Response to Office Action

CREW XPRESS

Inmarsat Global Limited

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88340662
LAW OFFICE ASSIGNED LAW OFFICE 110
MARK SECTION
MARK http://uspto.report/TM/88340662/mark.png
LITERAL ELEMENT CREW XPRESS
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)

The following amendments and remarks are submitted in response to the Office Action dated April 12, 2019. 

 

Applicant notes that a search of the U.S. Patent and Trademark Office records did not reveal any pending or registered mark which would bar registration under Section 2(d) of the Trademark Act.

 

Signed Application

 

As the application was filed unsigned, Applicant submits herewith the signed application papers. 

 

Identification of Goods and Services

 

The Examining Attorney requested amendments to the identification of goods and services.  As set forth above, Applicant has amended the identification of goods and services as suggested by the Examining Attorney and in accordance with the Manual of Acceptable Identification of Goods and Services. 

 

Disclaimer

 

The Examining Attorney also requested a disclaimer to the word CREW.  Accordingly, Applicant disclaims the word CREW apart from the mark as a whole.

 

Foreign Registration Certificate

 

The application intends to maintain both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  Further, attached is a copy of the foreign registration certificate to perfect the Section 44(e) basis.

 

Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned at Knobbe, Martens, Olson & Bear, LLP, 2040 Main Street, Fourteenth floor, Irvine, California 92614.

GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Computer software; computer software platforms; cloud computing software; cloud servers; cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems; data processing apparatus and instruments; computer software for the collection and analysis of data; radio apparatus; marine radios; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units, antennae, mobile internet equipment and apparatus, modems, routers, advanced satellite modems and computer software; satellite tracking and positioning systems for maritime use; computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus; hazard alert systems for maritime use; distress alert systems for maritime use; transmitters for emitting distress signal; parts and fittings for all the aforesaid goods
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 3354966
       FOREIGN APPLICATION COUNTRY United Kingdom
        FOREIGN FILING DATE 11/20/2018
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Computer software; Downloadable computer software for the operation and management of satellite communication systems; computer software platforms; downloadable computer software platforms for the operation and management of satellite communication systems; cloud computing software; downloadable cloud computing software for the operation and management of satellite communication systems; cloud servers; cloud network monitoring software; downloadable cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems; telecommunications and satellite telecommunications apparatus, instruments and systems, namely, satellite dishes, satellite antennae, satellite terminals, namely, parabolic dishes, transmitters, receivers, modems, flat antennae, satellite processors, gateway routers, satellite telephones and personal digital assistants, for satellite transmission; data processing apparatus and instruments; computer software for the collection and analysis of data; downloadable computer software for the collection and analysis of data; radio apparatus; marine radios; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units, antennae, mobile internet equipment and apparatus, modems, routers, advanced satellite modems and computer software; satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units in the nature of computer monitors, antennae, mobile internet equipment and apparatus in the nature of satellite telephones and personal digital assistants, modems, gateway routers, advanced satellite modems and downloadable computer software for simulation and analysis of satellite communication systems and for operating satellites and satellite systems; satellite tracking and positioning systems for maritime use; satellite tracking and positioning systems for maritime use, namely, systems for tracking the position of satellite communication terminals belonging to end-user customers, namely, satellite communication terminals located on marine vessels, third party maritime assets, cargoes and personnel and GPS-based navigation systems for marine vessels; computer software programs for the operation and management of maritime satellite communication systems; downloadable computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus; maritime rescue apparatus, namely, apparatus for use in broadcasting navigational information, search-and-rescue information, distress alerts, and messages; hazard alert systems for maritime use; distress alert systems for maritime use; distress alert systems for maritime use comprising computers, computer hardware, computer software, and computer peripheries for broadcasting navigational information, search-and-rescue information, distress alerts, and messages; transmitters for emitting distress signal; emergency transmitters for emitting distress signals; parts and fittings for all the aforesaid goods
FINAL DESCRIPTION
Downloadable computer software for the operation and management of satellite communication systems; downloadable computer software platforms for the operation and management of satellite communication systems; downloadable cloud computing software for the operation and management of satellite communication systems; cloud servers; downloadable cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems, namely, satellite dishes, satellite antennae, satellite terminals, namely, parabolic dishes, transmitters, receivers, modems, flat antennae, satellite processors, gateway routers, satellite telephones and personal digital assistants, for satellite transmission; data processing apparatus and instruments; downloadable computer software for the collection and analysis of data; radio apparatus; marine radios; satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units in the nature of computer monitors, antennae, mobile internet equipment and apparatus in the nature of satellite telephones and personal digital assistants, modems, gateway routers, advanced satellite modems and downloadable computer software for simulation and analysis of satellite communication systems and for operating satellites and satellite systems; satellite tracking and positioning systems for maritime use, namely, systems for tracking the position of satellite communication terminals belonging to end-user customers, namely, satellite communication terminals located on marine vessels, third party maritime assets, cargoes and personnel and GPS-based navigation systems for marine vessels; downloadable computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus, namely, apparatus for use in broadcasting navigational information, search-and-rescue information, distress alerts, and messages; hazard alert systems for maritime use; distress alert systems for maritime use comprising computers, computer hardware, computer software, and computer peripheries for broadcasting navigational information, search-and-rescue information, distress alerts, and messages; emergency transmitters for emitting distress signals; parts and fittings for all the aforesaid goods
