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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88481161 |
LAW OFFICE ASSIGNED |
LAW OFFICE 125 |
MARK SECTION |
MARK |
http://uspto.report/TM/88481161/mark.png |
LITERAL ELEMENT |
INTRADO |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
OWNER SECTION (current) |
NAME |
West Corporation |
STREET |
11808 Miracle Hills Drive |
CITY |
Omaha |
STATE |
Nebraska |
ZIP/POSTAL CODE |
68154 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
OWNER SECTION (proposed) |
NAME |
West Corporation |
STREET |
11808 Miracle Hills Drive |
CITY |
Omaha |
STATE |
Nebraska |
ZIP/POSTAL CODE |
68154 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
EMAIL |
client@pirkeybarber.com |
GOODS AND/OR SERVICES SECTION (current) |
INTERNATIONAL CLASS |
038 |
DESCRIPTION |
Telecommunications services; Unified Communications services that facilitate communications across various networks, media and devices,
namely, communication via computer terminals, by digital transmission, or by satellite; Voice over Internet-Protocol (VoIP) services; web, video, audio and data conferencing services and playback of
taped web, voice, video and data conferences; telecommunications and teleconferencing consulting services; data streaming services; internet telephony services; telecommunication services, namely,
local and long distance transmission of voice, data, graphics, images, messages by means of telephone, telegraphic, cable, Internet, satellite, broadband optical, wireless transmission and global
communications networks; electronic voice messaging, namely, the recording and subsequent transmission of voice messages by telephone and global computer networks; electronic, electric, and digital
transmission of voice, data, images, signals, and messages; communication services, namely, providing access to electronic communication systems in the nature of electronic telecommunication
connections between communication carriers and private networks that facilitate access to and use of emergency information, text, pictures and streaming media by emergency administration personnel,
public safety professions and public service access providers; telecommunications services, namely, providing alerts via phone, email, text or Internet; telecommunications services, namely, providing
access to two-way communications systems in the nature of audio teleconferencing, telephone communications, and voice, data and image messaging in the fields of power and utilities, education,
government, public safety, emergency management, healthcare and pharmaceuticals; telephone communications services, namely, telephone call management services in the nature of bi-directional call
routing and call forwarding services; telecommunications services, namely, using positioning or location technology to determine the geographic location of a mobile telephone handset, whether in
active use or idle, by interfacing with a wireless communications network; communication services, namely, telephone communication services for reporting and updating the status of trouble tickets
and issue reports for utility companies; internet communication services, namely, providing voice communication services via the internet for reporting and updating the status of trouble tickets and
issue reports for utility companies and allowing utility companies to share call center resources; automated telephone voice messaging services and broadcast telephone voice messaging services;
emergency communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to traditional landline
telephone communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted connection;
voice-activated dialing services; transmission, reception and processing of coded and emergency signals; automatic call and email forwarding and distribution, of personal or institutional messages,
containing voice, images or data, particularly short message service (SMS) via a global computer network or the internet; broadcasting emergency situations via telephone, radio, television, cable
television, wireless telecommunications and data communications, satellite and global computer networks; telecommunications gateway services, namely, call generation and voice messaging;
telecommunication services, namely, a nationwide comprehensive service for wireless long distance, local telephone companies, satellite communications, alternative and competitive local exchange
carriers, and other telecommunications providers to interconnect and integrate disparate systems and traditional telecommunication providers to provide automated call routing for access to emergency
support public safety answering points; communication services for public safety emergency communications, namely, consolidation of voice, data management and provisioning, and call routing and
delivery for local and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global communications networks; telecommunications services, namely,
providing an automated telephone screening service which distinguishes an answering machine from a live voice in order to determine the appropriate notification method to be used; telecommunications
gateway services, namely, providing call routing functions and connectivity between a mobile switching center or telecommunications service provider to a public safety answering point (PSAP);
information, consultancy and advisory services relating to all the aforesaid services; Electronic data interchange services in the field of healthcare transactions such as enrollment, customer
service, monitoring, care coordination, claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and payment
communications between healthcare providers and payers |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18082244 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/14/2019 |
GOODS AND/OR SERVICES SECTION (proposed) |
INTERNATIONAL CLASS |
038 |
TRACKED TEXT DESCRIPTION |
Telecommunications services; Telecommunications access
services; Unified Communications services that facilitate communications across various networks, media and devices, namely, communication via computer terminals, by digital
