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. 88466145 BANZAI (Stylized and/or with Design, see http://uspto.report/TM/88466145/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: BANZAI (Stylized and/or with Design, see http://uspto.report/TM/88466145/mark.png)
Proposed: BANZAI (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of the stylized wording "banzai" to the right of a stylized triangular design incorporating a rightward swirl.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for business to business direct marketing services; providing advertising, online advertising, business management, and business development services; marketing services; marketing automation services; marketing consulting and advisory services for marketing and sales metrics; marketing consulting and advisory services for marketing automation technology configuration; special event planning for commercial, promotional, or advertising purposes; management of event ticketing for others
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: business to business direct marketing services; providing advertising, online advertising, business management, and business development services; marketing services; marketing automation services; marketing consulting and advisory services for marketing and sales metrics; marketing consulting and advisory services for marketing automation technology configuration; special event planning for commercial, promotional, or advertising purposes; management of event ticketing for others; marketing campaign creation and management; email marketingClass 035 for business to business direct marketing services; providing advertising, online advertising, business management, and business development services; marketing services; marketing automation services; marketing consulting and advisory services for marketing and sales metrics; marketing consulting and advisory services for marketing automation technology configuration; special event planning for commercial, promotional, or advertising purposes; management of event ticketing for others; marketing campaign creation and management; email marketing
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 041 for arranging and conducting educational conferences in the fields of marketing, marketing automation, business development, email marketing, and search engine optimization; providing educational services, namely, online non-downloadable webinars and presentations; providing a website featuring blogs and podcasts of non-downloadable publications in the nature of articles and videos in the field of business and marketing; ticket reservation and booking services for entertainment, educational, and cultural events
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: arranging and conducting educational conferences in the fields of marketing, marketing automation, business development, email marketing, and search engine optimization; providing educational services, namely, online non-downloadable webinars and presentations; providing educational services, namely, online non-downloadable webinars and presentations in the field of event marketing; providing a website featuring blogs and podcasts of non-downloadable publications in the nature of articles and videos in the field of business and marketing; ticket reservation and booking services for entertainment, educational, and cultural eventsClass 041 for arranging and conducting educational conferences in the fields of marketing, marketing automation, business development, email marketing, and search engine optimization; providing educational services, namely, online non-downloadable webinars and presentations in the field of event marketing; providing a website featuring blogs and podcasts of non-downloadable publications in the nature of articles and videos in the field of business and marketing; ticket reservation and booking services for entertainment, educational, and cultural events
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 platform-as-a-service (PaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales; software-as-a-service (SaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales; marketing campaign creation and management; email marketing; software-as-a-service (SaaS) services featuring software for email marketing; providing technical integration services, namely, integrating marketing automation software platforms with webinar presentation management systems and sales force automation (SFA); providing temporary use of non-downloadable web-based software application to create, access, and manage custom digital content about conferences
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: platform-as-a-service (PaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales; software-as-a-service (SaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales; marketing campaign creation and management; software-as-a-service (SaaS) services featuring software for email marketing; email marketing; providing technical integration services, namely, integrating marketing automation software platforms with webinar presentation management systems and sales force automation (SFA); providing temporary use of non-downloadable web-based software application to create, access, and manage custom digital content about conferencesClass 042 for platform-as-a-service (PaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales; software-as-a-service (SaaS) services featuring software for storing, managing, tracking, analyzing, and reporting data in the fields of advertising, marketing, promotion, and sales; software-as-a-service (SaaS) services featuring software for email marketing; providing technical integration services, namely, integrating marketing automation software platforms with webinar presentation management systems and sales force automation (SFA); providing temporary use of non-downloadable web-based software application to create, access, and manage custom digital content about conferences
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.

SIGNATURE(S)
Response Signature
Signature: /Daniel Glenn/     Date: 02/03/2020
Signatory's Name: Daniel J. Glenn
Signatory's Position: Attorney of Record, Washington State Bar member

Signatory's Phone Number: 206-359-8000

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.

        
Serial Number: 88466145
Internet Transmission Date: Tue Feb 04 11:58:09 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202002041158096
68921-88466145-700ac84a3c98330f49113166b
39818472203eb9ff4319dd965a4f6a2378d553af
-N/A-N/A-20200203191058059589