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. 88527665 INFOGROUP (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8852766 5/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for advertising, promotion and marketing services in the nature of email blast campaigns, campaigns conducted through social networking sites, mobile applications and websites; analysis and evaluation of marketing data; Analysis of market research data and statistics via the internet; Business advertising and marketing services, namely, multi-channel direct marketing services via email, direct mail, websites and mobile devices; Business and consumer online information services, namely, preparing information relating to businesses and consumers in the nature of sales leads, mailing lists and business and consumer profiles; business credit information services; Business information services, namely, providing analytical and statistical models for use by online and offline marketers, providing an online database in the field of business information, providing a database in the field of business information containing data for direct marketing used in connection with sales, lead and customer generation and to generate and customize integrated marketing campaigns, providing lists relating to businesses throughout the United States, and providing analytical and statistical models of households to others; Business marketing consulting services; Business marketing consulting services; business research services, namely, media research and business competitive marketing intelligence; commercial information agency services; Commercial information services, namely, providing electronic databases featuring business, consumer, and census information; compilation and systemization of information into computer databases; computerized database management; conducting on-line surveys to compile data about businesses and consumers, and preparing and providing related reports; consumer marketing research and consulting; consumer research; creating marketing tools for others that are designed to increase knowledge of customer's needs; creation of marketing tools designed to increase a client company's knowledge of customer needs, its competitors' products and services, pricing, advertising strategy and sales strategy via the internet; data and information processing services, namely, data selection, data arrangement, data processing, data cleaning to remove erroneous or unwanted information, data merging, data modeling, data scoring and data presentation; data management services, namely, integration, consolidation, organization and cleansing of multiple databases; data processing services, namely, online management and processing of data and information; data processing services for others related to postal processing, namely, zip code sorting, maintenance of mail files; direct mail consulting services; direct marketing advertising for others; direct marketing services, namely, a database of consumer names, addresses and marketing information; Dissemination of advertising for others via a global computer network and via electronic mail over a global computer network; dissemination of business marketing information for others via a global computer network; information services in the field of management of customer and marketing information and data of others, marketing demographics and mailing lists; lead generation services; mail processing for others, namely, addressing, inserting, tabbing, folding, laser imaging, metering and stamping; mailing list preparation, namely, online selection and processing of mailing lists, associated information and reports; management of customer and marketing information and data of others; market research services; marketing agency services; marketing research services, namely, marketing research in the fields of customer loyalty services, customer targeting services and customer profiling services; marketing services, namely, preparing advertisements for the products and services of others; marketing services in the field of interactive marketing, social marketing, search marketing, business marketing strategy, business marketing, email marketing, ecommerce and content management, all in the field of cross-channel database marketing; marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, Internet marketing, mobile marketing, digital customer acquisition of new business leads or new business customers and sales prospecting; Online data processing services, namely, the preparation and provision of marketing data and information on the internet in the field of library services; Online marketing services, namely, dissemination of advertising for others via a global computer network and via electronic mail over a global computer network, and providing design of emails and landing pages as part of marketing campaigns; order fulfillment services, namely, maintaining an inventory of informative literature of others and mailing of said literature to those requesting it; preparation of mailing lists; promoting the goods and services of others through search engine referral traffic analysis and reporting; providing a computer database, interactive computer database and online computer database in the fields of marketing demographics and mailing lists; providing an interactive computer database in the field of marketing demographics and mailing lists; providing an online electronic database in the field of customer and prospective customer information, namely, marketing information, marketing demographics and mailing lists; Providing consumer information services, namely, providing a database of consumer transactional data gathered from consumer purchases and transactions; Providing databases featuring information in the field of purchasers making buying decisions at work or home; providing databases featuring information regarding mail order customers and consultation in connection therewith; providing online reports and information in the field of marketing demographics and mailing lists; provision of business information, namely, address, phone, contact, and other business information via in-car, online and mobile navigation systems; employee satisfaction research services; research services, namely, providing business and market research, and market analysis services; social media strategy and marketing consultancy services; web-based business data analysis; and web-based market research and business analysis
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.

In International Class 035, the mark was first used at least as early as 07/08/2019 and first used in commerce at least as early as 07/08/2019.


