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. 88410083 BANDERA(Standard Characters, see http://uspto.report/TM/88410083/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 business networking services, namely, arranging business introductions between accredited individuals, financial professionals and motion picture, feature film, television, and web content production companies; financial intermediary services, namely, facilitating and arranging for the financing of projects and expenditures for motion picture projects, feature films, motion picture films, and television programs; business management services, namely, providing business management consultation and advice in the field of marketing and distribution of motion picture films, feature films, and television programs; marketing services, namely, promoting and advertising the goods and services of others in the field of motion picture films, feature films, and television programs; providing advertising, marketing and promotional services, namely, development of advertising and promotional campaigns for the marketing and distribution of motion picture films, feature films, and television programs; business services, namely, matching potential private investors with filmmakers needing funding; loan financing and project financing for filmmakers and businesses, namely, motion picture filmmakers and producers, film producers, television producers, and website producers
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: business networking services, namely, arranging business introductions between accredited individuals, financial professionals and motion picture, feature film, television, and web content production companies; business networking services featuring business introductions between accredited individuals, financial professionals and motion picture, feature film, television, and web content production companies; financial intermediary services, namely, facilitating and arranging for the financing of projects and expenditures for motion picture projects, feature films, motion picture films, and television programs; financial intermediary services, namely, facilitating the channeling of funds between lenders and borrowers by connecting those with a financial surplus with those having a financial debt for the financing of projects and expenditures for motion picture projects, feature films, motion picture films, and television programs; business management services, namely, providing business management consultation and advice in the field of marketing and distribution of motion picture films, feature films, and television programs; business management services, namely, providing business management consultation and business advice in the field of marketing and distribution of motion picture films, feature films, and television programs; marketing services, namely, promoting and advertising the goods and services of others in the field of motion picture films, feature films, and television programs; providing advertising, marketing and promotional services, namely, development of advertising and promotional campaigns for the marketing and distribution of motion picture films, feature films, and television programs; business services, namely, matching potential private investors with filmmakers needing funding; loan financing and project financing for filmmakers and businesses, namely, motion picture filmmakers and producers, film producers, television producers, and website producersClass 035 for business networking services featuring business introductions between accredited individuals, financial professionals and motion picture, feature film, television, and web content production companies; financial intermediary services, namely, facilitating the channeling of funds between lenders and borrowers by connecting those with a financial surplus with those having a financial debt for the financing of projects and expenditures for motion picture projects, feature films, motion picture films, and television programs; business management services, namely, providing business management consultation and business advice in the field of marketing and distribution of motion picture films, feature films, and television programs; marketing services, namely, promoting and advertising the goods and services of others in the field of motion picture films, feature films, and television programs; providing advertising, marketing and promotional services, namely, development of advertising and promotional campaigns for the marketing and distribution of motion picture films, feature films, and television programs; business services, namely, matching potential private investors with filmmakers needing funding;
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 proposes to amend the following class of goods/services in the application:
Current: Class 041 for entertainment services in the nature of development, creation, production, distribution, and post-production services in the field of movies and television; film and video production consulting services; scriptwriting services for non-advertising purposes
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: entertainment services in the nature of development, creation, production, distribution, and post-production services in the field of movies and television; entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures and television shows; film and video production consulting services; scriptwriting services for non-advertising purposesClass 041 for entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures and television shows; film and video production consulting services; scriptwriting services for non-advertising purposes
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 proposes to amend the following class of goods/services in the application:
Current: Class 045 for intellectual property licensing and management; social introduction and networking services in the field of film, television and theatre
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: intellectual property licensing and management; licensing of intellectual property rights; social introduction and networking services in the field of film, television and theatre; intellectual property management, namely, legal services in the field of intellectual property rights management; internet-based social introduction and networking services in the field of film, television and theatre; social introduction agencies in the field of film, television and theaterClass 045 for licensing of intellectual property rights; intellectual property management, namely, legal services in the field of intellectual property rights management; internet-based social introduction and networking services in the field of film, television and theatre; social introduction agencies in the field of film, television and theater
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 036 for loan financing and project financing for filmmakers and businesses, namely, motion picture filmmakers and producers, film producers, television producers, and website producers
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.

The applicant's current attorney information: Carissa L. Bouwer, Esq.. Carissa L. Bouwer, Esq. of DLA PIPER LLP (US), is located at

      400 CAPITOL MALL, SUITE 2400
      SACRAMENTO, California 95814
      US
The docket/reference number is 425552-104.

The phone number is 916-930-3263.

The fax number is 916.930.7903.

The email address is tmdocket@dlapiper.com

The applicants proposed attorney information: Carissa L. Bouwer, Esq.. Other appointed attorneys are Heather A. Dunn, Esq., Gina Durham, Esq., Mark F. Radcliffe, Esq., Susan Acquista, Esq., Megan M. Michaels, Esq., Pei Heng Li, Esq., Alan A. Limbach, Esq., Andrew P. Valentine, Esq., and Jordan Chisek, Esq.. Carissa L. Bouwer, Esq. of DLA PIPER LLP (US), is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      400 CAPITOL MALL, SUITE 2400
      SACRAMENTO, California 95814
      United States
The docket/reference number is 425552-104.

The phone number is 916-930-3263.

The fax number is 916.930.7903.

The email address is tmdocket@dlapiper.com

Carissa L. Bouwer, Esq. 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: CARISSA L. BOUWER, ESQ.. CARISSA L. BOUWER, ESQ. of DLA PIPER LLP (US), is located at

      400 CAPITOL MALL, SUITE 2400
      SACRAMENTO, California 95814
      US
The docket/reference number is 425552-104.

The phone number is 916-930-3263.

The fax number is 916.930.7903.

The email address is tmdocket@dlapiper.com

The applicants proposed correspondence information: Carissa L. Bouwer, Esq.. Carissa L. Bouwer, Esq. of DLA PIPER LLP (US), is located at

      400 CAPITOL MALL, SUITE 2400
      SACRAMENTO, California 95814
      United States
The docket/reference number is 425552-104.

The phone number is 916-930-3263.

The fax number is 916.930.7903.

The email address is tmdocket@dlapiper.com

ADDITIONAL STATEMENTS
Translation
The English translation of BANDERA in the mark is flag.


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

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Carissa Bouwer/     Date: 12/18/2019
Signatory's Name: Carissa Bouwer, Esq.
Signatory's Position: Attorney of record, CA Bar member

Signatory's Phone Number: 916-930-3263

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:    CARISSA L. BOUWER, ESQ.
   DLA PIPER LLP (US)
   
   400 CAPITOL MALL, SUITE 2400
   SACRAMENTO, California 95814
Mailing Address:    Carissa L. Bouwer, Esq.
   DLA PIPER LLP (US)
   400 CAPITOL MALL, SUITE 2400
   SACRAMENTO, California 95814
        
RAM Sale Number: 88410083
RAM Accounting Date: 12/18/2019
        
Serial Number: 88410083
Internet Transmission Date: Wed Dec 18 17:40:14 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201912181740143
58513-88410083-700a6b436c188988f452f74dc
d7cd4254b5db7ae489398c29c571cc3b8c203b59
-DA-40136278-20191218171755266793