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. 88517707 SMILE(Standard Characters, see http://uspto.report/TM/88517707/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 038 for Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Downloadable software in the nature of a messaging application; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Downloadable computer database management software for use in personalizing the content of e-mail communications; digital stationary software and services; software and services for capturing user reactions to messaging; messaging platform facilitating messaging and communications adhering to a social contract of predefined tenor and content; Telecommunication services, namely, data transmission and reception services via telecommunication networks; Telecommunications services, namely, personal communication services; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; Mobile phone communication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with intent to maintain and strengthen relationships; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer mobile device and Internet users to other local and global online locations; - Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and websites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing temporary use of online non-downloadable software and applications for instant messaging, voiceover internet protocol (VOIP), video conferencing, and audioconferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider(ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; Online social networking services; Identification verification services, namely, providing authentication of personal identification information
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Telecommunication services, namely, data transmission and reception services via telecommunication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Telecommunications services, namely, personal communication services; Downloadable software in the nature of a messaging application; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Instant messaging services; Downloadable software in the nature of a mobile application for messaging; communication services by mobile phones; Computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Voice over internet protocol (VOIP) services; Software for communication to maintain and strengthen relationships; Audio teleconferencing; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Teleconferencing services; Downloadable computer database management software for use in personalizing the content of e-mail communications; Video teleconferencing; digital stationary software and services; Web messaging; software and services for capturing user reactions to messaging; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; messaging platform facilitating messaging and communications adhering to a social contract of predefined tenor and content; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and online electronic bulletin boards for transmission of messages among users in the field of social networking; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with the intent to maintain and strengthen relationships; Mobile phone communication services; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer the website user on a mobile device or the Internet to other local and global online locations; - Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and websites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing online forums for communication on topics of general interest with intent to maintain and strengthen relationships; Providing online communications links that transfer mobile device and Internet users to other local and global online locations; Providing temporary use of online non-downloadable software and applications for instant messaging, voiceover internet protocol (VOIP), video conferencing, and audioconferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider(ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; Online social networking services; Identification verification services, namely, providing authentication of personal identification informationClass 038 for Telecommunication services, namely, data transmission and reception services via telecommunication networks; Telecommunications services, namely, personal communication services; Electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; Instant messaging services; communication services by mobile phones; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to- peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely, electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and online electronic bulletin boards for transmission of messages among users in the field of social networking; Providing access to computer databases in the field of social networking; Providing online forums for communication on topics of general interest with the intent to maintain and strengthen relationships; Providing online forums for communication for maintaining and strengthening relationships; Providing online communications links that transfer the website user on a mobile device or the Internet to other local and global online locations; - Application service provider, namely, hosting, managing, developing, and maintaining applications, software, and websites in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices; Development, updating and maintenance of software and database systems in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic devices
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, and communication networks; Downloadable computer software for processing images, graphics, audio, video, and text; Downloadable software in the nature of a messaging application; downloadable computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Downloadable software in the nature of a mobile application for messaging; Downloadable computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Downloadable software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Downloadable computer database management software for use in personalizing the content of e-mail communications; downloadable digital stationary software; downloadable software and services for capturing user reactions to messaging;
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Providing online, non-downloadable computer software for use in facilitating voice over internet protocol (VOIP) calls, phone calls, video calls, text messages, instant message and online social networking services; Providing online, non-downloadable computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, commenting on and sharing or otherwise providing electronic media or information via computer and communication networks; Providing online, non-downloadable computer software for communication to maintain and strengthen relationships; Software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; Providing online, non-downloadable digital stationary software; Providing online, non-downloadable computer software for capturing user reactions to messaging; Platform as a service (PAAS) featuring computer software platforms for facilitating messaging and communications adhering to a social contract of predefined tenor and content; Providing temporary use of online non-downloadable software and applications for instant messaging, voiceover internet protocol (VOIP), video conferencing, and audioconferencing; Computer services, namely, creating an online community for registered users to engage in social networking and communicate with friends and family; Computer services, namely, creating an on-line community for registered users to form virtual communities to participate in discussions, get feedback from their peers, friends and family and to engage in positive conversation with peers, friends and family; Computer services, namely, providing on-line facilities for real-time interaction with others for the purpose of organizing and conducting discussions via communication networks; Application service provider(ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, and sharing or otherwise providing electronic media or information via computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a positive virtual community, and transmission of audio, video, photographic images, text, graphics and data; computer technology services, namely, providing temporary use of non-downloadable software to verify and authenticate an individuals identity.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for online social networking 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: A Social Company, a corporation of Delaware, having an address of
      26712 Westvale Road
      Palos Verde Peninsula, California 90274
      United States

Proposed: A Social Company, a corporation of Delaware, having an address of
      26712 Westvale Road
      Palos Verde Peninsula, California 90274
      United States
      Email Address: pctrademarks@perkinscoie.com

The owner's/holder's current attorney information: Brian R. Coleman. Brian R. Coleman of PERKINS COIE LLP, is located at

      3150 PORTER DRIVE
      PALO ALTO, California 94304
      United States
The docket/reference number is 135113-4001.
      The phone number is 650-838-4300.
      The fax number is 650-838-4350.
      The email address is pctrademarks@perkinscoie.com

The owner's/holder's proposed attorney information: Brian R. Coleman. Brian R. Coleman of PERKINS COIE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      3150 PORTER DRIVE
      PALO ALTO, California 94304
      United States
The docket/reference number is 135113-4001.
      The phone number is 650-838-4300.
      The fax number is 650-838-4350.
      The email address is bcoleman@perkinscoie.com

Brian R. Coleman 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):
      BRIAN R. COLEMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: pctrademarks@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bcoleman@perkinscoie.com; aichang@perkinscoie.com; kthompson@perkinscoie.com

The docket/reference number is 135113-4001.
Correspondence Information (proposed):
      Brian R. Coleman
      PRIMARY EMAIL FOR CORRESPONDENCE: bcoleman@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pctrademarks@perkinscoie.com; dsuh@perkinscoie.com; kthompson@perkinscoie.com

The docket/reference number is 135113-4001.

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).

FEE(S)
Fee(s) in the amount of $825 is being submitted.

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: /brian r. coleman/      Date: 03/02/2020
Signatory's Name: Brian R. Coleman
Signatory's Position: Counsel for Applicant, Cal Bar 199955
Signatory's Phone Number: 650 838 4300


Response Signature
Signature: /brian r. coleman/     Date: 03/02/2020
Signatory's Name: Brian R. Coleman
Signatory's Position: Counsel for Applicant, Cal Bar 199955

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:    BRIAN R. COLEMAN
   PERKINS COIE LLP
   
   3150 PORTER DRIVE
   PALO ALTO, California 94304
Mailing Address:    Brian R. Coleman
   PERKINS COIE LLP
   3150 PORTER DRIVE
   PALO ALTO, California 94304
        
RAM Sale Number: 88517707
RAM Accounting Date: 03/02/2020
        
Serial Number: 88517707
Internet Transmission Date: Mon Mar 02 18:09:36 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202003021809364
20072-88517707-71033176be8f175f91d763eeb
c9bf2aacb617640403da3caa4a35b416dae72e7-
DA-09356169-20200302162609614119