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. 88470053 AFFINITY(Standard Characters, see http://uspto.report/TM/88470053/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of Response to Office Action and Exhibits 1 (Third-Party Registrations), 2 (Foreign Registration) and 3 (06/18/2019 Voluntary Amendment) has been attached.
Original PDF file:
evi_6488163230-20200303110223444253_._AFFINITY_Office_Action_Response_and_Exhibits_1_-_3.pdf
Converted PDF file(s) ( 83 pages)
Evidence-1
Evidence-2
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 016 for Printed publications, namely, magazines and newsletters featuring articles and news in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; manuals, catalogues, books, teaching and instructional materials in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; graphic reproductions; stationery, photo albums, scrapbooks, greeting cards, note cards, and calendars
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 018078115 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 016 for Printed publications, namely, magazines and newsletters featuring articles and news in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; manuals, catalogues, books, teaching and instructional materials in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; graphic reproductions; stationery, photo albums, scrapbooks, greeting cards, note cards, and calendars
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 018075280 filed 06/04/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018075280 registered 11/05/2019 with a renewal date of __________ and an expiration date of 11/05/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-6488163230-110223444_._Office_Action_Response_Exhibit_2__Foreign_Registration__2_.pdf
Converted PDF file(s) ( 32 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
Foreign Registration-18
Foreign Registration-19
Foreign Registration-20
Foreign Registration-21
Foreign Registration-22
Foreign Registration-23
Foreign Registration-24
Foreign Registration-25
Foreign Registration-26
Foreign Registration-27
Foreign Registration-28
Foreign Registration-29
Foreign Registration-30
Foreign Registration-31
Foreign Registration-32

Applicant proposes to amend the following:
Current: Class 035 for Providing an on-line directory information service featuring information regarding social networking, classified ads, general interest, scrapbooking, graphic design and multimedia manipulation and sharing; providing an on-line computer database featuring classified advertisements; advertising by transmission of on-line publicity for third parties through electronic communications networks; graphic advertising; promoting the goods and services of others over the Internet; electronic retail store services featuring computer software, images, multimedia files, digital accessories and scrapbooking materials
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 018078115 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 035 for Providing an on-line directory information service featuring information regarding social networking, classified ads, general interest, scrapbooking, graphic design and multimedia manipulation and sharing; providing an on-line computer database featuring classified advertisements; advertising by transmission of on-line publicity for third parties through electronic communications networks; graphic advertising; promoting the goods and services of others over the Internet; electronic retail store services featuring computer software, images, multimedia files, digital accessories and scrapbooking materials
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 018075280 filed 06/04/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018075280 registered 11/05/2019 with a renewal date of __________ and an expiration date of 11/05/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-6488163230-110223444_._Office_Action_Response_Exhibit_2__Foreign_Registration__2_.pdf
Converted PDF file(s) ( 32 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
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Foreign Registration-19
Foreign Registration-20
Foreign Registration-21
Foreign Registration-22
Foreign Registration-23
Foreign Registration-24
Foreign Registration-25
Foreign Registration-26
Foreign Registration-27
Foreign Registration-28
Foreign Registration-29
Foreign Registration-30
Foreign Registration-31
Foreign Registration-32

Applicant proposes to amend the following:
Current: Class 038 for Providing online communications links which transfer the web site user to other local and global web pages; internet access provider services; online and transmission services, namely, providing e-mail services, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks; on-line document delivery via a global computer network; providing access to databases featuring information regarding computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking, magazines, books, manuals and catalogues; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing on-line forums for transmission of messages among computer users in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; electronic transmission of images, photographs, graphic images and illustrations over a global computer network
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 018078115 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 038 for Providing online communications links which transfer the web site user to other local and global web pages; internet access provider services; online and transmission services, namely, providing e-mail services, transmission of voice, audio, visual images and data by telecommunications networks, wireless communications networks, the Internet, information services networks and data networks; on-line document delivery via a global computer network; providing access to databases featuring information regarding computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking, magazines, books, manuals and catalogues; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing on-line forums for transmission of messages among computer users in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; electronic transmission of images, photographs, graphic images and illustrations over a global computer network
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 018075280 filed 06/04/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018075280 registered 11/05/2019 with a renewal date of __________ and an expiration date of 11/05/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-6488163230-110223444_._Office_Action_Response_Exhibit_2__Foreign_Registration__2_.pdf
Converted PDF file(s) ( 32 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
Foreign Registration-18
Foreign Registration-19
Foreign Registration-20
Foreign Registration-21
Foreign Registration-22
Foreign Registration-23
Foreign Registration-24
Foreign Registration-25
Foreign Registration-26
Foreign Registration-27
Foreign Registration-28
Foreign Registration-29
Foreign Registration-30
Foreign Registration-31
Foreign Registration-32

