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. 88614666 MCS (Stylized and/or with Design, see http://uspto.report/TM/88614666/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant, through its attorney, responds to the office action dated December 16, 2019 by amending the description of services of the application. As the amendments to the description of services should overcome the refusal based on likelihood of confusion with Registration Nos. 4811622 and 5712293, applicant respectfully requests that the refusal based on likelihood of confusion with existing registrations be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business services, namely, the retrieval, organization, summarization, and delivery of medical, insurance scholastic, employment and government records; provide records management services; providing mail services; providing printing and copy services; inventory management in the field of law firms, insurance companies and other corporate entities; preparation of printed material; management of office equipment; vendor management and negotiation services for the purpose of providing Business Processing Outsourcing solutions to law firms, insurance companies and other corporate entities; management and servicing of multi-function printers
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/1980 and first used in commerce at least as early as 01/01/1980 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Business services, namely, the retrieval, organization, summarization, and delivery of medical, insurance scholastic, employment and government records; Business of records management services, namely; provide records management services; the retrieval, organization, summarization and delivery of medical, insurance, scholastic, employment and government records; providing mail services; provide business records management; providing printing and copy services; providing mail services such as the receiving and processing of domestic mail for infusion into established postal services, providing specialized mail management services; business management services by managing office functions in the nature of printing, copying and scanning services for others; preparation of printed material; inventory management in the field of law firms, insurance companies and other corporate entities; management of office equipment; business services, namely, preparation of printed material for mailing for others; vendor management and negotiation services for the purpose of providing Business Processing Outsourcing solutions to law firms, insurance companies and other corporate entities; management of office equipment, namely, leasing and rental of office equipment; management and servicing of multi-function printers; vendor management services for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; vendor negotiation services in the nature of commercial transactions with vendors for third parties for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; providing summarization of deposition transcripts, namely, abstracting services in the nature of summarizing information from deposition transcript records; providing specialized mail management services in the nature of parcel receiving services; paper supply services in the nature of procurement, namely purchasing paper for others.Class 035 for Business of records management services, namely; the retrieval, organization, summarization and delivery of medical, insurance, scholastic, employment and government records; provide business records management; providing mail services such as the receiving and processing of domestic mail for infusion into established postal services, providing specialized mail management services; business management services by managing office functions in the nature of printing, copying and scanning services for others; inventory management in the field of law firms, insurance companies and other corporate entities; business services, namely, preparation of printed material for mailing for others; management of office equipment, namely, leasing and rental of office equipment; vendor management services for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; vendor negotiation services in the nature of commercial transactions with vendors for third parties for the purpose of providing business processing outsourcing solutions to law firms, insurance companies and other corporate entities; providing summarization of deposition transcripts, namely, abstracting services in the nature of summarizing information from deposition transcript records; providing specialized mail management services in the nature of parcel receiving services; paper supply services in the nature of procurement, namely purchasing paper for others.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/1980 and first used in commerce at least as early as 01/01/1980 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 039 for Parcel shipping and receiving services; Packaging, collection, and transportation of hazardous material; providing laboratory support services; providing warehouse storage services and support; providing forklift and PIV services; providing courier delivery service; paper supply services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/1994 and first used in commerce at least as early as 01/01/1994 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Parcel shipping and receiving services; Courier services in the nature of parcel shipping services namely supply chain logistics and reverse logistics services, namely packaging, collection, and transportation of hazardous material for others by air, rail, ship, or truck providing laboratory support services namely warehousing of laboratory equipment; Packaging, collection, and transportation of hazardous material; providing warehouse storage services and support; providing laboratory support services; providing courier powered industrial vehicles ( PIV ) services in the nature of rental of forklifts; providing courier delivery services.; providing forklift and PIV services; providing courier delivery service; paper supply servicesClass 039 for Courier services in the nature of parcel shipping services namely supply chain logistics and reverse logistics services, namely packaging, collection, and transportation of hazardous material for others by air, rail, ship, or truck providing laboratory support services namely warehousing of laboratory equipment; providing warehouse storage services and support; providing courier powered industrial vehicles ( PIV ) services in the nature of rental of forklifts; providing courier delivery services.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/1994 and first used in commerce at least as early as 01/01/1994 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Proving court reporter and videography services for depositions; providing translation services; providing language interpreter services; providing summarization of deposition transcripts