Proposed:

Tracked Text Description: advertising, promotion and marketing services in the nature of email blast campaigns, campaigns conducted through social networking sites, mobile applications and websites; advertising, promotion and marketing services in the nature of email blast campaigns; analysis and evaluation of marketing data; developing promotional campaigns for business conducted through social networking sites, mobile applications and websites; analysis and statistical evaluation of marketing research data; Analysis of market research data and statistics via the internet; Business and consumer online information services, namely, preparing information relating to businesses and consumers in the nature of sales leads, mailing lists and business and consumer profiles; Business advertising and marketing services, namely, multi-channel direct marketing services via email, direct mail, websites and mobile devices; business credit information services; Business information services, providing analytical and statistical models for use by online and offline marketers for the understanding and predicting of consumers, businesses, and market trends and actions; Business information services, namely, providing analytical and statistical models for use by online and offline marketers, providing an online database in the field of business information, providing a database in the field of business information containing data for direct marketing used in connection with sales, lead and customer generation and to generate and customize integrated marketing campaigns, providing lists relating to businesses throughout the United States, and providing analytical and statistical models of households to others; Business information services, namely, providing an online database in the field of business information containing data for direct marketing used in connection with sales, lead and customer generation and to generate and customize integrated marketing campaigns; Business information services, namely, providing analytical and statistical models of households to customers for the understanding and predicting of consumers, businesses, and market trends and actions; Business marketing consulting services; Business marketing consulting services; business research services, namely, media research and business competitive marketing intelligence; commercial information agency services; Commercial information services, namely, providing electronic databases featuring business, consumer, and census information; Commercial information services, namely, providing electronic databases featuring business information, census information in the nature of commercial and business contact information; compilation and systemization of information into computer databases; computerized database management; conducting on-line surveys to compile data about businesses and consumers, and preparing and providing related reports; conducting on-line business management research surveys to compile data about businesses and consumers, and preparing and providing business reports; consumer marketing research and consulting; consumer marketing research and consulting related thereto; consumer research; creation of marketing tools designed to increase a client company's knowledge of customer needs, its competitors' products and services, pricing, advertising strategy and sales strategy via the internet in the nature of creative and strategic consultation regarding development and production of marketing campaigns for others; creating marketing tools for others that are designed to increase knowledge of customer's needs; data and information processing services, namely, data selection, data arrangement, data processing, data cleaning to remove erroneous or unwanted information, data merging, data modeling, data scoring and data presentation; creation of marketing tools designed to increase a client company's knowledge of customer needs, its competitors' products and services, pricing, advertising strategy and sales strategy via the internet; data management services, namely, integration, consolidation, organization and cleansing of multiple databases; data processing services, namely, online management and processing of data and information; data processing services for others related to postal processing, namely, zip code sorting, maintenance of mail files; direct mail consulting; direct marketing advertising for others; direct mail consulting services; Dissemination of advertising for others via a global computer network and via electronic mail over a global computer network; dissemination of business marketing information for others via a global computer network; direct marketing services, namely, a database of consumer names, addresses and marketing information; business information services in the field of management of customer and marketing information and data of others, marketing demographics and mailing lists; lead generation services in the nature of providing demand creation and lead generation activities and services; mail processing for others, namely, addressing, inserting, tabbing, folding, laser imaging, metering and stamping; information services in the field of management of customer and marketing information and data of others, marketing demographics and mailing lists; mailing list preparation, namely, online selection and processing of mailing lists, associated information and reports; lead generation services; business management of customer and marketing information and data of others; market research services; marketing agency services in the nature of advertising agency services; management of customer and marketing information and data of others; marketing research services, namely, marketing research in the fields of customer loyalty services, customer targeting services and customer profiling services; marketing services, namely, preparing advertisements for the products and services of others; marketing agency services; marketing services in the field of interactive marketing, social marketing, search marketing, business marketing strategy, business marketing, email marketing, ecommerce and content management, all in the field of cross-channel database marketing; marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, Internet marketing, mobile marketing, digital customer acquisition of new business leads or new business customers and sales prospecting; Online data processing services, namely, the preparation and provision of marketing data and information on the internet in the field of library services; Online marketing services, namely, dissemination of advertising for others via a global computer network and via electronic mail over a global computer network, and providing design of emails and landing pages as part of marketing campaigns; order fulfillment services, namely, maintaining an inventory of informative literature of others and mailing of said literature to those requesting it; preparation of mailing lists; promoting the goods and services of others through search engine referral traffic analysis and reporting; providing a computer database, interactive computer database and online computer database in the fields of marketing demographics and mailing lists; providing an interactive computer database in the field of marketing demographics and mailing lists; providing an online electronic database in the field of customer and prospective customer information, namely, marketing information, marketing demographics and mailing lists; Providing consumer information services, namely, providing a database of consumer transactional data gathered from