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. 88390592 MAXIFIX (Stylized and/or with Design, see http://uspto.report/TM/88390592/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 009 for Data processing equipment; Downloadable computer application software; Downloadable mobile applications; Interactive touch screen terminals; Operating system programs; Computer software for controlling self-service terminal; Semiconductor memory devices; Central processing units for processing information, data, sound and images; Computer software for authorizing access to databases; Internal communication devices for diagnostics and troubleshooting; Navigation apparatus for vehicles (on board computers); Emergency signal transmitters; Sound transmission device for diagnostics and troubleshooting; photographic equipment appliance boxes; Measuring devices, electric; Measuring instruments; Computerized Vehicle Engine Analyzers; Simulators for drive or control of vehicles; LCD monitors; Alarms; software for diagnostics and troubleshooting; automatic indicators of low pressure in vehicle tires; engines diagnostics apparatus; testing apparatus for diagnostic purpose (other than medical); optical code readers; computerized vehicle engine analyzers; car video recorders; video recording apparatus for vehicles; tyre-pressure measures
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017927946 registered 02/22/2019 with a renewal date of __________ and an expiration date of 07/06/2028 ], 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: Data processing equipment; Data processors; Downloadable computer application software; Downloadable computer software for vehicle diagnostics and troubleshooting; Downloadable mobile applications; Downloadable mobile applications for vehicle diagnostics and troubleshooting; Interactive touch screen terminals; Operating system programs; Downloadable operating system programs; Computer software for controlling self-service terminal; Downloadable computer software for controlling self-service terminals; Semiconductor memory devices; Central processing units for processing information, data, sound and images; Computer software for authorizing access to databases; Downloadable computer software for authorizing access to databases; Internal communication devices for diagnostics and troubleshooting; Integrated computerized system for the collection, transmission, storage and sharing of data and information related to electronic communication analyses for troubleshooting purposes; Navigation apparatus for vehicles (on board computers); Navigation apparatus for vehicles in the nature of on-board computers; Emergency signal transmitters; Sound transmission device for diagnostics and troubleshooting; Sound alarms that connect to a computer communications network for diagnostics and troubleshooting purposes; photographic equipment appliance boxes; Cases adapted for photographic equipment; Measuring devices, electric; Electronic test and measurement devices for use in the fields of networks and telecommunications, namely, instrumentation used to test and certify new and existing data and voice communication cable and coaxial cable; Measuring instruments; Scientific measuring instruments, namely, conductivity meters; Computerized vehicle engine analyzers; Simulators for drive or control of vehicles; Simulators for driving or control of vehicles; LCD monitors; Alarms; Acoustic alarms; software for diagnostics and troubleshooting; Downloadable computer software for diagnostics and troubleshooting of vehicles; Automatic indicators of low pressure in vehicle tires; engines diagnostics apparatus; Engine diagnostics apparatus, namely, on-board diagnostic (OBD) scanners and readers, code readers, electrical circuit testers and multimeters, car battery testers, oil life and oil level sensors, engine timing sensors; testing apparatus for diagnostic purpose (other than medical); Machines for testing land vehicles, not for medical purposes; optical code readers; computerized vehicle engine analyzers; car video recorders; Video recorders and video reproducing apparatus for vehicles; video recording apparatus for vehicles; Tyre-pressure measuresClass 009 for Data processors; Downloadable computer software for vehicle diagnostics and troubleshooting; Downloadable mobile applications for vehicle diagnostics and troubleshooting; Interactive touch screen terminals; Downloadable operating system programs; Downloadable computer software for controlling self-service terminals; Semiconductor memory devices; Central processing units for processing information, data, sound and images; Downloadable computer software for authorizing access to databases; Integrated computerized system for the collection, transmission, storage and sharing of data and information related to electronic communication analyses for troubleshooting purposes; Navigation apparatus for vehicles in the nature of on-board computers; Emergency signal transmitters; Sound alarms that connect to a computer communications network for diagnostics and troubleshooting purposes; Cases adapted for photographic equipment; Electronic test and measurement devices for use in the fields of networks and telecommunications, namely, instrumentation used to test and certify new and existing data and voice communication cable and coaxial cable; Scientific measuring instruments, namely, conductivity meters; Computerized vehicle engine analyzers; Simulators for driving or control of vehicles; LCD monitors; Acoustic alarms; Downloadable computer software for diagnostics and troubleshooting of vehicles; Automatic indicators of low pressure in vehicle tires; Engine diagnostics apparatus, namely, on-board diagnostic (OBD) scanners and readers, code readers, electrical circuit testers and multimeters, car battery testers, oil life and oil level sensors, engine timing sensors; Machines for testing land vehicles, not for medical purposes; optical code readers; car video recorders; Video recorders and video reproducing apparatus for vehicles; Tyre-pressure measures
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017927946 registered 02/22/2019 with a renewal date of __________ and an expiration date of 07/06/2028 ], 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 class of goods/services in the application:
Current: Class 038 for Radio broadcast; Computer aided transmission of information and images; Satellite transmission; Providing user accesses to the Internet (services providers); Provide database access service; Transmission of digital files; Providing telecommunications connections to a global computer network; Providing Internet chat rooms; Providing online forums; Virtual chat room service based on text message transmission; Network transmission of sounds, images, signals and data; Wireless digital information delivery service relating to diagnostics and troubleshooting
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017927946 registered 02/22/2019 with a renewal date of __________ and an expiration date of 07/06/2028 ], 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: Radio broadcast; Radio broadcasting; Computer aided transmission of information and images; Satellite transmission; Providing user accesses to the Internet (services providers); Providing multiple-user access to the Internet; Provide database access service; Providing access to databases; Transmission of digital files; Providing telecommunications connections to a global computer network; Providing Internet chat rooms; Providing online forums; Providing on-line forums for transmission of messages among computer users; Virtual chat room service based on text message transmission; Providing virtual chat rooms established via text messaging; Network transmission of sounds, images, signals and data; Wireless digital information delivery service relating to diagnostics and troubleshooting; Information transmission services via wireless digital networks for diagnostics and troubleshooting purposesClass 038 for Radio broadcasting; Computer aided transmission of information and images; Satellite transmission; Providing multiple-user access to the Internet; Providing access to databases; Transmission of digital files; Providing telecommunications connections to a global computer network; Providing Internet chat rooms; Providing on-line forums for transmission of messages among computer users; Providing virtual chat rooms established via text messaging; Network transmission of sounds, images, signals and data; Information transmission services via wireless digital networks for diagnostics and troubleshooting purposes
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 017927946 registered 02/22/2019 with a renewal date of __________ and an expiration date of 07/06/2028 ], 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.

SIGNATURE(S)
Response Signature
Signature: /Gregory F. Buhyoff/     Date: 07/26/2019
Signatory's Name: Gregory F. Buhyoff
Signatory's Position: Attorney of Record, Nevada Bar Member

Signatory's Phone Number: 7024625973

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: 88390592
Internet Transmission Date: Fri Jul 26 18:45:37 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201907261845378
21682-88390592-62021f36186aacf48572bda5b
3b1e60eaaab9a9987a8657f9f0f96ee5f817898c
c7-N/A-N/A-20190726183841024753