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. 88419690 STORM NATION(Standard Characters, see http://uspto.report/TM/88419690/mark.png) has been amended as follows:

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

In the Office Action mailed July 20, 2019, the Examining Attorney found particular wording of the Identification of Goods to be indefinite and the entity to be indefinite. Particular Wording in the Identification of Goods is Indefinite In the Office Action, the Examining Attorney found particular wording in the identification of goods to be indefinite that needed clarification. Applicant respectfully proposes the following amended identifications: Advertising services; business management; business administration services; providing office functions; business administration of consumer loyalty programs; advertising and marketing consultancy; business advisory services, consultancy and information; business consultancy services in the field of marketing; business management consultancy and advisory services; compiling data for business purposes, namely, computerized compilation of customer indexes; business consultancy relating to business promotion; market assessment consultancy; marketing consulting, namely, reporting online marketing activities for others; market research services, namely, data collection services; market research services, namely, data retrieval services; customer loyalty services, namely, organization and administration services in relation to the supply of benefits for customer loyalty and frequent buyer schemes the foregoing being for commercial, promotional and advertising purposes; customer loyalty services, namely, organization and management of customer loyalty and frequent buyer programs, the foregoing being for commercial, promotional and advertising purposes; customer loyalty services, namely, organization and management of customer loyalty programs for commercial, promotional and advertising purposes; customer loyalty services, namely, organization, operation and supervision of customer loyalty schemes for commercial, promotional and advertising purposes; professional business consultancy; sales promotions through customer loyalty programs; sales promotions through customer loyalty programs for others. Entity is Indefinite In the Office Action, the Examining Attorney asserts the Applicant's name includes the wording 'Limited', but applicant's entity type is listed as a Corporation and thus creates an inconsistency. The Applicant is a British Virgin Island Limited Liability Company. The Applicant was originally incorporated under the International Business Companies Act and was re-registered under the new BVI Business Corporations Act 2004 (the Act) in 2007. There are several types of limited liability companies that may be formed under the Act, and the present Applicant is a company limited by shares. The British Virgin Islands has 'limited companies' which are equivalent to corporations in the U.S. There is no BVI LLC legislation. Applicant respectfully submits the Applicant was filed under the correct type of business as a corporation. If the Examining Attorney is still concerned with the Corporation designation, Applicant invites the Examining Attorney to telephone or otherwise contact the undersigned attorney so that the matter may be clarified and resolved. In view of the foregoing remarks, Applicant respectfully submits its applied-for mark is entitled to registration and requests that it be promptly allowed for publication. If the Examining Attorney requires any modifications to the application that could be made by Examiner's Amendment, Applicant respectfully requests that she telephone the undersigned attorney at: (801) 533-9800. The Commissioner for Trademarks is authorized to charge any additional fees associated with this response to Deposit Account No. 23-3178.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising services; business management; business administration; providing office functions; administration of consumer loyalty programs; advertising and marketing consultancy; business advisory services, consultancy and information; business consultancy services in the field of marketing; business management consultancy and advisory services; computerized compilation of customer indexes; consultancy relating to business promotion; market assessment consultancy; market reporting consultancy; market research data collection services; market research data retrieval services; organization and administration services in relation to the supply of benefits for customer loyalty and frequent buyer schemes; organization and management of customer loyalty and frequent buyer; organization and management of customer loyalty programs; organization, operation and supervision of customer loyalty schemes; professional business consultancy; sales promotions through customer loyalty programs; sales promotions through customer loyalty programs for others
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: Advertising services; business management; business administration; business administration services; providing office functions; administration of consumer loyalty programs; business administration of consumer loyalty programs; advertising and marketing consultancy; business advisory services, consultancy and information; business consultancy services in the field of marketing; business management consultancy and advisory services; computerized compilation of customer indexes; compiling data for business purposes, namely, computerized compilation of customer indexes; consultancy relating to business promotion; business consultancy relating to business promotion; market assessment consultancy; market reporting consultancy; marketing consulting, namely, reporting online marketing activities for others; market research data collection services; market research services, namely, data collection services; market research data retrieval services; market research services, namely, data retrieval services; organization and administration services in relation to the supply of benefits for customer loyalty and frequent buyer schemes; customer loyalty services, namely, organization and administration services in relation to the supply of benefits for customer loyalty and frequent buyer schemes the foregoing being for commercial, promotional and advertising purposes; organization and management of customer loyalty and frequent buyer; customer loyalty services, namely, organization and management of customer loyalty and frequent buyer programs, the foregoing being for commercial, promotional and advertising purposes; organization and management of customer loyalty programs; customer loyalty services, namely, organization and management of customer loyalty programs for commercial, promotional and advertising purposes; organization, operation and supervision of customer loyalty schemes; customer loyalty services, namely, organization, operation and supervision of customer loyalty schemes for commercial, promotional and advertising purposes; professional business consultancy; sales promotions through customer loyalty programs; sales promotions through customer loyalty programs for others; sales promotions through customer loyalty programs for others.Class 035 for Advertising services; business management; business administration services; providing office functions; business administration of consumer loyalty programs; advertising and marketing consultancy; business advisory services, consultancy and information; business consultancy services in the field of marketing; business management consultancy and advisory services; compiling data for business purposes, namely, computerized compilation of customer indexes; business consultancy relating to business promotion; market assessment consultancy; marketing consulting, namely, reporting online marketing activities for others; market research services, namely, data collection services; market research services, namely, data retrieval services; customer loyalty services, namely, organization and administration services in relation to the supply of benefits for customer loyalty and frequent buyer schemes the foregoing being for commercial, promotional and advertising purposes; customer loyalty services, namely, organization and management of customer loyalty and frequent buyer programs, the foregoing being for commercial, promotional and advertising purposes; customer loyalty services, namely, organization and management of customer loyalty programs for commercial, promotional and advertising purposes; customer loyalty services, namely, organization, operation and supervision of customer loyalty schemes for commercial, promotional and advertising purposes; professional business consultancy; sales promotions through customer loyalty programs; sales promotions through customer loyalty programs for others.
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: John C. Stringham. John C. Stringham of WORKMAN NYDEGGER, is located at