transmission, or by satellite; Voice over Internet-Protocol (VoIP) services; web, video, audio and data conferencing services and
playback of taped web, voice, video and data conferences; web, video, audio and data conferencing services and electronic transmission of taped web, voice,
video and data conference playbacks; telecommunications and teleconferencing consulting services; data streaming services; internet telephony services; telecommunication services, namely, local and long distance transmission of voice, data, graphics, images, messages by means of
telephone, telegraphic, cable, Internet, satellite, broadband optical, wireless transmission and global communications networks; electronic voice messaging, namely, the
recording and subsequent transmission of voice messages by telephone and global computer networks; electronic, electric, and digital transmission of voice, data, images,
signals, and messages; communication services, namely, providing access to electronic communication systems in the nature of electronic telecommunication connections
between communication carriers and private networks that facilitate access to and use of emergency information, text, pictures and streaming media by emergency administration personnel, public safety
professions and public service access providers; telecommunications services, namely, providing alerts via phone, email, text or Internet; telecommunications services, namely, providing electronic message alerts via phone, email, text or Internet; telecommunications
services, namely, providing access to two-way communications systems in the nature of audio teleconferencing, telephone communications, and voice, data and image messaging in the fields of power and
utilities, education, government, public safety, emergency management, healthcare and pharmaceuticals; telecommunications services, namely, providing access to
two-way communications systems in the nature of audio teleconferencing, telephone communications, and electronic messaging of voice, data and images in the fields of power and utilities, education,
government, public safety, emergency management, healthcare and pharmaceuticals; telephone communications services, namely, telephone call management services in the nature
of bi-directional call routing and call forwarding services; telecommunications services, namely, using positioning or location technology to determine the
geographic location of a mobile telephone handset, whether in active use or idle, by interfacing with a wireless communications network; communication services, namely,
telephone communication services for reporting and updating the status of trouble tickets and issue reports for utility companies; internet communication services, namely,
providing voice communication services via the internet for reporting and updating the status of trouble tickets and issue reports for utility companies and allowing utility companies to share call
center resources; automated telephone voice messaging services and broadcast telephone voice messaging services; emergency radio
communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to traditional landline telephone
communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted connection; emergency communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to
traditional landline telephone communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted
connection; voice-activated dialing services; transmission, reception and processing of coded and emergency signals; automatic call and email forwarding and distribution in the nature of wireless transmission of personal or institutional messages, containing voice, images or data, particularly short
message service (SMS) via a global computer network or the internet; automatic call and email forwarding and distribution, of personal or institutional
messages, containing voice, images or data, particularly short message service (SMS) via a global computer network or the internet; telecommunications and data
communications, satellite and global computer networks; broadcasting emergency situations via telephone, radio, television, cable television, wireless
telecommunications and data communications, satellite and global computer networks; telecommunications gateway services, namely, call generation and voice messaging;
telecommunication services, namely, a nationwide comprehensive service for wireless long distance, local telephone companies, satellite communications, alternative and
competitive local exchange carriers, and other telecommunications providers to interconnect and integrate disparate systems and traditional telecommunication providers to provide automated call
routing for access to emergency support public safety answering points; communication services in the nature of electronic transmission for public safety
emergency communications, comprising the consolidation of voice, data provisioning, and call routing and delivery for local and long distance transmission of voice messages by means of telephone,
cable, Internet, satellite and global communications networks; communication services for public safety emergency communications, namely, consolidation of
voice, data management and provisioning, and call routing and delivery for local and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global
communications networks; telecommunications services, namely, providing an automated telephone screening service which distinguishes an answering machine from a live voice
in order to determine the appropriate notification method to be used; telecommunications gateway services, namely, providing call routing functions and connectivity
between a mobile switching center or telecommunications service provider to a public safety answering point (PSAP); information, consultancy and advisory services relating
to all the aforesaid services; Electronic data interchange services in the field of healthcare transactions such as enrollment, customer service, monitoring, care
coordination, claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and payment communications between
healthcare providers and payers |
FINAL DESCRIPTION |
Telecommunications access services; Unified Communications services that facilitate communications across various networks, media and