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 3354966
       FOREIGN APPLICATION COUNTRY United Kingdom
       FOREIGN FILING DATE 11/20/2018
       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.
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 3354966
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
02/22/2019
       FOREIGN EXPIRATION DATE 11/20/2028
       FOREIGN REGISTRATION FILE NAME(S)
       ORIGINAL PDF FILE FRU0-1732271968-204224900_._GB_registration_certificate.PDF
       CONVERTED PDF FILE(S)
       (2 pages)
\\TICRS\EXPORT17\IMAGEOUT17\883\406\88340662\xml4\ROA0002.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\406\88340662\xml4\ROA0003.JPG
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (038)(current)
INTERNATIONAL CLASS 038
DESCRIPTION
Communications services; satellite communications services; digital and satellite transmission services; data transfer services; electronic mail services; telecommunications services; voice and data transmission services; telex and facsimile services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications; secure e-mail services; secure transmission of data, sound or images; provision of wireless application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; making available information in electronic form, and telecommunication of information, to third parties to allow tracking and location of third party assets, cargos and personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet; broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail services, voice and data transmission services, facsimile services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet applications and broadcasts; leasing and sub-leasing bandwidth and uplink services; managing communication networks for others; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and databases; consultancy, information and advisory services relating to the aforesaid
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 3354966
       FOREIGN APPLICATION COUNTRY United Kingdom
        FOREIGN FILING DATE 11/20/2018
GOODS AND/OR SERVICES SECTION (038)(proposed)
INTERNATIONAL CLASS 038
TRACKED TEXT DESCRIPTION
Communications services; Communications services, namely, electronic data transmission; satellite communications services; digital and satellite transmission services; digital and satellite transmission of voice, data, images, signals and messages; data transfer services; data transfer by telecommunications; electronic mail services; electronic mail transmission and retrieval services; telecommunications services; telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; voice and data transmission services; electronic, electric, and digital voice and data transmission services; telex and facsimile services; telex and facsimile transmission and retrieval services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications; transmission of encrypted communications via electronic, electric, and digital communications networks; secure e-mail services; secure e-mail transmission and retrieval services; secure transmission of data, sound or images; secure transmission of data, sound or images via electronic, electric, and digital communication networks; provision of wireless application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; making available information in electronic form, and telecommunication of information, to third parties to allow tracking and location of third party assets, cargos and personnel; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party assets, cargos and personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet; communication and broadcasting services relating to the internet, namely, providing voice, data, graphics, images, audio and video communication and broadcasting services via the internet; broadcasting of data, visual images, sound, graphics and other information; wireless broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail services, voice and data transmission services, facsimile services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail transmission and retrieval services, voice and data transmission services, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, satellite communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet applications and broadcasts; return path management for the provision of internet applications and broadcasts, namely, management of access to broadcast and communication channels; leasing and sub-leasing bandwidth and uplink services; managing communication networks for others; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and databases; consultancy, information and advisory services relating to the aforesaid
FINAL DESCRIPTION
Communications services, namely, electronic data transmission; satellite communications services; digital and satellite transmission of voice, data, images, signals and messages; data transfer by telecommunications; electronic mail transmission and retrieval services; telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; electronic, electric, and digital voice and data transmission services; telex and facsimile transmission and retrieval services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications via electronic, electric, and digital communications networks; secure e-mail transmission and retrieval services; secure transmission of data, sound or images via electronic, electric, and digital communication networks; provision of wireless application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party assets, cargos and personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet, namely, providing voice, data, graphics, images, audio and video communication and broadcasting services via the internet; wireless broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail transmission and retrieval services, voice and data transmission services, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, satellite communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet applications and broadcasts, namely, management of access to broadcast and communication channels; leasing and sub-leasing bandwidth and uplink services; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and databases; consultancy, information and advisory services relating to the aforesaid
