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. 88370031 FV (Stylized and/or with Design, see http://uspto.report/TM/88370031/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for BUSINESS MANAGEMENT AND CONSULTATION SERVICES; PROVIDING BUSINESS INTELLIGENCE SERVICES; BUSINESS MANAGEMENT AND CONSULTATION SERVICES FOR RETAILERS AND SERVICE PROVIDERS, NAMELY, PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, ALSO INCLUDING REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND GENERAL MARKETPLACE ANALYSIS REPORTS
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: BUSINESS MANAGEMENT AND CONSULTATION SERVICES; PROVIDING BUSINESS INTELLIGENCE SERVICES; BUSINESS MANAGEMENT AND CONSULTATION SERVICES FOR RETAILERS AND SERVICE PROVIDERS, NAMELY, PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, ALSO INCLUDING REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND GENERAL MARKETPLACE ANALYSIS REPORTS; BUSINESS MANAGEMENT AND CONSULTATION SERVICES FOR RETAILERS AND SERVICE PROVIDERS, NAMELY, PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, AND REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND GENERAL MARKETPLACE ANALYSIS REPORTSClass 035 for BUSINESS MANAGEMENT AND CONSULTATION SERVICES; PROVIDING BUSINESS INTELLIGENCE SERVICES; BUSINESS MANAGEMENT AND CONSULTATION SERVICES FOR RETAILERS AND SERVICE PROVIDERS, NAMELY, PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, AND REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND GENERAL MARKETPLACE ANALYSIS REPORTS
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 APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB PLATFORM FEATURING SOFTWARE FOR USE IN BUSINESS MANAGEMENT IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICS, NAMELY, FOR PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, ALSO INCLUDING REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND SERVICES, ALL FOR THE PURPOSE OF IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE WEB PLATFORM FEATURING SOFTWARE FOR USE IN PROVIDING REVENUE ANALYSIS REPORTS, BUSINESS PERFORMANCE REPORTS AND ALERTS, INVENTORY AND SALES REPORTS AND GENERAL MARKETPLACE ANALYSIS REPORTS, FOR IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE WEB PLATFORM FEATURING SOFTWARE FOR PROVIDING PERIODIC BUSINESS REVIEWS IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICS
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: APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB PLATFORM FEATURING SOFTWARE FOR USE IN BUSINESS MANAGEMENT IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICS, NAMELY, FOR PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, ALSO INCLUDING REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND SERVICES, ALL FOR THE PURPOSE OF IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB PLATFORM FEATURING SOFTWARE FOR USE IN BUSINESS MANAGEMENT IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICS, SPECIFICALLY FOR PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, AND REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND SERVICES, ALL FOR THE PURPOSE OF IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE WEB PLATFORM FEATURING SOFTWARE FOR USE IN PROVIDING REVENUE ANALYSIS REPORTS, BUSINESS PERFORMANCE REPORTS AND ALERTS, INVENTORY AND SALES REPORTS AND GENERAL MARKETPLACE ANALYSIS REPORTS, FOR IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB HOSTING PLATFORM FEATURING SOFTWARE FOR USE IN PROVIDING REVENUE ANALYSIS REPORTS, BUSINESS PERFORMANCE REPORTS AND ALERTS, INVENTORY AND SALES REPORTS AND GENERAL MARKETPLACE ANALYSIS REPORTS, FOR IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE WEB PLATFORM FEATURING SOFTWARE FOR PROVIDING PERIODIC BUSINESS REVIEWS IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICS; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB HOSTING PLATFORM FEATURING SOFTWARE FOR PROVIDING PERIODIC BUSINESS REVIEWS IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICSClass 042 for APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB PLATFORM FEATURING SOFTWARE FOR USE IN BUSINESS MANAGEMENT IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICS, SPECIFICALLY FOR PROVIDING BUSINESS DATA AND REPORTS TO RETAILERS AND SERVICE PROVIDERS ENABLING OPTIMIZATION OF INVENTORY AND PRICING DECISIONS IN RESPECT OF PRODUCTS AND SERVICES OFFERED FOR SALE IN ONLINE MARKETPLACES AND WEBSITES, AND REPRICING AND SALES OPTIMIZATION, INVENTORY REPLENISHMENT OPTIMIZATION AND DECISION MAKING ON LAUNCHES OF NEW PRODUCTS AND SERVICES, ALL FOR THE PURPOSE OF IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB HOSTING PLATFORM FEATURING SOFTWARE FOR USE IN PROVIDING REVENUE ANALYSIS REPORTS, BUSINESS PERFORMANCE REPORTS AND ALERTS, INVENTORY AND SALES REPORTS AND GENERAL MARKETPLACE ANALYSIS REPORTS, FOR IMPROVING THE EFFICIENCY AND EFFECTIVENESS OF ONLINE MARKETING AND ONLINE ADVERTISING; APPLICATION SERVICE PROVIDER, NAMELY, PROVIDING A SOFTWARE AS A SERVICE (SAAS) WEB HOSTING PLATFORM FEATURING SOFTWARE FOR PROVIDING PERIODIC BUSINESS REVIEWS IN THE FIELD OF DIGITAL AND ONLINE ADVERTISING, MARKETING, AND ANALYTICS
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.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The examining attorney has indicated that the application describes the client as a "limited company," which is appropriate for Commonwealth countries. He implies that this description is inappropriate because Israel is not a Commonwealth country. However, Applicant respectfully submits that Israeli law has common law origins dating back to the British Mandate in Palestine that was in force until the establishment of the State of Israel in 1948. Therefore, Limited Company is a correct designation for an Israeli Ltd. Further, TMEP, Appendix D (Foreign Entity Appendix), specifically states that Limited Company is an appropriate entity description for Israeli companies. Moreover, the Foreign Entity Appendix does not restrict the use of Ltd. solely for us in connection with Commonwealth countries. It specifically indicates that it is applicable to other countries too, such as China and S. Korea, which also use the abbreviation Ltd. In Israel, as in Commonwealth countries, China, and S. Korea, Ltd. means Limited Company; a company in which the liability of the shareholders is limited. The examining attorney also has indicated that some of the wording in the identification of services is indefinite and must be clarified. Applicant is hereby amending the description of services in accordance with the examining attorney's suggestions.


SIGNATURE(S)
Response Signature
Signature: /George C. Sciarrino/     Date: 06/27/2019
Signatory's Name: George C. Sciarrino
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-790-9200

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88370031
Internet Transmission Date: Thu Jun 27 16:36:54 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019062716365475
5976-88370031-6209e5d0ef19fcee1d8adf1b18
64cffda533666bed99e89648a690f7178cec7ef0
-N/A-N/A-20190627161313472990