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 |
88422991 |
LAW OFFICE ASSIGNED |
LAW OFFICE 114 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88422991/mark.png |
LITERAL ELEMENT |
ASSURE |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
ARGUMENT(S) |
This submission is a timely response to the office action in this matter issued on August 01, 2019. In the office action, the Examining Attorney
took the following actions: (1) cited a pending application as a potential basis for a likelihood of confusion refusal; and (2) required amendment to Applicant?s goods/services. With regard to (1)
regarding likelihood of confusion, Applicant respectfully contends that the narrowing of the scope of its goods/services will allow the Examining Attorney to withdraw the potential refusal of
Applicant?s mark based on potential likelihood of confusion with the mark in U.S. Application Serial No. 87421089. With regard to (2) regarding its goods/services, Applicant intends to satisfy the
requirement by virtue of the amendment herein. Applicant would like to express thanks to the Examining Attorney for her efforts in this case thus far. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing,
reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; computer
software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation,
amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger
technology; computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation,
compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; computer software and application software for the
validation, verification, authentication and checking of data relating to compliance with health and safety regulations; computer software and application software for surveillance, monitoring, event
and incident management in the field of health and safety; computer software and application software for tracking data, documents, workflows and systems relating to health and safety; computer
databases and database systems for management of health and safety data, information and records; computer software and application software relating to compliance with health and safety laws and
regulations |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3384216 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/18/2019 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Computer software and application software for capture, exchange, recording, collection, storing,
processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data,
information and records; downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching,
sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and
records; computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing,
analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by means of databases,
decentralised databases or via distributed or shared ledger technology; downloadable computer software and application software for capture, exchange,
recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and
management of health and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger technology; computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation,
compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; downloadable
computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation,
compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; computer
software and application software for the validation, verification, authentication and checking of data relating to compliance with health and safety regulations; downloadable computer software and application software for the validation, verification, authentication and checking of data relating to compliance with health and safety regulations;
computer software and application software for surveillance, monitoring, event and incident management in the field of health and safety; downloadable computer software and application software for surveillance, monitoring, event and incident management in the field of health and safety; computer software and application software for tracking data, documents, workflows and systems relating to health and safety; downloadable computer
software and application software for tracking data, documents, workflows and systems relating to health and safety; computer databases and database systems
for management of health and safety data, information and records; downloadable computer databases and database systems for management of health and safety
data, information and records; computer software and application software relating to compliance with health and safety laws and regulations; downloadable computer software and application software for capturing, sharing, collection, storing, processing, searching, detection reporting, analysis, visualization, and
management of health and safety records relating to compliance with health and safety laws and regulations |
FINAL DESCRIPTION |
downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching,
sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records;
downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration,
organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via
distributed or shared ledger technology; downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting,
indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations;
downloadable computer software and application software for the validation, verification, authentication and checking of data relating to compliance with health and safety regulations; downloadable
computer software and application software for surveillance, monitoring, event and incident management in the field of health and safety; downloadable computer software and application software for
tracking data, documents, workflows and systems relating to health and safety; downloadable computer databases and database systems for management of health and safety data, information and records;
downloadable computer software and application software for capturing, sharing, collection, storing, processing, searching, detection reporting, analysis, visualization, and management of health and
