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. 88404261 KWS(Standard Characters, see http://uspto.report/TM/88404261/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 038 for News agency services; multimedia telecommunications services; electronic network communications; telecommunications by computer terminals, by data communication channels, by radio, by telegrams, by telephone; computer aided transmission of messages and images; transmission of data by data communication codes; transmission of data contained in data banks; providing online forums; providing online forums for children/teenagers; chat room services; operating chat rooms; Telecommunication portal services
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000334961 filed 10/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: News agency services; News agency services for electronic transmission; multimedia telecommunications services; electronic network communications; Providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works; Transmission of information by electronic communications networks; telecommunications by computer terminals, by data communication channels, by radio, by telegrams, by telephone; computer aided transmission of messages and images; providing online forums; transmission of data by data communication codes; providing online forums for children/teenagers; transmission of data contained in data banks; chat room services; Providing on-line forums for transmission of messages among computer users; operating chat rooms; providing online forums for children/teenagers in the field of internet safety and security; Telecommunication portal services; Chat room services for social networking; Providing internet chat rooms; Providing an Internet website telecommunications portal featuring internet safety and security.Class 038 for News agency services for electronic transmission; multimedia telecommunications services; electronic network communications; Providing telecommunication connectivity services for transfer of images, messages, audio, visual, audiovisual and multimedia works; Transmission of information by electronic communications networks; telecommunications by computer terminals, by data communication channels, by radio, by telegrams, by telephone; computer aided transmission of messages and images; transmission of data by data communication codes; transmission of data contained in data banks; Providing on-line forums for transmission of messages among computer users; providing online forums for children/teenagers in the field of internet safety and security; Chat room services for social networking; Providing internet chat rooms; Providing an Internet website telecommunications portal featuring internet safety and security.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000334961 filed 10/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design services; computer services; web hosting services; product design and development; art work design and production services; content management; information and consultancy services relating to website development services; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design, drawing and commissioned writing for the compilation of web sites; creating, maintaining and hosting the web sites of others; design services; provision of information relating to the aforesaid
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000334961 filed 10/30/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Design services; Database design services; computer services; computer database services, namely, building, hosting, and development; web hosting services; product design and development; art work design and production services; content management; website content management; information and consultancy services relating to website development services; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design, drawing and commissioned writing for the compilation of web sites; design, creating, maintaining and hosting the web sites of others; creating, maintaining and hosting the web sites of others; website design services; design services; provision of information relating to the aforesaidClass 042 for Database design services; computer database services, namely, building, hosting, and development; web hosting services; product design and development; art work design and production services; website content management; information and consultancy services relating to website development services; design and development of computer hardware and software; computer programming; installation, maintenance and repair of computer software; computer consultancy services; design, creating, maintaining and hosting the web sites of others; website design services;
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000334961 filed 10/30/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Andrea E. Bates. Andrea E. Bates of BATES & BATES, LLC, is located at

      1890 MARIETTA BLVD NW
      ATLANTA, Georgia 30318
      US

The email address is abates@bates-bates.com

The applicants proposed attorney information: Andrea E. Bates. Other appointed attorneys are Johnathan Bates, Kathryn Cox, Jason Cox, Kevin Dawson, Laura Deines, Kurt Schuettinger. Andrea E. Bates of BATES & BATES, 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

      1890 MARIETTA BLVD NW
      ATLANTA, Georgia 30318
      United States

The email address is abates@bates-bates.com

Andrea E. Bates 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: ANDREA E. BATES. ANDREA E. BATES of BATES & BATES, LLC, is located at

      1890 MARIETTA BLVD NW
      ATLANTA, Georgia 30318
      US

The email address is abates@bates-bates.com; kdawson@bates-bates.com; rberkowitz@bates-bates.com; ckoerner@bates-bates.com

The applicants proposed correspondence information: Andrea E. Bates. Andrea E. Bates of BATES & BATES, LLC, is located at

      1890 MARIETTA BLVD NW
      ATLANTA, Georgia 30318
      United States

The email address is abates@bates-bates.com; kdawson@bates-bates.com; rberkowitz@bates-bates.com; ckoerner@bates-bates.com

SIGNATURE(S)
Response Signature
Signature: /Kevin J. Dawson/     Date: 01/20/2020
Signatory's Name: Kevin J. Dawson
Signatory's Position: Other Appointed Attorney, Georgia Bar member

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:    ANDREA E. BATES
   BATES & BATES, LLC
   
   1890 MARIETTA BLVD NW
   ATLANTA, Georgia 30318
Mailing Address:    Andrea E. Bates
   BATES & BATES, LLC
   1890 MARIETTA BLVD NW
   ATLANTA, Georgia 30318
        
Serial Number: 88404261
Internet Transmission Date: Mon Jan 20 08:45:20 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202001200845206595
48-88404261-700a12c89e35bc60ab9ea5425822
6b9fa754dbab5a89d6d99b0a051eb93c3cb55-N/
A-N/A-20200120083047787792