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. 88483905 SOCIABBLE (Stylized and/or with Design, see http://uspto.report/TM/88483905/mark.png) has been amended as follows:

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

IDENTIFICATION The Examining Attorney has refused the proposed identifications of the Applicant?s services for Classes 35 and 42 on the ground that they are indefinite and require clarification because the nature and function of the services is unclear. The Examining Attorney has proposed a redraft of the respective identification, as follows: Class 35: ?Advertising, marketing and promoting the services of others who design computer network communication hubs for use in the workplace for transmission of internal communication, managing employee advocacy, social selling and employee engagement, and facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforce.? Applicant accepts the Examiner?s redraft but would like to propose to replace the word ?design? with the word ?leverage? since the Applicant?s services enable companies to make use of social media and other communication hubs ? which they have not necessarily designed internally - to offer to their employees a number of internal engagement-related services through the Applicant?s tool. The revised description would read as follows: ?Advertising, marketing and promoting the services of others who leverage computer network communication hubs for use in the workplace for transmission of internal communication, managing employee advocacy, social selling and employee engagement, and facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforce.? Class 42: ?Software as a service (SAAS) services featuring software to operate and manage computer network hubs for use by employees to facilitate transmission of internal communication and information about the company and the employee workplace.? Applicant accepts the Examiner?s proposed redraft of the description of Applicant?s services under Class 42.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for Advertising, marketing and promotion services in the field of internal communication, employee advocacy, social selling and employee engagement, facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforce
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Advertising, marketing and promotion services in the field of internal communication, employee advocacy, social selling and employee engagement, facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforce; Advertising, marketing and promoting the services of others who leverage computer network communication hubs for use in the workplace for transmission of internal communication, managing employee advocacy, social selling and employee engagement, and facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforceClass 035 for Advertising, marketing and promoting the services of others who leverage computer network communication hubs for use in the workplace for transmission of internal communication, managing employee advocacy, social selling and employee engagement, and facilitating on-line internal communications and employee engagement through the inflow of company and workplace information, leading to a more engaged and influential workforce
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of The substitute specimens consist of Applicant?s demo webpages from Applicant?s homepage at http://www.sociabble.com that show the Mark as used in commerce in connection with Applicant?s services used by others in driving internal communications with their employees, creating social media campaigns, sharing third parties? corporate and employee-generated user generated content, and increasing sales engagement opportunities for their salesforce..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-5074137230-20200228113336713386_._Screenshot_Siociabble_1.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-5074137230-20200228113336713386_._Screenshot_Sociabble_2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU0-5074137230-20200228113336713386_._Screenshot_Sociabble_3.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant proposes to amend the following:
Current: Class 038 for Digital network telecommunications services; chat room services for social networking
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.

Proposed: Class 038 for Digital network telecommunications services; chat room services for social networking
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 038. The specimen(s) submitted consists of The substitute specimens consist of Applicant?s demo webpages from Applicant?s homepage at http://www.sociabble.com that show the Mark as used in commerce in connection with Applicant?s services used by others in driving internal communications with their employees, creating social media campaigns, sharing third parties? corporate and employee-generated user generated content, and increasing sales engagement opportunities for their salesforce..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-5074137230-20200228113336713386_._Screenshot_Siociabble_1.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU1-5074137230-20200228113336713386_._Screenshot_Sociabble_2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU1-5074137230-20200228113336713386_._Screenshot_Sociabble_3.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant proposes to amend the following:
Current: Class 042 for Software as a service (SAAS) services featuring software for providing an on-line employee engagement hub facilitating internal communication and information about the company and the employee workplace
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Software as a service (SAAS) services featuring software for providing an on-line employee engagement hub facilitating internal communication and information about the company and the employee workplace; Software as a service (SAAS) services featuring software to operate and manage computer network hubs for use by employees to facilitate transmission of internal communication and information about the company and the employee workplaceClass 042 for Software as a service (SAAS) services featuring software to operate and manage computer network hubs for use by employees to facilitate transmission of internal communication and information about the company and the employee workplace
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of The substitute specimens consist of Applicant?s demo webpages from Applicant?s homepage at http://www.sociabble.com that show the Mark as used in commerce in connection with Applicant?s services used by others in driving internal communications with their employees, creating social media campaigns, sharing third parties? corporate and employee-generated user generated content, and increasing sales engagement opportunities for their salesforce..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU2-5074137230-20200228113336713386_._Screenshot_Siociabble_1.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-5074137230-20200228113336713386_._Screenshot_Sociabble_2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU2-5074137230-20200228113336713386_._Screenshot_Sociabble_3.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

Applicant proposes to amend the following:
Current: Class 045 for Online social networking services in the field of employee engagement via an internal website and mobile solution promoting and facilitating internal communication and information sharing within an organization
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.

