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. 88436475 CHART(Standard Characters, see http://uspto.report/TM/88436475/mark.png) has been amended as follows:

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

Identification of Goods

 

In response to the Examining Attorney’s request, Applicant has amended the application to describe the services with more particularity and to reclassify the software from Class 9 to Class 42 to reflect that it is non-downloadable. Applicant submits that the amended description of services is now sufficiently definite for purposes of registration.

 

Information Request

 

In response to the Examining Attorney’s request for additional information about the services, Applicant attaches printouts from its website at www.chart.numo.com discussing its CHART software and services. Additionally, Applicant’s responses to the Examining Attorney’s specific questions are set forth below:

 

1.  Will the applicant’s software be used in producing charts or provide the user with charts?

 

Applicant’s software platform assists users in navigating and making decisions on commercial real estate and commercial real estate financing. The software can provide users with data displayed in maps, graphs, charts, and other visual means.

 

2.  Will the applicant’s software provide consumers with charts or utilize charts?

 

See response to No. 1 above.

 

Conclusion

 

Having complied with all the requirements set forth in the Office Action, Applicant respectfully submits that the application is in condition for approval for publication of the mark.

EVIDENCE
Evidence in the nature of Website printouts has been attached.
Original PDF file:
evi_6520724-20200116170832858999_._CHART_Website_Printouts.pdf
Converted PDF file(s) ( 1 page)
Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Commercial real estate application software

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Commercial real estate information, analysis and finance
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: Commercial real estate information, analysis and finance; Providing information and financial analysis in the field of commercial real estate; commercial real estate financing servicesClass 036 for Providing information and financial analysis in the field of commercial real estate; commercial real estate financing 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 hereby adds the following class of goods/services to the application:
New: Class 042 (Original Class: 009 ) for Providing temporary use of non-downloadable software for financial analysis in the field of commercial real estate and for commercial real estate financing
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: Mark Sommers. Mark Sommers of FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP, is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      US

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

The applicants proposed attorney information: Mark Sommers. Other appointed attorneys are all the attorneys of Finnegan Henderson Farabow Garrett & Dunner LLP. Mark Sommers of FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 06373.0347.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

Mark Sommers 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: MARK SOMMERS. MARK SOMMERS of FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP, is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      US

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

The applicants proposed correspondence information: Mark Sommers. Mark Sommers of FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP, is located at

      901 NEW YORK AVENUE, NW
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 06373.0722.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

SIGNATURE(S)
Response Signature
Signature: /Mark Sommers/     Date: 01/16/2020
Signatory's Name: Mark Sommers
Signatory's Position: Attorney of Record, DC Bar Member

Signatory's Phone Number: 202.408.4000

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:    MARK SOMMERS
   FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP
   
   901 NEW YORK AVENUE, NW
   WASHINGTON, District of Columbia 20001
Mailing Address:    Mark Sommers
   FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP
   901 NEW YORK AVENUE, NW
   WASHINGTON, District of Columbia 20001
        
Serial Number: 88436475
Internet Transmission Date: Thu Jan 16 17:12:57 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2020011617125705263
4-88436475-70071fb78e7920661ff3bc39102e2
3fcbc5af7cbafa53d8da472446585c08c3f3b-N/
A-N/A-20200116170832858999