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. 88359458 STORABLE(Standard Characters, see http://uspto.report/TM/88359458/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section

EVIDENCE
Evidence in the nature of Arguments and Exhibits A-I, being: Exhibit A - Internet search results for "household accessories" Exhibit B - Internet search results for "storage items" Exhibit C - Internet search results for "storage systems" Exhibit D - TSDR printout of Reg. No. 2,470,015 Exhibit E - Screen shot of www.containerstore.com web page Exhibit F - Internet search results of "Top 10 largest self-storage companies in the U.S." Exhibit G - Screen shot of Public Storage website Exhibit H - Screen shot of Extra Space Storage, Inc. website Exhibit I - Screen shot of Applicant's home web page has been attached.
Original PDF file:
evi_3-21620115974-20191209140325897220_._STORABLE_-_Arguments_and_Exhibits.pdf
Converted PDF file(s) ( 16 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable computer software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems
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.

Proposed:
Tracked Text Description: Downloadable computer software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems; Downloadable computer software for self-storage facilities, namely, downloadable software used for business management, revenue management, accounting, making rental reservations, maintaining customer records and rental agreements, customer service in the nature of tracking and responding to customer inquiries, creating websites and online marketing materials, and controlling building environment, access and security systemsClass 009 for Downloadable computer software for self-storage facilities, namely, downloadable software used for business management, revenue management, accounting, making rental reservations, maintaining customer records and rental agreements, customer service in the nature of tracking and responding to customer inquiries, creating websites and online marketing materials, and controlling building environment, access and security systems
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing a website for searching, comparing prices and features, reading and writing reviews, listing for rent, and reserving self-storage units, portable storage units, transport and storage services, and vehicle storage services; promoting the goods and services of others by providing a website featuring links to providers of self-storage, portable storage, moving truck rental, transport and storage services, and vehicle storage services; providing an online marketplace for buyers and sellers of storage space
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.

Proposed:
Tracked Text Description: Providing a website for searching, comparing prices and features, reading and writing reviews, listing for rent, and reserving self-storage units, portable storage units, transport and storage services, and vehicle storage services; Promoting the goods and services of others by providing a website featuring price-comparison information and ratings, reviews and recommendations posted by users of transport and storage services and vehicle storage services provided by others; promoting the goods and services of others by providing a website featuring links to providers of self-storage, portable storage, moving truck rental, transport and storage services, and vehicle storage services; Providing a web site featuring on-line classified advertisements for storage space posted by users; Promoting the goods and services of others by providing a website featuring links to providers of self-storage and portable storage facilities, moving truck rental services, transport and storage services for the goods of others, and vehicle storage services; providing an online marketplace for buyers and sellers of storage spaceClass 035 for Promoting the goods and services of others by providing a website featuring price-comparison information and ratings, reviews and recommendations posted by users of transport and storage services and vehicle storage services provided by others; Providing a web site featuring on-line classified advertisements for storage space posted by users; Promoting the goods and services of others by providing a website featuring links to providers of self-storage and portable storage facilities, moving truck rental services, transport and storage services for the goods of others, and vehicle storage services; providing an online marketplace for buyers and sellers of storage space
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Insurance services, namely, underwriting, issuance and administration of renters insurance in the field of storage; electronic payment processing services for owners of self-storage facilities
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.

Proposed:
Tracked Text Description: Insurance services, namely, underwriting, issuance and administration of renters insurance in the field of storage; electronic payment processing services for owners of self-storage facilities; Electronic payment processing services for owners of self-storage facilities, namely, providing electronic processing of credit card transactions and electronic payments for owners and users of self-storage facilities via a global computer networkClass 036 for Insurance services, namely, underwriting, issuance and administration of renters insurance in the field of storage; Electronic payment processing services for owners of self-storage facilities, namely, providing electronic processing of credit card transactions and electronic payments for owners and users of self-storage facilities via a global computer network
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SaaS) services featuring software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems; designing and creating web sites for others in the field of self-storage
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.