safety records relating to compliance with health and safety laws and regulations |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3384216 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/18/2019 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
IT services and technical support, assistance and consultancy relating to computer software and application software for project and
data management in the field of health and safety; IT services and technical support, assistance and consultancy relating to computer software and application software for project and data management
in the field of compliance with health and safety regulations; design, development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching,
sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records;
installation, maintenance, repair, integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing,
searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and
records; design, development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration,
organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; installation, maintenance, repair,
integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing,
analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; provision of
temporary use of non-downloadable software for searching, collection, capture, storage, processing, analysis, indexing, organisation, compilation, sharing and management of health and safety data,
information and records; provision of temporary use of non-downloadable software for use in checking and ensuring compliance with health and safety laws and regulations; provision of temporary use of
non-downloadable software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation,
evaluation, detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger technology;
data security services; digital asset management; provision of data security services for computer and communication networks; electronic data storage and back up services; design and development of
data models and of data entry, testing, measuring, monitoring and analysis systems and methods; computer software services, namely, providing temporary use of a web-based software platform that
allows for virtual and remote health and safety-related services provided via the cloud; software as a service (SAAS) services featuring software for remote services in the field of health and
safety; testing, design and development of software and hardware used to analyse, collect, define, display, manage, measure, monitor, share, track, and communicate health and safety data;
environmental monitoring, planning, testing, inspection and assessment services; compilation of environmental data and information; advisory, information and consultancy services relating to all the
aforesaid services |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3384216 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/18/2019 |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
IT services and technical support, assistance and consultancy relating to computer software and
application software for project and data management in the field of health and safety; IT services and technical support, assistance and consultancy, namely,
monitoring technological functions, trouble shooting, updating, optimizing, project managing, implementing, implementing additional technological functions, and training relating to computer software
and application software for project and data management in the field of health and safety; IT services and technical support, assistance and consultancy
relating to computer software and application software for project and data management in the field of compliance with health and safety regulations; IT
services and technical support, assistance and consultancy, namely, monitoring technological functions, trouble shooting, updating, optimizing, project managing, implementing, implementing additional
technological functions, and training relating to computer software and application software for project and data management in the field of compliance with health and safety regulations;
design, development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis,
integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; installation,
maintenance, repair, integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing,
reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records;
design, development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis,
integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; installation, maintenance, repair, integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing,
processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance
with health and safety regulations; provision of temporary use of non-downloadable software for searching, collection, capture, storage, processing, analysis, indexing,
organisation, compilation, sharing and management of health and safety data, information and records; provision of temporary use of non-downloadable software for use in
checking and ensuring compliance with health and safety laws and regulations; provision of temporary use of non-downloadable software for capture, exchange, recording,
collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health
and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger technology; data security
services; data security services, namely, design and development of electronic data security systems; digital asset
management; digital asset management, namely, capturing, sharing, collection, storing, processing, searching, detection reporting, analysis, visualization, and
management of health and safety records; provision of data security services for computer and communication networks; provision of data security services for computer and communication networks, namely, computer security threat analysis for protecting data; electronic data storage
and back up services; design and development of data models and of data entry, testing, measuring, monitoring and analysis systems and methods;
