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. 88800610 MOTUS(Standard Characters, see http://uspto.report/TM/88800610/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Software used on mobile devices for tracking and managing vehicle and device information, including mileage for purposes of reimbursement and field worker activity tracking, mobile applications for reimbursement, calculation, administering, and tracking vehicle mileage, telecommunications expenses, and business expenses; mobile apps for collecting vehicle information, insurance policy and coverage information, discounts and payment on fuel and related discount programs; fuel card programs; driver safety and training programs
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2014 and first used in commerce at least as early as 12/00/2014 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Software used on mobile devices for tracking and managing vehicle and device information, including mileage for purposes of reimbursement and field worker activity tracking, mobile applications for reimbursement, calculation, administering, and tracking vehicle mileage, telecommunications expenses, and business expenses; Downloadable software used on mobile devices for tracking and managing vehicle and device information, namely, mileage for purposes of reimbursement and field worker activity tracking; mobile apps for collecting vehicle information, insurance policy and coverage information, discounts and payment on fuel and related discount programs; , Downloadable mobile applications for reimbursement, calculation, administering, and tracking vehicle mileage, telecommunications expenses, and business expenses; fuel card programs; Downloadable mobile apps for collecting vehicle information, insurance policy and coverage information, discounts and payment on fuel and related discount programs; driver safety and training programs; downloadable cloud-based software for vehicle and mobile device information analysis, device procurement, discounts and payment on fuel and related discount programsClass 009 for Downloadable software used on mobile devices for tracking and managing vehicle and device information, namely, mileage for purposes of reimbursement and field worker activity tracking; , Downloadable mobile applications for reimbursement, calculation, administering, and tracking vehicle mileage, telecommunications expenses, and business expenses; Downloadable mobile apps for collecting vehicle information, insurance policy and coverage information, discounts and payment on fuel and related discount programs; downloadable cloud-based software for vehicle and mobile device information analysis, device procurement, discounts and payment on fuel and related discount programs
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2014 and first used in commerce at least as early as 12/00/2014 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 035 for Administering vehicle, device and business expense management and reimbursement programs for purposes of reimbursing employees for business use of personal assets or tracking personal use of business assets; business expense management services; Business management consultation services, conducting marketing studies, and commercial computer network services, namely, data collection, statistical analysis, and providing a website featuring reporting and recommendations concerning business vehicles, insurance policy and coverage information and recommendations, devices and expenses for business purposes; consulting in the field of Managed Mobility Services (MMS), which includes: Telecom Expense Management (TEM), Mobile Device Management (MDM), Mobile Application Management (MAM), Device as a Service (DaaS), and IoT device and expense management. Administration of mobile worker discount, procurement and/or rewards programs for enabling employee participants to purchase mobility-related goods and services; administration of fuel card programs; administration of insurance discount programs; administration of corporate-based driver safety and risk management programs
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2014 and first used in commerce at least as early as 12/00/2014 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Administering vehicle, device and business expense management and reimbursement programs for purposes of reimbursing employees for business use of personal assets or tracking personal use of business assets; Business management of reimbursement programs for others for purposes of reimbursing employees for business use of personal assets or tracking personal use of business assets; business expense management services; Business management consultation services, conducting marketing studies; Business management consultation services, conducting marketing studies, and commercial computer network services, namely, data collection, statistical analysis, and providing a website featuring reporting and recommendations concerning business vehicles, insurance policy and coverage information and recommendations, devices and expenses for business purposes; data collection and statistical analysis for business purposes in the fields of food, beverage, manufacturing, construction, building materials, machinery, electronics, electrical equipment, chemicals, plastics, rubber, retail, business services, restaurants, automotive transportation, textiles, insurance, mining, oil and gas production, consumer products, banking and financial services, technology, utilities and other industries where job duties are performed in the field; consulting in the field of Managed Mobility Services (MMS), which includes: Telecom Expense Management (TEM), Mobile Device Management (MDM), Mobile Application Management (MAM), Device as a Service (DaaS), and IoT device and expense management. Administration of mobile worker discount, procurement and/or rewards programs for enabling employee participants to purchase mobility-related goods and services; Business consultancy services, namely, consulting in the field of managed mobility services (MMS) and telecom expense management (TEM); administration of fuel card programs; business management of logistics for others, namely, consulting in the fields of mobile device management (MDM), mobile application management (MAM), device as a services (DaaS), and IoT device and expense management; administration of insurance discount programs; Administration of mobile worker discount, procurement and rewards programs for enabling employee participants to purchase mobility-related goods and services; administration of corporate-based driver safety and risk management programs; Business administration of consumer loyalty programs, namely, fuel card programs; administration of insurance discount programs in the nature of administration of a customer loyalty program which provides discounts on insurance; Fuel card programs in the nature of providingdiscount and incentive award programs for customers through issuance and processing of loyalty points for purchase of a company's goods and servicesClass 035 for Business management of reimbursement programs for others for purposes of reimbursing employees for business use of personal assets or tracking personal use of business assets; Business management consultation services, conducting marketing studies; data collection and statistical analysis for business purposes in the fields of food, beverage, manufacturing, construction, building materials, machinery, electronics, electrical equipment, chemicals, plastics, rubber, retail, business services, restaurants, automotive transportation, textiles, insurance, mining, oil and gas production, consumer products, banking and financial services, technology, utilities and other industries where job duties are performed in the field; Business consultancy services, namely, consulting in the field of managed mobility services (MMS) and telecom expense management (TEM); business management of logistics for others, namely, consulting in the fields of mobile device management (MDM), mobile application management (MAM), device as a services (DaaS), and IoT device and expense management; Administration of mobile worker discount, procurement and rewards programs for enabling employee participants to purchase mobility-related goods and services; Business administration of consumer loyalty programs, namely, fuel card programs; administration of insurance discount programs in the nature of administration of a customer loyalty program which provides discounts on insurance; Fuel card programs in the nature of providingdiscount and incentive award programs for customers through issuance and processing of loyalty points for purchase of a company's goods and services
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2014 and first used in commerce at least as early as 12/00/2014 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 042 for Development of vehicle reimbursement programs and expense management solutions or programs, namely, computer software development services for others for purposes of employee expense reimbursement; Providing on-line non-downloadable software for collecting, editing, organizing, compiling, comparing, modifying, transmitting, and storing data and information in the field of business vehicles and mobility expenses; providing on-line non-downloadable software for tracking and management of insurance policy and coverage information, Managed Mobility Services (MMS), which includes: Telecom Expense Management (TEM), Mobile Device Management (MDM), Mobile Application Management (MAM), Device as a Service (DaaS), and IoT device and expense management; cloud-based software for vehicle and mobile device information analysis, device procurement, discounts and payment on fuel and related discount programs; fuel card programs; driver safety and training programs
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2014 and first used in commerce at least as early as 12/00/2014 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Development of vehicle reimbursement programs and expense management solutions or programs, namely, computer software development services for others for purposes of employee expense reimbursement; Computer software development services for others for purposes of employee expense reimbursement in the fields of vehicle reimbursement programs and expense management solutions; Providing on-line non-downloadable software for collecting, editing, organizing, compiling, comparing, modifying, transmitting, and storing data and information in the field of business vehicles and mobility expenses; providing on-line non-downloadable software for tracking and management of insurance policy and coverage information, Managed Mobility Services (MMS), which includes: Telecom Expense Management (TEM), Mobile Device Management (MDM), Mobile Application Management (MAM), Device as a Service (DaaS), and IoT device and expense management; providing on-line non-downloadable software for tracking and management of insurance policy and coverage information; cloud-based software for vehicle and mobile device information analysis, device procurement, discounts and payment on fuel and related discount programs; Providing on-line non-downloadable software for collecting, editing, organizing, compiling, comparing, modifying, transmitting, and storing data and information in the field of telecommunications expenses; fuel card programs; providing temporary use of non-downloadable cloud-based software for vehicle and mobile device information analysis, device procurement, discounts and payment on fuel and related discount programs; driver safety and training programs; Providing an interactive website featuring technology that enables users to access information and reports concerning business vehicles, insurance policy and coverage information and recommendations, devices and expenses for business purposesClass 042 for Computer software development services for others for purposes of employee expense reimbursement in the fields of vehicle reimbursement programs and expense management solutions; Providing on-line non-downloadable software for collecting, editing, organizing, compiling, comparing, modifying, transmitting, and storing data and information in the field of business vehicles and mobility expenses; providing on-line non-downloadable software for tracking and management of insurance policy and coverage information; Providing on-line non-downloadable software for collecting, editing, organizing, compiling, comparing, modifying, transmitting, and storing data and information in the field of telecommunications expenses ; providing temporary use of non-downloadable cloud-based software for vehicle and mobile device information analysis, device procurement, discounts and payment on fuel and related discount programs; Providing an interactive website featuring technology that enables users to access information and reports concerning business vehicles, insurance policy and coverage information and recommendations, devices and expenses for business purposes
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2014 and first used in commerce at least as early as 12/00/2014 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 041 for Driver safety and training programs; administration of corporate-based driver safety and driving risk management programs in the nature of providing driver safety training
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 12/00/2014 and first used in commerce at least as early as 12/00/2014 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 041 . The specimen(s) submitted consists of Image of website offering 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].
Specimen File1
Correspondence Information (current):
      SUZANN MOSKOWITZ
      PRIMARY EMAIL FOR CORRESPONDENCE: suzann@themoskowitzfirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): admin@themoskowitzfirm.com

