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. 88903043 PREPLY (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8890304 3/large) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: PREPLY (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8890304 3/large)
Proposed: PREPLY (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of two banners intersecting on a diagonal; the lower banner is striped, the banner on top consists of two solid squares.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable software for connecting consumers and language tutors

Proposed:
Class 009 for Downloadable software for connecting consumers and language tutors
The applicant, 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, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Applicant hereby submits one(or more) specimen(s) for Class 009. The specimen(s) submitted consists of Screen shot of mobile app loaded on mobile device.
"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].
Original PDF file:
SPU0-21625323154-20201111 200722849235_._Preply_Ver tical_logo_Class_9_specim en_of_use.pdf
Converted PDF file(s) ( 1 page) Specimen File1

ADDITIONAL STATEMENTS
Miscellaneous Statement
In an Office Action dated August 1, 2020, the Examining Attorney refused registration of Applicant's mark in Class 9 on the grounds that the specimen submitted showed multiple marks. In response, Applicant submits the attached substitute specimen and requests that the mark be amended to comport with the mark as reflected in the specimen, as per the undersigned teleconference with the Examining Attorney on September 10, 2020.A substitute drawing is also attached hereto and Applicant submits that the movement of the wording does not materially alter the mark.

Correspondence Information (current):
      Barbara L. Friedman
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@donahue.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bfriedman@donahue.com

The docket/reference number is 31482.02.
Correspondence Information (proposed):
      Barbara L. Friedman
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@donahue.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bfriedman@donahue.com

The docket/reference number is 31482.02.

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: /BLF/      Date: 11/11/2020
Signatory's Name: Barbara L. Friedman
Signatory's Position: Attorney of Record, member of California Bar
Signatory's Phone Number: 5104513300


Response Signature
Signature: /BLF/     Date: 11/11/2020
Signatory's Name: Barbara L. Friedman
Signatory's Position: Attorney of Record, California Bar member

Signatory's Phone Number: 5104513300

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:    Barbara L. Friedman
   DONAHUE FITZGERALD LLP
   
   1999 HARRISON STREET, 26TH FL.
   OAKLAND, California 94612
Mailing Address:    Barbara L. Friedman
   DONAHUE FITZGERALD LLP
   1999 HARRISON STREET, 26TH FL.
   OAKLAND, California 94612
        
Serial Number: 88903043
Internet Transmission Date: Wed Nov 11 20:16:16 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202011112016162
60569-88903043-750530259f1e8011a481af789
e43f4ec35878214af9d78055c53fb3ae6960ad93
-N/A-N/A-20201111200722849235