design and development of computer data models and of systems and methods for data entry, testing, measuring, monitoring and analysis; computer software services, namely, providing temporary use of a web-based software platform that allows for virtual and remote health and safety-related services provided via the
cloud; software as a service (SAAS) services featuring software for remote services in the field of health and safety; software as a service (SAAS) services featuring non-downloadable software for remote services in the field of health and safety; testing, design and development of
software and hardware used to analyse, collect, define, display, manage, measure, monitor, share, track, and communicate health and safety data; environmental monitoring,
planning, testing, inspection and assessment services; compilation of environmental data and information; advisory, information and consultancy
services relating to all the aforesaid services; product safety testing; food safety testing and consultation related
thereto; conducting worksite surveys to determine if worksites meet employee health condition requirements and standards |
FINAL DESCRIPTION |
IT services and technical support, assistance and consultancy, namely, monitoring technological functions, trouble shooting, updating,
optimizing, project managing, implementing, implementing additional technological functions, and training relating to computer software and application software for project and data management in the
field of health and safety; IT services and technical support, assistance and consultancy, namely, monitoring technological functions, trouble shooting, updating, optimizing, project managing,
implementing, implementing additional technological functions, and training relating to computer software and application software for project and data management in the field of compliance with
health and safety regulations; design, development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing,
analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; installation, maintenance,
repair, integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting,
indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; design, development
and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation,
amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; installation, maintenance, repair, integration, configuration,
updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration,
organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; provision of temporary use of
non-downloadable software for searching, collection, capture, storage, processing, analysis, indexing, organisation, compilation, sharing and management of health and safety data, information and
records; provision of temporary use of non-downloadable software for use in checking and ensuring compliance with health and safety laws and regulations; provision of temporary use of
non-downloadable software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation,
evaluation, detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger technology;
data security services, namely, design and development of electronic data security systems; digital asset management, namely, capturing, sharing, collection, storing, processing, searching, detection
reporting, analysis, visualization, and management of health and safety records; provision of data security services for computer and communication networks, namely, computer security threat analysis
for protecting data; electronic data storage and back up services; design and development of computer data models and of systems and methods for data entry, testing, measuring, monitoring and
analysis; computer software services, namely, providing temporary use of a web-based software platform that allows for virtual and remote health and safety-related services provided via the cloud;
software as a service (SAAS) services featuring non-downloadable software for remote services in the field of health and safety; testing, design and development of software and hardware used to
analyse, collect, define, display, manage, measure, monitor, share, track, and communicate health and safety data; environmental monitoring, planning, testing, inspection and assessment services;
compilation of environmental data and information; advisory, information and consultancy services relating to all the aforesaid services; product safety testing; food safety testing and consultation
related thereto; conducting worksite surveys to determine if worksites meet employee health condition requirements and standards |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3384216 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/18/2019 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
GOODS AND/OR SERVICES SECTION (045)(current) |
INTERNATIONAL CLASS |
045 |
DESCRIPTION |
Safety evaluation services; health and safety risk management; advisory, information and consultancy services relating to safety
evaluation; advisory, information and consultancy services relating to health and safety; advisory, information and consultancy services in the field of workplace health and safety; advisory,
information and consultancy services in the field of workplace health and safety management relating to employees and contractors; advisory, information and consultancy services on regulations on
safety at work; compilation of legal data and information relating to health and safety; legal research services relating to health and safety; legal services relating to health and safety, including
legal services being provided on-line from a computer database, computer network, global computer network, the Internet or other electronic means; legal services relating to health and safety checks,
processes and compliance; legal services relating to compliance with health and safety laws and regulations; reviewing and auditing standards and practices to assure compliance with health and safety
laws and regulations; information, advisory and consultancy services relating to all the aforesaid services |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3384216 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/18/2019 |
GOODS AND/OR SERVICES SECTION (045)(proposed) |
INTERNATIONAL CLASS |
045 |
