TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88678918 EX·CO (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8867891 8/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Digital advertising distributed via an embedded streaming multimedia player; advertising services, namely, creating branded content advertising campaigns; online advertising distribution services, namely, promoting and marketing the goods and services of other by distributing advertising material via digital media
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: Digital advertising distributed via an embedded streaming multimedia player; Distribution of digital advertising content distributed via an embedded streaming multimedia player; advertising services, namely, creating branded content advertising campaigns; online advertising distribution services, namely, promoting and marketing the goods and services of other by distributing advertising material via digital media; online advertising distribution services, namely, promoting and marketing the goods and services of others by distributing advertising material via digital media.Class 035 for Distribution of digital advertising content distributed via an embedded streaming multimedia player; advertising services, namely, creating branded content advertising campaigns; online advertising distribution services, namely, promoting and marketing the goods and services of others by distributing advertising material via digital media.
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 proposes to amend the following:

Current:
Class 042 for Software as a service (SAAS) services featuring software for creating, displaying sharing and/or embedding content on webpages to display video, interactive, and advertising content; software as a service (SAAS) services featuring software for creating interactive digital content and content sharing, displaying or embedding on websites; providing an online platform as a service (PAAS) featuring software for creating interactive digital content and content sharing, displaying and/or embedding on websites; providing temporary use of on-line non-downloadable software and applications for use in monetizing digital media content
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: Software as a service (SAAS) services featuring software for creating, displaying sharing and/or embedding content on webpages to display video, interactive, and advertising content; Software as a service (SAAS) services featuring software for creating, displaying, sharing, and embedding content on webpages to display video, interactive, and advertising content; software as a service (SAAS) services featuring software for creating interactive digital content and content sharing, displaying or embedding on websites; software as a service (SAAS) services featuring software for creating interactive digital content and for sharing, displaying, and embedding content on websites; providing an online platform as a service (PAAS) featuring software for creating interactive digital content and content sharing, displaying and/or embedding on websites; platform as a service (PAAS) featuring computer software platforms for creating interactive digital content and content sharing, displaying and embedding on websites; providing temporary use of on-line non-downloadable software and applications for use in monetizing digital media content; providing temporary use of online non-downloadable software and applications for use in creating interactive digital content and for sharing, displaying and embedding created content on websites in order to monetize digital media content.Class 042 for Software as a service (SAAS) services featuring software for creating, displaying, sharing, and embedding content on webpages to display video, interactive, and advertising content; software as a service (SAAS) services featuring software for creating interactive digital content and for sharing, displaying, and embedding content on websites; platform as a service (PAAS) featuring computer software platforms for creating interactive digital content and content sharing, displaying and embedding on websites; providing temporary use of online non-downloadable software and applications for use in creating interactive digital content and for sharing, displaying and embedding created content on websites in order to monetize digital media content.
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: Playbuzz Ltd. a(n) limited company (ltd.), legally organized under the laws of Israel, having an address of

            Building A, 1st Floor      3 Aluf Kalman Magen Street
      Tel Aviv, 6107075
      Israel
      Email Address: XXXX

Proposed: Playbuzz Ltd., a limited liability company legally organized under the laws of Israel, having an address of
      Building A, 1st Floor
      3 Aluf Kalman Magen Street
      Tel Aviv, 6107075
      Israel
      Email Address: XXXX
Correspondence Information (current):
      Ann K. Ford
      PRIMARY EMAIL FOR CORRESPONDENCE: dctrademarks@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): alberto.zacapa@dlapiper.com

The docket/reference number is 411532-2.
Correspondence Information (proposed):
      Ann K. Ford
      PRIMARY EMAIL FOR CORRESPONDENCE: dctrademarks@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): alberto.zacapa@dlapiper.com

The docket/reference number is 411532-2.

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)
Request for Reconsideration Signature
Signature: /Alberto Zacapa/     Date: 04/06/2020
Signatory's Name: Alberto Zacapa
Signatory's Position: Attorney of record, District of Columbia bar member

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Ann K. Ford
   DLA PIPER LLP (US)
   
   500 8TH STREET NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Ann K. Ford
   DLA PIPER LLP (US)
   500 8TH STREET NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88678918
Internet Transmission Date: Mon Apr 06 09:01:52 ET 2020
TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XX-2020040609015245
1697-88678918-7108b9a5fe66261b5acabe537c
b0d2b0e13e7e6e7cba49fbced2f1ff7b2dbb1b-N
/A-N/A-20200406084925440830