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. 88422772 PEXIP (Stylized and/or with Design, see http://uspto.report/TM/88422772/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 009 for Equipment for video conference services, in particular cameras, digital cameras, computer hardware, software for digital processing of motion pictures; electronic appliances for control and surveillance, in particular cameras, digital cameras; computer hardware and computer software to control the operation of photo cameras and video cameras for viewing and recognition of predefined objects and persons, search for and/or playing audio, video, images and other multimedia content; computer software for the production, recording, downloading, transmitting, reception, editing, extraction, coding, de-coding, viewing, playing, saving, manipulating, inspection and organization of text, data, images, sound files, video files and digital media; computer systems comprising of hardware and software for audio-, video- and web conferences; computer hardware for digital image processing; software for detection of content on whiteboard and other writing surfaces for reproducing enhanced displays of the content; software for detection of content on electronic monitors for reproducing enhanced displays of the content; software for image processing algorithms for the use and recognition of humans, movement, objects in rooms and the size of rooms; software for image processing algorithms and video analysis, related to medical diagnostics, teaching, surveillance, 3D-measurements, virtual reality (VR) and augmented reality (AR); software for audio detection and audio signal processing, related to sound recordings from rooms; Videoconferencing systems; systems, apparatus and equipment for real-time, multimedia and multi-party communication over computer networks, including software and Web-based software applications; apparatus for receiving, storing, rendering, playback, recording and transmission of audio or video; communications software and applications suitable for web browsers, personal computers or mobile phones; systems and equipment for network communications infrastructure including network management software
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: Equipment for video conference services, in particular cameras, digital cameras, computer hardware, software for digital processing of motion pictures; Equipment for video conference services, in particular cameras, digital cameras, computer hardware, downloadable software for digital processing of motion pictures; electronic appliances for control and surveillance, in particular cameras, digital cameras; computer hardware and computer software to control the operation of photo cameras and video cameras for viewing and recognition of predefined objects and persons, search for and/or playing audio, video, images and other multimedia content; computer hardware and downloadable computer software to control the operation of photo cameras and video cameras for viewing and recognition of predefined objects and persons, search for and/or playing audio, video, images and other multimedia content; computer software for the production, recording, downloading, transmitting, reception, editing, extraction, coding, de-coding, viewing, playing, saving, manipulating, inspection and organization of text, data, images, sound files, video files and digital media; downloadable computer software for the production, recording, downloading, transmitting, reception, editing, extraction, coding, de-coding, viewing, playing, saving, manipulating, inspection and organization of text, data, images, sound files, video files and digital media; computer systems comprising of hardware and software for audio-, video- and web conferences; computer systems comprising of hardware and downloadable software for audio-, video- and web conferences; computer hardware for digital image processing; software for detection of content on whiteboard and other writing surfaces for reproducing enhanced displays of the content; downloadable software for detection of content on whiteboard and other writing surfaces for reproducing enhanced displays of the content; software for detection of content on electronic monitors for reproducing enhanced displays of the content; downloadable software for detection of content on electronic monitors for reproducing enhanced displays of the content; software for image processing algorithms for the use and recognition of humans, movement, objects in rooms and the size of rooms; downloadable software for image processing algorithms for the use and recognition of humans, movement, objects in rooms and the size of rooms; software for image processing algorithms and video analysis, related to medical diagnostics, teaching, surveillance, 3D-measurements, virtual reality (VR) and augmented reality (AR); downloadable software for image processing algorithms and video analysis, related to medical diagnostics, teaching, surveillance, 3D-measurements, virtual reality (VR) and augmented reality (AR); software for audio detection and audio signal processing, related to sound recordings from rooms; downloadable software for audio detection and audio signal processing, related to sound recordings from rooms; Videoconferencing systems; systems, apparatus and equipment for real-time, multimedia and multi-party communication over computer networks, including software and Web-based software applications; systems, apparatus and equipment for real-time, multimedia and multi-party communication over computer networks, namely, downloadable software and Web-based downloadable software applications and computer hardware; apparatus for receiving, storing, rendering, playback, recording and transmission of audio or video; apparatus for receiving, storing, rendering, playback, recording and transmission of audio or video, namely, computers, tablet computers, smartphones, smart Tv's, videoconferencing terminals, videoconferencing end-points and videoconferencing infrastructure components; communications software and applications suitable for web browsers, personal computers or mobile phones; downloadable communications software and applications suitable for web browsers, personal computers or mobile phones for supporting video-conferencing and collaboration platforms; systems and equipment for network communications infrastructure including network management software; systems and equipment for network communications infrastructure, namely, downloadable network management softwareClass 009 for Equipment for video conference services, in particular cameras, digital cameras, computer hardware, downloadable software for digital processing of motion pictures; electronic appliances for control and surveillance, in particular cameras, digital cameras; computer hardware and downloadable computer software to control the operation of photo cameras and video cameras for viewing and recognition of predefined objects and persons, search for and/or playing audio, video, images and other multimedia content; downloadable computer software for the production, recording, downloading, transmitting, reception, editing, extraction, coding, de-coding, viewing, playing, saving, manipulating, inspection and organization of text, data, images, sound files, video files and digital media; computer systems comprising of hardware and downloadable software for audio-, video- and web conferences; computer hardware for digital image processing; downloadable software for detection of content on whiteboard and other writing surfaces for reproducing enhanced displays of the content; downloadable software for detection of content on electronic monitors for reproducing enhanced displays of the content; downloadable software for image processing algorithms for the use and recognition of humans, movement, objects in rooms and the size of rooms; downloadable software for image processing algorithms and video analysis, related to medical diagnostics, teaching, surveillance, 3D-measurements, virtual reality (VR) and augmented reality (AR); downloadable software for audio detection and audio signal processing, related to sound recordings from rooms; Videoconferencing systems; systems, apparatus and equipment for real-time, multimedia and multi-party communication over computer networks, namely, downloadable software and Web-based downloadable software applications and computer hardware; apparatus for receiving, storing, rendering, playback, recording and transmission of audio or video, namely, computers, tablet computers, smartphones, smart Tv's, videoconferencing terminals, videoconferencing end-points and videoconferencing infrastructure components; downloadable communications software and applications suitable for web browsers, personal computers or mobile phones for supporting video-conferencing and collaboration platforms; systems and equipment for network communications infrastructure, namely, downloadable network management software