TRACKED TEXT DESCRIPTION |
Safety evaluation services; Safety evaluation services, namely,
workplace safety consulting; health and safety risk management; health and safety risk management, namely, security threat
analysis for protecting personal safety at work; advisory, information and consultancy services relating to safety evaluation; advisory, information and consultancy services relating to safety evaluation namely, electronic monitoring services for security purposes in the field of workplace safety; advisory, information and consultancy services relating to health and safety; advisory, information and consultancy services relating to
health and safety, namely, security threat analysis for protecting personal safety at work; advisory, information and consultancy services in the field of
workplace health and safety; advisory, information and consultancy services in the field of workplace safety; advisory,
information and consultancy services in the field of workplace health and safety management relating to employees and contractors; advisory, information and
consultancy services in the field of workplace safety management relating to employees and contractors; advisory, information and consultancy services on
regulations on safety at work; advisory, information and consultancy services on legal regulations related to safety at work; compilation of legal data and information relating to health and safety; compilation of legal data and information relating to health and safety in the
nature of legal services; legal research services relating to health and safety; legal services relating to health and safety, including legal
services being provided on-line from a computer database, computer network, global computer network, the Internet or other electronic means; legal services relating to
health and safety checks, processes and compliance; legal services relating to compliance with health and safety laws and regulations; reviewing and auditing standards and practices to assure compliance with health and safety laws and regulations; information, advisory and consultancy services
relating to all the aforesaid services |
FINAL DESCRIPTION |
Safety evaluation services, namely, workplace safety consulting; health and safety risk management, namely, security threat analysis
for protecting personal safety at work; advisory, information and consultancy services relating to safety evaluation namely, electronic monitoring services for security purposes in the field of
workplace safety; advisory, information and consultancy services relating to health and safety, namely, security threat analysis for protecting personal safety at work; advisory, information and
consultancy services in the field of workplace safety; advisory, information and consultancy services in the field of workplace safety management relating to employees and contractors; advisory,
information and consultancy services on legal regulations related to safety at work; compilation of legal data and information relating to health and safety in the nature of legal services; legal
research services relating to health and safety; legal services relating to health and safety, including legal services being provided on-line from a computer database, computer network, global
computer network, the Internet or other electronic means; legal services relating to health and safety checks, processes and compliance; legal services relating to compliance with health and safety
laws and regulations; reviewing and auditing standards and practices to assure compliance with health and safety laws and regulations; information, advisory and consultancy services relating to all
the aforesaid services |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
3384216 |
FOREIGN APPLICATION COUNTRY |
United Kingdom |
FOREIGN FILING DATE |
03/18/2019 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await
the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained. |
ATTORNEY SECTION (current) |
NAME |
M. Scott Alprin |
ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
YEAR OF ADMISSION |
NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
FIRM NAME |
ALPRIN LAW OFFICES, P.C. |
STREET |
5 PINEHURST CIRCLE, N.W. |
CITY |
WASHINGTON |
STATE |
District of Columbia |
POSTAL CODE |
20015 |
COUNTRY |
US |
PHONE |
202-659-8225 |
FAX |
202-659-0441 |
EMAIL |
trademarks@alprinlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
0265005 |
ATTORNEY SECTION (proposed) |
NAME |
M. Scott Alprin |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Alprin Law Offices, P.C. |
STREET |
5 Pinehurst Circle, N.W. |
CITY |
Washington |
STATE |
District of Columbia |
POSTAL CODE |
20015 |
COUNTRY |
United States |
PHONE |
202-659-8225 |
FAX |
202-659-0441 |
EMAIL |
trademarks@alprinlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
0265005 |
OTHER APPOINTED ATTORNEY |
Asha E. Velay and Yuka Kobayashi |
CORRESPONDENCE SECTION (current) |
NAME |
M. SCOTT ALPRIN |
FIRM NAME |
ALPRIN LAW OFFICES, P.C. |
STREET |
5 PINEHURST CIRCLE, N.W. |
CITY |
WASHINGTON |
STATE |
District of Columbia |
POSTAL CODE |
20015 |
COUNTRY |
US |
PHONE |
202-659-8225 |
FAX |
202-659-0441 |
EMAIL |
trademarks@alprinlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
0265005 |
CORRESPONDENCE SECTION (proposed) |
NAME |
M. Scott Alprin |
FIRM NAME |
Alprin Law Offices, P.C. |
STREET |
5 Pinehurst Circle, N.W. |
CITY |
Washington |
STATE |
District of Columbia |
POSTAL CODE |
20015 |
COUNTRY |
United States |
PHONE |
202-659-8225 |
FAX |
202-659-0441 |
EMAIL |
trademarks@alprinlaw.com |
AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
DOCKET/REFERENCE NUMBER |
0265005 |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/Asha E. Velay/ |
SIGNATORY'S NAME |
Asha E. Velay |
SIGNATORY'S POSITION |
Attorney for Applicant |
SIGNATORY'S PHONE NUMBER |
202-659-8225 |
DATE SIGNED |
01/30/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Jan 30 19:26:35 EST 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XX.XXX.XX-2
0200130192635208593-88422
991-700d928baaebe527e821a
7b5826ea905638cddb1be08d2
6c668bc96be88d237ba92-N/A
-N/A-20200130191746890322 |
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.
