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. 88492815 EX (Stylized and/or with Design, see http://uspto.report/TM/88492815/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for information management, data and text processing, networking, electronic mail and other electronic communications in the nature of private network and global computer network communications, for use in the field of business communications, general email communications, and general use; computer software for use monitoring and managing e-mail servers for general use; computer software for use creating, managing, and sharing calendars for general use; computer software for use managing, and sharing contact information for general use
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.

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[ Lesotho application number LS/M/2019/12 filed 05/13/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software for information management, data and text processing, networking, electronic mail and other electronic communications in the nature of private network and global computer network communications, for use in the field of business communications, general email communications, and general use; Downloadable computer software for information management, data and text processing, networking, electronic mail and other electronic communications in the nature of private network and global computer network communications, for use in the field of business communications, general email communications, and general use; computer software for use monitoring and managing e-mail servers for general use; downloadable computer software for use monitoring and managing e-mail servers for general use; computer software for use creating, managing, and sharing calendars for general use; downloadable computer software for use creating, managing, and sharing calendars for general use; computer software for use managing, and sharing contact information for general use; downloadable computer software for use managing, and sharing contact information for general useClass 009 for Downloadable computer software for information management, data and text processing, networking, electronic mail and other electronic communications in the nature of private network and global computer network communications, for use in the field of business communications, general email communications, and general use; downloadable computer software for use monitoring and managing e-mail servers for general use; downloadable computer software for use creating, managing, and sharing calendars for general use; downloadable computer software for use managing, and sharing contact information for general use
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 [ Lesotho application number LS/M/2019/12 filed 05/13/2019]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services, namely, hosting electronic mail servers; software as a service (SAAS) services featuring software for information management, data and text processing, networking, electronic mail and other electronic communications in the nature of private network and global computer network communications for use in the field of business communications, general email communications, and general use; software as a service (SAAS) services featuring software for use monitoring and managing e-mail servers for general use; software as a service (SAAS) services featuring software for use creating, managing, and sharing calendars for general use; software as a service (SAAS) services featuring software for use managing, and sharing contact information for general use; software as a service (SAAS) services featuring software for use in voice message and voice mail management and storage for general use; software as a service (SAAS) services featuring software for use in creating and managing digital document archives for general use
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.

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[ Lesotho application number LS/M/2019/12 filed 05/13/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed: Class 042 for Computer services, namely, hosting electronic mail servers; software as a service (SAAS) services featuring software for information management, data and text processing, networking, electronic mail and other electronic communications in the nature of private network and global computer network communications for use in the field of business communications, general email communications, and general use; software as a service (SAAS) services featuring software for use monitoring and managing e-mail servers for general use; software as a service (SAAS) services featuring software for use creating, managing, and sharing calendars for general use; software as a service (SAAS) services featuring software for use managing, and sharing contact information for general use; software as a service (SAAS) services featuring software for use in voice message and voice mail management and storage for general use; software as a service (SAAS) services featuring software for use in creating and managing digital document archives for general use
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 [ Lesotho application number LS/M/2019/12 filed 05/13/2019]. 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.

The applicant's current attorney information: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      US
The docket/reference number is 25936-T1444.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is mstm@dwt.com

The applicants proposed attorney information: Matthew E. Moersfelder. Other appointed attorneys are Jeffrey A. Nelson. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      United States
The docket/reference number is 25936-T1444.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is mstm@dwt.com

Matthew E. Moersfelder 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: MATTHEW E. MOERSFELDER. MATTHEW E. MOERSFELDER of DAVIS WRIGHT TREMAINE LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      US
The docket/reference number is 25936-T1444.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is mstm@dwt.com; docket-mstm@dwt.com; brendanixdorf@dwt.com; maryhadley@dwt.com

The applicants proposed correspondence information: Matthew E. Moersfelder. Matthew E. Moersfelder of DAVIS WRIGHT TREMAINE LLP, is located at

      920 FIFTH AVENUE, SUITE 3300
      SEATTLE, Washington 98104-1610
      United States
The docket/reference number is 25936-T1444.

The phone number is 206-757-8014.

The fax number is 206-757-7014.

The email address is mstm@dwt.com; docket-mstm@dwt.com; brendanixdorf@dwt.com; maryhadley@dwt.com

SIGNATURE(S)
Response Signature
Signature: /MEM/     Date: 10/08/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Attorney of Record

Signatory's Phone Number: 206-757-8014

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:    MATTHEW E. MOERSFELDER
   DAVIS WRIGHT TREMAINE LLP
   
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
Mailing Address:    Matthew E. Moersfelder
   DAVIS WRIGHT TREMAINE LLP
   920 FIFTH AVENUE, SUITE 3300
   SEATTLE, Washington 98104-1610
        
Serial Number: 88492815
Internet Transmission Date: Tue Oct 08 13:37:57 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201910081337574
09137-88492815-610b77bba2b51976f35c0bb37
ffbbc88b32c4d2357cd07b3bebbbd22fe948c32-
N/A-N/A-20191007174002710079