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 038 for Telecommunications services, namely, video conferencing and collaboration services being video conferencing; providing web-based multi-media teleconferences, video conferences and online meeting services allowing simultaneous and synchronized distribution, sharing, editing and discussion of documents, data and images of the participants over an online browser; services for teleconferences, video conferences, web conferences and video blogging; mobile phone communications, telecommunications consulting in the nature of technical consulting in the field of audio, text, and visual data transmission; services for voice over internet protocol (VOIP); telecommunications counseling in regards to transmission of data-, voice- and video communications network; providing transmitting services of sound, images and data with multiple participants; providing electronic transmission of sound, images and data for the use of online conferences; streaming of data; data assisted transmission of messages and images; video conferencing and teleconferencing services; web-conference services; telecommunication services, namely, reception and transmission of messages, documents, pictures and other data via electronic transmission; audio, video, data and graphic communication network; providing real-time multimedia and multi-party communication over computer networks; leasing of telecommunications equipment; leasing of access time to a global computer networks; providing access to web sites that offer teamwork collaboration, document provisioning, media provisioning and operation 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: Telecommunications services, namely, video conferencing and collaboration services being video conferencing; providing web-based multi-media teleconferences, video conferences and online meeting services allowing simultaneous and synchronized distribution, sharing, editing and discussion of documents, data and images of the participants over an online browser; services for teleconferences, video conferences, web conferences and video blogging; services for teleconferences, video conferences, web conferences and streaming of video blogging; mobile phone communications, telecommunications consulting in the nature of technical consulting in the field of audio, text, and visual data transmission; services for voice over internet protocol (VOIP); telecommunications counseling in regards to transmission of data-, voice- and video communications network; providing transmitting services of sound, images and data with multiple participants; providing electronic transmission of sound, images and data for the use of online conferences; streaming of data; data assisted transmission of messages and images; video conferencing and teleconferencing services; web-conference services; web-conference services, namely, video conferencing; telecommunication services, namely, reception and transmission of messages, documents, pictures and other data via electronic transmission; audio, video, data and graphic communication network; audio, video, data and graphic communication network, namely, transmission of audio, video, data, and graphics; providing real-time multimedia and multi-party communication over computer networks; leasing of telecommunications equipment; leasing of access time to a global computer networks; providing access to web sites that offer teamwork collaboration, document provisioning, media provisioning and operation servicesClass 038 for Telecommunications services, namely, video conferencing and collaboration services being video conferencing; providing web-based multi-media teleconferences, video conferences and online meeting services allowing simultaneous and synchronized distribution, sharing, editing and discussion of documents, data and images of the participants over an online browser; services for teleconferences, video conferences, web conferences and streaming of video blogging; mobile phone communications, telecommunications consulting in the nature of technical consulting in the field of audio, text, and visual data transmission; services for voice over internet protocol (VOIP); telecommunications counseling in regards to transmission of data-, voice- and video communications network; providing transmitting services of sound, images and data with multiple participants; providing electronic transmission of sound, images and data for the use of online conferences; streaming of data; data assisted transmission of messages and images; video conferencing and teleconferencing services; web-conference services, namely, video conferencing; telecommunication services, namely, reception and transmission of messages, documents, pictures and other data via electronic transmission; audio, video, data and graphic communication network, namely, transmission of audio, video, data, and graphics; providing real-time multimedia and multi-party communication over computer networks; leasing of telecommunications equipment; leasing of access time to a global computer networks; providing access to web sites that offer teamwork collaboration, document provisioning, media provisioning and operation 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design and development of software, including in particular production of videoconference services; counseling, consultation services, and customer support services, namely, troubleshooting computer software problems; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer network design services; software as a service (SAAS) services featuring software for database management; technical consultations and examinations in the field of computer networks; network system design; Scientific and technological services and research and development related thereto; industrial analysis and research; design and development of computers and computer programs; design and development of equipment and software for telecommunications and video communications; temporary use of non-downloadable teamwork and document management software; consulting services and technical support services relating to computers, computer networks, software, document management, teamwork systems and video conferencing systems; leasing of software; leasing of telecommunications software
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: Design and development of software, including in particular production of videoconference services; counseling, consultation services, and customer support services, namely, troubleshooting computer software problems; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer network design services; software as a service (SAAS) services featuring software for database management; technical consultations and examinations in the field of computer networks; technical consultations and examinations in the field of computer networks development; network system design; computer network system design; Scientific and technological services and research and development related thereto; Scientific and technological services and research and development related thereto, in the field of videoconferencing and collaboration platforms software, hardware and network design and development; industrial analysis and research; industrial analysis and research, namely, analysis of goods of others to assure compliance with industry standards and industrial research in the field of videoconferencing and collaboration platforms software, hardware, and network design and development; design and development of computers and computer programs; design and development of equipment and software for telecommunications and video communications; temporary use of non-downloadable teamwork and document management software; temporary use of online non-downloadable teamwork and document management software; consulting services and technical support services relating to computers, computer networks, software, document management, teamwork systems and video conferencing systems; consulting services and technical support services relating to computer programming, computer network development, software, document management software, teamwork systems development and video conferencing systems development; leasing of software; leasing of telecommunications softwareClass 042 for Design and development of software, including in particular production of videoconference services; counseling, consultation services, and customer support services, namely, troubleshooting computer software problems; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer network design services; software as a service (SAAS) services featuring software for database management; technical consultations and examinations in the field of computer networks development; computer network system design; Scientific and technological services and research and development related thereto, in the field of videoconferencing and collaboration platforms software, hardware and network design and development; industrial analysis and research, namely, analysis of goods of others to assure compliance with industry standards and industrial research in the field of videoconferencing and collaboration platforms software, hardware, and network design and development; design and development of computers and computer programs; design and development of equipment and software for telecommunications and video communications; temporary use of online non-downloadable teamwork and document management software; consulting services and technical support services relating to computer programming, computer network development, software, document management software, teamwork systems development and video conferencing systems development; leasing of software; leasing of telecommunications software
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 Christopher. John Christopher of CHRISTOPHER & WEISBERG, P.A., is located at