The docket/reference number is 346.
Correspondence Information (proposed):
      Suzann Moskowitz
      PRIMARY EMAIL FOR CORRESPONDENCE: suzann@themoskowitzfirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): admin@themoskowitzfirm.com

The docket/reference number is 346.

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).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

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: /Danielle Lackey/      Date: 06/30/2020
Signatory's Name: Danielle Lackey
Signatory's Position: CLO
Signatory's Phone Number: 2163391111


Response Signature
Signature: /Suzann Moskowitz/     Date: 07/01/2020
Signatory's Name: Suzann Moskowitz
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 2163391111

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:    SUZANN MOSKOWITZ
   THE MOSKOWITZ FIRM LLC
   
   14717 S. WOODLAND RD
   SHAKER HEIGHTS, Ohio 44120
Mailing Address:    Suzann Moskowitz
   THE MOSKOWITZ FIRM LLC
   14717 S. WOODLAND RD
   SHAKER HEIGHTS, Ohio 44120
        
RAM Sale Number: 88800610
RAM Accounting Date: 07/01/2020
        
Serial Number: 88800610
Internet Transmission Date: Wed Jul 01 10:50:46 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXXX:XXXX:XXX:XXXX:XXXX:X
XXX:XXXX-20200701105046760981-88800610-7
106562b1b3dbb32fd6a6d88762408cd1e3843f4e
634e40b399b65123e1eb24-CC-50442474-20200
630155705973834