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. 88402593 IMBUS (Stylized and/or with Design, see http://uspto.report/TM/88402593/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 Pre-recorded compact discs, pre-recorded dvds and downloadable digital recording media featuring computer programs; manuals or worksheets in the field of quality management, quality assurance and testing of software and software controlled devices; electronic databases in the field of quality management, quality assurance and testing of software and software controlled devices recorded on Computer media; audio books in the field of quality management, quality assurance and testing of software and software controlled devices; E-Books featuring quality management, quality assurance and testing of software and software controlled devices recorded on computer media; downloadable electronic publications, namely, books, manuals in the field of quality management, quality assurance and testing of software and software controlled devices, namely, books, manuals; electronic publications, namely, training manuals in the form of a computer program in the field of quality management, quality assurance and testing of software and software controlled devices; instruction manuals in electronic format in the field of quality management, quality assurance and testing of software and software controlled devices; software to evaluate engineering processes or software development processes or to control the quality assurance in the development of software and software controlled devices; computer programs for project management; computer software for computer aided software engineering; computer software for creating searchable databases of information and data; downloadable software applications for use with mobile devices in the field of quality management, quality assurance and testing of software and software controlled devices; process controlling software to evaluate engineering processes or software development processes; software for planning, design, management, automatization and execution of tests for hardware, for software and it systems; electronic databases for the exchange of knowledge in the field of software testing; software for the organization of conferences and the exchange of knowledge in the field of quality management, quality assurance and testing of software and software controlled devices; software in the form of an interactive glossary with training function; e-learning software for education, professional development and training of persons and for tests of hardware, software or it systems; software to evaluate engineering processes or software development processes
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Germany registration number 302016013646 registered 07/08/2016 with a renewal date of __________ and an expiration date of 05/31/2026 ], 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: Pre-recorded compact discs, pre-recorded dvds and downloadable digital recording media featuring computer programs; manuals or worksheets in the field of quality management, quality assurance and testing of software and software controlled devices; electronic databases in the field of quality management, quality assurance and testing of software and software controlled devices recorded on computer media; audio books in the field of quality management, quality assurance and testing of software and software controlled devices; E-Books featuring quality management, quality assurance and testing of software and software controlled devices recorded on computer media; downloadable electronic publications, namely, books, manuals in the field of quality management, quality assurance and testing of software and software controlled devices, namely, books, manuals; electronic publications, namely, training manuals in the form of a computer program in the field of quality management, quality assurance and testing of software and software controlled devices; electronic publications, namely, training manuals in the form of a computer program in the field of quality management, quality assurance and testing of software and software controlled devices, recorded on computer media; instruction manuals in electronic format in the field of quality management, quality assurance and testing of software and software controlled devices; software to evaluate engineering processes or software development processes or to control the quality assurance in the development of software and software controlled devices; downloadable software to evaluate engineering processes or software development processes or to control the quality assurance in the development of software and software controlled devices; computer programs for project management; computer programs, recorded, for use in project management; computer software for computer aided software engineering; downloadable computer software for computer aided software engineering; computer software for creating searchable databases of information and data; downloadable computer software for creating searchable databases of information and data; downloadable software applications for use with mobile devices in the field of quality management, quality assurance and testing of software and software controlled devices; process controlling software to evaluate engineering processes or software development processes; downloadable process controlling software to evaluate engineering processes or software development processes; software for planning, design, management, automatization and execution of tests for hardware, for software and it systems; downloadable software for planning, design, management, automatization and execution of tests for hardware, for software and it systems; electronic databases for the exchange of knowledge in the field of software testing; software for the organization of conferences and the exchange of knowledge in the field of quality management, quality assurance and testing of software and software controlled devices; downloadable software for the organization of conferences and the exchange of knowledge in the field of quality management, quality assurance and testing of software and software controlled devices; software in the form of an interactive glossary with training function; downloadable software in the form of an interactive glossary with training function; e-learning software for education, professional development and training of persons and for tests of hardware, software or it systems; downloadable e-learning software for education, professional development and training of persons and for tests of hardware, software or it systems; software to evaluate engineering processes or software development processes; downloadable software to evaluate engineering processes or software development processesClass 009 for Pre-recorded compact discs, pre-recorded dvds and downloadable digital recording media featuring computer programs; manuals or worksheets in the field of quality management, quality assurance and testing of software and software controlled devices; electronic databases in the field of quality management, quality assurance and testing of software and software controlled devices recorded on computer media; audio books in the field of quality management, quality assurance and testing of software and software controlled devices; E-Books featuring quality management, quality assurance and testing of software and software controlled devices recorded on computer media; downloadable electronic publications, namely, books, manuals in the field of quality management, quality assurance and testing of software and software controlled devices, namely, books, manuals; electronic publications, namely, training manuals in the form of a computer program in the field of quality management, quality assurance and testing of software and software controlled devices, recorded on computer media; instruction manuals in electronic format in the field of quality management, quality assurance and testing of software and software controlled devices; downloadable software to evaluate engineering processes or software development processes or to control the quality assurance in the development of software and software controlled devices; computer programs, recorded, for use in project management; downloadable computer software for computer aided software engineering; downloadable computer software for creating searchable databases of information and data; downloadable software applications for use with mobile devices in the field of quality management, quality assurance and testing of software and software controlled devices; downloadable process controlling software to evaluate engineering processes or software development processes; downloadable software for planning, design, management, automatization and execution of tests for hardware, for software and it systems; electronic databases for the exchange of knowledge in the field of software testing; downloadable software for the organization of conferences and the exchange of knowledge in the field of quality management, quality assurance and testing of software and software controlled devices; downloadable software in the form of an interactive glossary with training function; downloadable e-learning software for education, professional development and training of persons and for tests of hardware, software or it systems; downloadable software to evaluate engineering processes or software development processes
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Germany registration number 302016013646 registered 07/08/2016 with a renewal date of __________ and an expiration date of 05/31/2026 ], 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.