Proposed:
Tracked Text Description: Software as a service (SaaS) services featuring software for self-storage facilities, namely, software used for business management, revenue management, accounting, rental reservations, maintaining customer records and rental agreements, customer service, creating websites and online marketing materials, and controlling building environment, access and security systems; Software as a service (SaaS) services featuring software for self-storage facilities, namely, providing temporary use of non-downloadable software used for business management, revenue management, accounting, making rental reservations, maintaining customer records and rental agreements, customer service in the nature of tracking and responding to customer inquiries, creating websites and online marketing materials, and controlling building environment, access and security systems; designing and creating web sites for others in the field of self-storage; Designing and creating web sites for others in the field of self-storage.Class 042 for Software as a service (SaaS) services featuring software for self-storage facilities, namely, providing temporary use of non-downloadable software used for business management, revenue management, accounting, making rental reservations, maintaining customer records and rental agreements, customer service in the nature of tracking and responding to customer inquiries, creating websites and online marketing materials, and controlling building environment, access and security systems; Designing and creating web sites for others in the field of self-storage.
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 039 for Providing a website of storage listings for rent, and for making reservations for self-storage units, portable storage units, transport and storage services, and vehicle storage services, namely, making reservations and bookings for self-storage space, vehicle storage space, portable storage units, portable storage unit space, and the transport and storage of goods for others by means of a website
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.

The applicant's current attorney information: Anna Kuhn. Anna Kuhn of PIRKEY BARBER PLLC, is located at

      1801 East 6th Street, Suite 300
      Austin, Texas 78702
      US
The docket/reference number is SPFT006US.

The phone number is 5123225200.

The fax number is 5123225201.

The email address is tmcentral@pirkeybarber.com

The applicants proposed attorney information: Anna Kuhn. Other appointed attorneys are all other attorneys with the firm. Anna Kuhn of Pirkey Barber PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Suite 300
      1801 East 6th Street
      Austin, Texas 78702
      United States
The docket/reference number is SPFT006US.

The phone number is 5123225200.

The fax number is 5123225201.

The email address is tmcentral@pirkeybarber.com

Anna Kuhn 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: Anna Kuhn. Anna Kuhn of PIRKEY BARBER PLLC, is located at

      1801 East 6th Street, Suite 300
      Austin, Texas 78702
      US
The docket/reference number is SPFT006US.

The phone number is 5123225200.

The fax number is 5123225201.

The email address is tmcentral@pirkeybarber.com; akuhn@pirkeybarber.com; lhoward@pirkeybarber.com

The applicants proposed correspondence information: Anna Kuhn. Anna Kuhn of Pirkey Barber PLLC, is located at

      Suite 300
      1801 East 6th Street
      Austin, Texas 78702
      United States
The docket/reference number is SPFT006US.

The phone number is 5123225200.

The fax number is 5123225201.

The email address is tmcentral@pirkeybarber.com; akuhn@pirkeybarber.com; clapoint@pirkeybarber.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Clay LaPoint/      Date: 12/09/2019
Signatory's Name: Clay LaPoint
Signatory's Position: Associate Attorney, Pirkey Barber PLLC, California state bar member
Signatory's Phone Number: 512-322-5200


Response Signature
Signature: /Clay LaPoint/     Date: 12/09/2019
Signatory's Name: Clay LaPoint
Signatory's Position: Associate attorney, Pirkey Barber PLLC, California state bar member

Signatory's Phone Number: 5123225200

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:    Anna Kuhn
   PIRKEY BARBER PLLC
   
   1801 East 6th Street, Suite 300
   Austin, Texas 78702
Mailing Address:    Anna Kuhn
   Pirkey Barber PLLC
   Suite 300
   1801 East 6th Street
   Austin, Texas 78702
        
RAM Sale Number: 88359458
RAM Accounting Date: 12/09/2019
        
Serial Number: 88359458
Internet Transmission Date: Mon Dec 09 17:00:22 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201912091700223
47355-88359458-70057834d1e8d28b157103712
125b21d5ba7a05989cc8adb1c92f16dba385aaab
b-CC-00215498-20191209162940527650