Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88481861 SAMSUNG ASCEND(Standard Characters, see http://uspto.report/TM/88481861/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of an argument against likelihood of refusal with supporting evidence has been attached.
Original PDF file:
evi_3832442-20200206195652205058_._argument_88481861.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_3832442-20200206195652205058_._Exh._1_Samsung_Ascend_to_submit.pdf
Converted PDF file(s) ( 18 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable software and mobile application for accessing on-line training materials in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; downloadable software and mobile application for participating in business partner loyalty and incentive program; electronic publications, namely, user and service manuals for of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; electronic publications, namely, marketing materials and case studies for the sale of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; downloadable software and mobile applications for tracking potential customer leads for business partners, resellers, distributors
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Downloadable software and mobile application for accessing on-line training materials in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; downloadable software and mobile application for participating in business partner loyalty and incentive program; electronic publications, namely, user and service manuals for of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Downloadable electronic publications, namely, user and service manuals for of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; electronic publications, namely, marketing materials and case studies for the sale of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Downloadable electronic publications, namely, marketing materials and case studies for the sale of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; downloadable software and mobile applications for tracking potential customer leads for business partners, resellers, distributorsClass 009 for Downloadable software and mobile application for accessing on-line training materials in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; downloadable software and mobile application for participating in business partner loyalty and incentive program; Downloadable electronic publications, namely, user and service manuals for of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Downloadable electronic publications, namely, marketing materials and case studies for the sale of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; downloadable software and mobile applications for tracking potential customer leads for business partners, resellers, distributors
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business administration of loyalty program for business partners, resellers, distributors and enterprise customers; Customer loyalty services for commercial, promotional and/or advertising purposes; Marketing services provided by means of a business partner loyalty and incentive program for value added resellers, resellers, sales forces and distributors of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Sales promotion provided by means of a business partner loyalty and incentive program for value added resellers, resellers, sales forces and distributors of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Administration of a business partner loyalty program which provides reward points, rebates, and incentives, namely, special pricing, sales and marketing support and other benefits; Marketing services; Sales promotion for others; Providing a web site featuring on-line registration services for project management; supply chain management services; inventory management services; Providing an Internet website portal for business partners, resellers, distributors and enterprise customers featuring spiff reports and information, and real-time activation reporting and information; administration of a volume pricing discount program for business partners, resellers, distributors and enterprise customers
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Business administration of loyalty program for business partners, resellers, distributors and enterprise customers; Customer loyalty services for commercial, promotional and/or advertising purposes; Marketing services provided by means of a business partner loyalty and incentive program for value added resellers, resellers, sales forces and distributors of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Sales promotion provided by means of a business partner loyalty and incentive program for value added resellers, resellers, sales forces and distributors of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Administration of a business partner loyalty program which provides reward points, rebates, and incentives, namely, special pricing, sales and marketing support and other benefits; Marketing services; Sales promotion for others; Providing a web site featuring on-line registration services for project management; supply chain management services; inventory management services; Providing an Internet website portal for business partners, resellers, distributors and enterprise customers featuring spiff reports and information, and real-time activation reporting and information; Providing an Internet website portal for business partners, resellers, distributors and enterprise customers featuring business information in the nature of spiff reports and information, and real-time activation reporting and information; administration of a volume pricing discount program for business partners, resellers, distributors and enterprise customersClass 035 for Business administration of loyalty program for business partners, resellers, distributors and enterprise customers; Customer loyalty services for commercial, promotional and/or advertising purposes; Marketing services provided by means of a business partner loyalty and incentive program for value added resellers, resellers, sales forces and distributors of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Sales promotion provided by means of a business partner loyalty and incentive program for value added resellers, resellers, sales forces and distributors of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; Administration of a business partner loyalty program which provides reward points, rebates, and incentives, namely, special pricing, sales and marketing support and other benefits; Marketing services; Sales promotion for others; Providing a web site featuring on-line registration services for project management; supply chain management services; inventory management services; Providing an Internet website portal for business partners, resellers, distributors and enterprise customers featuring business information in the nature of spiff reports and information, and real-time activation reporting and information ; administration of a volume pricing discount program for business partners, resellers, distributors and enterprise customers
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Providing on-line training materials in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; education and training in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; providing a web site with non-downloadable publications in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Providing on-line training materials in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; education and training in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; providing a web site with non-downloadable publications in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; providing a web site with non-downloadable publications in the nature of data sheets, periodicals, brochures, articles, study and teaching guides, electronic reference books, newsletters, manuals, reviews, and booklets in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devicesClass 041 for Providing on-line training materials in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; education and training in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices; providing a web site with non-downloadable publications in the nature of data sheets, periodicals, brochures, articles, study and teaching guides, electronic reference books, newsletters, manuals, reviews, and booklets in the field of sales, installation, use and maintenance of mobile devices, computers, computer peripherals, monitors, signage, displays and memory devices
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.

The applicant's current attorney information: Diane J. Mason. Diane J. Mason of DRINKER BIDDLE & REATH LLP, is located at

      FOUR EMBARCADERO CENTER, 27TH FLOOR
      SAN FRANCISCO, California 94111
      US

The phone number is 415-591-7506.

The fax number is 415-591-7510.

The email address is sftrademarks@dbr.com

The applicants proposed attorney information: Diane J. Mason. Diane J. Mason of Faegre Drinker Biddle & Reath LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Four Embarcadero Center, 27th Floor
      San Francisco, California 94111
      United States

The phone number is 4155917506.

The email address is sftrademarks@faegredrinker.com

Diane J. Mason 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.
The applicant's current correspondence information: DIANE J. MASON. DIANE J. MASON of DRINKER BIDDLE & REATH LLP, is located at

      FOUR EMBARCADERO CENTER, 27TH FLOOR
      SAN FRANCISCO, California 94111
      US

The phone number is 415-591-7506.

The fax number is 415-591-7510.

The email address is sftrademarks@dbr.com; sftrademarks@dbr.com

The applicants proposed correspondence information: Diane J. Mason. Diane J. Mason of Faegre Drinker Biddle & Reath LLP, is located at

      Four Embarcadero Center, 27th Floor
      San Francisco, California 94111
      United States

The phone number is 4155917506.

The email address is sftrademarks@faegredrinker.com; sftrademarks@faegredrinker.com

SIGNATURE(S)
Response Signature
Signature: /djm/     Date: 02/06/2020
Signatory's Name: Diane J. Mason
Signatory's Position: Attorney of Record, California Bar

Signatory's Phone Number: 4155917506

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:    DIANE J. MASON
   DRINKER BIDDLE & REATH LLP
   
   FOUR EMBARCADERO CENTER, 27TH FLOOR
   SAN FRANCISCO, California 94111
Mailing Address:    Diane J. Mason
   Faegre Drinker Biddle & Reath LLP
   Four Embarcadero Center, 27th Floor
   San Francisco, California 94111
        
Serial Number: 88481861
Internet Transmission Date: Thu Feb 06 20:07:10 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2020020620071061755
1-88481861-70048b1b8e47f38a92c31e5b47f5b
7f4be6b71e9d239aec9bb9948211f34422d-N/A-
N/A-20200206195652205058