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. 88341385 ATTEST(Standard Characters, see http://uspto.report/TM/88341385/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Arguments against refusal under Section 2(d) has been attached.
Original PDF file:
evi_66177163101-20191125135319177456_._2019-11-25b_ATTEST_2_d__Office_Action_Response.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

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, namely, downloadable software and software forcreating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Computer software, namely, downloadable software and software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000328860 registered 03/08/2016 with a renewal date of __________ and an expiration date of 03/08/2026 ], 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: Computer software, namely, downloadable software and software forcreating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Computer software, namely, downloadable software and software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposesClass 009 for Computer software, namely, downloadable software and software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Computer software, namely, downloadable software and software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000328860 registered 03/08/2016 with a renewal date of __________ and an expiration date of 03/08/2026 ], 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:
FRU0-2601347410085f0710c418f99a5639b-114737680_._Attest_-_UKIPO_Reg_3288606.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 035 for Market research; opinion polling; opinion polling services; marketing, product and trend forecasting services; market forecasting; economic forecasting; advertising services; marketing services; production and dissemination of advertising matter; business assistance for commercial and industrial companies; business consultancy services; business management and business organisation, consultancy and assistance; business information; commercial information; business research; statistical information and processing; data processing; sales promotion; purchase for others of advertising space; rental of advertising space; purchase for others of publicity and advertising materials; direct mail advertising; organisation of exhibitions for commercial, trade, business and/or advertising purposes; radio, television, billboard and press advertising; publicity and promotional services; advertising agency services; marketing agency services; media planning and buying; business services relating to the provision of sponsorship; market analysis; accounting; compilation of advertisements for use as web pages on the internet; design services relating to advertising, promotional and marketing activities; information, consultancy and advisory services relating to aforesaid services
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000328860 registered 03/08/2016 with a renewal date of __________ and an expiration date of 03/08/2026 ], 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: Market research; opinion polling; public and market opinion polling; opinion polling services; public and market opinion polling services; marketing, product and trend forecasting services; marketing consultation services, namely, marketing, product and trend forecasting services; market forecasting; market consultation services, namely, market forecasting; economic forecasting; advertising services; marketing services; production and dissemination of advertising matter; business assistance for commercial and industrial companies; business marketing assistance for commercial and industrial companies; business consultancy services; business management and business organisation, consultancy and assistance; business management and business organization consultancy and assistance; business information; commercial information; commercial information in the field of business marketing; business research; statistical information and processing; data processing; sales promotion; purchase for others of advertising space; rental of advertising space; purchase for others of publicity and advertising materials; direct mail advertising; organisation of exhibitions for commercial, trade, business and/or advertising purposes; organization of exhibitions for commercial, trade, business and/or advertising purposes; radio, television, billboard and press advertising; publicity and promotional services; publicity and sales promotional services; advertising agency services; marketing agency services; media planning and buying; media planning and buying, namely, advising the client on the correct times and stations to advertise based on media analysis of the market for that media, preparation and realization of media plans and concepts, and advising client how much media time, and at what times the client should be purchasing advertising; business services relating to the provision of sponsorship; providing promotional sponsorship of sports, cultural and entertainment events; market analysis; accounting; compilation of advertisements for use as web pages on the internet; design services relating to advertising, promotional and marketing activities; information, consultancy and advisory services relating to aforesaid servicesClass 035 for Market research; public and market opinion polling; public and market opinion polling services; marketing consultation services, namely, marketing, product and trend forecasting services; market consultation services, namely, market forecasting; economic forecasting; advertising services; marketing services; production and dissemination of advertising matter; business marketing assistance for commercial and industrial companies; business consultancy services; business management and business organization consultancy and assistance; business information; commercial information in the field of business marketing; business research; statistical information and processing; data processing; sales promotion; purchase for others of advertising space; rental of advertising space; purchase for others of publicity and advertising materials; direct mail advertising; organization of exhibitions for commercial, trade, business and/or advertising purposes; radio, television, billboard and press advertising; publicity and sales promotional services; advertising agency services; marketing agency services; media planning and buying, namely, advising the client on the correct times and stations to advertise based on media analysis of the market for that media, preparation and realization of media plans and concepts, and advising client how much media time, and at what times the client should be purchasing advertising; providing promotional sponsorship of sports, cultural and entertainment events; market analysis; accounting; compilation of advertisements for use as web pages on the internet; design services relating to advertising, promotional and marketing activities; information, consultancy and advisory services relating to aforesaid services
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000328860 registered 03/08/2016 with a renewal date of __________ and an expiration date of 03/08/2026 ], 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:
FRU1-2601347410085f0710c418f99a5639b-114737680_._Attest_-_UKIPO_Reg_3288606.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 042 for Software as a service (SaaS), namely, providing software forcreating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Software as a service (SaaS), namely, providing software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Software as a service (SaaS), namely, software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Software as a service (SaaS), namely, software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes; information consultancy and advisory services relating to the aforesaid
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000328860 registered 03/08/2016 with a renewal date of __________ and an expiration date of 03/08/2026 ], 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: Software as a service (SaaS), namely, providing software forcreating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Software as a service (SaaS), namely, providing software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Software as a service (SaaS), namely, providing software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Software as a service (SaaS), namely, software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Software as a service (SaaS), namely, software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes; information consultancy and advisory services relating to the aforesaidClass 042 for Software as a service (SaaS), namely, providing software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Software as a service (SaaS), namely, providing software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Software as a service (SaaS), namely, software for capturing, measuring, monitoring, analyzing and sharing brand awareness and brand engagement; Software as a service (SaaS), namely, software for monitoring internet websites and online publications and content for customer-specified topics, and providing documentation and analysis of media content to others for business purposes; information consultancy and advisory services relating to the aforesaid
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000328860 registered 03/08/2016 with a renewal date of __________ and an expiration date of 03/08/2026 ], 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:
FRU2-2601347410085f0710c418f99a5639b-114737680_._Attest_-_UKIPO_Reg_3288606.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.

