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. 88411653 NAVIGA(Standard Characters, see http://uspto.report/TM/88411653/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section. For those reasons, Applicant believes no translation of the mark is required in this Response to Office Action.

EVIDENCE
Evidence in the nature of Legal argument. has been attached.
Original PDF file:
evi_2041451034-20200114145810984584_._NAVIGA_Response_to_Office_Action__O2715222x9F8AD_.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Internet access services; telecommunication services, namely, transmission of voice, data, images, text, audio and video by means of telecommunications networks, optical fiber networks, wireless networks, and the internet; providing access to computer information networks; personal communications services; providing telecommunications connections over a global communications network; electronic mail services; voice mail services; electronic voice messaging, namely, the recording and storage and subsequent transmission of voice messages using telecommunications networks, optical fiber networks, wireless networks, and the internet; audio, text, image and video broadcasting services over the internet or other communication networks; streaming and live streaming of video, audiovisual, and interactive audiovisual content over the internet or other communication networks; telecommunications and peer-to-peer network computer services, namely, electronic transmission of images, audio-visual and video content, photographs, videos, data, text, messages, communications and information; cable television broadcasting; voice over internet protocol (voip) services
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: Internet access services; telecommunication services, namely, transmission of voice, data, images, text, audio and video by means of telecommunications networks, optical fiber networks, wireless networks, and the internet; providing access to computer information networks; personal communications services; providing telecommunications connections over a global communications network; electronic mail services; transmission of electronic mail; voice mail services; electronic voice messaging, namely, the recording and storage and subsequent transmission of voice messages using telecommunications networks, optical fiber networks, wireless networks, and the internet; electronic voice messaging, namely, the recording and subsequent transmission of voice messages using telecommunications networks, optical fiber networks, wireless networks, and the internet; audio, text, image and video broadcasting services over the internet or other communication networks; streaming and live streaming of video, audiovisual, and interactive audiovisual content over the internet or other communication networks; telecommunications and peer-to-peer network computer services, namely, electronic transmission of images, audio-visual and video content, photographs, videos, data, text, messages, communications and information; cable television broadcasting; voice over internet protocol (voip) servicesClass 038 for Internet access services; telecommunication services, namely, transmission of voice, data, images, text, audio and video by means of telecommunications networks, optical fiber networks, wireless networks, and the internet; providing access to computer information networks; personal communications services; providing telecommunications connections over a global communications network; transmission of electronic mail; voice mail services; electronic voice messaging, namely, the recording and subsequent transmission of voice messages using telecommunications networks, optical fiber networks, wireless networks, and the internet; audio, text, image and video broadcasting services over the internet or other communication networks; streaming and live streaming of video, audiovisual, and interactive audiovisual content over the internet or other communication networks; telecommunications and peer-to-peer network computer services, namely, electronic transmission of images, audio-visual and video content, photographs, videos, data, text, messages, communications and information; cable television broadcasting; voice over internet protocol (voip) services
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: David P. Hathaway. David P. Hathaway of DEAN, MEAD, EGERTON, BLOODWORTH, CAPOUANO & BOZART, is located at

      SUITE 700
      420 S. ORANGE AVE.
      ORLANDO, Florida 32801
      US

The phone number is 407-428-5124.

The fax number is 407-423-1831.

The email address is dhathaway@deanmead.com

The applicants proposed attorney information: David P. Hathaway. David P. Hathaway of DEAN, MEAD, EGERTON, BLOODWORTH, CAPOUANO & BOZART, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 700
      420 S. ORANGE AVE.
      ORLANDO, Florida 32801
      United States

The phone number is 407-428-5124.

The fax number is 407-423-1831.

The email address is dhathaway@deanmead.com

David P. Hathaway 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: DAVID P. HATHAWAY. DAVID P. HATHAWAY of DEAN, MEAD, EGERTON, BLOODWORTH, CAPOUANO & BOZART, is located at

      SUITE 700
      420 S. ORANGE AVE.
      ORLANDO, Florida 32801
      US

The phone number is 407-428-5124.

The fax number is 407-423-1831.

The email address is dhathaway@deanmead.com; smarshall@deanmead.com

The applicants proposed correspondence information: David P. Hathaway. David P. Hathaway of DEAN, MEAD, EGERTON, BLOODWORTH, CAPOUANO & BOZART, is located at

      SUITE 700
      420 S. ORANGE AVE.
      ORLANDO, Florida 32801
      United States

The phone number is 407-428-5124.

The fax number is 407-423-1831.

The email address is dhathaway@deanmead.com; smarshall@deanmead.com

SIGNATURE(S)
Response Signature
Signature: /David P. Hathaway/     Date: 01/14/2020
Signatory's Name: David P. Hathaway
Signatory's Position: Attorney of record, Florida bar member

Signatory's Phone Number: 407-841-1200

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:    DAVID P. HATHAWAY
   DEAN, MEAD, EGERTON, BLOODWORTH, CAPOUANO & BOZART
   SUITE 700
   420 S. ORANGE AVE.
   ORLANDO, Florida 32801
Mailing Address:    David P. Hathaway
   DEAN, MEAD, EGERTON, BLOODWORTH, CAPOUANO & BOZART
   SUITE 700
   420 S. ORANGE AVE.
   ORLANDO, Florida 32801
        
Serial Number: 88411653
Internet Transmission Date: Tue Jan 14 15:12:01 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2020011415120106
5841-88411653-700d88f65279b93dfdb9c123e9
fbbd4879553a19551fe6a87a75ea5ac423dfa0-N
/A-N/A-20200114145810984584