Response to Office Action

INTRADO

West Corporation

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)

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
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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


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