      1232 N. UNIVERSITY DRIVE
      PLANTATION, Florida 33322
      US
The docket/reference number is 1552-104T.

The phone number is 954-828-1488.

The fax number is 954-828-9122.

The email address is ptomail@cwiplaw.com

The applicants proposed attorney information: John Christopher. Other appointed attorneys are Alan M. Weisberg, Elissa Tisdahl, and Garrett Barten. John Christopher of Christopher & Weisberg, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1232 N. University Drive
      Plantation, Florida 33322
      United States
The docket/reference number is 1552-104T.

The phone number is 954-828-1488.

The fax number is 954-828-9122.

The email address is ptomail@cwiplaw.com

John Christopher 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 CHRISTOPHER. JOHN CHRISTOPHER of CHRISTOPHER & WEISBERG, P.A., is located at

      1232 N. UNIVERSITY DRIVE
      PLANTATION, Florida 33322
      US
The docket/reference number is 1552-104T.

The phone number is 954-828-1488.

The fax number is 954-828-9122.

The email address is ptomail@cwiplaw.com; cwdocketing@cardinal-ip.com

The applicants proposed correspondence information: John Christopher. John Christopher of Christopher & Weisberg, P.A., is located at

      1232 N. University Drive
      Plantation, Florida 33322
      United States
The docket/reference number is 1552-104T.

The phone number is 954-828-1488.

The fax number is 954-828-9122.

The email address is ptomail@cwiplaw.com; cwdocketing@cardinal-ip.com

ADDITIONAL STATEMENTS
Miscellaneous Statement


Original PDF file:
mis-17316290218-20200122155837242199_._1552-104T_-_Amendment.PDF
Converted PDF file(s) ( 6 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6

SIGNATURE(S)
Response Signature
Signature: /John Christopher/     Date: 01/22/2020
Signatory's Name: John Christopher
Signatory's Position: Attorney of Record, Florida Bar Member

Signatory's Phone Number: 954-828-1488

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 CHRISTOPHER
   CHRISTOPHER & WEISBERG, P.A.
   
   1232 N. UNIVERSITY DRIVE
   PLANTATION, Florida 33322
Mailing Address:    John Christopher
   Christopher & Weisberg, P.A.
   1232 N. University Drive
   Plantation, Florida 33322
        
Serial Number: 88422772
Internet Transmission Date: Wed Jan 22 16:49:19 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202001221649193
64577-88422772-700a9358f5be5a0a3ed709742
6c7fb37894bcfbd66932da9490cabe6bc0dfef3-
N/A-N/A-20200122155837242199