Proposed: Class 045 for Online social networking services in the field of employee engagement via an internal website and mobile solution promoting and facilitating internal communication and information sharing within an organization
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 06/01/2014 and first used in commerce at least as early as 06/01/2014 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 045. The specimen(s) submitted consists of The substitute specimens consist of Applicant?s demo webpages from Applicant?s homepage at http://www.sociabble.com that show the Mark as used in commerce in connection with Applicant?s services used by others in driving internal communications with their employees, creating social media campaigns, sharing third parties? corporate and employee-generated user generated content, and increasing sales engagement opportunities for their salesforce..
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU3-5074137230-20200228113336713386_._Screenshot_Siociabble_1.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU3-5074137230-20200228113336713386_._Screenshot_Sociabble_2.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
Original PDF file:
SPU3-5074137230-20200228113336713386_._Screenshot_Sociabble_3.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Sociabble société par actions simplifiée (sas), a corporation of France, having an address of
      22 rue Chapon
      Paris, 75003
      France

Proposed: Sociabble société par actions simplifiée (sas), a corporation of France, having an address of
      22 rue Chapon
      Paris, 75003
      France
      Email Address: Estelle.Delorme@sociabble.com

The owner's/holder's current attorney information: Stephan Grynwajc. Stephan Grynwajc of LAW OFFICE OF S. GRYNWAJC, PLLC, is located at

      P.O. BOX 341
      NEW YORK, New York 10159
      United States
      The phone number is 347-543-3035.
      The fax number is 801-655-9332.
      The email address is stephan@transatlantic-lawyer.com

The owner's/holder's proposed attorney information: Stephan Grynwajc. Stephan Grynwajc of LAW OFFICE OF S. GRYNWAJC, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 341
      NEW YORK, New York 10159
      United States
      The phone number is 347-543-3035.
      The fax number is 801-655-9332.
      The email address is stephan@transatlantic-lawyer.com

Stephan Grynwajc 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):
      STEPHAN GRYNWAJC
      PRIMARY EMAIL FOR CORRESPONDENCE: stephan@transatlantic-lawyer.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Stephan Grynwajc
      PRIMARY EMAIL FOR CORRESPONDENCE: stephan@transatlantic-lawyer.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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).

ADDITIONAL STATEMENTS
Color Claim
The color(s) black and white is/are claimed as a feature of the mark.

Description of mark
The mark consists of the term "SOCIABBLE" in black stylized letters adjacent to the design of four thought or speech balloons outlined in black, all on a white background.

Miscellaneous Statement
Substitute Specimens Applicant verifies that the Substitute Specimens were in use in commerce at least as early as the filing date of the application. These services were first provided within the United States as early as June 1st, 2014 amounting sales revenue of $909,639 since 2017 and the incorporation of Applicant's U.S. subsidiary (redacted invoices attached). Mark Description and Color Location Statement The Examiner asks Applicant to submit an amended description of the mark that includes all the colors claimed as features of the mark, including the color white, which was omitted from the description. The Examiner suggests the following amended description: "The mark consists of the term "SOCIABBLE" in black stylized letters adjacent to the design of four thought or speech balloons outlined in black, all on a white background. Applicants accepts the Examiner's proposed redraft of the description.

Original PDF file:
mis-5074137230-20200228113336713386_._Invoices_Sociabble.pdf
Converted PDF file(s) ( 8 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3
Miscellaneous File4
Miscellaneous File5
Miscellaneous File6
Miscellaneous File7
Miscellaneous File8
Original PDF file:
mis-5074137230-20200228113336713386_._Sociabble_-_Response_to_Office_Action.pdf
Converted PDF file(s) ( 3 pages)
Miscellaneous File1
Miscellaneous File2
Miscellaneous File3

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: /stephane grynwajc/      Date: 02/28/2020
Signatory's Name: Grynwajc, Stephane
Signatory's Position: Attorney of record, New York Bar member
Signatory's Phone Number: 347-543-3035


Response Signature
Signature: /stephane grynwajc/     Date: 02/28/2020
Signatory's Name: Grynwajc, Stephane
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 347-543-3035

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:    STEPHAN GRYNWAJC
   LAW OFFICE OF S. GRYNWAJC, PLLC
   
   P.O. BOX 341
   NEW YORK, New York 10159
Mailing Address:    Stephan Grynwajc
   LAW OFFICE OF S. GRYNWAJC, PLLC
   P.O. BOX 341
   NEW YORK, New York 10159
        
Serial Number: 88483905
Internet Transmission Date: Fri Feb 28 13:05:27 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020022813052718
9377-88483905-7108985a85b1b8e6be0c12d7b7
b3c8fa151d9e4772a21fa28204c7cea3686743b8
-N/A-N/A-20200228113336713386