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

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 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 utilizing 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(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.


Proposed:

Tracked Text 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; 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 utilizing 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; 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; 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; leasing and sub-leasing bandwidth; 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; 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 utilizing 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; 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; 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(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.

Applicant proposes to amend the following:

Current:
Class 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(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.


Proposed:

Tracked Text 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; GPS navigation services; Provision of tracking and positioning services and systems, namely, provision of maritime tracking and positioning services and systems; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems, namely, GPS navigation services using satellites; information, advisory and consultancy services relating to the aforesaid; 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 partiesClass 039 for Orbit transfer services in relation to satellites, namely, launch and placement in prescribed orbit of satellites of others; GPS navigation services; rental of GPS equipment for navigational purposes; provision of tracking and positioning services and systems, namely, GPS navigation services using satellites; 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(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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Inmarsat Global Limited a(n) private limited company, legally organized under the laws of United Kingdom, having an address of
      99 City Road
      London, EC1Y1AX
      United Kingdom

Proposed: Inmarsat Global Limited, private limited company legally organized under the laws of United Kingdom, having an address of
      99 City Road
      London, EC1Y1AX
      United Kingdom
      Email Address: XXXX
Correspondence Information (current):
      Gregory B. Phillips
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is REDD024.010T.
Correspondence Information (proposed):
      Gregory B. Phillips
      PRIMARY EMAIL FOR CORRESPONDENCE: efiling@knobbe.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is REDD024.010T.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /gregory phillips/     Date: 04/08/2020
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: Wed Apr 08 19:24:22 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2020040819242290
9517-88340662-71017d699c42445c66a4222b45
f72f594c66d336a43a754084bb283bdd4799eb39
-N/A-N/A-20200408185636472222