Applicant proposes to amend the following:
Current: Class 041 for Teaching, training, education and instructional services, namely, on-line courses in the fields of computer software and hardware; arranging and conducting courses, conferences, seminars and educational presentations relating to computer software and hardware; electronic publishing of works of others incorporating user-created text, audio or images on-line featuring computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; on-line journals, namely, blogs featuring computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing non-downloadable, on-line newsletters in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing an on-line computer database featuring information regarding how to use computer software, hardware and peripherals; providing an on-line computer database featuring information regarding how to set up and use and online scrapbook; providing an on-line computer database featuring educational information regarding how to scrapbook; providing an on-line computer database featuring educational information regarding graphic design, multimedia manipulation and sharing; providing on-line information in the field of current event news and entertainment via the Internet; providing on-line magazines, books, manuals, scrapbooks and catalogues in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing online scrapbooks featuring user-defined text and images. arranging and conducting online meetings and interactive seminars in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking
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 018078115 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 041 for Teaching, training, education and instructional services, namely, on-line courses in the fields of computer software and hardware; arranging and conducting courses, conferences, seminars and educational presentations relating to computer software and hardware; electronic publishing of works of others incorporating user-created text, audio or images on-line featuring computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; on-line journals, namely, blogs featuring computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing non-downloadable, on-line newsletters in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing an on-line computer database featuring information regarding how to use computer software, hardware and peripherals; providing an on-line computer database featuring information regarding how to set up and use and online scrapbook; providing an on-line computer database featuring educational information regarding how to scrapbook; providing an on-line computer database featuring educational information regarding graphic design, multimedia manipulation and sharing; providing on-line information in the field of current event news and entertainment via the Internet; providing on-line magazines, books, manuals, scrapbooks and catalogues in the fields of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing online scrapbooks featuring user-defined text and images. arranging and conducting online meetings and interactive seminars in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking
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 018075280 filed 06/04/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018075280 registered 11/05/2019 with a renewal date of __________ and an expiration date of 11/05/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU3-6488163230-110223444_._Office_Action_Response_Exhibit_2__Foreign_Registration__2_.pdf
Converted PDF file(s) ( 32 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
Foreign Registration-18
Foreign Registration-19
Foreign Registration-20
Foreign Registration-21
Foreign Registration-22
Foreign Registration-23
Foreign Registration-24
Foreign Registration-25
Foreign Registration-26
Foreign Registration-27
Foreign Registration-28
Foreign Registration-29
Foreign Registration-30
Foreign Registration-31
Foreign Registration-32

