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. 88488612 INTRADO (Stylized and/or with Design, see http://uspto.report/TM/88488612/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 041 for Educational services; provision of training; production, organisation and management of conferences, seminars, workshops, exhibitions and events for educational purposes; non-downloadable publications; educational services, namely, conducting seminars and workshops in the field of school-parent communications and the distribution of course materials therewith in the nature of print, electronic, audio and visual materials; educational services for employees, conducting workshops in the field of emergency support; information, consultancy and advisory services relating to all the aforesaid services
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: Educational services; Educational services, namely, conducting programs in the field of telecommunications; provision of training; provision of training in the field of telecommunications; production, organisation and management of conferences, seminars, workshops, exhibitions and events for educational purposes; non-downloadable publications; Non-downloadable electronic publications in the nature of magazines in the field of telecommunications; educational services, namely, conducting seminars and workshops in the field of school-parent communications and the distribution of course materials therewith in the nature of print, electronic, audio and visual materials; educational services for employees, conducting workshops in the field of emergency support; information, consultancy and advisory services relating to all the aforesaid services; Providing information, news, and commentary in the field of current events via the Internet and social mediaClass 041 for Educational services, namely, conducting programs in the field of telecommunications; provision of training in the field of telecommunications; production, organisation and management of conferences, seminars, workshops, exhibitions and events for educational purposes; Non-downloadable electronic publications in the nature of magazines in the field of telecommunications; educational services, namely, conducting seminars and workshops in the field of school-parent communications and the distribution of course materials therewith in the nature of print, electronic, audio and visual materials; educational services for employees, conducting workshops in the field of emergency support; information, consultancy and advisory services relating to all the aforesaid services; Providing information, news, and commentary in the field of current events via the Internet and social media
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:
FRU0-7218011252-181750289_._INTRADO_and_Design_EU_Reg_No._18084653.pdf
Converted PDF file(s) ( 73 pages)
Foreign Registration-1
Foreign Registration-2
Foreign Registration-3
Foreign Registration-4
Foreign Registration-5
Foreign Registration-6
Foreign Registration-7
Foreign Registration-8
Foreign Registration-9
Foreign Registration-10
Foreign Registration-11
Foreign Registration-12
Foreign Registration-13
Foreign Registration-14
Foreign Registration-15
Foreign Registration-16
Foreign Registration-17
Foreign Registration-18
Foreign Registration-19
Foreign Registration-20
Foreign Registration-21
Foreign Registration-22
Foreign Registration-23
Foreign Registration-24
Foreign Registration-25
Foreign Registration-26
Foreign Registration-27
Foreign Registration-28
Foreign Registration-29
Foreign Registration-30
Foreign Registration-31
Foreign Registration-32
Foreign Registration-33
Foreign Registration-34
Foreign Registration-35
Foreign Registration-36
Foreign Registration-37
Foreign Registration-38
Foreign Registration-39
Foreign Registration-40
Foreign Registration-41
Foreign Registration-42
Foreign Registration-43
Foreign Registration-44
Foreign Registration-45
Foreign Registration-46
Foreign Registration-47
Foreign Registration-48
Foreign Registration-49
Foreign Registration-50
Foreign Registration-51
Foreign Registration-52
Foreign Registration-53
Foreign Registration-54
Foreign Registration-55
Foreign Registration-56
Foreign Registration-57
Foreign Registration-58
Foreign Registration-59
Foreign Registration-60
Foreign Registration-61
Foreign Registration-62
Foreign Registration-63
Foreign Registration-64
Foreign Registration-65
Foreign Registration-66
Foreign Registration-67
Foreign Registration-68
Foreign Registration-69
Foreign Registration-70
Foreign Registration-71
Foreign Registration-72
Foreign Registration-73

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 WSTC018US5.
      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 WSTC018US5.
      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 WSTC018US5.
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 WSTC018US5.

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: 88488612
Internet Transmission Date: Fri Mar 27 11:45:03 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020032711450367
2158-88488612-710597632563f2dfb41a73132f
6ae8699699e1b8959250a173472f64bbc839763-
N/A-N/A-20200326181750289531