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. 88488593 INTRADO (Stylized and/or with Design, see http://uspto.report/TM/88488593/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for Business consulting services in the fields of sales, marketing, communications, telecommunications, Unified IP Communications, Voice over Internet-Protocol (VoIP), Wide Area Networking (WAN), business management and network management and security; conducting business and market research surveys; conducting on-line business management research surveys; business monitoring services, namely, tracking interactions between customers and call center agents to provide market related data for sales retail, customer care, or marketing purposes; office functions; marketing; operation of businesses for others; business organisation and operation consultancy; business consultancy; database management services, namely, testing, verifying, correcting, and enhancing computer databases of others to include up-to-date and more accurate customer contact information; promoting the goods and services of others; promoting the goods and services of others by means of providing and operating links to web sites of others, promoting the goods and services of others through online ordering and cataloguing of those goods and services; promoting the goods and services of others through the operation and management of telephone call centers for others, namely, processing customer service calls and collection calls, providing customer support services and customer care services; operation and management of telephone call centers for others; logistics management in the field of emergency services; general business networking referral services, namely, promoting the goods and services of others by passing leads and referrals among others; issuing press releases for third parties through direct intervention and through a customer-driven computer platform; marketing services, namely, consumer marketing research in the nature of monitoring media coverage; marketing services, namely, consumer marketing research in the nature of monitoring social media; organizing and hosting events for commercial purposes regarding earnings releases, business entities, and business activities; consumer marketing research in the nature of providing custom and automatically generated reporting regarding media coverage; providing social media and internet commentary either directly, through an application-based platform, or through a cloud-based platform; marketing services, namely, content creation for marketing both directly and through an application-based marketplace or a cloud-based marketplace; information, consultancy and advisory services relating to all the aforesaid services; Medical and health care cost containment and review; medical and health-care cost and utilization review and business management; medical and health-care cost price analysis and account auditing; financial records management, namely, review and evaluating health and medical records for consumers for purposes of accuracy and cost management; providing medical referrals; providing consumer information in the field of healthcare; consultation services regarding management of healthcare costs; providing consumer information comparing health insurance providers and benefits via the Internet; administration, billing and reconciliation of accounts on behalf of others by telephone; business consulting services in the area of accounts receivable management; assistance, advisory services and consultancy with regard to the health care industry with regard to business planning, business analysis, business management, and business organization, namely, business management, medical practice management for others in the field of family medicine and primary care, business record management in the field of health and patient relationship management in the nature of scheduling, automated monitored business activities for patient biometrics capturing and reporting, screenings, surveys, billing, accounts receivable, and business analytics in the field of healthcare; business management, namely, issuing patient reminders in the nature of appointment, follow-up, and payment reminders; arranging of managed care contractual services in the fields of diagnostic imaging, home health care, durable medical equipment, specialty pharmacy, and diagnostic lab services; managed care services, namely, electronic processing of health care information; managed care services, namely, utilization review and pre-certification services; management of health care clinics for others; medical claims management services, namely, receiving, data entering, for transactions that are originated by physicians, hospitals, and ancillary medical care providers; strategic business consulting services, business networking services and business administrative services, namely, patient registration, scheduling, bill generation and tracing, issuing payment reminders, accounts receivable billing services and accounts payable billing administration, purchasing administration and financial reporting services for healthcare providers
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 18084653 filed 06/20/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Business consulting services in the fields of sales, marketing, communications, telecommunications, Unified IP Communications, Voice over Internet-Protocol (VoIP), Wide Area Networking (WAN), business management and network management and security; conducting business and market research surveys; conducting on-line business management research surveys; business monitoring services, namely, tracking interactions between customers and call center agents to provide market related data for sales retail, customer care, or marketing purposes; office functions; Providing office functions; marketing; Marketing services; operation of businesses for others; operation of businesses for others, namely, telecommunications businesses; business organisation and operation consultancy; business consultancy; database management services, namely, testing, verifying, correcting, and enhancing computer databases of others to include up-to-date and more accurate customer contact information; database