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. 88481145 INTRADO(Standard Characters, see http://uspto.report/TM/88481145/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 009 for Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; computers and computer peripheral devices; computer software; telecommunication devices and equipment; computer software for use to take and dispatch calls and determine call-taker and dispatcher availability in the field of telecommunications; contact center software and equipment; software and computerized encoded electronic chip card containing programming, including instructional manuals for use as integrated computer application to facilitate call-taker and dispatcher ability to process telephone calls through increased access and networking to and from call taker and third-party databases; computer networking products, namely, downloadable software application and operating software and hardware in the nature of computer network hubs, switches, routers and computer networking access points all for connecting network switches to other network switches via IP-based and ISDN-based and TDM-based (time division multiplexing-based) network transport; downloadable middleware for middleware software solution for cloud computing that facilitates the distribution of notification messages to individuals or groups through communication devices; apparatus and instruments for recording, transmission, reproduction and processing of sound, images and data; telecommunication devices, namely, wireless and wire-line telecommunication telephone terminals in the nature of public and private emergency phone call apparatus; telecommunication devices and computer devices, software and databases, namely, portable telecommunication instant messaging devices, computer hardware and peripheral devices, downloadable databases in the field of telecommunications, and computer software, all for use in operating, managing, manipulating and analyzing electronic emergency networks and security networks, emergency information systems and person location systems; computer software for use in generating, updating, maintaining, and mapping wireless tower information and sector mapping data; software for enabling intelligent routing of digital files over various network protocols such as TCP/IP and ISDN; computer software and computer software platforms for performing workforce management, namely, for facilitating and monitoring scheduling; computer software for use in providing communications between businesses and their clients, between medical laboratories and medical offices and their patients and between schools and students or their parents, via traditional voice and fax communication lines, via wireless communications systems and via communication lines on global computer networks; computer hardware and software for speech synthesis, speech recognition, interactive speech and voice recognition, hosting services, managing infrastructure for speech applications and speech systems; computer software to facilitate integration and delivery of services for audio, video and data web casting, audio, video and data streaming over a global computer network, and conference calling; electronic voice and data controller for emergency response telephony systems intended for use by public safety professionals; downloadable electronic newsletters in the field of business, business topics, personal interests and professional interests; customer response software for searching, retrieving and delivering information; computer software for analyzing interaction between a business and those communicating with the business, including analyzing interactive voice response systems and activities as well as other automated interactive response systems; computer software for facilitating and reporting upon referral-based marketing; computer software for mass communications in response to a crisis or emergency
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.

