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. 88330142 BLUEBOX (Stylized and/or with Design, see http://uspto.report/TM/88330142/mark.png) has been amended as follows:

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

Applicant believes that in light of the deletion of the services in Class 42 and the amendments to the description of services in Class 35, that there is no longer any potential conflict with the cited registration. Accordingly, Applicant respectfully requests that the Examining Attorney withdraw the Section 2(d) refusal and that the application be passed promptly on to publication

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Software-as-a-service and technology platform used to facilitate online sales of third-party products through ecommerce marketplaces and other online channels

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail and ecommerce sales services used to connect third-party manufacturers and distributors to target customers, including business and end-user consumers, enabling these customers to conveniently view and purchase goods through ecommerce marketplaces and other online channels
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 03/01/2019 and first used in commerce at least as early as 03/07/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Retail and ecommerce sales services used to connect third-party manufacturers and distributors to target customers, including business and end-user consumers, enabling these customers to conveniently view and purchase goods through ecommerce marketplaces and other online channels; Ecommerce sales management services used to connect third-party brands, manufacturers, distributors and other suppliers to target customers, including business and end-user consumers, by facilitating online sales of third-party products through ecommerce marketplaces and other online channelsClass 035 for Ecommerce sales management services used to connect third-party brands, manufacturers, distributors and other suppliers to target customers, including business and end-user consumers, by facilitating online sales of third-party products through ecommerce marketplaces and other online channels
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 03/01/2019 and first used in commerce at least as early as 03/07/2019 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035 . The specimen(s) submitted consists of screenshots of Company's E-bay seller pages .
"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:
SPU0-204170203-20190806150721239759_._BLUEBOX___Design_-_eou_-_8-6-2019.pdf
Converted PDF file(s) ( 3 pages)
Specimen File1
Specimen File2
Specimen File3

The applicant's current attorney information: W. Drew Kastner. W. Drew Kastner of SCHNADER HARRISON SEGAL & LEWIS LLP, is located at

      1600 MARKET STREET, SUITE 3600
      PHILADELPHIA, Pennsylvania 19103
      US
The docket/reference number is 3008818-0050.

The phone number is 215-751-2122.

The fax number is 215-751-2205.

The email address is trademarks@schnader.com

The applicants proposed attorney information: W. Drew Kastner. Other appointed attorneys are Stephenie W. Yeung and Andrew Chou. W. Drew Kastner of SCHNADER HARRISON SEGAL & LEWIS LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1600 MARKET STREET, SUITE 3600
      PHILADELPHIA, Pennsylvania 19103
      United States
The docket/reference number is 3008818-0050.

The phone number is 215-751-2122.

The fax number is 215-751-2205.

The email address is trademarks@schnader.com

W. Drew Kastner submitted the following statement: I attest that I am an 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).
The applicant's current correspondence information: W. DREW KASTNER. W. DREW KASTNER of SCHNADER HARRISON SEGAL & LEWIS LLP, is located at

      1600 MARKET STREET, SUITE 3600
      PHILADELPHIA, Pennsylvania 19103
      US
The docket/reference number is 3008818-0050.

The phone number is 215-751-2122.

The fax number is 215-751-2205.

The email address is trademarks@schnader.com

The applicants proposed correspondence information: W. Drew Kastner. W. Drew Kastner of SCHNADER HARRISON SEGAL & LEWIS LLP, is located at

      1600 MARKET STREET, SUITE 3600
      PHILADELPHIA, Pennsylvania 19103
      United States
The docket/reference number is 3008818-0050.

The phone number is 215-751-2122.

The fax number is 215-751-2205.

The email address is trademarks@schnader.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Examiner had refused applicant's preliminary amendment to amend the applicant name. Applicant, through its attorney, has now filed an assignment to Bluebox Commerce, Inc. and the assignment has been recorded on June 7, 2019 and Reel/ Frame: 6664/0869


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: /wdrewkastner/      Date: 08/06/2019
Signatory's Name: W. Drew Kastner
Signatory's Position: Attorney of Record, PA, NY, NJ & DC Bar Member
Signatory's Phone Number: 215-751-2122


Response Signature
Signature: /wdrewkastner/     Date: 08/07/2019
Signatory's Name: W. Drew Kastner
Signatory's Position: Attorney of Record, NY, NJ, PA and DC Bar Member

Signatory's Phone Number: 215-751-2122

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:    W. DREW KASTNER
   SCHNADER HARRISON SEGAL & LEWIS LLP
   
   1600 MARKET STREET, SUITE 3600
   PHILADELPHIA, Pennsylvania 19103
Mailing Address:    W. Drew Kastner
   SCHNADER HARRISON SEGAL & LEWIS LLP
   1600 MARKET STREET, SUITE 3600
   PHILADELPHIA, Pennsylvania 19103
        
Serial Number: 88330142
Internet Transmission Date: Wed Aug 07 09:24:12 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20190807092412138
758-88330142-610c9e768ed13fc7fd014a1418b
d7032f22a1ba44c412af1813923662a4429b4a-N
/A-N/A-20190806150721239759