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. 88925545 NIGHTINGALE(Standard Characters, see http://uspto.report/TM/88925545/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable communication software for providing access to the Internet; Downloadable software for use in database management; Downloadable computer software to maintain and operate computer systems; Downloadable computer application software for use in uploading, downloading, storing, backing up, transmitting, receiving, accessing, retrieving, managing, organizing, and synchronizing data, email, documents, images, audio, video, multimedia content, electronic publications, computer files and other computer software; Downloadable computer software development tools; Downloadable computer software for use in migrating data between different computer network operating systems; Electronic data processing apparatus; Recorded computer operating system software; Downloadable network access server operating software; Downloadable computer software for processing digital images and data; Downloadable computer programs for user interface design; Electronic publications, namely, books, magazines, and manuals featuring action-related entertainment recorded on computer media; Downloadable virtual reality software for action adventures; Downloadable electronic action games via the internet and wireless devices; Downloadable computer game programs comprised of action adventures; Downloadable virtual reality software for playing action-based computer games; Recorded video game programs for playing action-based computer games; Downloadable interactive game software for playing action-based computer games; Recorded interactive software for playing action-based computer games
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.

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[ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Downloadable communication software for providing access to the Internet; Downloadable electronic action games via the internet and wireless devices; Downloadable software for use in database management; Downloadable computer game programs comprised of action adventures; Downloadable computer software to maintain and operate computer systems; Downloadable virtual reality software for playing action-based computer games; Downloadable computer application software for use in uploading, downloading, storing, backing up, transmitting, receiving, accessing, retrieving, managing, organizing, and synchronizing data, email, documents, images, audio, video, multimedia content, electronic publications, computer files and other computer software; Recorded video game programs for playing action-based computer games; Downloadable computer software development tools; Downloadable interactive game software for playing action-based computer games; Downloadable computer software for use in migrating data between different computer network operating systems; Recorded interactive software for playing action-based computer games; Electronic data processing apparatus; Recorded computer operating system software; Downloadable network access server operating software; Downloadable computer software for processing digital images and data; Downloadable computer programs for user interface design; Electronic publications, namely, books, magazines, and manuals featuring action-related entertainment recorded on computer media; Downloadable virtual reality software for action adventuresClass 009 for Downloadable electronic action games via the internet and wireless devices; Downloadable computer game programs comprised of action adventures; Downloadable virtual reality software for playing action-based computer games; Recorded video game programs for playing action-based computer games; Downloadable interactive game software for playing action-based computer games; Recorded interactive software for playing action-based computer games
Deleted Filing Basis: 1(b)
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 [ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3478778 registered 04/01/2020 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU0-73185158240-16173566 8_._UK00003478778_-_NIGHT INGALE.pdf
Converted PDF file(s) ( 5 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5

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 038 for Telecommunication access services; Providing access to telecommunication networks; Telecommunication services, namely, transmission of voice, data, graphics, sound and video by means of broadband power line or wireless networks; Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Electronic exchange of data stored in databases accessible via telecommunication networks; Providing multiple-user access to data on the Internet in the field of entertainment; Providing electronic transmission of secure e-mail; Providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information; Provision of access to data or documents stored electronically in central files for remote consultation; Providing telecommunication connections to the internet or databases; Transmission of sound, picture and data signals; Transmission and delivery of entertainment-based content via wireless communication networks and the internet; Providing on-line forums for transmission of messages among computer users concerning entertainment; Providing user access to global computer networks; Provision of access to electronic sites; Providing access to telecommunication networks; Web messaging; Providing access to the Internet; Providing access to databases; Rental of telecommunication facilities; Providing virtual private network (VPN) services, namely, private and secure electronic communications over a private or public computer network; Chat room services for social networking; Providing access to telecommunication networks for entertainment purposes; Providing on-line facilities for real-time interaction with other computer users and electronic bulletin boards concerning topics of interest relating to action-based entertainment; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of entertainment; Providing information in the field of telecommunications; Providing telecommunications access to electronic, computer and video action-based games; delivery of electronic, computer and video action-based games by telecommunication; electronic message and chat services for use in connection with interactive action-based games played over computer networks and global communications networks; providing access to on-line publications and information, in particular relating to software and computer action-based games; providing on-line facilities for real-time interaction between and among computer users, in particular relating to software and computer action-based games
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.