Applicant proposes to amend the following:
Current: Class 042 for Advisory services and consultancy relating to computer software; computer software design, development, configuration, maintenance, installation and updating; computer graphics design services; design of graphics software systems; technical support services, namely, troubleshooting of computer software problems; creating web pages for others used in the provision of online services; design and development of websites for others used to conduct on-line forums; providing temporary use of online, non-downloadable software for use for graphic design, image manipulation, desktop publishing and printing; design and development of computer hardware; consulting in the field of website design, development, maintenance, updating, modification, installation and monitoring the performance, availability and errors of the websites of others; consulting in the field of website hosting and support; hosting the websites of others; design, development, maintenance, updating and modification of web sites for others; monitoring the web sites of others to improve scalability and performance of web sites of others; installation of software used to create websites; computer aided graphic design; graphic art design; hosting of digital content, namely, personal profiles and social networking information; providing an interactive website enabling users to create, manipulate and share multimedia scrapbooks, information, comments and user-generated multimedia content; providing temporary use of online, non-downloadable software for use for graphic design, multi-media manipulation, scrapbook applications, social networking, uploading, storing, posting, blogging and sharing of communication or information; providing temporary use of online, non-downloadable software that enables users to share multimedia scrapbooks and other user-generated multimedia content with third parties via a global computer network. providing temporary use of on-line non-downloadable software for desktop publishing, word processing, printing, graphics, images, fonts and font management, typesetting, document management and manipulation, presentation delivery, image editing, media and photo management, drawing, animation, graphics, website design, digital video and audio editing; hosting a website enabling the posting of information by members in online web logs in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing an on-line computer database featuring information regarding the design and development of computer software, hardware and peripherals; design and graphic arts design for the creation of websites and web pages on the Internet; rendering of computer graphics (digital imaging services); software as a service featuring software platforms for graphic design
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 018078115 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 042 for Advisory services and consultancy relating to computer software; computer software design, development, configuration, maintenance, installation and updating; computer graphics design services; design of graphics software systems; technical support services, namely, troubleshooting of computer software problems; creating web pages for others used in the provision of online services; design and development of websites for others used to conduct on-line forums; providing temporary use of online, non-downloadable software for use for graphic design, image manipulation, desktop publishing and printing; design and development of computer hardware; consulting in the field of website design, development, maintenance, updating, modification, installation and monitoring the performance, availability and errors of the websites of others; consulting in the field of website hosting and support; hosting the websites of others; design, development, maintenance, updating and modification of web sites for others; monitoring the web sites of others to improve scalability and performance of web sites of others; installation of software used to create websites; computer aided graphic design; graphic art design; hosting of digital content, namely, personal profiles and social networking information; providing an interactive website enabling users to create, manipulate and share multimedia scrapbooks, information, comments and user-generated multimedia content; providing temporary use of online, non-downloadable software for use for graphic design, multi-media manipulation, scrapbook applications, social networking, uploading, storing, posting, blogging and sharing of communication or information; providing temporary use of online, non-downloadable software that enables users to share multimedia scrapbooks and other user-generated multimedia content with third parties via a global computer network. providing temporary use of on-line non-downloadable software for desktop publishing, word processing, printing, graphics, images, fonts and font management, typesetting, document management and manipulation, presentation delivery, image editing, media and photo management, drawing, animation, graphics, website design, digital video and audio editing; hosting a website enabling the posting of information by members in online web logs in the field of computer software, hardware and peripherals, graphic design, multimedia manipulation and sharing, the Internet, personal computing, social networking, classified ads, general interest and scrapbooking; providing an on-line computer database featuring information regarding the design and development of computer software, hardware and peripherals; design and graphic arts design for the creation of websites and web pages on the Internet; rendering of computer graphics (digital imaging services); software as a service featuring software platforms for graphic design
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 018075280 filed 06/04/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018075280 registered 11/05/2019 with a renewal date of __________ and an expiration date of 11/05/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU4-6488163230-110223444_._Office_Action_Response_Exhibit_2__Foreign_Registration__2_.pdf
Converted PDF file(s) ( 32 pages)
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Applicant proposes to amend the following:
Current: Class 045 for Internet based introduction and social networking services; providing an on-line computer database featuring social networking information; electronic monitoring services for security purposes in the field of on-line chat forums
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 018078115 filed 06/04/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 045 for Internet based introduction and social networking services; providing an on-line computer database featuring social networking information; electronic monitoring services for security purposes in the field of on-line chat forums
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 018075280 filed 06/04/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018075280 registered 11/05/2019 with a renewal date of __________ and an expiration date of 11/05/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU5-6488163230-110223444_._Office_Action_Response_Exhibit_2__Foreign_Registration__2_.pdf
Converted PDF file(s) ( 32 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
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OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Serif (Europe) Limited, a limited liability company legally organized under the laws of United Kingdom, having an address of
      Unit 12 Wilford Industrial Estate
      Nottingham, NG117EP
      United Kingdom

Proposed: Serif (Europe) Limited, a limited liability company legally organized under the laws of United Kingdom, having an address of
      Unit 12 Wilford Industrial Estate
      Nottingham, NG117EP
      United Kingdom
      Email Address: James.Love@wbd-uk.com

The owner's/holder's current attorney information: Bruce A. McDonald. Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, is located at

      1055 THOMAS JEFFERSON ST., N.W. # 400
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034710.
      The phone number is 202-263-4300.
      The email address is bmcdonald@sgrlaw.com

The owner's/holder's proposed attorney information: Bruce A. McDonald. Bruce A. McDonald of SMITH, GAMBRELL & RUSSELL, LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1055 THOMAS JEFFERSON ST., N.W. # 400
      WASHINGTON, District of Columbia 20007
      United States
The docket/reference number is 034710.
      The phone number is 202-263-4300.
      The email address is bmcdonald@sgrlaw.com

Bruce A. McDonald 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.Correspondence Information (current):
      BRUCE A. MCDONALD
      PRIMARY EMAIL FOR CORRESPONDENCE: bmcdonald@sgrlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dcdocketing@sgrlaw.com

The docket/reference number is 034710.
Correspondence Information (proposed):
      Bruce A. McDonald
      PRIMARY EMAIL FOR CORRESPONDENCE: bmcdonald@sgrlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dcdocketing@sgrlaw.com

The docket/reference number is 034710.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Bruce A. McDonald/     Date: 03/03/2020
Signatory's Name: Bruce A. McDonald
Signatory's Position: Attorney of record

Signatory's Phone Number: 202-263-4362

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:    BRUCE A. MCDONALD
   SMITH, GAMBRELL & RUSSELL, LLP
   
   1055 THOMAS JEFFERSON ST., N.W. # 400
   WASHINGTON, District of Columbia 20007
Mailing Address:    Bruce A. McDonald
   SMITH, GAMBRELL & RUSSELL, LLP
   1055 THOMAS JEFFERSON ST., N.W. # 400
   WASHINGTON, District of Columbia 20007
        
Serial Number: 88470053
Internet Transmission Date: Tue Mar 03 11:34:21 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020030311342192
1382-88470053-710e96e1f5d6fbe7cc7e57fae1
d24a998b5f69a657b9dadcdab181ac4fc2edeb-N
/A-N/A-20200303110223444253