consumer purchases and transactions; Providing databases featuring information in the field of purchasers making buying decisions at work or home; providing databases featuring business information regarding mail order customers and consultation in connection therewith; providing online business reports and business information in the field of marketing demographics and mailing lists; provision of business information, namely, address, phone, contact, and other business information via in-car, online and mobile navigation systems; providing databases featuring information regarding mail order customers and consultation in connection therewith; employee satisfaction research services; providing online reports and information in the field of marketing demographics and mailing lists; research services, namely, providing business and market research, and market analysis services; social media strategy and marketing consultancy services focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; web-based business data analysis; and web-based market research and business analysis; social media strategy and marketing consultancy servicesClass 035 for advertising, promotion and marketing services in the nature of email blast campaigns; developing promotional campaigns for business conducted through social networking sites, mobile applications and websites; analysis and statistical evaluation of marketing research data; Analysis of market research data and statistics via the internet; Business advertising and marketing services, namely, multi-channel direct marketing services via email, direct mail, websites and mobile devices; Business information services, providing analytical and statistical models for use by online and offline marketers for the understanding and predicting of consumers, businesses, and market trends and actions; Business information services, namely, providing an online database in the field of business information containing data for direct marketing used in connection with sales, lead and customer generation and to generate and customize integrated marketing campaigns; Business information services, namely, providing analytical and statistical models of households to customers for the understanding and predicting of consumers, businesses, and market trends and actions; Business marketing consulting services; business research services, namely, media research and business competitive marketing intelligence; commercial information agency services; Commercial information services, namely, providing electronic databases featuring business information, census information in the nature of commercial and business contact information; compilation and systemization of information into computer databases; computerized database management; conducting on-line business management research surveys to compile data about businesses and consumers, and preparing and providing business reports; consumer marketing research and consulting related thereto; creation of marketing tools designed to increase a client company's knowledge of customer needs, its competitors' products and services, pricing, advertising strategy and sales strategy via the internet in the nature of creative and strategic consultation regarding development and production of marketing campaigns for others; data and information processing services, namely, data selection, data arrangement, data processing, data cleaning to remove erroneous or unwanted information, data merging, data modeling, data scoring and data presentation; data management services, namely, integration, consolidation, organization and cleansing of multiple databases; data processing services, namely, online management and processing of data and information; data processing services for others related to postal processing, namely, zip code sorting, maintenance of mail files; direct mail consulting; direct marketing advertising for others; Dissemination of advertising for others via a global computer network and via electronic mail over a global computer network; dissemination of business marketing information for others via a global computer network; business information services in the field of management of customer and marketing information and data of others, marketing demographics and mailing lists; lead generation services in the nature of providing demand creation and lead generation activities and services; mail processing for others, namely, addressing, inserting, tabbing, folding, laser imaging, metering and stamping; mailing list preparation, namely, online selection and processing of mailing lists, associated information and reports; business management of customer and marketing information and data of others; market research services; marketing agency services in the nature of advertising agency services; marketing research services, namely, marketing research in the fields of customer loyalty services, customer targeting services and customer profiling services; marketing services, namely, preparing advertisements for the products and services of others; marketing services in the field of interactive marketing, social marketing, search marketing, business marketing strategy, business marketing, email marketing, ecommerce and content management, all in the field of cross-channel database marketing; marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, Internet marketing, mobile marketing, digital customer acquisition of new business leads or new business customers and sales prospecting; Online data processing services, namely, the preparation and provision of marketing data and information on the internet in the field of library services; Online marketing services, namely, dissemination of advertising for others via a global computer network and via electronic mail over a global computer network, and providing design of emails and landing pages as part of marketing campaigns; order fulfillment services, namely, maintaining an inventory of informative literature of others and mailing of said literature to those requesting it; preparation of mailing lists; promoting the goods and services of others through search engine referral traffic analysis and reporting; providing a computer database, interactive computer database and online computer database in the fields of marketing demographics and mailing lists; providing an interactive computer database in the field of marketing demographics and mailing lists; providing an online electronic database in the field of customer and prospective customer information, namely, marketing information, marketing demographics and mailing lists; Providing consumer information services, namely, providing a database of consumer transactional data gathered from consumer purchases and transactions; Providing databases featuring information in the field of purchasers making buying decisions at work or home; providing databases featuring business information regarding mail order customers and consultation in connection therewith; providing online business reports and business information in the field of marketing demographics and mailing lists; provision of business information, namely, address, phone, contact, and other business information via in-car, online and mobile navigation systems; employee satisfaction research services; research services, namely, providing business and market research, and market analysis services; social media strategy and marketing consultancy services focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions; web-based business data analysis; and web-based market research and business analysis
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.

