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. 88338477 MOTHER TONGUE (Stylized and/or with Design, see http://uspto.report/TM/88338477/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 041 for Translation services; cultural services; providing information about cultures worldwide; information, consultancy and advisory services relating to the aforesaid
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 10/24/2018 and first used in commerce at least as early as 10/24/2018 , and is now in use in such commerce.

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 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[ United Kingdom application number 3368687 filed 01/21/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Translation services; cultural services; translation services that adapt and create copy for specific audiences that integrates culture, nuance, and meaning in a given language; providing information about cultures worldwide; language interpretation, namely, evaluation of the pronunciation, meaning, common usage, and cultural connotations of a trademark, feature name, or brand name in multiple cultures and languages; information, consultancy and advisory services relating to the aforesaid; translation and interpretation services being multi-language content development; language localization services for others featuring subtitling and translation for videos and digital media in general; language localization services and translation, namely, adaptation of documents, publications, websites, software, presentations and other written materials to regions, countries, locales and cultures and the grammar, terminology, layout, design, visual and other choices associated therewith; translation and transcreation services, namely, translation of marketing and corporate social media; transcreation services, namely, translating to adapt content taken from and delivered in print, web, audio recording, and video recording from one language to another to ensure it is suitable for a particular region and culture via print, web, audio, video, subtitling, and voice-oversClass 041 for Translation services; translation services that adapt and create copy for specific audiences that integrates culture, nuance, and meaning in a given language; language interpretation, namely, evaluation of the pronunciation, meaning, common usage, and cultural connotations of a trademark, feature name, or brand name in multiple cultures and languages; translation and interpretation services being multi-language content development; language localization services for others featuring subtitling and translation for videos and digital media in general; language localization services and translation, namely, adaptation of documents, publications, websites, software, presentations and other written materials to regions, countries, locales and cultures and the grammar, terminology, layout, design, visual and other choices associated therewith; translation and transcreation services, namely, translation of marketing and corporate social media; transcreation services, namely, translating to adapt content taken from and delivered in print, web, audio recording, and video recording from one language to another to ensure it is suitable for a particular region and culture via print, web, audio, video, subtitling, and voice-overs
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 10/24/2018 and first used in commerce at least as early as 10/24/2018 , and is now in use in such commerce.
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 [ United Kingdom application number 3368687 filed 01/21/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Susan A. Smith. Susan A. Smith of Hunton Andrews Kurth LLP, is located at

      Suite 900
      2200 Pennsylvania Avenue, NW
      Washington, District of Columbia 20037
      US
The docket/reference number is 115094-00001.

The phone number is 202-955-1500.

The fax number is 202-778-2201.

The email address is TMDocketDC@kenyon.com

The applicants proposed attorney information: Susan A. Smith. Susan A. Smith of Hunton Andrews Kurth LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Suite 900
      2200 Pennsylvania Avenue, NW
      Washington, District of Columbia 20037
      United States
The docket/reference number is 115094-00001.

The phone number is 202-955-1500.

The fax number is 202-778-2201.

The email address is TMDocketDC@HuntonAK.com

Susan A. Smith 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: SUSAN A. SMITH. SUSAN A. SMITH of Hunton Andrews Kurth LLP, is located at

      Suite 900
      2200 Pennsylvania Avenue, NW
      Washington, District of Columbia 20037
      US
The docket/reference number is 115094-00001.

The phone number is 202-955-1500.

The fax number is 202-778-2201.

The email address is TMDocketDC@HuntonAK.com; SSmith@HuntonAK.com; jglasser@HuntonAK.com

The applicants proposed correspondence information: Susan A. Smith. Susan A. Smith of Hunton Andrews Kurth LLP, is located at

      Suite 900
      2200 Pennsylvania Avenue, NW
      Washington, District of Columbia 20037
      United States
The docket/reference number is 115094-00001.

The phone number is 202-955-1500.

The fax number is 202-778-2201.

The email address is TMDocketDC@HuntonAK.com; SSmith@HuntonAK.com; jglasser@HuntonAK.com

SIGNATURE(S)
Response Signature
Signature: /sas/     Date: 11/25/2019
Signatory's Name: Susan A. Smith
Signatory's Position: Attorney of record, DC Bar member

Signatory's Phone Number: 202-955-1500

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:    SUSAN A. SMITH
   Hunton Andrews Kurth LLP
   Suite 900
   2200 Pennsylvania Avenue, NW
   Washington, District of Columbia 20037
Mailing Address:    Susan A. Smith
   Hunton Andrews Kurth LLP
   Suite 900
   2200 Pennsylvania Avenue, NW
   Washington, District of Columbia 20037
        
Serial Number: 88338477
Internet Transmission Date: Mon Nov 25 13:53:29 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201911251353290
61948-88338477-700a6bb82f9e8c704717aa222
86cb6a3114e696a119387efb2ad39b43ed586ddd
4-N/A-N/A-20191125131149975772