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. 88756185 TRIPADVISOR (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8875618 5/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Price comparison services in the field of travel and lodging for use by consumers in determining the cost of transportation and accommodations, available electronically via computer networks and global information networks; providing consumer information for others about transportation, travel and lodging, available electronically via computer networks and global information networks; advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks; Providing a website featuring the reviews, ratings, and recommendations of users on hotels and other temporary accommodations for commercial purposes
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: Price comparison services in the field of travel and lodging for use by consumers in determining the cost of transportation and accommodations, available electronically via computer networks and global information networks; providing consumer information for others about transportation, travel and lodging, available electronically via computer networks and global information networks; providing reviews of travel service providers for commercial purposes; advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks; Providing a website featuring the reviews, ratings, and recommendations of users on hotels and other temporary accommodations for commercial purposesClass 035 for Price comparison services in the field of travel and lodging for use by consumers in determining the cost of transportation and accommodations, available electronically via computer networks and global information networks; providing consumer information for others about transportation, travel and lodging, available electronically via computer networks and global information networks; providing reviews of travel service providers for commercial purposes; advertising services, namely, promoting and marketing the goods and services of others via electronic communication networks; Providing a website featuring the reviews, ratings, and recommendations of users on hotels and other temporary accommodations for commercial purposes
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 039 for Travel information services; providing an on-line computer database in the field of travel information services; providing reviews of travel service providers, travel destinations and travel tours via computer networks and global information networks; providing an on-line searchable computer database featuring information on transportation, travel and route planning; providing travel consultancy; providing electronic information concerning travel; travel agency services, namely, making reservations and bookings for transportation and travel booking services; providing information, news, and reviews of travel service providers
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: Travel information services; providing an on-line computer database in the field of travel information services; providing reviews of travel service providers, travel destinations and travel tours via computer networks and global information networks; providing reviews of travel service providers; providing reviews of transportation options for travel tours; providing an on-line searchable computer database featuring information on transportation, travel and route planning; providing travel consultancy; providing electronic information concerning travel; providing information, news, and reviews of travel service providers; travel agency services, namely, making reservations and bookings for transportation and travel booking servicesClass 039 for Travel information services; providing an on-line computer database in the field of travel information services; providing reviews of travel service providers; providing reviews of transportation options for travel tours; providing an on-line searchable computer database featuring information on transportation, travel and route planning; providing travel consultancy; providing electronic information concerning travel; travel agency services, namely, making reservations and bookings for transportation and travel booking 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.

Applicant proposes to amend the following:

Current:
Class 043 for Providing lodging and restaurant information services; providing reviews of hotel accommodations and restaurants via computer networks and global information networks; providing online reviews of local attractions via the Internet, namely, providing online reviews of restaurants, hotels and resorts that provide meals and accommodations via computer networks and global information networks; travel agency services, namely, assisting with reservations and bookings for lodging over computer networks, global computer communication networks, and mobile networks; restaurant reservation services; providing online reservation, booking and search services for temporary lodging, temporary accommodations and temporary vacation rentals
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: Providing lodging and restaurant information services; providing reviews of hotel accommodations and restaurants via computer networks and global information networks; providing online reviews of local attractions via the Internet, namely, providing online reviews of restaurants, hotels and resorts that provide meals and accommodations via computer networks and global information networks; providing reviews of hotels and restaurants for travel tours; travel agency services, namely, assisting with reservations and bookings for lodging over computer networks, global computer communication networks, and mobile networks; restaurant reservation services; providing online reservation, booking and search services for temporary lodging, temporary accommodations and temporary vacation rentalsClass 043 for Providing lodging and restaurant information services; providing reviews of hotel accommodations and restaurants via computer networks and global information networks; providing online reviews of local attractions via the Internet, namely, providing online reviews of restaurants, hotels and resorts that provide meals and accommodations via computer networks and global information networks; providing reviews of hotels and restaurants for travel tours; travel agency services, namely, assisting with reservations and bookings for lodging over computer networks, global computer communication networks, and mobile networks; restaurant reservation services; providing online reservation, booking and search services for temporary lodging, temporary accommodations and temporary vacation rentals
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: TripAdvisor LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      400 1st Avenue
      Needham, Massachusetts 02494
      United States

Proposed: TripAdvisor LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      400 1st Avenue
      Needham, Massachusetts 02494
      United States
      Email Address: XXXX
Correspondence Information (current):
      TIFFANY FERRIS
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketing@haynesboone.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tiffany.ferris@haynesboone.com; veronica.broadway@haynesboone.com

The docket/reference number is 57051.6.
Correspondence Information (proposed):
      Tiffany Ferris
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocketing@haynesboone.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tiffany.ferris@haynesboone.com; laura.johnson@haynesboone.com

The docket/reference number is 57051.6.

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: /Tiffany Ferris/     Date: 08/31/2020
Signatory's Name: Tiffany Ferris
Signatory's Position: Attorney of Record, Texas Bar Member

Signatory's Phone Number: 214-651-5152

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:    TIFFANY FERRIS
   HAYNES AND BOONE, LLP
   
   2323 VICTORY AVENUE, SUITE 700
   DALLAS, Texas 75219
Mailing Address:    Tiffany Ferris
   HAYNES AND BOONE, LLP
   2323 VICTORY AVENUE, SUITE 700
   DALLAS, Texas 75219
        
Serial Number: 88756185
Internet Transmission Date: Mon Aug 31 19:38:03 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.X-202008311938033167
05-88756185-7505db5e42b3d538fdf358d67d77
1e7a2d9cef69e6d22ead249b2adcb5c5d15-N/A-
N/A-20200831193436213923