TEAS Request Reconsideration after FOA

PTO- 1960

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1960

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88821165 REXA(Standard Characters, see http://uspto.report/TM/88821165/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Recorded and downloadable computer programs and computer software for chat bot, communication channels featuring on line chat conversation via text or text to speech; Recorded and downloadable computer software platforms for chat bot, communication channels featuring on line chat conversation via text or text to speech; Recorded and downloadable application software for mobile phones and computer platforms for chat bot, communication channels featuring on line chat conversation via text or text to speech; Downloadable and recorded computer software for use in human resources management; Downloadable and recorded computer software for robotic process automation; Downloadable audio files, multimedia files, text files, e-mails, written documents, audio material, video material and games featuring information in the form of downloadable short educational and training communications in the field of human resource development for the promotion of employee retention, career growth and increased productivity for employees and employers; Downloadable and recorded computer software and mobile application software for accessing and connecting to online services for searching, for tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, and for synchronizing job recruiting data with email and calendaring software
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ India registration number 4324873 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 009 for Recorded and downloadable computer programs and computer software for chat bot, communication channels featuring on line chat conversation via text or text to speech; Recorded and downloadable computer software platforms for chat bot, communication channels featuring on line chat conversation via text or text to speech; Recorded and downloadable application software for mobile phones and computer platforms for chat bot, communication channels featuring on line chat conversation via text or text to speech; Downloadable and recorded computer software for use in human resources management; Downloadable and recorded computer software for robotic process automation; Downloadable audio files, multimedia files, text files, e-mails, written documents, audio material, video material and games featuring information in the form of downloadable short educational and training communications in the field of human resource development for the promotion of employee retention, career growth and increased productivity for employees and employers; Downloadable and recorded computer software and mobile application software for accessing and connecting to online services for searching, for tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, and for synchronizing job recruiting data with email and calendaring software
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ India registration number 4324873 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-3810821634-111209824 _._4324873_-_Cl.9__F37698 38x96B9E_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 016 for Brochures, manuals, periodicals, and magazines in the field of information technology, software, business process; Printed matter, namely, printed columns and articles on the subject of information technology, software, business process; Printed advertisement, namely, advertising posters, advertising signs of paper and cardboard, and pamphlets; Printed publicity literature, namely, newsletters in the field of information technology, software, business process; Catalogues in the field of information technology, software, business process; Flyers, pamphlets, booklets, and reports in the field of information technology, software
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ India registration number 4324874 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 016 for Brochures, manuals, periodicals, and magazines in the field of information technology, software, business process; Printed matter, namely, printed columns and articles on the subject of information technology, software, business process; Printed advertisement, namely, advertising posters, advertising signs of paper and cardboard, and pamphlets; Printed publicity literature, namely, newsletters in the field of information technology, software, business process; Catalogues in the field of information technology, software, business process; Flyers, pamphlets, booklets, and reports in the field of information technology, software
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ India registration number 4324874 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-3810821634-111209824 _._4324874_-_Cl.16__F3769 841x96B9E_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 035 for Business organization and management consulting services; Providing an on-line searchable database featuring employment opportunities; Human resources management and Personnel recruitment services; Providing online databases featuring information relating to employers and employees and places of employment; Providing on-line employment information in the field of recruitment, careers, job resources and listings; Information services relating to jobs and career opportunities, namely, providing an on-line searchable database featuring employment opportunities; Providing an on-line searchable database featuring business information and business contacts; Computer data processing; Compilation of business data
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ India registration number 4324875 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:
Class 035 for Business organization and management consulting services; Providing an on-line searchable database featuring employment opportunities; Human resources management and Personnel recruitment services; Providing online databases featuring information relating to employers and employees and places of employment; Providing on-line employment information in the field of recruitment, careers, job resources and listings; Information services relating to jobs and career opportunities, namely, providing an on-line searchable database featuring employment opportunities; Providing an on-line searchable database featuring business information and business contacts; Computer data processing; Compilation of business data
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ India registration number 4324875 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-3810821634-111209824 _._4324875_-_Cl.35__F3769 842x96B9E_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

