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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88818767 KAYA(Standard Characters, see http://uspto.report/TM/88818767/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: Response to Office Action
Original PDF file:
evi_738310824-20201117144 801804246_._Office_Action _Response_-_KAYA.pdf
Converted PDF file(s) ( 9 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for downloadable computer software in the nature of a mobile application for the collection, storage, and display of performance data from climbing; downloadable software for tracking, monitoring, and planning climbing activities and trips; downloadable software for use by climbing gyms to improve member engagement, market and manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; downloadable software for use by climbing coaches to improve client engagement
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: downloadable computer software in the nature of a mobile application for the collection, storage, and display of performance data from climbing; downloadable software for tracking, monitoring, and planning climbing activities and trips; downloadable software for use by climbing gyms to improve member engagement, market and manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; downloadable software for use by climbing gyms to improve member engagement through customer relationship management (CRM), market and manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; downloadable software for use by climbing coaches to improve client engagement; downloadable software for use by climbing coaches to improve client engagement, namely, software for use in soliciting, gathering, categorizing, analyzing, and sharing customer feedbackClass 009 for downloadable computer software in the nature of a mobile application for the collection, storage, and display of performance data from climbing; downloadable software for tracking, monitoring, and planning climbing activities and trips; downloadable software for use by climbing gyms to improve member engagement through customer relationship management (CRM), market and manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; downloadable software for use by climbing coaches to improve client engagement, namely, software for use in soliciting, gathering, categorizing, analyzing, and sharing customer feedback
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 providing temporary use of nondownloadable software for the collection, storage, and display of performance data from climbing; providing temporary use of nondownloadable software for tracking, monitoring, and planning climbing activities and trips; providing temporary use of nondownloadable software for use by climbing gyms to improve member engagement, manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; providing temporary use of nondownloadable software for use by climbing coaches to improve client engagement
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 temporary use of nondownloadable software for the collection, storage, and display of performance data from climbing; providing temporary use of nondownloadable software for tracking, monitoring, and planning climbing activities and trips; providing temporary use of nondownloadable software for use by climbing gyms to improve member engagement, manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; providing temporary use of nondownloadable software for use by climbing gyms to improve member engagement through customer relationship management (CRM), manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; providing temporary use of nondownloadable software for use by climbing coaches to improve client engagement; providing temporary use of nondownloadable software for use by climbing coaches to improve client engagement, namely, software for use in soliciting, gathering, categorizing, analyzing, and sharing customer feedbackClass 042 for providing temporary use of nondownloadable software for the collection, storage, and display of performance data from climbing; providing temporary use of nondownloadable software for tracking, monitoring, and planning climbing activities and trips; providing temporary use of nondownloadable software for use by climbing gyms to improve member engagement through customer relationship management (CRM), manage operations, process payments and transactions, manage classes, create content, and create and map climbing information; providing temporary use of nondownloadable software for use by climbing coaches to improve client engagement, namely, software for use in soliciting, gathering, categorizing, analyzing, and sharing customer feedback
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 045 for online social network services in the field of climbing
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: online social network services in the field of climbing; online social networking services in the field of climbingClass 045 for online social networking services in the field of climbing
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.

ADDITIONAL STATEMENTS
Translation
The English translation of KAYA in the mark is you can.

Correspondence Information (current):
      AARON D. HENDELMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@wsgr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 57241-TM1001.
Correspondence Information (proposed):
      Aaron D. Hendelman
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@wsgr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 57241-TM1001.

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: /Ava R. Miller/     Date: 11/17/2020
Signatory's Name: Ava R. Miller
Signatory's Position: Attorney of record

Signatory's Phone Number: 6504939300

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:    AARON D. HENDELMAN
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304
Mailing Address:    Aaron D. Hendelman
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304
        
Serial Number: 88818767
Internet Transmission Date: Tue Nov 17 15:17:24 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20201117151724993
189-88818767-750613c308eb4ca2ed42b726d19
4ac2e65fac129643dc49c9c7e4c0a7acadd4-N/A
-N/A-20201117144801804246