management services, namely, testing, verifying, correcting, and enhancing computer databases of others to include up-to-date and more accurate customer contact information; promoting the goods and services of others; promoting the goods and services of others by means of providing and operating links to web sites of others, promoting the goods and services of others through online ordering and cataloguing of those goods and services; promoting the goods and services of others by means of providing and operating links to web sites of others, promoting the goods and services of others through online cataloguing of those goods and services in the nature of providing hyperlinks to websites of others; promoting the goods and services of others through the operation and management of telephone call centers for others, namely, processing customer service calls and collection calls, providing customer support services and customer care services; operation and management of telephone call centers for others; logistics management in the field of emergency services; general business networking referral services, namely, promoting the goods and services of others by passing leads and referrals among others; issuing press releases for third parties through direct intervention and through a customer-driven computer platform; Marketing services, namely, issuing press releases for third parties through direct intervention and through a customer-driven computer platform; marketing services, namely, consumer marketing research in the nature of monitoring media coverage; marketing services, namely, consumer marketing research in the nature of monitoring social media; organizing and hosting events for commercial purposes regarding earnings releases, business entities, and business activities; consumer marketing research in the nature of providing custom and automatically generated reporting regarding media coverage; providing social media and internet commentary either directly, through an application-based platform, or through a cloud-based platform; business information, namely, providing social media and internet commentary in the field of business either directly, through an application-based platform, or through a cloud-based platform; marketing services, namely, content creation for marketing both directly and through an application-based marketplace or a cloud-based marketplace; marketing services, namely, content creation for marketing both directly and through an application based marketplace or a cloud-based marketplace; information, consultancy and advisory services relating to all the aforesaid services; Business information, consultancy and advisory services relating to all the aforesaid services; Medical and health care cost containment and review; medical and health-care cost and utilization review and business management; Business consulting, namely, medical and health-care cost and utilization review and business management; medical and health-care cost price analysis and account auditing; financial records management, namely, review and evaluating health and medical records for consumers for purposes of accuracy and cost management; providing medical referrals; providing consumer information in the field of healthcare; consultation services regarding management of healthcare costs; providing consumer information comparing health insurance providers and benefits via the Internet; administration, billing and reconciliation of accounts on behalf of others by telephone; business consulting services in the area of accounts receivable management; assistance, advisory services and consultancy with regard to the health care industry with regard to business planning, business analysis, business management, and business organization, namely, business management, medical practice management for others in the field of family medicine and primary care, business record management in the field of health and patient relationship management in the nature of scheduling, automated monitored business activities for patient biometrics capturing and reporting, screenings, surveys, billing, accounts receivable, and business analytics in the field of healthcare; business management, namely, issuing patient reminders in the nature of appointment, follow-up, and payment reminders; arranging of managed care contractual services in the fields of diagnostic imaging, home health care, durable medical equipment, specialty pharmacy, and diagnostic lab services; managed care services, namely, electronic processing of health care information; managed care services, namely, utilization review and pre-certification services; managed care services, namely, utilization review and precertification services; management of health care clinics for others; medical claims management services, namely, receiving, data entering, for transactions that are originated by physicians, hospitals, and ancillary medical care providers; strategic business consulting services, business networking services and business administrative services, namely, patient registration, scheduling, bill generation and tracing, issuing payment reminders, accounts receivable billing services and accounts payable billing administration, purchasing administration and financial reporting services for healthcare providers; providing employee assistance programs, namely, labor negotiation information services in the nature of counseling for employees of others regarding the negotiation of business contracts for the purpose of workplace labor conflict resolution; Business and public policy research services in the field of medicine, management of illness, and healthcare delivery as they relate to the operational aspects of healthcare cost management and financing and their impact of quality of healthcareClass 035 for Business consulting services in the fields of sales, marketing, communications, telecommunications, Unified IP Communications, Voice over Internet-Protocol (VoIP), Wide Area Networking (WAN), business management and network management and security; conducting business and market research surveys; conducting on-line business management research surveys; business monitoring services, namely, tracking interactions between customers and call center agents