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. 88381181 CONSTANT CONTACT(Standard Characters, see http://uspto.report/TM/88381181/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 042 for DESIGN, CREATION, HOSTING, MAINTENANCE OF WEBSITES FOR OTHERS; SOFTWARE AS A SERVICE (SAAS) SERVICES, namely, HOSTING SOFTWARE FOR USE BY OTHERS IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR USE BY OTHERS IN DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITES SERVICES, FEATURES, AND FUNCTIONS; PLATFORM AS A SERVICE (PAAS) FEATURING COMPUTER SOFTWARE PLATFORMS FOR USE BY OTHERS IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING, AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; COMPUTER WEBSITE DESIGN CONSULTATION; DESIGN, HOSTING AND MAINTENANCE OF WEBSITE SECURITY SERVICES; HOSTING WEBSITES; SERVER HOSTING; HOSTING OF DATABASES; HOSTING OF DIGITAL CONTENT; HOSTING OF MULTIMEDIA APPLICATIONS; HOSTING OF INTERACTIVE APPLICATIONS; CLOUD HOSTING PROVIDER; DEVELOPING AND HOSTING A SERVER ON A GLOBAL COMPUTER NETWORK FOR THE PURPOSE OF FACILITATING E-COMMERCE VIA SUCH A SERVER
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: DESIGN, CREATION, HOSTING, MAINTENANCE OF WEBSITES FOR OTHERS; SOFTWARE AS A SERVICE (SAAS) SERVICES, namely, HOSTING SOFTWARE FOR USE BY OTHERS IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; SOFTWARE AS A SERVICE (SAAS) SERVICES, NAMELY, HOSTING SOFTWARE FOR USE BY OTHERS FOR USE IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR USE BY OTHERS IN DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITES SERVICES, FEATURES, AND FUNCTIONS; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR USE BY OTHERS FOR USE IN DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITES SERVICES, FEATURES, AND FUNCTIONS; PLATFORM AS A SERVICE (PAAS) FEATURING COMPUTER SOFTWARE PLATFORMS FOR USE BY OTHERS IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING, AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; PLATFORM AS A SERVICE (PAAS) FEATURING COMPUTER SOFTWARE PLATFORMS FOR USE BY OTHERS FOR USE IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING, AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; COMPUTER WEBSITE DESIGN CONSULTATION; DESIGN, HOSTING AND MAINTENANCE OF WEBSITE SECURITY SERVICES; HOSTING WEBSITES; SERVER HOSTING; HOSTING OF DATABASES; HOSTING OF DIGITAL CONTENT; HOSTING OF DIGITAL CONTENT ON THE INTERNET; HOSTING OF MULTIMEDIA APPLICATIONS; HOSTING OF COMPUTER SOFTWARE APPLICATIONS OF OTHERS, NAMELY, MULTIMEDIA APPLICATIONS; HOSTING OF INTERACTIVE APPLICATIONS; HOSTING OF COMPUTER SOFTWARE APPLICATIONS OF OTHERS, NAMELY, INTERACTIVE APPLICATIONS; CLOUD HOSTING PROVIDER; DEVELOPING AND HOSTING A SERVER ON A GLOBAL COMPUTER NETWORK FOR THE PURPOSE OF FACILITATING E-COMMERCE VIA SUCH A SERVER; DOMAIN NAME SEARCH SERVICES, NAMELY, CONDUCTING ONLINE COMPUTERIZED SEARCHES FOR THE AVAILABILITY OF DOMAIN NAMESClass 042 for DESIGN, CREATION, HOSTING, MAINTENANCE OF WEBSITES FOR OTHERS; SOFTWARE AS A SERVICE (SAAS) SERVICES, NAMELY, HOSTING SOFTWARE FOR USE BY OTHERS FOR USE IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR USE BY OTHERS FOR USE IN DESIGNING, MANAGING, CUSTOMIZING AND PERSONALIZING WEBSITES AND WEBSITES SERVICES, FEATURES, AND FUNCTIONS; PLATFORM AS A SERVICE (PAAS) FEATURING COMPUTER SOFTWARE PLATFORMS FOR USE BY OTHERS FOR USE IN BUILDING, DESIGNING, MANAGING, CUSTOMIZING, AND PERSONALIZING WEBSITES AND WEBSITE SERVICES, FEATURES, AND FUNCTIONS; COMPUTER WEBSITE DESIGN CONSULTATION; DESIGN, HOSTING AND MAINTENANCE OF WEBSITE SECURITY SERVICES; HOSTING WEBSITES; SERVER HOSTING; HOSTING OF DATABASES; HOSTING OF DIGITAL CONTENT ON THE INTERNET; HOSTING OF COMPUTER SOFTWARE APPLICATIONS OF OTHERS, NAMELY, MULTIMEDIA APPLICATIONS; HOSTING OF COMPUTER SOFTWARE APPLICATIONS OF OTHERS, NAMELY, INTERACTIVE APPLICATIONS; CLOUD HOSTING PROVIDER; DEVELOPING AND HOSTING A SERVER ON A GLOBAL COMPUTER NETWORK FOR THE PURPOSE OF FACILITATING E-COMMERCE VIA SUCH A SERVER; DOMAIN NAME SEARCH SERVICES, NAMELY, CONDUCTING ONLINE COMPUTERIZED SEARCHES FOR THE AVAILABILITY OF DOMAIN NAMES
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 045 for DOMAIN NAME REGISTRATION SERVICES; DOMAIN NAME REGISTRATION ADVISORY SERVICES; CONSULTANCY RELATING TO THE REGISTRATION OF DOMAIN NAMES; DOMAIN NAME SEARCH SERVICES FOR THE AVAILABILITY OF DOMAIN NAMES
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: DOMAIN NAME REGISTRATION SERVICES; DOMAIN NAME REGISTRATION ADVISORY SERVICES; CONSULTANCY RELATING TO THE REGISTRATION OF DOMAIN NAMES; DOMAIN NAME SEARCH SERVICES FOR THE AVAILABILITY OF DOMAIN NAMESClass 045 for DOMAIN NAME REGISTRATION SERVICES; DOMAIN NAME REGISTRATION ADVISORY SERVICES; CONSULTANCY RELATING TO THE REGISTRATION OF DOMAIN NAMES
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.

SIGNATURE(S)
Response Signature
Signature: /Robert J. English/     Date: 07/08/2019
Signatory's Name: Robert J. English
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: 88381181
Internet Transmission Date: Mon Jul 08 18:27:54 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019070818275475
6077-88381181-62071c11139cce7f469fda73b1
5ac8b1243662140943d204057c84733d457ccb-N
/A-N/A-20190708180815180083