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. 88445559 LUMIN(Standard Characters, see http://uspto.report/TM/88445559/mark.png) has been amended as follows:

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

Applicant respectfully requests the likelihood of confusion refusal with Reg. Nos. 3941324 and 3941325 ("Cited Registrations") be withdrawn because Applicant's goods and services, as amended, no longer conflict with the Cited Registrations. Specifically, Applicant narrowly defined and restricted its software to its own industry, type, nature, channel of trade, and class of purchasers so that Applicant's goods and services are clearly distinguished from the Cited Registrations. Therefore, because Applicant's goods and services no longer conflict with the Cited Registrations, there is no likelihood of confusion with the Cited Registrations, and thus Applicant's Application should proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable computer application software for mobile devices and handheld computers, namely, software for contract and document management, and software for contract lifecycle management; Downloadable computer application software for mobile devices and handheld computers, namely, software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts
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: Downloadable computer application software for mobile devices and handheld computers, namely, software for contract and document management, and software for contract lifecycle management; Downloadable computer application software for mobile devices and handheld computers, namely, software for compressing, converting, splitting, drawing, signing, annotating, and otherwise manipulating and editing electronic documents and contracts; Downloadable computer application software for mobile devices and handheld computers, namely, software for contract lifecycle management; Downloadable computer application software for mobile devices and handheld computers, namely, software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contractsClass 009 for Downloadable computer application software for mobile devices and handheld computers, namely, software for compressing, converting, splitting, drawing, signing, annotating, and otherwise manipulating and editing electronic documents and contracts; Downloadable computer application software for mobile devices and handheld computers, namely, software for contract lifecycle management; Downloadable computer application software for mobile devices and handheld computers, namely, software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts
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 Non-downloadable software for document management and contract lifecycle management; Non-downloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Providing a website featuring temporary use of non-downloadable software for document management and contract lifecycle management; Providing a website featuring temporary use of non-downloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Software as a service (SAAS) services featuring software for document management and contract lifecycle management; Software as a service (SAAS) services featuring software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts
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: Non-downloadable software for document management and contract lifecycle management; Providing temporary use of on-line non-downloadable software for manipulating and editing electronic documents and contracts, namely, software for compressing, converting, splitting, drawing, signing and annotating electronic documents and contracts; Non-downloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Providing temporary use of on-line non-downloadable software for contract lifecycle management; Providing a website featuring temporary use of non-downloadable software for document management and contract lifecycle management; Providing temporary use of on-line non-downloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Providing a website featuring temporary use of non-downloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Providing a website featuring temporary use of non-downloadable software for manipulating and editing electronic documents and contracts, namely, software for compressing, converting, splitting, drawing, signing, and annotating electronic documents and contracts; Software as a service (SAAS) services featuring software for document management and contract lifecycle management; Providing a website featuring temporary use of non-downloadable software for contract lifecycle management; Providing a website featuring temporary use of nondownloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Software as a service (SAAS) services featuring software for manipulating and editing electronic documents and contracts, namely, software for compressing, converting, splitting, drawing, signing and annotating electronic documents and contracts; Software as a service (SAAS) services featuring software for contract lifecycle management; Software as a service (SAAS) services featuring software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contractsClass 042 for Providing temporary use of on-line non-downloadable software for manipulating and editing electronic documents and contracts, namely, software for compressing, converting, splitting, drawing, signing and annotating electronic documents and contracts; Providing temporary use of on-line non-downloadable software for contract lifecycle management; Providing temporary use of on-line non-downloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Providing a website featuring temporary use of non-downloadable software for manipulating and editing electronic documents and contracts, namely, software for compressing, converting, splitting, drawing, signing, and annotating electronic documents and contracts; Providing a website featuring temporary use of non-downloadable software for contract lifecycle management; Providing a website featuring temporary use of nondownloadable software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts; Software as a service (SAAS) services featuring software for manipulating and editing electronic documents and contracts, namely, software for compressing, converting, splitting, drawing, signing and annotating electronic documents and contracts; Software as a service (SAAS) services featuring software for contract lifecycle management; Software as a service (SAAS) services featuring software for creating, tracking, and managing cost estimates, purchase orders, payment orders, and facilitating signed contracts
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: Joshua J. Richman. Joshua J. Richman of IPLA, LLP, is located at

      SUITE 200
      4445 EASTGATE MALL
      SAN DIEGO, California 92121
      US

The phone number is 858-272-0220.

The fax number is 858-272-0221.

The email address is trademarks@ipla.com

The applicants proposed attorney information: Joshua J. Richman. Joshua J. Richman of IPLA, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      SUITE 200
      4445 EASTGATE MALL
      SAN DIEGO, California 92121
      United States

The phone number is 858-272-0220.

The fax number is 858-272-0221.

The email address is trademarks@ipla.com

Joshua J. Richman 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: JOSHUA J. RICHMAN. JOSHUA J. RICHMAN of IPLA, LLP, is located at

      SUITE 200
      4445 EASTGATE MALL
      SAN DIEGO, California 92121
      US

The phone number is 858-272-0220.

The fax number is 858-272-0221.

The email address is trademarks@ipla.com

The applicants proposed correspondence information: Joshua J. Richman. Joshua J. Richman of IPLA, LLP, is located at

      SUITE 200
      4445 EASTGATE MALL
      SAN DIEGO, California 92121
      United States

The phone number is 858-272-0220.

The fax number is 858-272-0221.

The email address is trademarks@ipla.com

SIGNATURE(S)
Response Signature
Signature: /JJR/     Date: 01/28/2020
Signatory's Name: Joshua J. Richman
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 8582720220

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:    JOSHUA J. RICHMAN
   IPLA, LLP
   SUITE 200
   4445 EASTGATE MALL
   SAN DIEGO, California 92121
Mailing Address:    Joshua J. Richman
   IPLA, LLP
   SUITE 200
   4445 EASTGATE MALL
   SAN DIEGO, California 92121
        
Serial Number: 88445559
Internet Transmission Date: Tue Jan 28 13:50:14 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200128135014886
979-88445559-7002b23fd172c82fb3fcbc0d5c2
7f38fefa11278f11d57b873f8a7ea9ef3b8383a-
N/A-N/A-20200123165314935515