devices, namely, communication via computer terminals, by digital transmission, or by satellite; Voice over Internet-Protocol (VoIP) services; web, video, audio and data conferencing services and
electronic transmission of taped web, voice, video and data conference playbacks; telecommunications and teleconferencing consulting services; data streaming services; internet telephony services;
telecommunication services, namely, local and long distance transmission of voice, data, graphics, images, messages by means of telephone, telegraphic, cable, Internet, satellite, broadband optical,
wireless transmission and global communications networks; electronic voice messaging, namely, the recording and subsequent transmission of voice messages by telephone and global computer networks;
electronic, electric, and digital transmission of voice, data, images, signals, and messages; communication services, namely, providing access to electronic communication systems in the nature of
electronic telecommunication connections between communication carriers and private networks that facilitate access to and use of emergency information, text, pictures and streaming media by
emergency administration personnel, public safety professions and public service access providers; telecommunications services, namely, providing electronic message alerts via phone, email, text or
Internet; telecommunications services, namely, providing access to two-way communications systems in the nature of audio teleconferencing, telephone communications, and electronic messaging of voice,
data and images in the fields of power and utilities, education, government, public safety, emergency management, healthcare and pharmaceuticals; telephone communications services, namely, telephone
call management services in the nature of bi-directional call routing and call forwarding services; communication services, namely, telephone communication services for reporting and updating the
status of trouble tickets and issue reports for utility companies; internet communication services, namely, providing voice communication services via the internet for reporting and updating the
status of trouble tickets and issue reports for utility companies and allowing utility companies to share call center resources; automated telephone voice messaging services and broadcast telephone
voice messaging services; emergency radio communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio
to traditional landline telephone communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or
operator-assisted connection; voice-activated dialing services; transmission, reception and processing of coded and emergency signals; automatic call and email forwarding and distribution in the
nature of wireless transmission of personal or institutional messages, containing voice, images or data, particularly short message service (SMS) via a global computer network or the internet;
telecommunications and data communications, satellite and global computer networks; telecommunications gateway services, namely, call generation and voice messaging; telecommunication services,
namely, a nationwide comprehensive service for wireless long distance, local telephone companies, satellite communications, alternative and competitive local exchange carriers, and other
telecommunications providers to interconnect and integrate disparate systems and traditional telecommunication providers to provide automated call routing for access to emergency support public
safety answering points; communication services in the nature of electronic transmission for public safety emergency communications, comprising the consolidation of voice, data provisioning, and call
routing and delivery for local and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global communications networks; telecommunications services,
namely, providing an automated telephone screening service which distinguishes an answering machine from a live voice in order to determine the appropriate notification method to be used;
telecommunications gateway services, namely, providing call routing functions and connectivity between a mobile switching center or telecommunications service provider to a public safety answering
point (PSAP); information, consultancy and advisory services relating to all the aforesaid services; Electronic data interchange services in the field of healthcare transactions such as enrollment,
customer service, monitoring, care coordination, claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and
payment communications between healthcare providers and payers |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
18082244 |
FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN FILING DATE |
06/14/2019 |
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) |
FOREIGN REGISTRATION NUMBER |
18082244 |
FOREIGN REGISTRATION
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
FOREIGN REGISTRATION
DATE |
11/02/2019 |
FOREIGN EXPIRATION DATE |
06/14/2029 |
FOREIGN REGISTRATION FILE NAME(S) |
ORIGINAL PDF FILE |
FRU0-7218011252-142741145_._INTRADO_EU_Reg_No._18082244.pdf |
CONVERTED PDF FILE(S)
(73 pages) |
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STANDARD CHARACTERS
OR EQUIVALENT |
YES |
ATTORNEY INFORMATION (current) |
NAME |
Shannon Vale and Clay LaPoint |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Pirkey Barber PLLC |
STREET |
1801 East 6th Street, Suite 300 |
CITY |
Austin |
STATE |
Texas |
POSTAL CODE |
78702 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
512-322-5200 |
FAX |
512-322-5201 |
EMAIL |
tmcentral@pirkeybarber.com |
DOCKET/REFERENCE NUMBER |
WSTC016US5 |
ATTORNEY INFORMATION (proposed) |
NAME |
Shannon Vale and Clay LaPoint |
ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
YEAR OF ADMISSION |
XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
FIRM NAME |
Pirkey Barber PLLC |
STREET |
1801 East 6th Street, Suite 300 |
CITY |
Austin |
STATE |
Texas |
POSTAL CODE |
78702 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
PHONE |
512-322-5200 |
FAX |
512-322-5201 |
EMAIL |
tmcentral@pirkeybarber.com |
DOCKET/REFERENCE NUMBER |
WSTC016US5 |
OTHER APPOINTED ATTORNEY |