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[ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Telecommunication access services; Providing access to telecommunication networks; Telecommunication services, namely, transmission of voice, data, graphics, sound and video by means of broadband power line or wireless networks; Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Electronic exchange of data stored in databases accessible via telecommunication networks; Providing multiple-user access to data on the Internet in the field of entertainment; Providing electronic transmission of secure e-mail; Providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information; Providing multiple users access to global computer information networks for the transfer and dissemination of a wide range of information; Provision of access to data or documents stored electronically in central files for remote consultation; Providing telecommunication connections to the internet or databases; Transmission of sound, picture and data signals; Transmission and delivery of entertainment-based content via wireless communication networks and the internet; Providing on-line forums for transmission of messages among computer users concerning entertainment; Providing user access to global computer networks; Provision of access to electronic sites; Providing access to telecommunication networks; Web messaging; Providing access to the Internet; Providing access to databases; Rental of telecommunication facilities; Providing virtual private network (VPN) services, namely, private and secure electronic communications over a private or public computer network; Chat room services for social networking; Providing access to telecommunication networks for entertainment purposes; Providing on-line facilities for real-time interaction with other computer users and electronic bulletin boards concerning topics of interest relating to action-based entertainment; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of entertainment; Providing information in the field of telecommunications; Providing telecommunications access to electronic, computer and video action-based games; delivery of electronic, computer and video action-based games by telecommunication; electronic message and chat services for use in connection with interactive action-based games played over computer networks and global communications networks; providing on-line facilities for real-time interaction between and among computer users, in particular relating to software and computer action-based games; providing access to on-line publications and information, in particular relating to software and computer action-based gamesClass 038 for Telecommunication access services; Providing access to telecommunication networks; Telecommunication services, namely, transmission of voice, data, graphics, sound and video by means of broadband power line or wireless networks; Telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Electronic exchange of data stored in databases accessible via telecommunication networks; Providing multiple-user access to data on the Internet in the field of entertainment; Providing electronic transmission of secure e-mail; Providing multiple users access to global computer information networks for the transfer and dissemination of a wide range of information; Provision of access to data or documents stored electronically in central files for remote consultation; Providing telecommunication connections to the internet or databases; Transmission of sound, picture and data signals; Transmission and delivery of entertainment-based content via wireless communication networks and the internet; Providing on-line forums for transmission of messages among computer users concerning entertainment; Providing user access to global computer networks; Provision of access to electronic sites; Providing access to telecommunication networks; Web messaging; Providing access to the Internet; Providing access to databases; Rental of telecommunication facilities; Providing virtual private network (VPN) services, namely, private and secure electronic communications over a private or public computer network; Chat room services for social networking; Providing access to telecommunication networks for entertainment purposes; Providing on-line facilities for real-time interaction with other computer users and electronic bulletin boards concerning topics of interest relating to action-based entertainment; Providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of entertainment; Providing information in the field of telecommunications; Providing telecommunications access to electronic, computer and video action-based games; electronic message and chat services for use in connection with interactive action-based games played over computer networks and global communications networks; providing on-line facilities for real-time interaction between and among computer users, in particular relating to software and computer action-based games
Deleted Filing Basis: 1(b)
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 [ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3478778 registered 04/01/2020 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU1-73185158240-16173566 8_._UK00003478778_-_NIGHT INGALE.pdf
Converted PDF file(s) ( 5 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5