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 3354966
       FOREIGN APPLICATION COUNTRY United Kingdom
       FOREIGN FILING DATE 11/20/2018
       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.
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 3354966
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
02/22/2019
       FOREIGN EXPIRATION DATE 11/20/2028
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
GOODS AND/OR SERVICES SECTION (039)(current)
INTERNATIONAL CLASS 039
DESCRIPTION
Orbit transfer services in relation to satellites; Tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems; tracking and locating objects and equipment by means of satellite technology for third parties; information, advisory and consultancy services relating to the aforesaid
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 3354966
       FOREIGN APPLICATION COUNTRY United Kingdom
        FOREIGN FILING DATE 11/20/2018
GOODS AND/OR SERVICES SECTION (039)(proposed)
INTERNATIONAL CLASS 039
TRACKED TEXT DESCRIPTION
Orbit transfer services in relation to satellites; Orbit transfer services in relation to satellites, namely, launch and placement in prescribed orbit of satellites of others; Tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of tracking and locating services and systems, namely, tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of maritime tracking and positioning services and systems; Provision of tracking and positioning services and systems, namely, provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems; tracking and locating objects and equipment by means of satellite technology for third parties; Provision of tracking and locating services and systems, namely, tracking and locating objects and equipment by means of satellite technology for third parties; information, advisory and consultancy services relating to the aforesaid
FINAL DESCRIPTION
Orbit transfer services in relation to satellites, namely, launch and placement in prescribed orbit of satellites of others; provision of tracking and locating services and systems, namely, tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; Provision of tracking and positioning services and systems, namely, provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems; Provision of tracking and locating services and systems, namely, tracking and locating objects and equipment by means of satellite technology for third parties; information, advisory and consultancy services relating to the aforesaid
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 3354966
       FOREIGN APPLICATION COUNTRY United Kingdom
       FOREIGN FILING DATE 11/20/2018
       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.
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 3354966
       FOREIGN REGISTRATION
       COUNTRY
United Kingdom
       FOREIGN REGISTRATION
       DATE
02/22/2019
       FOREIGN EXPIRATION DATE 11/20/2028
       STANDARD CHARACTERS
       OR EQUIVALENT
YES
ADDITIONAL STATEMENTS SECTION
DISCLAIMER No claim is made to the exclusive right to use CREW apart from the mark as shown.
ATTORNEY SECTION (current)
NAME Gregory B. Phillips
ATTORNEY BAR MEMBERSHIP NUMBER NOT SPECIFIED
YEAR OF ADMISSION NOT SPECIFIED
U.S. STATE/ COMMONWEALTH/ TERRITORY NOT SPECIFIED
FIRM NAME KNOBBE, MARTENS, OLSON & BEAR, LLP
STREET 2040 MAIN STREET, 14TH FLOOR
CITY IRVINE
STATE California
POSTAL CODE 92614
COUNTRY US
PHONE 949-760-0404
FAX 949-760-9502
EMAIL efiling@knobbe.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER REDD024.010T
ATTORNEY SECTION (proposed)
NAME Gregory B. Phillips
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME KNOBBE, MARTENS, OLSON & BEAR, LLP
STREET 2040 MAIN STREET, 14TH FLOOR
CITY IRVINE
STATE California
POSTAL CODE 92614
COUNTRY United States
PHONE 949-760-0404
FAX 949-760-9502
EMAIL efiling@knobbe.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER REDD024.010T
CORRESPONDENCE SECTION (current)
NAME GREGORY B. PHILLIPS
FIRM NAME KNOBBE, MARTENS, OLSON & BEAR, LLP
STREET 2040 MAIN STREET, 14TH FLOOR
CITY IRVINE
STATE California
POSTAL CODE 92614
COUNTRY US
PHONE 949-760-0404
FAX 949-760-9502
EMAIL efiling@knobbe.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER REDD024.010T
CORRESPONDENCE SECTION (proposed)
NAME Gregory B. Phillips
FIRM NAME KNOBBE, MARTENS, OLSON & BEAR, LLP
STREET 2040 MAIN STREET, 14TH FLOOR
CITY IRVINE
STATE California
POSTAL CODE 92614
COUNTRY United States
PHONE 949-760-0404
FAX 949-760-9502
EMAIL efiling@knobbe.com
AUTHORIZED TO COMMUNICATE VIA EMAIL Yes
DOCKET/REFERENCE NUMBER REDD024.010T
SIGNATURE SECTION
       ORIGINAL PDF FILE HS_1732271968-204224900_._2019-09-24_signed_application.PDF
       CONVERTED PDF FILE(S)
       (4 pages)
\\TICRS\EXPORT17\IMAGEOUT17\883\406\88340662\xml4\ROA0004.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\406\88340662\xml4\ROA0005.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\406\88340662\xml4\ROA0006.JPG
        \\TICRS\EXPORT17\IMAGEOUT17\883\406\88340662\xml4\ROA0007.JPG
SIGNATORY'S NAME Alison Harrocks
SIGNATORY'S POSITION Director
RESPONSE SIGNATURE /gregory phillips/
SIGNATORY'S NAME Gregory B. Phillips
SIGNATORY'S POSITION Attorney of record, California bar member
SIGNATORY'S PHONE NUMBER 949-760-0404
DATE SIGNED 09/24/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Tue Sep 24 21:16:40 EDT 2019
TEAS STAMP USPTO/ROA-XXX.XXX.XX.XX-2
0190924211640683125-88340
662-610992219993eea4b9b5d
6a7623595d402f8235db74735
b63b76329f972fb2f25f-N/A-
N/A-20190924204224900219



