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. 88394011 STAPLES CONNECT (Stylized and/or with Design, see http://uspto.report/TM/88394011/mark.png) has been amended as follows:

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

specific services of ?promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise? and ?promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise? on the basis the applicant does not provide such services for the benefit of others. Applicant has deleted these services with this response and requests the application now be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:
Current: Class 035Retail store services featuring office supplies, cleaning and janitorial supplies, break-room supplies, safety supplies, printing products, promotional products, office equipment, electronic and technology products, and office furniture; retail store services featuring promotional general merchandise and general consumer goods with company brand logos and tag lines made to the order and specification of the customer; promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise; retail store services featuring a wide variety of consumer goods; retail store services featuring a wide variety of consumer goods for others; retail supply ordering services for a wide variety of consumable goods, supplies and equipment regularly used in offices, schools and homes; providing consumer and business product information via the internet; business services, namely, sourcing of strategic goods and services at customers' specific request; preparation of customized promotional and merchandising materials for others; promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandise
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: Retail store services featuring office supplies, cleaning and janitorial supplies, break-room supplies, safety supplies, printing products, promotional products, office equipment, electronic and technology products, and office furniture; retail store services featuring promotional general merchandise and general consumer goods with company brand logos and tag lines made to the order and specification of the customer; promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise; retail store services featuring a wide variety of consumer goods; retail store services featuring a wide variety of consumer goods for others; retail supply ordering services for a wide variety of consumable goods, supplies and equipment regularly used in offices, schools and homes; providing consumer and business product information via the internet; business services, namely, sourcing of strategic goods and services at customers' specific request; preparation of customized promotional and merchandising materials for others; promotional services, namely, promoting the goods of others by means of providing customized specialty apparel, promotional items and incentive merchandiseCorrespondence Information (current):
      Michael Dowd
      PRIMARY EMAIL FOR CORRESPONDENCE: ipmailbox@staples.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Michael Dowd
      PRIMARY EMAIL FOR CORRESPONDENCE: ipmailbox@staples.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Michael Dowd/     Date: 02/25/2020
Signatory's Name: Michael Dowd
Signatory's Position: Attorney of record, Massachusetts Bar member

Signatory's Phone Number: 508-253-4041

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:    Michael Dowd
   Staples, Inc.
   
   500 Staples Drive
   Framingham, Massachusetts 01702
Mailing Address:    Michael Dowd
   Staples, Inc.
   500 Staples Drive
   Framingham, Massachusetts 01702
        
Serial Number: 88394011
Internet Transmission Date: Tue Feb 25 11:08:51 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020022511085155
8059-88394011-710c5edcd14efff44520aaea90
abaf62373d2128286dfe4d2f647c9e41dfd7ba6-
N/A-N/A-20200224150349852793