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. 88448831 RESIDENTSCAN(Standard Characters, see http://uspto.report/TM/88448831/mark.png) has been amended as follows:

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

 

REMARKS

 

The recitation of services has been amended in accordance with the Examining Attorney's requirement.  It is respectfully submitted that the recitation of services, as amended, is sufficiently definite for purposes of registration and acceptance is respectfully urged.

 

            Applicant is pleased to note that a search of the Trademark Office records identified no similar registered or pending mark which would bar registration under Trademark Act Section 2(d).  It is therefore respectfully submitted that the application is in condition for publication, and further and favorable action in connection therewith is earnestly solicited.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Electronic data verification services, namely, providing verification services using technology to authenticate the identity of perspective tenants and lease holders; providing temporary use of non-downloadable software for authentication, identity verification, security and fraud protection via an application programming interface (API); Platform as a service (PAAS) featuring computer software platforms for identity and data verification of perspective prospective lessees and lessors; data verification and analysis services, namely, the analysis and verification of personal identity data used for the leasing of real estate and real property
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: Electronic data verification services, namely, providing verification services using technology to authenticate the identity of perspective tenants and lease holders; Electronic data verification services, namely, providing a secure electronic online system featuring technology which allows users to authenticate the identity of perspective tenants and lease holders; providing temporary use of non-downloadable software for authentication, identity verification, security and fraud protection via an application programming interface (API); Providing temporary use of non-downloadable computer software for authentication, identity verification, security and fraud protection via an application programming interface (API); Platform as a service (PAAS) featuring computer software platforms for identity and data verification of perspective prospective lessees and lessors; Platform as a service (PAAS) featuring computer software platforms for use in the identity and data verification processes of prospective lessees and lessors; data verification and analysis services, namely, the analysis and verification of personal identity data used for the leasing of real estate and real property; Data verification and analysis services, namely, providing a secure electronic online system featuring technology which allows users to analyze and verify the personal identity data used for the leasing of real estate and real propertyClass 042 for Electronic data verification services, namely, providing a secure electronic online system featuring technology which allows users to authenticate the identity of perspective tenants and lease holders; Providing temporary use of non-downloadable computer software for authentication, identity verification, security and fraud protection via an application programming interface (API); Platform as a service (PAAS) featuring computer software platforms for use in the identity and data verification processes of prospective lessees and lessors; Data verification and analysis services, namely, providing a secure electronic online system featuring technology which allows users to analyze and verify the personal identity data used for the leasing of real estate and real property
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 045 for Providing authentication of personal identification information; Verifying the identity of prospective lessees and lessors
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: Providing authentication of personal identification information; Identification verification services, namely, providing authentication of personal identification information for use in connection with personal background investigations and screening; Verifying the identity of prospective lessees and lessors; Verifying the identity of prospective lessees and lessors for use in connection with personal background investigations and screeningClass 045 for Identification verification services, namely, providing authentication of personal identification information for use in connection with personal background investigations and screening; Verifying the identity of prospective lessees and lessors for use in connection with personal background investigations and screening
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: Michael J. Leonard. Michael J. Leonard of FOX ROTHSCHILD LLP, is located at

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      US
The docket/reference number is 119210.00088.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com

The applicants proposed attorney information: Michael J. Leonard. Other appointed attorneys are Christopher D. Olszyk, Jr.. Michael J. Leonard of FOX ROTHSCHILD 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

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      United States
The docket/reference number is 119210.00088.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com

Michael J. Leonard 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: MICHAEL J. LEONARD. MICHAEL J. LEONARD of FOX ROTHSCHILD LLP, is located at

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      US
The docket/reference number is 119210.00088.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com; mleonard@foxrothschild.com

The applicants proposed correspondence information: Michael J. Leonard. Michael J. Leonard of FOX ROTHSCHILD LLP, is located at

      997 LENOX DRIVE, BLDG. 3
      LAWRENCEVILLE, New Jersey 08648-2311
      United States
The docket/reference number is 119210.00088.

The phone number is 215-299-2085.

The email address is ipdocket@foxrothschild.com; mleonard@foxrothschild.com

SIGNATURE(S)
Response Signature
Signature: /mjl/     Date: 01/21/2020
Signatory's Name: Michael J. Leonard
Signatory's Position: Attorney of Record, PA Bar Member

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:    MICHAEL J. LEONARD
   FOX ROTHSCHILD LLP
   
   997 LENOX DRIVE, BLDG. 3
   LAWRENCEVILLE, New Jersey 08648-2311
Mailing Address:    Michael J. Leonard
   FOX ROTHSCHILD LLP
   997 LENOX DRIVE, BLDG. 3
   LAWRENCEVILLE, New Jersey 08648-2311
        
Serial Number: 88448831
Internet Transmission Date: Tue Jan 21 09:06:35 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202001210906354
68526-88448831-7005334bea756ad9fb6e45375
adca96891e168b2553f31e3aadae8e9ac054837-
N/A-N/A-20200121085859628984