The applicant's current attorney information: Ryan S. Hilbert. Ryan S. Hilbert of HOLLEY & MENKER, P.A., is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      US

The email address is rhilbert@holleymenker.com

The applicants proposed attorney information: Ryan S. Hilbert. Ryan S. Hilbert of HOLLEY & MENKER, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      United States
The docket/reference number is 3863.0001.

The email address is rhilbert@holleymenker.com

Ryan S. Hilbert 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: RYAN S. HILBERT. RYAN S. HILBERT of HOLLEY & MENKER, P.A., is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      US

The email address is rhilbert@holleymenker.com; eastdocket@holleymenker.com

The applicants proposed correspondence information: Ryan S. Hilbert. Ryan S. Hilbert of HOLLEY & MENKER, P.A., is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      United States
The docket/reference number is 3863.0001.

The email address is rhilbert@holleymenker.com; eastdocket@holleymenker.com

SIGNATURE(S)
Response Signature
Signature: /Ryan S. Hilbert/     Date: 11/25/2019
Signatory's Name: Ryan S. Hilbert
Signatory's Position: Attorney of record, California bar member

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:    RYAN S. HILBERT
   HOLLEY & MENKER, P.A.
   
   PO BOX 331937
   ATLANTIC BEACH, Florida 32233
Mailing Address:    Ryan S. Hilbert
   HOLLEY & MENKER, P.A.
   PO BOX 331937
   ATLANTIC BEACH, Florida 32233
        
Serial Number: 88341385
Internet Transmission Date: Mon Nov 25 14:27:10 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201911251427104
72494-88341385-700f730a47dc429e7cc4c8279
43c1d14771331eb1daeee9c15e66bd125da7f1c7
20-N/A-N/A-20191125135319177456