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)

---

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. 88523466 HORIZON (Stylized and/or with Design, see http://uspto.report/TM/88523466/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of applicant's argument against the refusal of registration in PDF as well as Exhibits A and B referred to therein. has been attached.
Original PDF file:
evi_7222973147-20191219103139186399_._HORIZON_-_Argument_against_the_refusal_of_registration.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_7222973147-20191219103139186399_._HORIZON_-_Exhibit_A.pdf
Converted PDF file(s) ( 9 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Original PDF file:
evi_7222973147-20191219103139186399_._HORIZON_-_Exhibit_B.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable software for monitoring and controlling communication between computers and automated machine systems
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.

Proposed:
Tracked Text Description: Downloadable software for monitoring and controlling communication between computers and automated machine systems; Downloadable computer software applications used for communications between computers and automated machine systems for evaluating the workflow systems, barcode verification systems and inspection systems of stitching and folding machines, spine taping machines, paper counters, paper joggers, bookbinding machines and bookbinding machines for office use, mimeographs, perforating machines, paper binding machines, paper collators and paper collators for office use, paper cutters and paper cutters for office use, paper folding machines and paper folding machines for office use, paper hole punches, paper trimmers for office use and staplers for office useClass 009 for Downloadable computer software applications used for communications between computers and automated machine systems for evaluating the workflow systems, barcode verification systems and inspection systems of stitching and folding machines, spine taping machines, paper counters, paper joggers, bookbinding machines and bookbinding machines for office use, mimeographs, perforating machines, paper binding machines, paper collators and paper collators for office use, paper cutters and paper cutters for office use, paper folding machines and paper folding machines for office use, paper hole punches, paper trimmers for office use and staplers for office 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.

The applicant's current attorney information: Martin W. Schiffmiller. Martin W. Schiffmiller of KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERONI, P.C., is located at

      425 FIFTH AVENUE, FIFTH FLOOR, SUITE 501
      NEW YORK, New York 10016-2223
      US

The phone number is 212-697-3750.

The fax number is 2125079153.

The email address is mws@kirschsteinlaw.com

The applicants proposed attorney information: Martin W. Schiffmiller. Other appointed attorneys are Alan Israel and Lisa A. Pieroni. Martin W. Schiffmiller of KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERONI, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      425 Fifth Avenue, Fifth Floor, Suite 501
      New York, New York 10016-2223
      United States

The phone number is 212-697-3750.

The fax number is 2125079153.

The email address is mws@kirschsteinlaw.com

Martin W. Schiffmiller 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: MARTIN W. SCHIFFMILLER. MARTIN W. SCHIFFMILLER of KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERONI, P.C., is located at

      425 FIFTH AVENUE, FIFTH FLOOR, SUITE 501
      NEW YORK, New York 10016-2223
      US

The phone number is 212-697-3750.

The fax number is 2125079153.

The email address is mws@kirschsteinlaw.com

The applicants proposed correspondence information: Martin W. Schiffmiller. Martin W. Schiffmiller of KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERONI, P.C., is located at

      425 Fifth Avenue, Fifth Floor, Suite 501
      New York, New York 10016-2223
      United States

The phone number is 212-697-3750.

The fax number is 2125079153.

The email address is mws@kirschsteinlaw.com

SIGNATURE(S)
Response Signature
Signature: /Martin W. Schiffmiller/     Date: 12/19/2019
Signatory's Name: Martin W. Schiffmiller
Signatory's Position: Attorney

Signatory's Phone Number: 212-697-3750

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:    MARTIN W. SCHIFFMILLER
   KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERONI, P.C.
   
   425 FIFTH AVENUE, FIFTH FLOOR, SUITE 501
   NEW YORK, New York 10016-2223
Mailing Address:    Martin W. Schiffmiller
   KIRSCHSTEIN ISRAEL SCHIFFMILLER & PIERONI, P.C.
   425 Fifth Avenue, Fifth Floor, Suite 501
   New York, New York 10016-2223
        
Serial Number: 88523466
Internet Transmission Date: Thu Dec 19 10:36:03 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019121910360312
1940-88523466-70026d5152b9c6e841d8aad95d
480c198fb45bd0aff092529d2e5a6b74b8903874
-N/A-N/A-20191219103139186399