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. 88404860 HP (Stylized and/or with Design, see http://uspto.report/TM/88404860/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 035 for Online retail store services for computers, computer peripherals, computer software, computer hardware, printers and telecommunications equipment; mobile retail store services featuring computers, computer software, computer hardware, computer peripherals, printers and telecommunications equipment; providing a website featuring an online marketplace for sellers and buyers of computer and printer goods and services; inventory management in the field of printing and computing supplies; managed print services, namely, remote monitoring of the performance of printers and copiers; business management services, namely, managing office functions in the nature of managed print services for others; cloud software-as-a-service (SaaS) services, featuring software for managing office functions and for providing business intelligence; managed print services, namely, consultation and business management regarding commercial management of print services of others; managed print services, namely, management on behalf of industrial and commercial enterprises in terms of supplying them with printing supply requisites; rental and leasing of printers; business management services, namely, consultation regarding commercial management of computer hardware devices and accessories and computer software; automated supply of parts and accessories for computer hardware devices
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: Online retail store services for computers, computer peripherals, computer software, computer hardware, printers and telecommunications equipment; mobile retail store services featuring computers, computer software, computer hardware, computer peripherals, printers and telecommunications equipment; providing a website featuring an online marketplace for sellers and buyers of computer and printer goods and services; inventory management in the field of printing and computing supplies; managed print services, namely, remote monitoring of the performance of printers and copiers; business management services, namely, managing office functions in the nature of managed print services for others; managed print services, namely, consultation and business management regarding commercial management of print services of others; cloud software-as-a-service (SaaS) services, featuring software for managing office functions and for providing business intelligence; managed print services, namely, management on behalf of industrial and commercial enterprises in terms of supplying them with printing supply requisites; business management services, namely, consultation regarding commercial management of computer hardware devices and accessories and computer software; subscription-based order fulfillment services, namely, automated supply of parts and accessories for computer hardware devices.; rental and leasing of printers; automated supply of parts and accessories for computer hardware devicesClass 035 for Online retail store services for computers, computer peripherals, computer software, computer hardware, printers and telecommunications equipment; mobile retail store services featuring computers, computer software, computer hardware, computer peripherals, printers and telecommunications equipment; providing a website featuring an online marketplace for sellers and buyers of computer and printer goods and services; inventory management in the field of printing and computing supplies; business management services, namely, managing office functions in the nature of managed print services for others; managed print services, namely, consultation and business management regarding commercial management of print services of others; managed print services, namely, management on behalf of industrial and commercial enterprises in terms of supplying them with printing supply requisites; business management services, namely, consultation regarding commercial management of computer hardware devices and accessories and computer software; subscription-based order fulfillment services, namely, automated supply of parts and accessories for computer hardware devices.
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 hereby adds the following class of goods/services to the application:
New: Class 042 for Managed print services, namely, remote monitoring of the performance of printers and copiers for others; cloud computing software-as-a-service (SaaS) services, featuring software for managing office functions and for providing business intelligence; rental and leasing of computer printers.
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.

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Ai-Tang Chang/      Date: 10/28/2019
Signatory's Name: Ai-Tang Chang
Signatory's Position: Attorney of Record, California bar member
Signatory's Phone Number: 6503167231


Response Signature
Signature: /Ai-Tang Chang/     Date: 10/28/2019
Signatory's Name: Ai-Tang Chang
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: 6503167231

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.

        
RAM Sale Number: 88404860
RAM Accounting Date: 10/30/2019
        
Serial Number: 88404860
Internet Transmission Date: Wed Oct 30 13:32:34 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191030133234682
421-88404860-700922d4ea55c66262edbdc4ad5
220304ba34be234b5772c2565f8c2c2f88bf9c-D
A-32337867-20191028130832933433