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/2009 and first used in commerce at least as early as 01/01/2009 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Proving court reporter and videography services for depositions; Providing deposition services namely court reporting/ typing and recording the spoken word, videography services to video the proceedings, providing translation services to translate and interpret the use of different languages in the deposition proceedings; providing translation services; digital imaging services to delivery the transcript in electronic format; providing language interpreter services; copy services to deliver the transcript in paper format.; providing summarization of deposition transcriptsClass 041 for Providing deposition services namely court reporting/ typing and recording the spoken word, videography services to video the proceedings, providing translation services to translate and interpret the use of different languages in the deposition proceedings; digital imaging services to delivery the transcript in electronic format; copy services to deliver the transcript in paper format.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/2009 and first used in commerce at least as early as 01/01/2009 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing technology services, namely, managing e-discovery, hosting document review; provide digital imaging services; trial technology services and electronic project management services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/2000 and first used in commerce at least as early as 01/01/2000 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing technology services, namely, managing e-discovery, hosting document review; Providing technology services namely providing temporary use of on-line non-downloadable software for managing e-discovery; provide digital imaging services; providing technology services in the nature of hosting documents for review, namely hosting an online website for document review and management; trial technology services and electronic project management services; trial technology services, namely help desk services for computer trial technology, electronic project management services, namely computer project management services; management of multi-function printers, namely remote monitoring of multi-function printers for others; laboratory support services, namely, rental of laboratory apparatus and instruments.Class 042 for Providing technology services namely providing temporary use of on-line non-downloadable software for managing e-discovery; providing technology services in the nature of hosting documents for review, namely hosting an online website for document review and management; trial technology services, namely help desk services for computer trial technology, electronic project management services, namely computer project management services; management of multi-function printers, namely remote monitoring of multi-function printers for others; laboratory support services, namely, rental of laboratory apparatus and instruments.
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/2000 and first used in commerce at least as early as 01/01/2000 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Providing court document filing services, litigation support services; and reception and concierge services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/1994 and first used in commerce at least as early as 01/01/1994 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing court document filing services, litigation support services; Public document filing services, namely providing court document filing services; and reception and concierge services; litigation support services and front desk receptionClass 045 for Public document filing services, namely providing court document filing services; litigation support services and front desk reception
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/1994 and first used in commerce at least as early as 01/01/1994 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 040 for Providing printing services
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 01/01/1980 and first used in commerce at least as early as 01/01/1980 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 040 . The specimen(s) submitted consists of screenshots from Company website pages .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-204170203-20200124112545757238_._MCS___Design_-_cl._40_eou.pdf
Converted PDF file(s) ( 4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4

FEE(S)
Fee(s) in the amount of $275 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: /wdrewkastner/      Date: 01/24/2020
Signatory's Name: W. Drew Kastner
Signatory's Position: Attorney of Record, PA, NY, NJ & DC Bar Member
Signatory's Phone Number: 215-751-2122


Response Signature
Signature: /wdrewkastner/     Date: 01/24/2020
Signatory's Name: W. Drew Kastner
Signatory's Position: Attorney of Record, PA, NY, NJ and DC Bar Member

Signatory's Phone Number: 215-751-2122

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.

        
RAM Sale Number: 88614666
RAM Accounting Date: 01/27/2020
        
Serial Number: 88614666
Internet Transmission Date: Mon Jan 27 08:46:49 EST 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.X-20200127084649438
510-88614666-700501a5d20b59eefb491c6d29b
4a8e1d2c6e9f5cc41683af36358abdcf3541db0-
DA-46493727-20200124160607928978