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 18082244 filed 06/14/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Recorded and downloadable media, computer software, blank digital or analogue recording and storage media; Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring information related to custom marketing materials, news, social media information, corporate investment, and public relations; Downloadable computer software for encryption; computer software; blank digital or analogue recording and storage media; telecommunication devices and equipment; computers and computer peripheral devices; computer software for use to take and dispatch calls and determine call-taker and dispatcher availability in the field of telecommunications; Downloadable computer operating system software; contact center software and equipment; Telecommunications equipment, namely, fiber-optic transceivers, fiber optic repeaters, converters and optimizers, wave division multiplexers, free-space optics transmission systems, switches including Ethernet switches and routers, fiber-to-the-home and ethernet-over-VDSL access aggregators, terminators and repeaters, and remote presence management products, namely, switches, and console, alarm, sensor and power management devices; software and computerized encoded electronic chip card containing programming, including instructional manuals for use as integrated computer application to facilitate call-taker and dispatcher ability to process telephone calls through increased access and networking to and from call taker and third-party databases; Downloadable computer software for use to take and dispatch calls and determine call-taker and dispatcher availability in the field of telecommunications; Computer hardware equipment and recorded software sold as a unit for use in a contact center for receiving and processing phone calls; Recorded software and computerized encoded electronic chip card containing programming, including instructional manuals for use as integrated computer application, used to facilitate call-taker and dispatcher ability to process telephone calls through increased access and networking to and from call taker and third-party databases; computer networking products, namely, downloadable software application and operating software and hardware in the nature of computer network hubs, switches, routers and computer networking access points all for connecting network switches to other network switches via IP-based and ISDN-based and TDM-based (time division multiplexing-based) network transport; downloadable middleware for middleware software solution for cloud computing that facilitates the distribution of notification messages to individuals or groups through communication devices; telecommunication devices and computer devices, software and databases, namely, portable telecommunication instant messaging devices, computer hardware and peripheral devices, downloadable databases in the field of telecommunications, and computer software, all for use in operating, managing, manipulating and analyzing electronic emergency networks and security networks, emergency information systems and person location systems; apparatus and instruments for recording, transmission, reproduction and processing of sound, images and data; computer software for use in generating, updating, maintaining, and mapping wireless tower information and sector mapping data; telecommunication devices, namely, wireless and wire-line telecommunication telephone terminals in the nature of public and private emergency phone call apparatus; software for enabling intelligent routing of digital files over various network protocols such as TCP/IP and ISDN; telecommunication devices and computer devices, software and databases, namely, portable telecommunication instant messaging devices, computer hardware and peripheral devices, downloadable databases in the field of telecommunications, and downloadable computer software, all for use in operating, managing, manipulating and analyzing electronic emergency networks and security networks, emergency information systems and person location systems; computer software and computer software platforms for performing workforce management, namely, for facilitating and monitoring scheduling; downloadable computer software for use in generating, updating, maintaining, and mapping wireless tower information and sector mapping data; computer software for use in providing communications between businesses and their clients, between medical laboratories and medical offices and their patients and between schools and students or their parents, via traditional voice and fax communication lines, via wireless communications systems and via communication lines on global computer networks; downloadable software for enabling intelligent routing of digital files over various network protocols such as TCP/IP and ISDN; computer hardware and software for speech synthesis, speech recognition, interactive speech and voice recognition, hosting services, managing infrastructure for speech applications and speech systems; downloadable computer software and downloadable computer software platforms for performing workforce management, namely, for facilitating and monitoring scheduling; computer software to facilitate integration and delivery of services for audio, video and data web casting, audio, video and data streaming over a global computer network, and conference calling; downloadable computer software for use in providing communications between businesses and their clients, between medical laboratories and medical offices and their patients and between schools and students or their parents, via traditional voice and fax communication lines, via wireless communications systems and via communication lines on global computer networks; computer hardware and downloadable software for speech synthesis, speech recognition, interactive speech and voice recognition, hosting services, managing infrastructure for speech applications and speech systems; downloadable computer software to facilitate integration and delivery of services for audio, video and data web casting, audio, video and data streaming over a global computer network, and conference calling; customer response software for searching, retrieving and delivering information; electronic voice and data controller for emergency response telephony systems intended for use by public safety professionals; computer software for analyzing interaction between a business and those communicating with the business, including analyzing interactive voice response systems and activities as well as other automated interactive response systems; downloadable electronic newsletters in the field of business, business topics, personal interests and professional interests; computer software for facilitating and reporting upon referral-based marketing; Recorded software in the nature of customer response software for searching, retrieving and delivering information; computer software for mass communications in response to a crisis or emergency; Downloadable computer software for analyzing interaction between a business and those communicating with the business, including analyzing interactive voice response systems and activities as well as other automated interactive response systems; Downloadable computer software for facilitating and reporting upon referral-based marketing; Downloadable computer software for mass communications in response to a crisis or emergencyClass 009 for Digital media, namely, pre-recorded DVDs, downloadable audio and video recordings, and CDs featuring information related to custom marketing materials, news, social media information, corporate investment, and public relations; Downloadable computer software for encryption; blank digital or analogue recording and storage media; computers and computer peripheral devices; Downloadable computer operating system software; Telecommunications equipment, namely, fiber-optic transceivers, fiber optic repeaters, converters and optimizers, wave division multiplexers, free-space optics transmission systems, switches including Ethernet switches and routers, fiber-to-the-home and ethernet-over-VDSL access aggregators, terminators and repeaters, and remote presence management products, namely, switches, and console, alarm, sensor and power management devices; Downloadable computer software for use to take and dispatch calls and determine call-taker and dispatcher availability in the field of telecommunications; Computer hardware equipment and recorded software sold as a unit for use in a contact center for receiving and processing phone calls; Recorded software and computerized encoded electronic chip card containing programming, including instructional manuals for use as integrated computer application, used to facilitate call-taker and dispatcher ability to process telephone calls through increased access and networking to and from call taker and third-party databases; computer networking products, namely, downloadable software application and operating software and hardware in the nature of computer network hubs, switches, routers and computer networking access points all for connecting network switches to other network switches via IP-based and ISDN-based and TDM-based (time division multiplexing-based) network transport; downloadable middleware for middleware software solution for cloud computing that facilitates the distribution of notification messages to individuals or groups through communication devices; apparatus and instruments for recording, transmission, reproduction and processing of sound, images and data; telecommunication devices, namely, wireless and wire-line telecommunication telephone terminals in the nature of public and private emergency phone call apparatus; telecommunication devices and computer devices, software and databases, namely, portable telecommunication instant messaging devices, computer hardware and peripheral devices, downloadable databases in the field of telecommunications, and downloadable computer software, all for use in operating, managing, manipulating and analyzing electronic emergency networks and security networks, emergency information systems and person location systems; downloadable computer software for use in generating, updating, maintaining, and mapping wireless tower information and sector mapping data; downloadable software for enabling intelligent routing of digital files over various network protocols such as TCP/IP and ISDN; downloadable computer software and downloadable computer software platforms for performing workforce management, namely, for facilitating and monitoring scheduling; downloadable computer software for use in providing communications between businesses and their clients, between medical laboratories and medical offices and their patients and between schools and students or their parents, via traditional voice and fax communication lines, via wireless communications systems and via communication lines on global computer networks; computer hardware and downloadable software for speech synthesis, speech recognition, interactive speech and voice recognition, hosting services, managing infrastructure for speech applications and speech systems; downloadable computer software to facilitate integration and delivery of services for audio, video and data web casting, audio, video and data streaming over a global computer network, and conference calling; electronic voice and data controller for emergency response telephony systems intended for use by public safety professionals; downloadable electronic newsletters in the field of business, business topics, personal interests and professional interests; Recorded software in the nature of customer response software for searching, retrieving and delivering information; Downloadable computer software for analyzing interaction between a business and those communicating with the business, including analyzing interactive voice response systems and activities as well as other automated interactive response systems; Downloadable computer software for facilitating and reporting upon referral-based marketing; Downloadable computer software for mass communications in response to a crisis or emergency
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.

