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. 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:

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

Applicant notes that is is, in fact, a limited company of Israel and requests that the Examining Attorney withdraw the requirement to amend its entity type. Applicant also notes that all of its other US trademark applications and registrations identify it in the same way. With respect to the amendment to the description of services, Applicant notes that it is amending its description of services in line with the description as amended in its companion application (App. Serial No. 88578010) and requests that the Examining Attorney treat the current Application consistently.

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
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; advertising services, namely, creating branded content advertising campaigns; online advertising distribution services; online advertising distribution services, namely, promoting and marketing the goods and services of other by distributing advertising material via digital mediaClass 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.

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 software platform 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 interactive digital content and content sharing, displaying or embedding on websites; providing an online software platform for creating interactive digital content and content sharing, displaying and/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 contentClass 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.

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

Proposed: Playbuzz Ltd., 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

ADDITIONAL STATEMENTS
Color Claim
The color(s) light blue, dark blue, purple, and black is/are claimed as a feature of the mark.

Description of mark
The mark consists of the stylized wording "EX·CO" where the letter "E" is made of three black parallel horizontal bars with small squares to the left of each. The top square is light blue, the middle square is dark blue, and the bottom square is purple. The rest of the lettering, "X·CO", is in black. The color white represents background and is not claimed as a feature of the mark.
Correspondence Information (current):
      ANN K. FORD
      PRIMARY EMAIL FOR CORRESPONDENCE: dctrademarks@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

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)
Response Signature
Signature: /Alberto Zacapa/     Date: 03/30/2020
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.

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 Mar 30 15:07:30 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020033015073079
0189-88678918-710b020adf07a497fcbe7d3899
d6548a2aeda9a6dc921750e5e49a563da0d421-N
/A-N/A-20200330143807530498