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. 88340662 CREW XPRESS(Standard Characters, see http://uspto.report/TM/88340662/mark.png) has been amended as follows:

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

The following amendments and remarks are submitted in response to the Office Action dated April 12, 2019. 

 

Applicant notes that a search of the U.S. Patent and Trademark Office records did not reveal any pending or registered mark which would bar registration under Section 2(d) of the Trademark Act.

 

Signed Application

 

As the application was filed unsigned, Applicant submits herewith the signed application papers. 

 

Identification of Goods and Services

 

The Examining Attorney requested amendments to the identification of goods and services.  As set forth above, Applicant has amended the identification of goods and services as suggested by the Examining Attorney and in accordance with the Manual of Acceptable Identification of Goods and Services. 

 

Disclaimer

 

The Examining Attorney also requested a disclaimer to the word CREW.  Accordingly, Applicant disclaims the word CREW apart from the mark as a whole.

 

Foreign Registration Certificate

 

The application intends to maintain both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  Further, attached is a copy of the foreign registration certificate to perfect the Section 44(e) basis.

 

Should the Examining Attorney have any questions, the Examining Attorney is encouraged to contact the undersigned at Knobbe, Martens, Olson & Bear, LLP, 2040 Main Street, Fourteenth floor, Irvine, California 92614.



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; computer software platforms; cloud computing software; cloud servers; cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems; data processing apparatus and instruments; computer software for the collection and analysis of data; radio apparatus; marine radios; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units, antennae, mobile internet equipment and apparatus, modems, routers, advanced satellite modems and computer software; satellite tracking and positioning systems for maritime use; computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus; hazard alert systems for maritime use; distress alert systems for maritime use; transmitters for emitting distress signal; parts and fittings for all the aforesaid goods
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.

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 3354966 filed 11/20/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software; Downloadable computer software for the operation and management of satellite communication systems; computer software platforms; downloadable computer software platforms for the operation and management of satellite communication systems; cloud computing software; downloadable cloud computing software for the operation and management of satellite communication systems; cloud servers; cloud network monitoring software; downloadable cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems; telecommunications and satellite telecommunications apparatus, instruments and systems, namely, satellite dishes, satellite antennae, satellite terminals, namely, parabolic dishes, transmitters, receivers, modems, flat antennae, satellite processors, gateway routers, satellite telephones and personal digital assistants, for satellite transmission; data processing apparatus and instruments; computer software for the collection and analysis of data; downloadable computer software for the collection and analysis of data; radio apparatus; marine radios; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units, antennae, mobile internet equipment and apparatus, modems, routers, advanced satellite modems and computer software; satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units in the nature of computer monitors, antennae, mobile internet equipment and apparatus in the nature of satellite telephones and personal digital assistants, modems, gateway routers, advanced satellite modems and downloadable computer software for simulation and analysis of satellite communication systems and for operating satellites and satellite systems; satellite tracking and positioning systems for maritime use; satellite tracking and positioning systems for maritime use, namely, systems for tracking the position of satellite communication terminals belonging to end-user customers, namely, satellite communication terminals located on marine vessels, third party maritime assets, cargoes and personnel and GPS-based navigation systems for marine vessels; computer software programs for the operation and management of maritime satellite communication systems; downloadable computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus; maritime rescue apparatus, namely, apparatus for use in broadcasting navigational information, search-and-rescue information, distress alerts, and messages; hazard alert systems for maritime use; distress alert systems for maritime use; distress alert systems for maritime use comprising computers, computer hardware, computer software, and computer peripheries for broadcasting navigational information, search-and-rescue information, distress alerts, and messages; transmitters for emitting distress signal; emergency transmitters for emitting distress signals; parts and fittings for all the aforesaid goodsClass 009 for Downloadable computer software for the operation and management of satellite communication systems; downloadable computer software platforms for the operation and management of satellite communication systems; downloadable cloud computing software for the operation and management of satellite communication systems; cloud servers; downloadable cloud network monitoring software; telecommunications and satellite telecommunications apparatus, instruments and systems, namely, satellite dishes, satellite antennae, satellite terminals, namely, parabolic dishes, transmitters, receivers, modems, flat antennae, satellite processors, gateway routers, satellite telephones and personal digital assistants, for satellite transmission; data processing apparatus and instruments; downloadable computer software for the collection and analysis of data; radio apparatus; marine radios; satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units in the nature of computer monitors, antennae, mobile internet equipment and apparatus in the nature of satellite telephones and personal digital assistants, modems, gateway routers, advanced satellite modems and downloadable computer software for simulation and analysis of satellite communication systems and for operating satellites and satellite systems; satellite tracking and positioning systems for maritime use, namely, systems for tracking the position of satellite communication terminals belonging to end-user customers, namely, satellite communication terminals located on marine vessels, third party maritime assets, cargoes and personnel and GPS-based navigation systems for marine vessels; downloadable computer software programs for the operation and management of maritime satellite communication systems; maritime rescue apparatus, namely, apparatus for use in broadcasting navigational information, search-and-rescue information, distress alerts, and messages; hazard alert systems for maritime use; distress alert systems for maritime use comprising computers, computer hardware, computer software, and computer peripheries for broadcasting navigational information, search-and-rescue information, distress alerts, and messages; emergency transmitters for emitting distress signals; parts and fittings for all the aforesaid goods
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 [ United Kingdom application number 3354966 filed 11/20/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3354966 registered 02/22/2019 with a renewal date of __________ and an expiration date of 11/20/2028 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-1732271968-204224900_._GB_registration_certificate.PDF
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Communications services; satellite communications services; digital and satellite transmission services; data transfer services; electronic mail services; telecommunications services; voice and data transmission services; telex and facsimile services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications; secure e-mail services; secure transmission of data, sound or images; provision of wireless application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; making available information in electronic form, and telecommunication of information, to third parties to allow tracking and location of third party assets, cargos and personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet; broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail services, voice and data transmission services, facsimile services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet applications and broadcasts; leasing and sub-leasing bandwidth and uplink services; managing communication networks for others; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and databases; consultancy, information and advisory services relating to the aforesaid
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.