to provide market related data for sales retail, customer care, or marketing purposes; Providing office functions; Marketing services; operation of businesses for others, namely, telecommunications businesses; business organisation and operation consultancy; business consultancy; database management services, namely, testing, verifying, correcting, and enhancing computer databases of others to include up-to-date and more accurate customer contact information; promoting the goods and services of others; promoting the goods and services of others by means of providing and operating links to web sites of others, promoting the goods and services of others through online cataloguing of those goods and services in the nature of providing hyperlinks to websites of others; promoting the goods and services of others through the operation and management of telephone call centers for others, namely, processing customer service calls and collection calls, providing customer support services and customer care services; operation and management of telephone call centers for others; logistics management in the field of emergency services; general business networking referral services, namely, promoting the goods and services of others by passing leads and referrals among others; Marketing services, namely, issuing press releases for third parties through direct intervention and through a customer-driven computer platform; marketing services, namely, consumer marketing research in the nature of monitoring media coverage; marketing services, namely, consumer marketing research in the nature of monitoring social media; organizing and hosting events for commercial purposes regarding earnings releases, business entities, and business activities; consumer marketing research in the nature of providing custom and automatically generated reporting regarding media coverage; business information, namely, providing social media and internet commentary in the field of business either directly, through an application-based platform, or through a cloud-based platform; marketing services, namely, content creation for marketing both directly and through an application based marketplace or a cloud-based marketplace; Business information, consultancy and advisory services relating to all the aforesaid services; Medical and health care cost containment and review; Business consulting, namely, medical and health-care cost and utilization review and business management; medical and health-care cost price analysis and account auditing; financial records management, namely, review and evaluating health and medical records for consumers for purposes of accuracy and cost management; providing medical referrals; providing consumer information in the field of healthcare; consultation services regarding management of healthcare costs; providing consumer information comparing health insurance providers and benefits via the Internet; administration, billing and reconciliation of accounts on behalf of others by telephone; business consulting services in the area of accounts receivable management; assistance, advisory services and consultancy with regard to the health care industry with regard to business planning, business analysis, business management, and business organization, namely, business management, medical practice management for others in the field of family medicine and primary care, business record management in the field of health and patient relationship management in the nature of scheduling, automated monitored business activities for patient biometrics capturing and reporting, screenings, surveys, billing, accounts receivable, and business analytics in the field of healthcare; business management, namely, issuing patient reminders in the nature of appointment, follow-up, and payment reminders; arranging of managed care contractual services in the fields of diagnostic imaging, home health care, durable medical equipment, specialty pharmacy, and diagnostic lab services; managed care services, namely, electronic processing of health care information; managed care services, namely, utilization review and precertification services; management of health care clinics for others; medical claims management services, namely, receiving, data entering, for transactions that are originated by physicians, hospitals, and ancillary medical care providers; strategic business consulting services, business networking services and business administrative services, namely, patient registration, scheduling, bill generation and tracing, issuing payment reminders, accounts receivable billing services and accounts payable billing administration, purchasing administration and financial reporting services for healthcare providers; providing employee assistance programs, namely, labor negotiation information services in the nature of counseling for employees of others regarding the negotiation of business contracts for the purpose of workplace labor conflict resolution; Business and public policy research services in the field of medicine, management of illness, and healthcare delivery as they relate to the operational aspects of healthcare cost management and financing and their impact of quality of healthcare
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 18084653 filed 06/20/2019]. 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 18084653 registered 11/02/2019 with a renewal date of __________ and an expiration date of 06/20/2029 ], 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:
FRU0-7218011252-175256170_._INTRADO_and_Design_EU_Reg_No._18084653.pdf
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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 WSTC018US1.
      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 WSTC018US1.
      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 WSTC018US1.
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 WSTC018US1.

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: 03/27/2020
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: 88488593
Internet Transmission Date: Fri Mar 27 11:33:50 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020032711335069
6472-88488593-71067825d722b57419fede66cc
3d2bc36b56e3b721d89c7bdc08a1c43a1c6f761a
2-N/A-N/A-20200326175256170335