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 041 for Information relating to entertainment and education provided on-line from a computer database or the internet; Educational services, namely, conducting programs in the field of software; Virtual reality media services in the field of entertainment provided on-line from a computer network; Entertainment services, namely, providing on-line computer, electronic and video action-based adventure accessible via mobile phones, tablets and computers; Educational services, namely, conducting seminars and conferences for promotional purposes in the field of entertainment; Computer education training; Organisation of exhibitions for cultural or educational purposes; Arranging, organizing, conducting, and hosting social entertainment events; Organizing on-line exhibitions and conferences in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes; Entertainment in the nature of online, action-based tournaments; Providing an Internet website portal in the field of entertainment, cultural and sporting events; Providing on-line information, news and commentary in the field of entertainment; Providing information and news in the field of current events relating to computers and computer software; providing online news and information in relation to action-based computer games; providing action-based computer games and action-based video games for entertainment purposes; action-based video game entertainment services; Entertainment services, namely, providing on-line computer, electronic and video action-based games accessible via video game machines, mobile phones, tablets and computers; online entertainment in the nature of action-based computer game tournaments
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.

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[ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Information relating to entertainment and education provided on-line from a computer database or the internet; Educational services, namely, conducting programs in the field of software; Virtual reality media services in the field of entertainment provided on-line from a computer network; Virtual reality media services in the field of entertainment provided on-line from a computer network, namely, providing online virtual reality computer games; Entertainment services, namely, providing on-line computer, electronic and video action-based adventure accessible via mobile phones, tablets and computers; Educational services, namely, conducting seminars and conferences for promotional purposes in the field of entertainment; Educational services, namely, conducting seminars and conferences in the field of entertainment; Computer education training; Organisation of exhibitions for cultural or educational purposes; Arranging, organizing, conducting, and hosting social entertainment events; Organizing on-line exhibitions and conferences in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes; Entertainment in the nature of online, action-based tournaments; Entertainment in the nature of online, action-based computer game tournaments; Providing an Internet website portal in the field of entertainment, cultural and sporting events; Providing on-line information, news and commentary in the field of entertainment; Providing information and news in the field of current events relating to computers and computer software; providing online news and information in relation to action-based computer games; providing action-based computer games and action-based video games for entertainment purposes; providing online action-based computer games and action-based video games for entertainment purposes; action-based video game entertainment services; action-based video game entertainment services, namely, providing online action-based video games; Entertainment services, namely, providing on-line computer, electronic and video action-based games accessible via video game machines, mobile phones, tablets and computers; online entertainment in the nature of action-based computer game tournaments; Providing online non-downloadable electronic, computer and video action-based games; Providing information in the field of computer action-based games via the InternetClass 041 for Information relating to entertainment and education provided on-line from a computer database or the internet; Educational services, namely, conducting programs in the field of software; Virtual reality media services in the field of entertainment provided on-line from a computer network, namely, providing online virtual reality computer games; Entertainment services, namely, providing on-line computer, electronic and video action-based adventure accessible via mobile phones, tablets and computers; Educational services, namely, conducting seminars and conferences in the field of entertainment; Computer education training; Organisation of exhibitions for cultural or educational purposes; Arranging, organizing, conducting, and hosting social entertainment events; Organizing on-line exhibitions and conferences in the fields of education, culture, sports and entertainment for non-business and non-commercial purposes; Entertainment in the nature of online, action-based computer game tournaments; Providing an Internet website portal in the field of entertainment, cultural and sporting events; Providing on-line information, news and commentary in the field of entertainment; Providing information and news in the field of current events relating to computers and computer software; providing online news and information in relation to action-based computer games; providing online action-based computer games and action-based video games for entertainment purposes; action-based video game entertainment services, namely, providing online action-based video games; Entertainment services, namely, providing on-line computer, electronic and video action-based games accessible via video game machines, mobile phones, tablets and computers; online entertainment in the nature of action-based computer game tournaments; Providing online non-downloadable electronic, computer and video action-based games; Providing information in the field of computer action-based games via the Internet
Deleted Filing Basis: 1(b)
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 [ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3478778 registered 04/01/2020 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU2-73185158240-16173566 8_._UK00003478778_-_NIGHT INGALE.pdf
Converted PDF file(s) ( 5 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5

