Response to Office Action

PTO- 1957

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- 1957

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88915234 REACT(Standard Characters, see http://uspto.report/TM/88915234/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable software for building user interfaces; downloadable software tools for software development, namely, software for building user interfaces; downloadable software featuring an application programming interface (API) for use in further developing user interface building software
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 05/29/2013 and first used in commerce at least as early as 05/29/2013 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018235197 filed 05/06/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 009 for Downloadable software for building user interfaces; downloadable software tools for software development, namely, software for building user interfaces; downloadable software featuring an application programming interface (API) for use in further developing user interface building software
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 05/29/2013 and first used in commerce at least as early as 05/29/2013 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018235197 filed 05/06/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:

Current:
Class 041 for Publication of educational materials, namely, publishing of articles, manuals, journals and blogs in the fields of software development relating to building user interfaces; providing non-downloadable electronic publications for software developers relating to building user interfaces; providing online non-downloadable electronic publications in the fields of software development relating to building user interfaces; educational services, namely, organizing and conducting conferences, courses, and seminars in the field of software development for building user interfaces
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 05/29/2013 and first used in commerce at least as early as 05/29/2013 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018235197 filed 05/06/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Publication of educational materials, namely, publishing of articles, manuals, journals and blogs in the fields of software development relating to building user interfaces; providing non-downloadable electronic publications for software developers relating to building user interfaces; providing non-downloadable electronic publications in the nature of blogs, articles, tutorials, guides, and manuals for software developers relating to building user interfaces; providing online non-downloadable electronic publications in the fields of software development relating to building user interfaces; providing online non-downloadable electronic publications in the nature of blogs, articles, tutorials, guides, and manuals in the fields of software development relating to building user interfaces; educational services, namely, organizing and conducting conferences, courses, and seminars in the field of software development for building user interfacesClass 041 for Publication of educational materials, namely, publishing of articles, manuals, journals and blogs in the fields of software development relating to building user interfaces; providing non-downloadable electronic publications in the nature of blogs, articles, tutorials, guides, and manuals for software developers relating to building user interfaces; providing online non-downloadable electronic publications in the nature of blogs, articles, tutorials, guides, and manuals in the fields of software development relating to building user interfaces; educational services, namely, organizing and conducting conferences, courses, and seminars in the field of software development for building user interfaces
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 05/29/2013 and first used in commerce at least as early as 05/29/2013 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018235197 filed 05/06/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:

Current:
Class 042 for Providing temporary use of online non-downloadable software for building user interfaces; application service provider (ASP) featuring software to enable or facilitate user interface building software
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 05/29/2013 and first used in commerce at least as early as 05/29/2013 , and is now in use in such commerce.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 018235197 filed 05/06/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 042 for Providing temporary use of online non-downloadable software for building user interfaces; application service provider (ASP) featuring software to enable or facilitate user interface building software
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 05/29/2013 and first used in commerce at least as early as 05/29/2013 , and is now in use in such commerce.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 018235197 filed 05/06/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Correspondence Information (current):
      ALLISEN PAWLENTY
      PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@kilpatricktownsend.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): FBProsecution@kilpatricktownsend.com

The docket/reference number is 1191098.
Correspondence Information (proposed):
      Allisen Pawlenty
      PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@kilpatricktownsend.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): FBProsecution@kilpatricktownsend.com

The docket/reference number is 1191098.

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: /Ana-Claudia Roderick/     Date: 02/17/2021
Signatory's Name: Ana-Claudia Roderick
Signatory's Position: Associate Attorney, Kilpatrick Townsend & Stockton LLP, New York Bar Member

Signatory's Phone Number: 2127758700 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.

Mailing Address:    ALLISEN PAWLENTY
   KILPATRICK TOWNSEND & STOCKTON LLP
   
   607 14TH STREET NW, SUITE 900
   WASHINGTON, District of Columbia 20005-2018
Mailing Address:    Allisen Pawlenty
   KILPATRICK TOWNSEND & STOCKTON LLP
   607 14TH STREET NW, SUITE 900
   WASHINGTON, District of Columbia 20005-2018
        
Serial Number: 88915234
Internet Transmission Date: Wed Feb 17 10:41:41 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20210217104141855
556-88915234-770de2b9e4441183fc4bed11550
3b805390e8b1ca7248758b28ebd7b18e2dc0ea-N
/A-N/A-20210216155701722530