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
The table below presents the data as entered.
Input Field
|
Entered
|
SERIAL NUMBER |
88740615 |
LAW OFFICE ASSIGNED |
LAW OFFICE 110 |
MARK SECTION |
MARK FILE NAME |
http://uspto.report/TM/88740615/mark.png |
LITERAL ELEMENT |
TUCOWS |
STANDARD CHARACTERS |
NO |
USPTO-GENERATED IMAGE |
NO |
OWNER SECTION (current) |
NAME |
TUCOWS (DELAWARE) INC. |
INTERNAL ADDRESS |
CORPORATION TRUST CENTER |
MAILING ADDRESS |
1209 ORANGE STREET |
CITY |
WILMINGTON |
STATE |
Delaware |
ZIP/POSTAL CODE |
19801 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
OWNER SECTION (proposed) |
NAME |
TUCOWS (DELAWARE) INC. |
INTERNAL ADDRESS |
CORPORATION TRUST CENTER |
MAILING ADDRESS |
1209 ORANGE STREET |
CITY |
WILMINGTON |
STATE |
Delaware |
ZIP/POSTAL CODE |
19801 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
EMAIL |
XXXX |
GOODS AND/OR SERVICES SECTION (009) (current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
computer software which allows access to a global computer network, sold via wholesale distributors, direct mail and which can be
downloaded from a global computer network |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 10/04/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 10/04/2019 |
GOODS AND/OR SERVICES SECTION (009) (proposed) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
computer software which allows access to a global computer network, sold via wholesale distributors, direct mail and which can be
downloaded from a global computer network |
FILING BASIS |
Section 1(b) |
DELETED FILING BASIS |
1(a); |
GOODS AND/OR SERVICES SECTION (035) (current) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
advertising services, namely, dissemination of advertising for others via a global computer network, offered via a global computer
network |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 10/04/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 10/04/2019 |
GOODS AND/OR SERVICES SECTION (035) (proposed) |
INTERNATIONAL CLASS |
035 |
DESCRIPTION |
advertising services, namely, dissemination of advertising for others via a global computer network, offered via a global computer
network |
FILING BASIS |
Section 1(b) |
DELETED FILING BASIS |
1(a); |
GOODS AND/OR SERVICES SECTION (042) (current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
computer software information services, namely, information regarding computer software related to a global computer network, offered
via a global computer network |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 10/04/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 10/04/2019 |
GOODS AND/OR SERVICES SECTION (042) (proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
computer software information services, namely, information regarding computer software related to a
global computer network, offered via a global computer network; Computer software information services, namely, information regarding computer software for the
registration and publication of Internet domain names, email, and hosting services; computer software information services, namely, information regarding the
use of mobile telephone services over the networks provided by mobile network operators; and computer software information services, namely, information
regarding the use of Internet fiber networks, all related to a global computer network, offered via a global computer network |
FINAL DESCRIPTION |
Computer software information services, namely, information regarding computer software for the registration and publication of
Internet domain names, email, and hosting services; computer software information services, namely, information regarding the use of mobile telephone services over the networks provided by mobile
network operators; and computer software information services, namely, information regarding the use of Internet fiber networks, all related to a global computer network, offered via a global
computer network |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 10/04/2019 |
FIRST USE IN COMMERCE DATE |
At least as early as 10/04/2019 |
STATEMENT TYPE |
"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]. |
SPECIMEN
FILE NAME(S) |
\\TICRS\EXPORT18\IMAGEOUT 18\887\406\88740615\xml4 \ ROA0002.JPG |
SPECIMEN DESCRIPTION |
screen shot from Applicant's web page |
CORRESPONDENCE INFORMATION (current) |
NAME |
CAROLE R. KLEIN |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@morganlewis.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
carole.klein@morganlewis.com |
CORRESPONDENCE INFORMATION (proposed) |
NAME |
Carole R. Klein |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademarks@morganlewis.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
carole.klein@morganlewis.com; antonio.teixeira@morganlewis.com |
SIGNATURE SECTION |
DECLARATION SIGNATURE |
/Bret Fausett/ |
SIGNATORY'S NAME |
Bret Fausett |
SIGNATORY'S POSITION |
Chief Legal Officer & VP, Regulatory Affairs |
SIGNATORY'S PHONE NUMBER |
202-739-5517 (for Carole Klein, Attorney of record) |
DATE SIGNED |
09/25/2020 |
RESPONSE SIGNATURE |
/Carole R Klein/ |
SIGNATORY'S NAME |
Carole R Klein |
SIGNATORY'S POSITION |
Attorney of record, DC bar member |
SIGNATORY'S PHONE NUMBER |
202.739.5517 |
DATE SIGNED |
09/25/2020 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Sep 25 14:04:42 ET 2020 |
TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XX-
20200925140442035578-8874
0615-750868598fee8f2a5ca6
cfe7ac1b47e2773735295034d
33e2a5dfc43778a947c2-N/A-
N/A-20200925133222999309 |
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.