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 3354966 filed 11/20/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Communications services; Communications services, namely, electronic data transmission; satellite communications services; digital and satellite transmission services; digital and satellite transmission of voice, data, images, signals and messages; data transfer services; data transfer by telecommunications; electronic mail services; electronic mail transmission and retrieval services; telecommunications services; telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; voice and data transmission services; electronic, electric, and digital voice and data transmission services; telex and facsimile services; telex and facsimile transmission and retrieval services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications; transmission of encrypted communications via electronic, electric, and digital communications networks; secure e-mail services; secure e-mail transmission and retrieval services; secure transmission of data, sound or images; secure transmission of data, sound or images via electronic, electric, and digital communication networks; provision of wireless application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; making available information in electronic form, and telecommunication of information, to third parties to allow tracking and location of third party assets, cargos and personnel; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party assets, cargos and personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet; communication and broadcasting services relating to the internet, namely, providing voice, data, graphics, images, audio and video communication and broadcasting services via the internet; broadcasting of data, visual images, sound, graphics and other information; wireless broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail services, voice and data transmission services, facsimile services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail transmission and retrieval services, voice and data transmission services, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, satellite communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet applications and broadcasts; return path management for the provision of internet applications and broadcasts, namely, management of access to broadcast and communication channels; leasing and sub-leasing bandwidth and uplink services; managing communication networks for others; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and databases; consultancy, information and advisory services relating to the aforesaidClass 038 for Communications services, namely, electronic data transmission; satellite communications services; digital and satellite transmission of voice, data, images, signals and messages; data transfer by telecommunications; electronic mail transmission and retrieval services; telecommunications services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks; electronic, electric, and digital voice and data transmission services; telex and facsimile transmission and retrieval services; leasing of communications apparatus; provision of communications information; message collection and transmission services; relaying of electronic messages; transmission of encrypted communications via electronic, electric, and digital communications networks; secure e-mail transmission and retrieval services; secure transmission of data, sound or images via electronic, electric, and digital communication networks; provision of wireless application protocol services including those utilising a secure communications channel; radio satellite ship to shore telecommunication services; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party assets, cargos and personnel; providing user access to the internet and other online systems; providing access to databases; communication and broadcasting services relating to the internet, namely, providing voice, data, graphics, images, audio and video communication and broadcasting services via the internet; wireless broadcasting of data, visual images, sound, graphics and other information; maritime radio-telephone network services; maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail transmission and retrieval services, voice and data transmission services, facsimile transmission and retrieval services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, satellite communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; transmission of information via electronic, electric, and digital telecommunication networks to third parties to allow tracking and location of third party maritime assets, cargoes and personnel; return path management for the provision of internet applications and broadcasts, namely, management of access to broadcast and communication channels; leasing and sub-leasing bandwidth and uplink services; providing access to and leasing access time to computer networks and computer databases including telecommunications networks and databases; consultancy, information and advisory services relating to the aforesaid
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 [ United Kingdom application number 3354966 filed 11/20/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3354966 registered 02/22/2019 with a renewal date of __________ and an expiration date of 11/20/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Orbit transfer services in relation to satellites; Tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems; tracking and locating objects and equipment by means of satellite technology for third parties; information, advisory and consultancy services relating to the aforesaid
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.