all other attorneys with the firm |
CORRESPONDENCE INFORMATION (current) |
NAME |
Shannon Vale and Clay LaPoint |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
tmcentral@pirkeybarber.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
svale@pirkeybarber.com; clapoint@pirkeybarber.com |
DOCKET/REFERENCE NUMBER |
WSTC016US5 |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Shannon Vale and Clay LaPoint |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
tmcentral@pirkeybarber.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
svale@pirkeybarber.com; clapoint@pirkeybarber.com |
DOCKET/REFERENCE NUMBER |
WSTC016US5 |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Clay LaPoint/ |
SIGNATORY'S NAME |
Clay LaPoint |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
512-322-5200 |
DATE SIGNED |
03/26/2020 |
RESPONSE SIGNATURE |
/Clay LaPoint/ |
SIGNATORY'S NAME |
Clay LaPoint |
SIGNATORY'S POSITION |
Attorney of Record |
SIGNATORY'S PHONE NUMBER |
5123225200 |
DATE SIGNED |
03/26/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Thu Mar 26 16:51:11 ET 2020 |
TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XX-2
0200326165111216024-88481
161-7106c5611a189ff19b92b
13e9aa3bd6c4dc96a98d9f954
fd65b6c5774721d0fc39-N/A-
N/A-20200326142741145518 |
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.
88481161 INTRADO(Standard Characters, see http://uspto.report/TM/88481161/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 038 for Telecommunications services; Unified Communications services that facilitate communications across various networks, media and devices, namely, communication via
computer terminals, by digital transmission, or by satellite; Voice over Internet-Protocol (VoIP) services; web, video, audio and data conferencing services and playback of taped web, voice, video
and data conferences; telecommunications and teleconferencing consulting services; data streaming services; internet telephony services; telecommunication services, namely, local and long distance
transmission of voice, data, graphics, images, messages by means of telephone, telegraphic, cable, Internet, satellite, broadband optical, wireless transmission and global communications networks;
electronic voice messaging, namely, the recording and subsequent transmission of voice messages by telephone and global computer networks; electronic, electric, and digital transmission of voice,
data, images, signals, and messages; communication services, namely, providing access to electronic communication systems in the nature of electronic telecommunication connections between
communication carriers and private networks that facilitate access to and use of emergency information, text, pictures and streaming media by emergency administration personnel, public safety
professions and public service access providers; telecommunications services, namely, providing alerts via phone, email, text or Internet; telecommunications services, namely, providing access to
two-way communications systems in the nature of audio teleconferencing, telephone communications, and voice, data and image messaging in the fields of power and utilities, education, government,
public safety, emergency management, healthcare and pharmaceuticals; telephone communications services, namely, telephone call management services in the nature of bi-directional call routing and
call forwarding services; telecommunications services, namely, using positioning or location technology to determine the geographic location of a mobile telephone handset, whether in active use or
idle, by interfacing with a wireless communications network; communication services, namely, telephone communication services for reporting and updating the status of trouble tickets and issue
reports for utility companies; internet communication services, namely, providing voice communication services via the internet for reporting and updating the status of trouble tickets and issue
reports for utility companies and allowing utility companies to share call center resources; automated telephone voice messaging services and broadcast telephone voice messaging services; emergency
communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to traditional landline telephone
communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted connection; voice-activated
dialing services; transmission, reception and processing of coded and emergency signals; automatic call and email forwarding and distribution, of personal or institutional messages, containing voice,
images or data, particularly short message service (SMS) via a global computer network or the internet; broadcasting emergency situations via telephone, radio, television, cable television, wireless
telecommunications and data communications, satellite and global computer networks; telecommunications gateway services, namely, call generation and voice messaging; telecommunication services,
namely, a nationwide comprehensive service for wireless long distance, local telephone companies, satellite communications, alternative and competitive local exchange carriers, and other
telecommunications providers to interconnect and integrate disparate systems and traditional telecommunication providers to provide automated call routing for access to emergency support public
safety answering points; communication services for public safety emergency communications, namely, consolidation of voice, data management and provisioning, and call routing and delivery for local
and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global communications networks; telecommunications services, namely, providing an automated
telephone screening service which distinguishes an answering machine from a live voice in order to determine the appropriate notification method to be used; telecommunications gateway services,
namely, providing call routing functions and connectivity between a mobile switching center or telecommunications service provider to a public safety answering point (PSAP); information, consultancy
and advisory services relating to all the aforesaid services; Electronic data interchange services in the field of healthcare transactions such as enrollment, customer service, monitoring, care
