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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88419690 |
LAW OFFICE ASSIGNED |
LAW OFFICE 121 |
MARK SECTION |
MARK |
http://uspto.report/TM/88419690/mark.png |
LITERAL ELEMENT |
STORM NATION |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
ARGUMENT(S) |
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. |
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
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 |
FILING BASIS |
Section 1(b) |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
035 |
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. |
FINAL DESCRIPTION |
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) |
ATTORNEY SECTION (current) |
NAME |
John C. Stringham |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
WORKMAN NYDEGGER |
INTERNAL ADDRESS |
SUITE 1000 |
STREET |
60 EAST SOUTH TEMPLE |
CITY |
SALT LAKE CITY |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
US |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
21922.3 |
ATTORNEY SECTION (proposed) |
NAME |
John C. Stringham |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Workman Nydegger |
STREET |
60 East South Temple, Suite 1000 |
CITY |
Salt Lake City |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
United States |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
21922.3 |
OTHER APPOINTED ATTORNEY |
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 |
CORRESPONDENCE SECTION (current) |
NAME |
JOHN C. STRINGHAM |
FIRM NAME |
WORKMAN NYDEGGER |
INTERNAL ADDRESS |
SUITE 1000 |
STREET |
60 EAST SOUTH TEMPLE |
CITY |
SALT LAKE CITY |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
US |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com; docketing@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
21922.3 |
CORRESPONDENCE SECTION (proposed) |
NAME |
John C. Stringham |
FIRM NAME |
Workman Nydegger |
STREET |
60 East South Temple, Suite 1000 |
CITY |
Salt Lake City |
STATE |
Utah |
POSTAL CODE |
84111 |
COUNTRY |
United States |
PHONE |
801-533-9800 |
FAX |
801-328-1707 |
EMAIL |
jstringham@wnlaw.com; docketing@wnlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
21922.3 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/John C. Stringham/ |
SIGNATORY'S NAME |
John C. Stringham |
SIGNATORY'S POSITION |
Attorney for Applicant, Utah Bar Member |
SIGNATORY'S PHONE NUMBER |
8015339800 |
DATE SIGNED |
01/18/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Sat Jan 18 13:56:35 EST 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XXX-
20200118135635683678-8841
9690-7002290501871a53574b
0b263eefe2cf5f1f8ff93f324
953776839464a46893bbdc-N/
A-N/A-2020011813512157477
5 |
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