88422991 ASSURE (Stylized and/or with Design, see http://uspto.report/TM/88422991/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
This submission is a timely response to the office action in this matter issued on August 01, 2019. In the office action, the Examining Attorney took the following actions: (1) cited a pending
application as a potential basis for a likelihood of confusion refusal; and (2) required amendment to Applicant?s goods/services. With regard to (1) regarding likelihood of confusion, Applicant
respectfully contends that the narrowing of the scope of its goods/services will allow the Examining Attorney to withdraw the potential refusal of Applicant?s mark based on potential likelihood of
confusion with the mark in U.S. Application Serial No. 87421089. With regard to (2) regarding its goods/services, Applicant intends to satisfy the requirement by virtue of the amendment herein.
Applicant would like to express thanks to the Examining Attorney for her efforts in this case thus far.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis,
integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; computer software and application
software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation,
detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger technology; computer
software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation,
amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; computer software and application software for the validation,
verification, authentication and checking of data relating to compliance with health and safety regulations; computer software and application software for surveillance, monitoring, event and
incident management in the field of health and safety; computer software and application software for tracking data, documents, workflows and systems relating to health and safety; computer databases
and database systems for management of health and safety data, information and records; computer software and application software relating to compliance with health and safety laws and
regulations
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number 3384216 filed 03/18/2019]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing,
reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records;
downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing,
analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records;
computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation,
compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via distributed or
shared ledger technology;
downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching,
sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by
means of databases, decentralised databases or via distributed or shared ledger technology;
computer software and application software for capture, exchange,
recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and
management of data relating to compliance with health and safety regulations;
downloadable computer software and application software for capture, exchange,
recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and
management of data relating to compliance with health and safety regulations;
computer software and application software for the validation, verification,
authentication and checking of data relating to compliance with health and safety regulations;
downloadable computer software and application software for the
validation, verification, authentication and checking of data relating to compliance with health and safety regulations;
computer software and application
software for surveillance, monitoring, event and incident management in the field of health and safety;
downloadable computer software and application software
for surveillance, monitoring, event and incident management in the field of health and safety;
computer software and application software for tracking data,
documents, workflows and systems relating to health and safety;
downloadable computer software and application software for tracking data, documents, workflows
and systems relating to health and safety;
computer databases and database systems for management of health and safety data, information and records;
downloadable computer databases and database systems for management of health and safety data, information and records;
computer software and application software relating to compliance with health and safety laws and regulations;
downloadable computer software and
application software for capturing, sharing, collection, storing, processing, searching, detection reporting, analysis, visualization, and management of health and safety records relating to
compliance with health and safety laws and regulationsClass 009 for downloadable computer software and application software for capture, exchange, recording, collection, storing, processing,
searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and
records; downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration,
organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via
distributed or shared ledger technology; downloadable computer software and application software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting,
indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations;
downloadable computer software and application software for the validation, verification, authentication and checking of data relating to compliance with health and safety regulations; downloadable
computer software and application software for surveillance, monitoring, event and incident management in the field of health and safety; downloadable computer software and application software for
tracking data, documents, workflows and systems relating to health and safety; downloadable computer databases and database systems for management of health and safety data, information and records;
downloadable computer software and application software for capturing, sharing, collection, storing, processing, searching, detection reporting, analysis, visualization, and management of health and
safety records relating to compliance with health and safety laws and regulations
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number 3384216 filed 03/18/2019]. 15
U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for IT services and technical support, assistance and consultancy relating to computer software and application software for project and data management in the field of
