 045 . The specimen(s) submitted consists of pages from Applicant's website showing use of the mark in connection with the advertising of the services .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU2-98220140158-20191122100526323415_._GOAL___Design_-_Specimen__Cl_45_.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2

The applicant's current attorney information: Caroline D. Kotlove. Caroline D. Kotlove of TAFT STETTINIUS & HOLLISTER LLP, is located at

      425 WALNUT STREET, SUITE 1800
      CINCINNATI, Ohio 45202
      US
The docket/reference number is IRW01 GN001.

The phone number is 513-381-2838.

The fax number is 513-381-0205.

The email address is trademark@taftlaw.com

The applicants proposed attorney information: Caroline D. Kotlove. Caroline D. Kotlove of TAFT STETTINIUS & HOLLISTER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      425 WALNUT STREET, SUITE 1800
      CINCINNATI, Ohio 45202
      United States
The docket/reference number is IRW01 GN001.

The phone number is 513-381-2838.

The fax number is 513-381-0205.

The email address is trademark@taftlaw.com

Caroline D. Kotlove 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: CAROLINE D. KOTLOVE. CAROLINE D. KOTLOVE of TAFT STETTINIUS & HOLLISTER LLP, is located at

      425 WALNUT STREET, SUITE 1800
      CINCINNATI, Ohio 45202
      US
The docket/reference number is IRW01 GN001.

The phone number is 513-357-8785.

The fax number is 513-381-0205.

The email address is trademark@taftlaw.com; ckotlove@taftlaw.com; lawson@taftlaw.com; twagner@taftlaw.com

The applicants proposed correspondence information: Caroline D. Kotlove. Caroline D. Kotlove of TAFT STETTINIUS & HOLLISTER LLP, is located at

      425 WALNUT STREET, SUITE 1800
      CINCINNATI, Ohio 45202
      United States
The docket/reference number is IRW01 GN001.

The phone number is 513-381-2838.

The fax number is 513-381-0205.

The email address is trademark@taftlaw.com; lrothrock@taftlaw.com

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: /Lindsey N. Rothrock/     Date: 11/22/2019
Signatory's Name: Lindsey N. Rothrock
Signatory's Position: New Attorney of Record - Taft, Stettinius & Hollister - Indiana bar member

Signatory's Phone Number: 317-713-9442

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:    CAROLINE D. KOTLOVE
   TAFT STETTINIUS & HOLLISTER LLP
   
   425 WALNUT STREET, SUITE 1800
   CINCINNATI, Ohio 45202
Mailing Address:    Caroline D. Kotlove
   TAFT STETTINIUS & HOLLISTER LLP
   425 WALNUT STREET, SUITE 1800
   CINCINNATI, Ohio 45202
        
Serial Number: 88324824
Internet Transmission Date: Fri Nov 22 10:43:34 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911221043348
48278-88324824-7005eb7b48a85497b3917864c
d8f480cced54adbd6ed614ed1708c205fd264fb-
N/A-N/A-20191122100526323415