In International Class 035, the mark was first used at least as early as 07/08/2019 . and first used in commerce at least as early as 07/08/2019 .

Applicant proposes to amend the following:

Current:
Class 038 for Electronic transmission of data and electronic mail services featuring the transmission of information regarding marketing demographics and mailing lists; providing access to databases featuring information in the field of mail order customers; providing multiple-user access to a global computer network featuring databases in the field of mail order customers; electronic transmission of mail featuring electronic publications of others; electronic transmission of computer controlled data; transmission and distribution of data via a global computer network or the internet; Communication services, namely, providing businesses and consumers with real-time access to an exchange of data prepared, compiled, updated, systemized and organized in databases; Providing access to a real-time, web-based data platform featuring software that aligns business, consumer and custom data sets for more efficient marketing, licensing, and application development usage; and providing temporary access to non-downloadable software in the field of business and product promotion
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.

In International Class 038, the mark was first used at least as early as 07/08/2019 and first used in commerce at least as early as 07/08/2019.


Proposed:

Tracked Text Description: Electronic transmission of data and electronic mail services featuring the transmission of information regarding marketing demographics and mailing lists; Electronic transmission of data and electronic mail services featuring the transmission of information regarding marketing demographics and mailing lists via electronic communications networks; providing access to databases featuring information in the field of mail order customers; providing multiple-user access to a global computer network featuring databases in the field of mail order customers; electronic transmission of mail featuring electronic publications of others; electronic transmission of computer controlled data; transmission and distribution of data via a global computer network or the internet; Communication services, namely, providing businesses and consumers with real-time access to an exchange of data prepared, compiled, updated, systemized and organized in databases; Communication services, namely, providing businesses and consumers with real-time user access to global computer networks to an exchange of data prepared, compiled, updated, systemized and organized in databases; Providing access to a real-time, web-based data platform featuring software that aligns business, consumer and custom data sets for more efficient marketing, licensing, and application development usage; Providing multiple user access to a global computer information network for accessing a real-time, web-based data platform featuring software that aligns business, consumer and custom data sets for more efficient marketing, licensing, and application development usage.; and providing temporary access to non-downloadable software in the field of business and product promotionClass 038 for Electronic transmission of data and electronic mail services featuring the transmission of information regarding marketing demographics and mailing lists via electronic communications networks; providing access to databases featuring information in the field of mail order customers; providing multiple-user access to a global computer network featuring databases in the field of mail order customers; electronic transmission of mail featuring electronic publications of others; electronic transmission of computer controlled data; transmission and distribution of data via a global computer network or the internet; Communication services, namely, providing businesses and consumers with real-time user access to global computer networks to an exchange of data prepared, compiled, updated, systemized and organized in databases; Providing multiple user access to a global computer information network for accessing a real-time, web-based data platform featuring software that aligns business, consumer and custom data sets for more efficient marketing, licensing, and application development usage.
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.

In International Class 038, the mark was first used at least as early as 07/08/2019 . and first used in commerce at least as early as 07/08/2019 .

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: INFOGROUP INC., a corporation of Delaware, having an address of
      1020 East 1st Street
      Papillion, Nebraska 68046
      United States

Proposed: INFOGROUP INC., a corporation of Delaware, having an address of
      1020 East 1st Street
      Papillion, Nebraska 68046
      United States
      Email Address: XXXX

The owner's/holder's current attorney information: Susan B. Meyer. Susan B. Meyer of GORDON REES SCULLY MANSUKHANI, is located at

      101 WEST BROADWAY, SUITE 2000
      SAN DIEGO, California 92101
      United States
The docket/reference number is INFOGR.
      The phone number is 619-696-6700.
      The fax number is 6196967214.
      The email address is ipdocket@grsm.com

The owner's/holder's proposed attorney information: Susan B. Meyer. Susan B. Meyer of GORDON REES SCULLY MANSUKHANI, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      101 WEST BROADWAY, SUITE 2000
      SAN DIEGO, California 92101
      United States
The docket/reference number is INFOGR119267.
      The phone number is 619-696-6700.
      The fax number is 6196967214.
      The email address is ipdocket@grsm.com

Susan B. Meyer 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):
      SUSAN B. MEYER
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@grsm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is INFOGR.
Correspondence Information (proposed):
      Susan B. Meyer
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@grsm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is INFOGR119267.

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)
Response Signature
Signature: //Susan B. Meyer//     Date: 06/03/2020
Signatory's Name: Susan B. Meyer
Signatory's Position: Attorney of Record

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:    SUSAN B. MEYER
   GORDON REES SCULLY MANSUKHANI
   
   101 WEST BROADWAY, SUITE 2000
   SAN DIEGO, California 92101
Mailing Address:    Susan B. Meyer
   GORDON REES SCULLY MANSUKHANI
   101 WEST BROADWAY, SUITE 2000
   SAN DIEGO, California 92101
        
Serial Number: 88527665
Internet Transmission Date: Wed Jun 03 10:51:30 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202006031051303
46696-88527665-710f19d8260add467198e5870
ad7791c5f65a69dda09cd1848cc48b14fbef91a6
f-N/A-N/A-20200603105038120230