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. 88458180 ZERO VARIANCE(Standard Characters, see http://uspto.report/TM/88458180/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Providing business intelligence services; Business data analysis; Business process outsourcing (BPO) services in the fields of financial services, entertainment, insurance, cable, telecom, and healthcare; Business consulting and information services; Business auditing
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/01/2002 and first used in commerce at least as early as 06/01/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing business intelligence services; Business data analysis; Business process outsourcing (BPO) services in the fields of financial services, entertainment, insurance, cable, telecom, and healthcare; Business consulting and information services; Business auditing; Vendor management services for financial, entertainment, insurance, cable, telecom and healthcare service providers; Staff augmentation services, namely, permanent and temporary placement of employees for others; Management of telephone call centers for othersClass 035 for Providing business intelligence services; Business data analysis; Business process outsourcing (BPO) services in the fields of financial services, entertainment, insurance, cable, telecom, and healthcare; Business consulting and information services; Business auditing; Vendor management services for financial, entertainment, insurance, cable, telecom and healthcare service providers; Staff augmentation services, namely, permanent and temporary placement of employees for others; Management of telephone call centers for others
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/01/2002 and first used in commerce at least as early as 06/01/2002 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Quality assurance services in the fields of financial services, entertainment, insurance, cable, telecom, and healthcare; Development, design and implementation of technology solutions for quality assurance, data management and data analysis purposes; Providing managed information technology (IT) services for others; Computer technology services, namely, vendor management; Software as a service (SaaS) services featuring software for use in data management, data analysis, and quality assurance
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/01/2002 and first used in commerce at least as early as 06/01/2002 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Quality assurance services in the fields of financial services, entertainment, insurance, cable, telecom, and healthcare; Development, design and implementation of technology solutions for quality assurance, data management and data analysis purposes; Providing managed information technology (IT) services for others; Providing managed information technology (IT) services for others, namely, onsite and remote computer network administration and electronic storage services for archiving databases, images and other electronic data; Computer technology services, namely, vendor management; Computer technology support services, namely, help desk services; Software as a service (SaaS) services featuring software for use in data management, data analysis, and quality assurance; Software as a service (SaaS) services featuring software for use in data management, data analysis, and quality assurance in the fields of financial, entertainment, insurance, cable, telecom and healthcareClass 042 for Quality assurance services in the fields of financial services, entertainment, insurance, cable, telecom, and healthcare; Development, design and implementation of technology solutions for quality assurance, data management and data analysis purposes; Providing managed information technology (IT) services for others, namely, onsite and remote computer network administration and electronic storage services for archiving databases, images and other electronic data; Computer technology support services, namely, help desk services; Software as a service (SaaS) services featuring software for use in data management, data analysis, and quality assurance in the fields of financial, entertainment, insurance, cable, telecom and healthcare
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/01/2002 and first used in commerce at least as early as 06/01/2002 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 038 for Dialer and automatic call distribution services
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/01/2002 and first used in commerce at least as early as 06/01/2002 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 038 . The specimen(s) submitted consists of copy of brochure .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-1224710574-20191107140752915782_._ZERO_VARIANCE_Specimen__Class_38_.pdf
Converted PDF file(s) ( 7 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7

The applicant's current attorney information: Thomas F. Bergert. Thomas F. Bergert of WILLIAMS MULLEN, is located at

      321 EAST MAIN STREET, SUITE 400
      CHARLOTTESVILLE, Virginia 22902-3200
      US
The docket/reference number is 034809.0018.

The phone number is 434-951-5700.

The fax number is 434-817-0977.

The email address is tbergert@williamsmullen.com

The applicants proposed attorney information: Thomas F. Bergert. Other appointed attorneys are Craig L. Mytelka, Robert C. Van Arnam, Amy G. Pruett, Richard T. Matthews, F. Michael Sajovec, Andrew R. Shores, Christel E. Harlacher, Alexandra M. Gabriel, Janet M. Smith, Jacquelyn D. Knapp, Clinton H. Brannon, Edward T. White and Janet Cho. Thomas F. Bergert of WILLIAMS MULLEN, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      321 EAST MAIN STREET, SUITE 400
      CHARLOTTESVILLE, Virginia 22902-3200
      United States
The docket/reference number is 034809.0018.

The phone number is 434-951-5700.

The fax number is 434-817-0977.

The email address is tbergert@williamsmullen.com

Thomas F. Bergert 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: THOMAS F. BERGERT. THOMAS F. BERGERT of WILLIAMS MULLEN, is located at

      321 EAST MAIN STREET, SUITE 400
      CHARLOTTESVILLE, Virginia 22902-3200
      US
The docket/reference number is 034809.0018.

The phone number is 434-951-5700.

The fax number is 434-817-0977.

The email address is tbergert@williamsmullen.com; charlacher@williamsmullen.com; ip@williamsmullen.comm

The applicants proposed correspondence information: Thomas F. Bergert. Thomas F. Bergert of WILLIAMS MULLEN, is located at

      321 EAST MAIN STREET, SUITE 400
      CHARLOTTESVILLE, Virginia 22902-3200
      United States
The docket/reference number is 034809.0018.

The phone number is 434-951-5700.

The fax number is 434-817-0977.

The email address is tbergert@williamsmullen.com; charlacher@williamsmullen.com; ip@williamsmullen.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /SarahJohnson/      Date: 11/09/2019
Signatory's Name: Sarah Johnson
Signatory's Position: Chief Quality Officer and Chief of Staff
Signatory's Phone Number: 2182056001


Response Signature
Signature: /Christel E. Harlacher/     Date: 11/11/2019
Signatory's Name: Christel E. Harlacher
Signatory's Position: Associate Attorney, Williams Mullen, Virginia bar member

Signatory's Phone Number: 804-420-6000

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:    THOMAS F. BERGERT
   WILLIAMS MULLEN
   
   321 EAST MAIN STREET, SUITE 400
   CHARLOTTESVILLE, Virginia 22902-3200
Mailing Address:    Thomas F. Bergert
   WILLIAMS MULLEN
   321 EAST MAIN STREET, SUITE 400
   CHARLOTTESVILLE, Virginia 22902-3200
        
RAM Sale Number: 88458180
RAM Accounting Date: 11/12/2019
        
Serial Number: 88458180
Internet Transmission Date: Mon Nov 11 14:20:19 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019111114201952
2069-88458180-7005b372e8c2f17879e9834728
ee19a6dee2b37327a468acaa393746aa96d782c-
CC-20186057-20191107140752915782