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 3354966 filed 11/20/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Orbit transfer services in relation to satellites; Orbit transfer services in relation to satellites, namely, launch and placement in prescribed orbit of satellites of others; Tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of tracking and locating services and systems, namely, tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of maritime tracking and positioning services and systems; Provision of tracking and positioning services and systems, namely, provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems; tracking and locating objects and equipment by means of satellite technology for third parties; Provision of tracking and locating services and systems, namely, tracking and locating objects and equipment by means of satellite technology for third parties; information, advisory and consultancy services relating to the aforesaidClass 039 for Orbit transfer services in relation to satellites, namely, launch and placement in prescribed orbit of satellites of others; provision of tracking and locating services and systems, namely, tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; Provision of tracking and positioning services and systems, namely, provision of maritime tracking and positioning services and systems; GPS navigation services; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems; Provision of tracking and locating services and systems, namely, tracking and locating objects and equipment by means of satellite technology for third parties; information, advisory and consultancy services relating to the aforesaid
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 [ United Kingdom application number 3354966 filed 11/20/2018]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3354966 registered 02/22/2019 with a renewal date of __________ and an expiration date of 11/20/2028 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant's current attorney information: Gregory B. Phillips. Gregory B. Phillips of KNOBBE, MARTENS, OLSON & BEAR, LLP, is located at

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      US
The docket/reference number is REDD024.010T.

The phone number is 949-760-0404.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com

The applicants proposed attorney information: Gregory B. Phillips. Gregory B. Phillips of KNOBBE, MARTENS, OLSON & BEAR, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      United States
The docket/reference number is REDD024.010T.

The phone number is 949-760-0404.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com

Gregory B. Phillips 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: GREGORY B. PHILLIPS. GREGORY B. PHILLIPS of KNOBBE, MARTENS, OLSON & BEAR, LLP, is located at

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      US
The docket/reference number is REDD024.010T.

The phone number is 949-760-0404.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com

The applicants proposed correspondence information: Gregory B. Phillips. Gregory B. Phillips of KNOBBE, MARTENS, OLSON & BEAR, LLP, is located at

      2040 MAIN STREET, 14TH FLOOR
      IRVINE, California 92614
      United States
The docket/reference number is REDD024.010T.

The phone number is 949-760-0404.

The fax number is 949-760-9502.

The email address is efiling@knobbe.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use CREW apart from the mark as shown.


SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_1732271968-204224900_._2019-09-24_signed_application.PDF
Converted PDF file(s) (4 pages)
Signature File1
Signature File2
Signature File3
Signature File4
Signatory's Name: Alison Harrocks
Signatory's Position: Director

Response Signature
Signature: /gregory phillips/     Date: 09/24/2019
Signatory's Name: Gregory B. Phillips
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 949-760-0404

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:    GREGORY B. PHILLIPS
   KNOBBE, MARTENS, OLSON & BEAR, LLP
   
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
Mailing Address:    Gregory B. Phillips
   KNOBBE, MARTENS, OLSON & BEAR, LLP
   2040 MAIN STREET, 14TH FLOOR
   IRVINE, California 92614
        
Serial Number: 88340662
Internet Transmission Date: Tue Sep 24 21:16:40 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2019092421164068
3125-88340662-610992219993eea4b9b5d6a762
3595d402f8235db74735b63b76329f972fb2f25f
-N/A-N/A-20190924204224900219


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