health and safety; IT services and technical support, assistance and consultancy relating to computer software and application software for project and data management in the field of compliance with
health and safety regulations; design, development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing,
analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; installation, maintenance,
repair, integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting,
indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; design, development
and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation,
amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; installation, maintenance, repair, integration, configuration,
updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration,
organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations; provision of temporary use of
non-downloadable software for searching, collection, capture, storage, processing, analysis, indexing, organisation, compilation, sharing and management of health and safety data, information and
records; provision of temporary use of non-downloadable software for use in checking and ensuring compliance with health and safety laws and regulations; provision of temporary use of
non-downloadable software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation,
evaluation, detection, visualisation and management of health and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger technology;
data security services; digital asset management; provision of data security services for computer and communication networks; electronic data storage and back up services; design and development of
data models and of data entry, testing, measuring, monitoring and analysis systems and methods; computer software services, namely, providing temporary use of a web-based software platform that
allows for virtual and remote health and safety-related services provided via the cloud; software as a service (SAAS) services featuring software for remote services in the field of health and
safety; testing, design and development of software and hardware used to analyse, collect, define, display, manage, measure, monitor, share, track, and communicate health and safety data;
environmental monitoring, planning, testing, inspection and assessment services; compilation of environmental data and information; advisory, information and consultancy services relating to all the
aforesaid services
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number 3384216 filed 03/18/2019]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: IT services and technical support, assistance and consultancy relating to computer software and application software for project and
data management in the field of health and safety;
IT services and technical support, assistance and consultancy, namely, monitoring technological functions,
trouble shooting, updating, optimizing, project managing, implementing, implementing additional technological functions, and training relating to computer software and application software for
project and data management in the field of health and safety;
IT services and technical support, assistance and consultancy relating to computer software and
application software for project and data management in the field of compliance with health and safety regulations;
IT services and technical support,
assistance and consultancy, namely, monitoring technological functions, trouble shooting, updating, optimizing, project managing, implementing, implementing additional technological functions, and
training relating to computer software and application software for project and data management in the field of compliance with health and safety regulations;
design,
development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation,
compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records;
installation, maintenance, repair,
integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing,
analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records;
design, development and programming of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration,
organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance with health and safety regulations;
installation, maintenance, repair, integration, configuration, updating, programming and implementation of computer software for capture, exchange, recording, collection, storing,
processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of data relating to compliance
with health and safety regulations;
provision of temporary use of non-downloadable software for searching, collection, capture, storage, processing, analysis, indexing,
organisation, compilation, sharing and management of health and safety data, information and records;
provision of temporary use of non-downloadable software for use in
checking and ensuring compliance with health and safety laws and regulations;
provision of temporary use of non-downloadable software for capture, exchange, recording,
collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health
and safety data, information and records by means of databases, decentralised databases or via distributed or shared ledger technology;
data security
services;
data security services, namely, design and development of electronic data security systems;
digital asset
management;
digital asset management, namely, capturing, sharing, collection, storing, processing, searching, detection reporting, analysis, visualization, and
management of health and safety records;
provision of data security services for computer and communication networks;
provision of data security services for computer and communication networks, namely, computer security threat analysis for protecting data;
electronic data storage
and back up services;
design and development of data models and of data entry, testing, measuring, monitoring and analysis systems and methods;
design and development of computer data models and of systems and methods for data entry, testing, measuring, monitoring and analysis;
computer software services, namely, providing temporary use of a web-based software platform that allows for virtual and remote health and safety-related services provided via the
cloud;
software as a service (SAAS) services featuring software for remote services in the field of health and safety;
