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:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
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.

In International Class 035, the mark was first used at least as early as 11/19/2019 and first used in commerce at least as early as 11/19/2019.


Proposed:
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

Deleted Filing Basis: 1(b)
In International Class 035, the mark was first used at least as early as 11/19/2019 . and first used in commerce at least as early as 11/19/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 035. The specimen(s) submitted consists of a screenshot of Applicant's website prominently featuring the mark in direct connection with the listed services.
"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:
SPU0-20620511711-20200807 170951628210_._EXCO_-_sub stiute_Class_35_specimen.pdf
Converted PDF file(s) ( 1 page) Specimen File1
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)
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: /Alberto Zacapa/      Date: 08/07/2020
Signatory's Name: Alberto Zacapa
Signatory's Position: Attorney of record, District of Columbia Bar member

Response Signature
Signature: /Alberto Zacapa/     Date: 08/07/2020
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: Fri Aug 07 17:15:49 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202008071715490
71734-88678918-7403551b62a2d23ad31524681
2cb57529256cf9b22d0cc74f918bac1c27c52418
3-N/A-N/A-20200807170951628210