88740615 TUCOWS (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8874061 5/large) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 009 for computer software which allows access to a global computer network, sold via wholesale distributors, direct mail and which can be downloaded from a global computer network
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/04/2019 and first used in commerce at least as early as 10/04/2019 , and
is now in use in such commerce.
Proposed:
Class 009 for computer software which allows access to a global computer network, sold via wholesale distributors, direct mail and which can be downloaded from a global computer network
Deleted Filing Basis: 1(a)
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 035 for advertising services, namely, dissemination of advertising for others via a global computer network, offered via a global computer network
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/04/2019 and first used in commerce at least as early as 10/04/2019 , and
is now in use in such commerce.
Proposed:
Class 035 for advertising services, namely, dissemination of advertising for others via a global computer network, offered via a global computer network
Deleted Filing Basis: 1(a)
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 computer software information services, namely, information regarding computer software related to a global computer network, offered via a global computer network
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/04/2019 and first used in commerce at least as early as 10/04/2019 , and
is now in use in such commerce.
Proposed:
Tracked Text Description: computer software information services, namely, information regarding computer software related to a global computer network, offered
via a global computer network;
Computer software information services, namely, information regarding computer software for the registration and publication of
Internet domain names, email, and hosting services;
computer software information services, namely, information regarding the use of mobile telephone services
over the networks provided by mobile network operators;
and computer software information services, namely, information regarding the use of Internet fiber
networks, all related to a global computer network, offered via a global computer networkClass 042 for Computer software information services, namely, information regarding computer software
for the registration and publication of Internet domain names, email, and hosting services; computer software information services, namely, information regarding the use of mobile telephone services
over the networks provided by mobile network operators; and computer software information services, namely, information regarding the use of Internet fiber networks, all related to a global computer
network, offered via a global computer network
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with
the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 10/04/2019 and first used in commerce at least as early as 10/04/2019 , and
is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of screen shot from Applicant's web page.
"
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].
Specimen File1
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: TUCOWS (DELAWARE) INC., a corporation of Delaware, having an address of
CORPORATION TRUST CENTER 1209 ORANGE STREET
WILMINGTON, Delaware 19801
United States
Proposed: TUCOWS (DELAWARE) INC., a corporation of Delaware, having an address of
CORPORATION TRUST CENTER
1209 ORANGE STREET
WILMINGTON, Delaware 19801
United States
Email Address: XXXX
Correspondence Information (current):
CAROLE R. KLEIN
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@morganlewis.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): carole.klein@morganlewis.com
Correspondence Information (proposed):
Carole R. Klein
PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@morganlewis.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): carole.klein@morganlewis.com; antonio.teixeira@morganlewis.com
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: /Bret Fausett/ Date: 09/25/2020
Signatory's Name: Bret Fausett
Signatory's Position: Chief Legal Officer & VP, Regulatory Affairs
Signatory's Phone Number: 202-739-5517 (for Carole Klein, Attorney of record)
Response Signature
Signature: /Carole R Klein/ Date: 09/25/2020
Signatory's Name: Carole R Klein
Signatory's Position: Attorney of record, DC bar member
Signatory's Phone Number: 202.739.5517
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: CAROLE R. KLEIN
MORGAN, LEWIS & BOCKIUS LLP
ATTENTION: TMSU
1111 PENNSYLVANIA AVENUE, NW
WASHINGTON, District of Columbia 20004
Mailing Address: Carole R. Klein
MORGAN, LEWIS & BOCKIUS LLP
ATTENTION: TMSU
1111 PENNSYLVANIA AVENUE, NW
WASHINGTON, District of Columbia 20004
Serial Number: 88740615
Internet Transmission Date: Fri Sep 25 14:04:42 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202009251404420
35578-88740615-750868598fee8f2a5ca6cfe7a
c1b47e2773735295034d33e2a5dfc43778a947c2
-N/A-N/A-20200925133222999309