coordination, claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and payment communications between
healthcare providers and payers
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: Telecommunications services;
Telecommunications access services;
Unified
Communications services that facilitate communications across various networks, media and devices, namely, communication via computer terminals, by digital transmission, or by satellite;
Voice over Internet-Protocol (VoIP) services;
web, video, audio and data conferencing services and playback of taped web, voice, video and
data conferences;
web, video, audio and data conferencing services and electronic transmission of taped web, voice, video and data conference playbacks;
telecommunications and teleconferencing consulting services;
data streaming services;
internet telephony services;
telecommunication services, namely, local and long distance transmission of voice, data, graphics, images, messages by means of telephone, telegraphic, cable, Internet, satellite,
broadband optical, wireless transmission and global communications networks;
electronic voice messaging, namely, the recording and subsequent transmission of voice messages
by telephone and global computer networks;
electronic, electric, and digital transmission of voice, data, images, signals, and messages;
communication services, namely, providing access to electronic communication systems in the nature of electronic telecommunication connections between communication carriers and private
networks that facilitate access to and use of emergency information, text, pictures and streaming media by emergency administration personnel, public safety professions and public service access
providers;
telecommunications services, namely, providing alerts via phone, email, text or Internet;
telecommunications services, namely, providing electronic message alerts via phone, email, text or Internet;
telecommunications services, namely,
providing access to two-way communications systems in the nature of audio teleconferencing, telephone communications, and voice, data and image messaging in the fields of power and utilities,
education, government, public safety, emergency management, healthcare and pharmaceuticals;
telecommunications services, namely, providing access to two-way
communications systems in the nature of audio teleconferencing, telephone communications, and electronic messaging of voice, data and images in the fields of power and utilities, education,
government, public safety, emergency management, healthcare and pharmaceuticals;
telephone communications services, namely, telephone call management services in the nature
of bi-directional call routing and call forwarding services;
telecommunications services, namely, using positioning or location technology to determine the
geographic location of a mobile telephone handset, whether in active use or idle, by interfacing with a wireless communications network;
communication services, namely,
telephone communication services for reporting and updating the status of trouble tickets and issue reports for utility companies;
internet communication services, namely,
providing voice communication services via the internet for reporting and updating the status of trouble tickets and issue reports for utility companies and allowing utility companies to share call
center resources;
automated telephone voice messaging services and broadcast telephone voice messaging services;
emergency radio
communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to traditional landline telephone
communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted connection;
emergency communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio to
traditional landline telephone communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or operator-assisted
connection;
voice-activated dialing services;
transmission, reception and processing of coded and emergency signals;
automatic call and email forwarding and distribution in the nature of wireless transmission of personal or institutional messages, containing voice, images or data, particularly short
message service (SMS) via a global computer network or the internet;
automatic call and email forwarding and distribution, of personal or institutional
messages, containing voice, images or data, particularly short message service (SMS) via a global computer network or the internet;
telecommunications and data
communications, satellite and global computer networks;
broadcasting emergency situations via telephone, radio, television, cable television, wireless
telecommunications and data communications, satellite and global computer networks;
telecommunications gateway services, namely, call generation and voice messaging;
telecommunication services, namely, a nationwide comprehensive service for wireless long distance, local telephone companies, satellite communications, alternative and
competitive local exchange carriers, and other telecommunications providers to interconnect and integrate disparate systems and traditional telecommunication providers to provide automated call
routing for access to emergency support public safety answering points;
communication services in the nature of electronic transmission for public safety
emergency communications, comprising the consolidation of voice, data provisioning, and call routing and delivery for local and long distance transmission of voice messages by means of telephone,
cable, Internet, satellite and global communications networks;
communication services for public safety emergency communications, namely, consolidation of
voice, data management and provisioning, and call routing and delivery for local and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global
communications networks;
telecommunications services, namely, providing an automated telephone screening service which distinguishes an answering machine from a live voice
in order to determine the appropriate notification method to be used;
telecommunications gateway services, namely, providing call routing functions and connectivity
between a mobile switching center or telecommunications service provider to a public safety answering point (PSAP);