Applicant proposes to amend the following:

Current:
Class 042 for Computer programming and computer software design; Development of computer platforms; Software as a service (SAAS) services featuring software for employment recruiting, namely, for searching for, tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, communication channels featuring on line chat conversation via text or text to speech and for synchronizing job recruiting data with email and calendaring software; Application service provider (ASP) featuring software for tracking, monitoring, automation, and assessment of staffing, hiring, recruiting and employee-retention processes, workforce and logistics management and planning, and decision support for use in the fields of staffing management, management, and administration; Computer software consulting; Installation of computer software; Providing temporary use of non-downloadable web-based software used to manage human resource functions and featuring on-line management of resumes, email, job tasks, calendars, job orders, personnel placement and timecards; computer software design, development and customization for others; Installation, maintenance and updating of computer software; Technical support services, namely, troubleshooting of computer software problems
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ India registration number 4324876 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Computer programming and computer software design; Development of computer platforms; Software as a service (SAAS) services featuring software for employment recruiting, namely, for searching for, tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, communication channels featuring on line chat conversation via text or text to speech and for synchronizing job recruiting data with email and calendaring software; Software as a service (SAAS) services featuring software for employment recruiting, namely, for searching for, tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, and for synchronizing job recruiting data with email and calendaring software; Application service provider (ASP) featuring software for tracking, monitoring, automation, and assessment of staffing, hiring, recruiting and employee-retention processes, workforce and logistics management and planning, and decision support for use in the fields of staffing management, management, and administration; Computer software consulting; Installation of computer software; Providing temporary use of non-downloadable web-based software used to manage human resource functions and featuring on-line management of resumes, email, job tasks, calendars, job orders, personnel placement and timecards; computer software design, development and customization for others; Installation, maintenance and updating of computer software; Technical support services, namely, troubleshooting of computer software problemsClass 042 for Computer programming and computer software design; Development of computer platforms; Software as a service (SAAS) services featuring software for employment recruiting, namely, for searching for, tracking and communicating with job candidates, for customizing job search parameters and processes, for posting job listings, for scheduling employment interviews, for preparing, collating and organizing reports on job candidates, for sharing recruiting information among multiple users, and for synchronizing job recruiting data with email and calendaring software; Application service provider (ASP) featuring software for tracking, monitoring, automation, and assessment of staffing, hiring, recruiting and employee-retention processes, workforce and logistics management and planning, and decision support for use in the fields of staffing management, management, and administration; Computer software consulting; Installation of computer software; Providing temporary use of non-downloadable web-based software used to manage human resource functions and featuring on-line management of resumes, email, job tasks, calendars, job orders, personnel placement and timecards; computer software design, development and customization for others; Installation, maintenance and updating of computer software; Technical support services, namely, troubleshooting of computer software problems
Webpage URL: None Provided
Webpage Date of Access: None Provided


Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ India registration number 4324876 registered 08/01/2020 with a renewal date of __________ and an expiration date of 08/01/2030 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU3-3810821634-111209824 _._4324876_-_Cl.42__F3769 844x96B9E_.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.
Correspondence Information (current):
      Charles T. J. Weigell
      PRIMARY EMAIL FOR CORRESPONDENCE: weigell-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is TATA 2002155.
Correspondence Information (proposed):
      Charles T. J. Weigell
      PRIMARY EMAIL FOR CORRESPONDENCE: weigell-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is TATA 2002155.

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)
Request for Reconsideration Signature
Signature: /ctw/     Date: 10/22/2021
Signatory's Name: Charles T. J. Weigell
Signatory's Position: Attorney of Record

Signatory's Phone Number: 212-813-8239 Signature method: Sent to third party for signature

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Charles T. J. Weigell
   
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Charles T. J. Weigell
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
        
Serial Number: 88821165
Internet Transmission Date: Fri Oct 22 17:06:14 ET 2021
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2021102217061413
5603-88821165-7813918449b54bed34cb42c1e5
81ab2141e9f65fd3911fc3ce57667eeda82452b-
N/A-N/A-20211014111209824585