software as a service (SAAS) services featuring non-downloadable software for remote services in the field of health and safety;
testing, design and development of
software and hardware used to analyse, collect, define, display, manage, measure, monitor, share, track, and communicate health and safety data;
environmental monitoring,
planning, testing, inspection and assessment services;
compilation of environmental data and information;
advisory, information and consultancy
services relating to all the aforesaid services;
product safety testing;
food safety testing and consultation related
thereto;
conducting worksite surveys to determine if worksites meet employee health condition requirements and standardsClass 042 for IT services and
technical support, assistance and consultancy, namely, monitoring technological functions, trouble shooting, updating, optimizing, project managing, implementing, implementing additional
technological functions, and training relating to computer software and application software for project and data management in the field of health and safety; IT services and technical support,
assistance and consultancy, namely, monitoring technological functions, trouble shooting, updating, optimizing, project managing, implementing, implementing additional technological functions, and
training relating to computer software and application software for project and data management in the field of compliance with health and safety regulations; design, development and programming of
computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation,
evaluation, detection, visualisation and management of health and safety data, information and records; installation, maintenance, repair, integration, configuration, updating, programming and
implementation of computer software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation,
amalgamation, evaluation, detection, visualisation and management of health and safety data, information and records; design, development and programming of computer software for capture, exchange,
recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and
management of data relating to compliance with health and safety regulations; installation, maintenance, repair, integration, configuration, updating, programming and implementation of computer
software for capture, exchange, recording, collection, storing, processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation,
detection, visualisation and management of data relating to compliance with health and safety regulations; provision of temporary use of non-downloadable software for searching, collection, capture,
storage, processing, analysis, indexing, organisation, compilation, sharing and management of health and safety data, information and records; provision of temporary use of non-downloadable software
for use in checking and ensuring compliance with health and safety laws and regulations; provision of temporary use of non-downloadable software for capture, exchange, recording, collection, storing,
processing, searching, sharing, reporting, indexing, analysis, integration, organisation, compilation, amalgamation, evaluation, detection, visualisation and management of health and safety data,
information and records by means of databases, decentralised databases or via distributed or shared ledger technology; data security services, namely, design and development of electronic data
security systems; digital asset management, namely, capturing, sharing, collection, storing, processing, searching, detection reporting, analysis, visualization, and management of health and safety
records; provision of data security services for computer and communication networks, namely, computer security threat analysis for protecting data; electronic data storage and back up services;
design and development of computer data models and of systems and methods for data entry, testing, measuring, monitoring and analysis; computer software services, namely, providing temporary use of a
web-based software platform that allows for virtual and remote health and safety-related services provided via the cloud; software as a service (SAAS) services featuring non-downloadable software for
remote services in the field of health and safety; testing, design and development of software and hardware used to analyse, collect, define, display, manage, measure, monitor, share, track, and
communicate health and safety data; environmental monitoring, planning, testing, inspection and assessment services; compilation of environmental data and information; advisory, information and
consultancy services relating to all the aforesaid services; product safety testing; food safety testing and consultation related thereto; conducting worksite surveys to determine if worksites meet
employee health condition requirements and standards
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number 3384216 filed 03/18/2019]. 15
U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Safety evaluation services; health and safety risk management; advisory, information and consultancy services relating to safety evaluation; advisory, information and
consultancy services relating to health and safety; advisory, information and consultancy services in the field of workplace health and safety; advisory, information and consultancy services in the
field of workplace health and safety management relating to employees and contractors; advisory, information and consultancy services on regulations on safety at work; compilation of legal data and
information relating to health and safety; legal research services relating to health and safety; legal services relating to health and safety, including legal services being provided on-line from a
computer database, computer network, global computer network, the Internet or other electronic means; legal services relating to health and safety checks, processes and compliance; legal services
relating to compliance with health and safety laws and regulations; reviewing and auditing standards and practices to assure compliance with health and safety laws and regulations; information,
advisory and consultancy services relating to all the aforesaid services
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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 or services that meet the certification standards of the applicant, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number 3384216 filed 03/18/2019]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Safety evaluation services;