      SUITE 1000
      60 EAST SOUTH TEMPLE
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 21922.3.

The phone number is 801-533-9800.

The fax number is 801-328-1707.

The email address is jstringham@wnlaw.com

The applicants proposed attorney information: John C. Stringham. Other appointed attorneys are Thomas R. Vuksinick, Jonathan W. Richards, John M. Guynn, Dana L. Tangren, Robyn L. Phillips, David R. Todd, David B. Dellenbach, Adrian J. Lee, Fraser D. Roy, Carl T. Reed, Peter F. Malen, Jens C. Jenkins, Michael J. Frodsham, J. LaVar Oldham, Matthew A. Barlow, Chad E. Nydegger, Shane K. Jensen, Matthew D. Todd, Tom M. Bonacci, Dustin Howell, Timothy D. Nichols, Kirk C. Coombs, David P. Johnson, Justin J. Cassell, W. Brad Barger, James W. McConkie, Roger J. McConkie, Charles A. Meeker, Stirling D. Fillmore, Logan B. Christenson, Gerrit C. Winkel, J. Paul Norton, Brittany Frandsen, Levi S. Brown, Joseph M. Evans, Angela L. Silvers, Peter Shiozawa, Lynne Wang, Hannah Follender, Rachel Perry of WORKMAN NYDEGGER. John C. Stringham of Workman Nydegger, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      60 East South Temple, Suite 1000
      Salt Lake City, Utah 84111
      United States
The docket/reference number is 21922.3.

The phone number is 801-533-9800.

The fax number is 801-328-1707.

The email address is jstringham@wnlaw.com

John C. Stringham 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: JOHN C. STRINGHAM. JOHN C. STRINGHAM of WORKMAN NYDEGGER, is located at

      SUITE 1000
      60 EAST SOUTH TEMPLE
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 21922.3.

The phone number is 801-533-9800.

The fax number is 801-328-1707.

The email address is jstringham@wnlaw.com; docketing@wnlaw.com

The applicants proposed correspondence information: John C. Stringham. John C. Stringham of Workman Nydegger, is located at

      60 East South Temple, Suite 1000
      Salt Lake City, Utah 84111
      United States
The docket/reference number is 21922.3.

The phone number is 801-533-9800.

The fax number is 801-328-1707.

The email address is jstringham@wnlaw.com; docketing@wnlaw.com

SIGNATURE(S)
Response Signature
Signature: /John C. Stringham/     Date: 01/18/2020
Signatory's Name: John C. Stringham
Signatory's Position: Attorney for Applicant, Utah Bar Member

Signatory's Phone Number: 8015339800

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:    JOHN C. STRINGHAM
   WORKMAN NYDEGGER
   SUITE 1000
   60 EAST SOUTH TEMPLE
   SALT LAKE CITY, Utah 84111
Mailing Address:    John C. Stringham
   Workman Nydegger
   60 East South Temple, Suite 1000
   Salt Lake City, Utah 84111
        
Serial Number: 88419690
Internet Transmission Date: Sat Jan 18 13:56:35 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202001181356356
83678-88419690-7002290501871a53574b0b263
eefe2cf5f1f8ff93f324953776839464a46893bb
dc-N/A-N/A-20200118135121574775