The applicant's current attorney information: Katrin Lewertoff. Katrin Lewertoff of FERDINAND IP, LLC, is located at

      SUITE 302
      1221 POST ROAD EAST
      WESTPORT, Connecticut 06880
      US
The docket/reference number is TS002UST.

The phone number is 203-557-4224.

The email address is klewertoff@ferdinandip.com

The applicants proposed attorney information: Katrin Lewertoff. Other appointed attorneys are Edmund J. Ferdinand, III. Katrin Lewertoff of Ferdinand IP, LLC, 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 302
      1221 Post Road East
      Westport, Connecticut 06880
      United States
The docket/reference number is TS002UST.

The phone number is 203-557-4224.

The email address is klewertoff@ferdinandip.com

Katrin Lewertoff 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: KATRIN LEWERTOFF. KATRIN LEWERTOFF of FERDINAND IP, LLC, is located at

      SUITE 302
      1221 POST ROAD EAST
      WESTPORT, Connecticut 06880
      US
The docket/reference number is TS002UST.

The phone number is 203-557-4224.

The email address is klewertoff@ferdinandip.com; annam@24iplg.com; betha@24iplg.com

The applicants proposed correspondence information: Katrin Lewertoff. Katrin Lewertoff of Ferdinand IP, LLC, is located at

      Suite 302
      1221 Post Road East
      Westport, Connecticut 06880
      United States
The docket/reference number is TS002UST.

The phone number is 203-557-4224.

The email address is klewertoff@ferdinandip.com; annam@24iplg.com; betha@24iplg.com

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
"IMBUS" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) "IMBUS" has no meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /KL/     Date: 08/29/2019
Signatory's Name: Katrin Lewertoff
Signatory's Position: Attorney of record, NY bar member

Signatory's Phone Number: 2035574224

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:    KATRIN LEWERTOFF
   FERDINAND IP, LLC
   SUITE 302
   1221 POST ROAD EAST
   WESTPORT, Connecticut 06880
Mailing Address:    Katrin Lewertoff
   Ferdinand IP, LLC
   Suite 302
   1221 Post Road East
   Westport, Connecticut 06880
        
Serial Number: 88402593
Internet Transmission Date: Thu Aug 29 12:08:43 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019082912084391
5227-88402593-610a5bade2a498e415fac32dcb
762408117dec736c082434effc8a62a3c157cc9e
4-N/A-N/A-20190829120203908755