information, consultancy and advisory services relating
to all the aforesaid services;
Electronic data interchange services in the field of healthcare transactions such as enrollment, customer service, monitoring, care
coordination, claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and payment communications between
healthcare providers and payersClass 038 for Telecommunications access services; Unified Communications services that facilitate communications across various networks, media and devices,
namely, communication via computer terminals, by digital transmission, or by satellite; Voice over Internet-Protocol (VoIP) services; web, video, audio and data conferencing services and electronic
transmission of taped web, voice, video and data conference playbacks; telecommunications and teleconferencing consulting services; data streaming services; internet telephony services;
telecommunication services, namely, local and long distance transmission of voice, data, graphics, images, messages by means of telephone, telegraphic, cable, Internet, satellite, broadband optical,
wireless transmission and global communications networks; electronic voice messaging, namely, the recording and subsequent transmission of voice messages by telephone and global computer networks;
electronic, electric, and digital transmission of voice, data, images, signals, and messages; communication services, namely, providing access to electronic communication systems in the nature of
electronic telecommunication connections between communication carriers and private networks that facilitate access to and use of emergency information, text, pictures and streaming media by
emergency administration personnel, public safety professions and public service access providers; telecommunications services, namely, providing electronic message alerts via phone, email, text or
Internet; telecommunications services, namely, providing access to two-way communications systems in the nature of audio teleconferencing, telephone communications, and electronic messaging of voice,
data and images in the fields of power and utilities, education, government, public safety, emergency management, healthcare and pharmaceuticals; telephone communications services, namely, telephone
call management services in the nature of bi-directional call routing and call forwarding services; communication services, namely, telephone communication services for reporting and updating the
status of trouble tickets and issue reports for utility companies; internet communication services, namely, providing voice communication services via the internet for reporting and updating the
status of trouble tickets and issue reports for utility companies and allowing utility companies to share call center resources; automated telephone voice messaging services and broadcast telephone
voice messaging services; emergency radio communications subscription services, namely, providing back-up high frequency radio connection capability for two-way communication between radios and radio
to traditional landline telephone communications when traditional landline and mobile systems have failed due to natural or man-made disaster, by means of either direct connection or
operator-assisted connection; voice-activated dialing services; transmission, reception and processing of coded and emergency signals; automatic call and email forwarding and distribution in the
nature of wireless transmission of personal or institutional messages, containing voice, images or data, particularly short message service (SMS) via a global computer network or the internet;
telecommunications and data communications, satellite and global computer networks; telecommunications gateway services, namely, call generation and voice messaging; telecommunication services,
namely, a nationwide comprehensive service for wireless long distance, local telephone companies, satellite communications, alternative and competitive local exchange carriers, and other
telecommunications providers to interconnect and integrate disparate systems and traditional telecommunication providers to provide automated call routing for access to emergency support public
safety answering points; communication services in the nature of electronic transmission for public safety emergency communications, comprising the consolidation of voice, data provisioning, and call
routing and delivery for local and long distance transmission of voice messages by means of telephone, cable, Internet, satellite and global communications networks; telecommunications services,
namely, providing an automated telephone screening service which distinguishes an answering machine from a live voice in order to determine the appropriate notification method to be used;
telecommunications gateway services, namely, providing call routing functions and connectivity between a mobile switching center or telecommunications service provider to a public safety answering
point (PSAP); information, consultancy and advisory services relating to all the aforesaid services; Electronic data interchange services in the field of healthcare transactions such as enrollment,
customer service, monitoring, care coordination, claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and
payment communications between healthcare providers and payers
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:
FRU0-7218011252-142741145_._INTRADO_EU_Reg_No._18082244.pdf
Converted PDF file(s) ( 73 pages)
Foreign Registration-1
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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 WSTC016US5.
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 WSTC016US5.
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 WSTC016US5.
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 WSTC016US5.
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: 512-322-5200
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: 88481161
Internet Transmission Date: Thu Mar 26 16:51:11 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020032616511121
6024-88481161-7106c5611a189ff19b92b13e9a
a3bd6c4dc96a98d9f954fd65b6c5774721d0fc39
-N/A-N/A-20200326142741145518