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)

---

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. 88463077 OMETRIA(Standard Characters, see ) 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 009 for Computer software, namely, downloadable software and software for providing retailers with the ability to view transactional, behavioral and profile data about their customers, to send personalized digital marketing messages, and to report on the results of those messages, all in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data
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[ European Union Trademark - EUTM application number 018073498 filed 05/28/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software, namely, downloadable software and software for providing retailers with the ability to view transactional, behavioral and profile data about their customers, to send personalized digital marketing messages, and to report on the results of those messages, all in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software for providing retailers with the ability to view transactional, behavioral and profile data about their customers, to send personalized digital marketing messages, and to report on the results of those messages, all in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software and software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data; Computer software, namely, downloadable software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral dataClass 009 for Computer software, namely, downloadable software for providing retailers with the ability to view transactional, behavioral and profile data about their customers, to send personalized digital marketing messages, and to report on the results of those messages, all in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software for creating, using, organizing, editing, storing, sharing, accessing, uploading, downloading, tagging, transmitting, sharing and analyzing images, photos, data, audio, video and multimedia files in the fields of market and behavioral research and market and business intelligence; Computer software, namely, downloadable software for capturing, measuring, monitoring, analyzing and sharing demographic, lifestyle, consumer purchasing decision, and online behavioral data
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 [ European Union Trademark - EUTM application number 018073498 filed 05/28/2019]. 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 035 for Market research; Advertising services; Marketing services; Business consultancy services; Providing business marketing information; Business advice and commercial information; Business research; Marketing and advertising services, namely, creating digital marketing experiences based on individual customer behavior, buying habits, tastes and profiles and other qualitative and quantitative data for the promotion of retail goods through personalized digital marketing messages and the personalization of websites; Brand concept and brand development services for corporate and individual clients; On-line customer-based social media brand marketing services; Providing marketing consulting in the field of social media; Business data analysis services in the fields of market and behavioral research and market and business intelligence; Providing information, news and commentary in the fields of business and marketing; Provision of marketing reports and social media campaign reports
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[ European Union Trademark - EUTM application number 018073498 filed 05/28/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Market research; Advertising services; Marketing services; Business consultancy services; Providing business marketing information; Business advice and commercial information; Business research; Marketing and advertising services, namely, creating digital marketing experiences based on individual customer behavior, buying habits, tastes and profiles and other qualitative and quantitative data for the promotion of retail goods through personalized digital marketing messages and the personalization of websites; Brand concept and brand development services for corporate and individual clients; On-line customer-based social media brand marketing services; Providing marketing consulting in the field of social media; Business data analysis services in the fields of market and behavioral research and market and business intelligence; Providing information, news and commentary in the fields of business and marketing; Provision of marketing reports and social media campaign reports; Provision of marketing reports and social media campaign marketing reportsClass 035 for Market research; Advertising services; Marketing services; Business consultancy services; Providing business marketing information; Business advice and commercial information; Business research; Marketing and advertising services, namely, creating digital marketing experiences based on individual customer behavior, buying habits, tastes and profiles and other qualitative and quantitative data for the promotion of retail goods through personalized digital marketing messages and the personalization of websites; Brand concept and brand development services for corporate and individual clients; On-line customer-based social media brand marketing services; Providing marketing consulting in the field of social media; Business data analysis services in the fields of market and behavioral research and market and business intelligence; Providing information, news and commentary in the fields of business and marketing; Provision of marketing reports and social media campaign marketing reports
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 [ European Union Trademark - EUTM application number 018073498 filed 05/28/2019]. 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 Software as a Service (SaaS) featuring software for sending personalized digital marketing messages, namely, emails, push notifications, mobile app notifications and SMS text messages, on demand or through triggered automation; Providing on-line non-downloadable computer software that integrates with retailers' e-commerce platforms to provide the retailer a single view of its customers from digital marketing events, website interaction events, retailer data, AI trained models and dynamic segment systems; Providing on-line non-downloadable computer software that integrates with retailers' e-commerce platforms to facilitate the marketing of retail goods through personalized digital marketing messages and the personalization of websites; designing, maintaining and updating computer software; designing, maintaining and updating application integration software; website design consultancy
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[ European Union Trademark - EUTM application number 018073498 filed 05/28/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 042 for Software as a Service (SaaS) featuring software for sending personalized digital marketing messages, namely, emails, push notifications, mobile app notifications and SMS text messages, on demand or through triggered automation; Providing on-line non-downloadable computer software that integrates with retailers' e-commerce platforms to provide the retailer a single view of its customers from digital marketing events, website interaction events, retailer data, AI trained models and dynamic segment systems; Providing on-line non-downloadable computer software that integrates with retailers' e-commerce platforms to facilitate the marketing of retail goods through personalized digital marketing messages and the personalization of websites; designing, maintaining and updating computer software; designing, maintaining and updating application integration software; website design consultancy
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 [ European Union Trademark - EUTM application number 018073498 filed 05/28/2019]. 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: Ryan S. Hilbert. Ryan S. Hilbert of HOLLEY & MENKER, P.A., is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      US
The docket/reference number is 3964.0001.

The email address is rhilbert@holleymenker.com

The applicants proposed attorney information: Ryan S. Hilbert. Ryan S. Hilbert of HOLLEY & MENKER, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      United States
The docket/reference number is 3964.0001.

The email address is rhilbert@holleymenker.com

Ryan S. Hilbert 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: RYAN S. HILBERT. RYAN S. HILBERT of HOLLEY & MENKER, P.A., is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      US
The docket/reference number is 3964.0001.

The email address is rhilbert@holleymenker.com; eastdocket@holleymenker.com

The applicants proposed correspondence information: Ryan S. Hilbert. Ryan S. Hilbert of HOLLEY & MENKER, P.A., is located at

      PO BOX 331937
      ATLANTIC BEACH, Florida 32233
      United States
The docket/reference number is 3964.0001.

The email address is rhilbert@holleymenker.com; eastdocket@holleymenker.com

ADDITIONAL STATEMENTS
Translation
The wording OMETRIA has no meaning in a foreign language.


SIGNATURE(S)
Response Signature
Signature: /Ryan S. Hilbert/     Date: 11/20/2019
Signatory's Name: Ryan S. Hilbert
Signatory's Position: Attorney of record, California 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:    RYAN S. HILBERT
   HOLLEY & MENKER, P.A.
   
   PO BOX 331937
   ATLANTIC BEACH, Florida 32233
Mailing Address:    Ryan S. Hilbert
   HOLLEY & MENKER, P.A.
   PO BOX 331937
   ATLANTIC BEACH, Florida 32233
        
Serial Number: 88463077
Internet Transmission Date: Wed Nov 20 06:07:03 EST 2019
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX:XXXX:XXX:XX
XX:XXXX-20191120060703042099-88463077-70
01591438ea172de1a47b68f395dee116135b1dff
49c9212ab28cb1a602b7c-N/A-N/A-2019112005
5917288450