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 services, namely, domain forwarding service; Hosting of digital content on the Internet; Application service provider (ASP), namely, hosting computer software applications of others; Design and development of computer software and hardware for use in the entertainment industry; Computer programming for others; Updating of computer software; Updating of computer software for use in the entertainment industry; Scientific and technological services, namely, research and design in the field of computer software and computer networking hardware; Scientific and technological services, namely, scientific research and analysis in the field of computer software and computer networking hardware; Consulting services in the field of cloud computing; rental of computer operating software for accessing and using a cloud computing network; Design and development of computer operating software for accessing and using a cloud computing network; Providing a web site that features information on computer technology and programming; Writing, designing, developing and producing computer software and hardware, computer programs and action-based computer games; updating computer software, computer programs and action-based computer games
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.

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[ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Computer services, namely, domain forwarding service; Hosting of digital content on the Internet; Application service provider (ASP), namely, hosting computer software applications of others; Design and development of computer software and hardware for use in the entertainment industry; Computer programming for others; Updating of computer software; Updating of computer software for use in the entertainment industry; Scientific and technological services, namely, research and design in the field of computer software and computer networking hardware; Scientific and technological services, namely, scientific research and analysis in the field of computer software and computer networking hardware; Consulting services in the field of cloud computing; rental of computer operating software for accessing and using a cloud computing network; Design and development of computer operating software for accessing and using a cloud computing network; Providing a web site that features information on computer technology and programming; Writing, designing, developing and producing computer software and hardware, computer programs and action-based computer games; Writing, designing, developing and producing computer software, computer programs and action-based computer games; Design and development of computer hardware; Updating computer software, computer programs and action-based computer games; Providing information in the field of software developmentClass 042 for Computer services, namely, domain forwarding service; Hosting of digital content on the Internet; Application service provider (ASP), namely, hosting computer software applications of others; Design and development of computer software and hardware for use in the entertainment industry; Computer programming for others; Updating of computer software; Updating of computer software for use in the entertainment industry; Scientific and technological services, namely, research and design in the field of computer software and computer networking hardware; Scientific and technological services, namely, scientific research and analysis in the field of computer software and computer networking hardware; Consulting services in the field of cloud computing; rental of computer operating software for accessing and using a cloud computing network; Design and development of computer operating software for accessing and using a cloud computing network; Providing a web site that features information on computer technology and programming; Writing, designing, developing and producing computer software, computer programs and action-based computer games; Design and development of computer hardware; Updating computer software, computer programs and action-based computer games; Providing information in the field of software development
Deleted Filing Basis: 1(b)
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 [ United Kingdom application number 3478778 filed 04/01/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number 3478778 registered 04/01/2020 with a renewal date of __________ and an expiration date of __________ ], 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:
FRU3-73185158240-16173566 8_._UK00003478778_-_NIGHT INGALE.pdf
Converted PDF file(s) ( 5 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5

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):
      DANIELLE I. MATTESSICH
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mmorris@merchantgould.com; 13367.0247US01.active@ef.merchantgould.com; dmattessich@merchantgould.com

The docket/reference number is 13367.247US0.
Correspondence Information (proposed):
      Danielle I. Mattessich
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mmorris@merchantgould.com; 13367.0247US01.active@ef.merchantgould.com; dmattessich@merchantgould.com

The docket/reference number is 13367.247US0.

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: /daniellemattessich/      Date: 09/18/2020
Signatory's Name: Danielle I Mattessich
Signatory's Position: Attorney for Applicant, Minnesota Bar Member
Signatory's Phone Number: 6123325300


Response Signature
Signature: /daniellemattessich/     Date: 09/18/2020
Signatory's Name: Danielle I. Mattessich
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 6123325300

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:    DANIELLE I. MATTESSICH
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
Mailing Address:    Danielle I. Mattessich
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
        
Serial Number: 88925545
Internet Transmission Date: Fri Sep 18 16:29:16 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202009181629162
44295-88925545-750e8f5ee85dcf6ac646502ff
3888440631942cede778786363019c1d2a73e54b
-N/A-N/A-20200918161735668068