Safety evaluation services, namely, workplace safety consulting;
health and safety risk management;
health and safety risk management, namely, security threat analysis for protecting personal
safety at work;
advisory, information and consultancy services relating to safety evaluation;
advisory, information and
consultancy services relating to safety evaluation namely, electronic monitoring services for security purposes in the field of workplace safety;
advisory,
information and consultancy services relating to health and safety;
advisory, information and consultancy services relating to health and safety, namely,
security threat analysis for protecting personal safety at work;
advisory, information and consultancy services in the field of workplace health and
safety;
advisory, information and consultancy services in the field of workplace safety;
advisory, information and
consultancy services in the field of workplace health and safety management relating to employees and contractors;
advisory, information and consultancy
services in the field of workplace safety management relating to employees and contractors;
advisory, information and consultancy services on regulations on
safety at work;
advisory, information and consultancy services on legal regulations related to safety at work;
compilation of legal data and information relating to health and safety;
compilation of legal data and information relating to health and safety in the
nature of legal services;
legal research services relating to health and safety;
legal services relating to health and safety, including legal
services being provided on-line from a computer database, computer network, global computer network, the Internet or other electronic means;
legal services relating to
health and safety checks, processes and compliance;
legal services relating to compliance with health and safety laws and regulations;
reviewing and auditing standards and practices to assure compliance with health and safety laws and regulations;
information, advisory and consultancy services
relating to all the aforesaid servicesClass 045 for Safety evaluation services, namely, workplace safety consulting; health and safety risk management, namely, security threat analysis for
protecting personal safety at work; advisory, information and consultancy services relating to safety evaluation namely, electronic monitoring services for security purposes in the field of workplace
safety; advisory, information and consultancy services relating to health and safety, namely, security threat analysis for protecting personal safety at work; advisory, information and consultancy
services in the field of workplace safety; advisory, information and consultancy services in the field of workplace safety management relating to employees and contractors; advisory, information and
consultancy services on legal regulations related to safety at work; compilation of legal data and information relating to health and safety in the nature of legal services; legal research services
relating to health and safety; legal services relating to health and safety, including legal services being provided on-line from a computer database, computer network, global computer network, the
Internet or other electronic means; legal services relating to health and safety checks, processes and compliance; legal services relating to compliance with health and safety laws and regulations;
reviewing and auditing standards and practices to assure compliance with health and safety laws and regulations; information, advisory and consultancy services relating to all the aforesaid
services
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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 or services that meet the certification standards of the
applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number 3384216 filed 03/18/2019]. 15
U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the
foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.
The applicant's current attorney information: M. Scott Alprin. M. Scott Alprin of ALPRIN LAW OFFICES, P.C., is located at
5 PINEHURST CIRCLE, N.W.
WASHINGTON, District of Columbia 20015
US
The docket/reference number is 0265005.
The phone number is 202-659-8225.
The fax number is 202-659-0441.
The email address is trademarks@alprinlaw.com
The applicants proposed attorney information: M. Scott Alprin. Other appointed attorneys are Asha E. Velay and Yuka Kobayashi. M. Scott Alprin of Alprin Law Offices, P.C., is a member of the XX
bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
5 Pinehurst Circle, N.W.
Washington, District of Columbia 20015
United States
The docket/reference number is 0265005.
The phone number is 202-659-8225.
The fax number is 202-659-0441.
The email address is trademarks@alprinlaw.com
M. Scott Alprin 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: M. SCOTT ALPRIN. M. SCOTT ALPRIN of ALPRIN LAW OFFICES, P.C., is located at
5 PINEHURST CIRCLE, N.W.
WASHINGTON, District of Columbia 20015
US
The docket/reference number is 0265005.
The phone number is 202-659-8225.
The fax number is 202-659-0441.
The email address is trademarks@alprinlaw.com
The applicants proposed correspondence information: M. Scott Alprin. M. Scott Alprin of Alprin Law Offices, P.C., is located at
5 Pinehurst Circle, N.W.
Washington, District of Columbia 20015
United States
The docket/reference number is 0265005.
The phone number is 202-659-8225.
The fax number is 202-659-0441.
The email address is trademarks@alprinlaw.com
SIGNATURE(S)
Response Signature
Signature: /Asha E. Velay/ Date: 01/30/2020
Signatory's Name: Asha E. Velay
Signatory's Position: Attorney for Applicant
Signatory's Phone Number: 202-659-8225
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: M. SCOTT ALPRIN
ALPRIN LAW OFFICES, P.C.
5 PINEHURST CIRCLE, N.W.
WASHINGTON, District of Columbia 20015
Mailing Address: M. Scott Alprin
Alprin Law Offices, P.C.
5 Pinehurst Circle, N.W.
Washington, District of Columbia 20015
Serial Number: 88422991
Internet Transmission Date: Thu Jan 30 19:26:35 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020013019263520
8593-88422991-700d928baaebe527e821a7b582
6ea905638cddb1be08d26c668bc96be88d237ba9
2-N/A-N/A-20200130191746890322