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 18082244 filed 06/14/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 18082244 registered 11/02/2019 with a renewal date of __________ and an expiration date of 06/14/2029 ], 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:
FRU0-1-7218011252-152551304_._INTRADO_EU_Reg_No._18082244.pdf
Converted PDF file(s) ( 73 pages)
Foreign Registration-1
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Foreign Registration-73

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: West Corporation, a corporation of Delaware, having an address of
      11808 Miracle Hills Drive
      Omaha, Nebraska 68154
      United States

Proposed: West Corporation, a corporation of Delaware, having an address of
      11808 Miracle Hills Drive
      Omaha, Nebraska 68154
      United States
      Email Address: client@pirkeybarber.com

The owner's/holder's current attorney information: Shannon Vale and Clay LaPoint. Shannon Vale and Clay LaPoint of Pirkey Barber PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1801 East 6th Street, Suite 300
      Austin, Texas 78702
      United States
The docket/reference number is WSTC016US1.
      The phone number is 512-322-5200.
      The fax number is 512-322-5201.
      The email address is tmcentral@pirkeybarber.com

The owner's/holder's proposed attorney information: Shannon Vale and Clay LaPoint. Other appointed attorneys are all other attorneys with the firm. Shannon Vale and Clay LaPoint of Pirkey Barber PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1801 East 6th Street, Suite 300
      Austin, Texas 78702
      United States
The docket/reference number is WSTC016US1.
      The phone number is 512-322-5200.
      The fax number is 512-322-5201.
      The email address is tmcentral@pirkeybarber.com

Shannon Vale and Clay LaPoint 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):
      Shannon Vale and Clay LaPoint
      PRIMARY EMAIL FOR CORRESPONDENCE: tmcentral@pirkeybarber.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): svale@pirkeybarber.com; clapoint@pirkeybarber.com

The docket/reference number is WSTC016US1.
Correspondence Information (proposed):
      Shannon Vale and Clay LaPoint
      PRIMARY EMAIL FOR CORRESPONDENCE: tmcentral@pirkeybarber.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): svale@pirkeybarber.com; clapoint@pirkeybarber.com

The docket/reference number is WSTC016US1.

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

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

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

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Clay LaPoint/      Date: 03/26/2020
Signatory's Name: Clay LaPoint
Signatory's Position: Attorney of Record
Signatory's Phone Number: 5123225200


Response Signature
Signature: /Clay LaPoint/     Date: 03/26/2020
Signatory's Name: Clay LaPoint
Signatory's Position: Attorney of Record

Signatory's Phone Number: 5123225200

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:    Shannon Vale and Clay LaPoint
   Pirkey Barber PLLC
   
   1801 East 6th Street, Suite 300
   Austin, Texas 78702
Mailing Address:    Shannon Vale and Clay LaPoint
   Pirkey Barber PLLC
   1801 East 6th Street, Suite 300
   Austin, Texas 78702
        
Serial Number: 88481145
Internet Transmission Date: Thu Mar 26 16:49:42 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020032616494253
3546-88481145-710e1b5ca89d49dc7aeb8eec68
a5d31bdde52c8fb1c34cc1cc3ed9b93b51fa7-N/
A-N/A-20200326141827037233