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. 90062789 CHAMELEON(Standard Characters, see http://uspto.report/TM/90062789/mark.png) has been amended as follows:

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

Applicant respectfully asserts that there is no likelihood of confusion between the Applicant's applied-for mark and pending U.S. App. Nos. 79284672 and 88158527. With respect to 79284672, the marks are clearly different in appearance and Applicant's goods and services as amended herein have nothing to do with software for social media platforms. Applicant's goods and services are for software used with the shipping of goods in commerce. With respect to 88158527, Applicant's goods and services as amended have nothing to do with software for use with animal shelter management. Accordingly, Applicant's applied-for mark is clearly distinguishable from both U.S. App. Nos. 79284672 and 88158527, and Applicant respectfully requests that Applicant's mark be allowed to proceed to publication. Applicant notes that U.S. App. No. 88158527 is suspended in view of U.S. App. No. 87654897, which is suspended in view of U.S. Reg. No. 1503690, which is now cancelled.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for downloadable software for use in the shipment of goods
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: downloadable software for use in the shipment of goods; downloadable software for use in supply chain management, document management, bid procurement, logistics, processing, financial management, tracking, reporting, and analytics, all for the shipment of goodsClass 009 for downloadable software for use in supply chain management, document management, bid procurement, logistics, processing, financial management, tracking, reporting, and analytics, all for the shipment of goods
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.

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


Applicant proposes to amend the following:

Current:
Class 042 for providing a website featuring non-downloadable software for use in the shipment of goods; software as a service services featuring software for use in the shipment of goods
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: providing a website featuring non-downloadable software for use in the shipment of goods; providing a website featuring non-downloadable software for use in supply chain management, document management, bid procurement, logistics, processing, financial management, tracking, reporting, and analytics, all for the shipment of goods; software as a service services featuring software for use in the shipment of goods; software as a service services featuring software for use supply chain management, document management, bid procurement, logistics, processing, financial management, tracking, reporting, and analytics, all for the shipment of goodsClass 042 for providing a website featuring non-downloadable software for use in supply chain management, document management, bid procurement, logistics, processing, financial management, tracking, reporting, and analytics, all for the shipment of goods; software as a service services featuring software for use supply chain management, document management, bid procurement, logistics, processing, financial management, tracking, reporting, and analytics, all for the shipment of goods
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.

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

Correspondence Information (current):
      ADAM J. FROMM
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@clarkhill.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): afromm@clarkhill.com; tward@clarkhill.com

The docket/reference number is 54025/410499.
Correspondence Information (proposed):
      Adam J. Fromm
      PRIMARY EMAIL FOR CORRESPONDENCE: ipdocket@clarkhill.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): afromm@clarkhill.com; tward@clarkhill.com

The docket/reference number is 54025/410499.

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: /Adam J. Fromm/     Date: 05/10/2021
Signatory's Name: Adam J. Fromm
Signatory's Position: Attorney of record

Signatory's Phone Number: 312-985-5908 Signature method: Signed directly within the form

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:    ADAM J. FROMM
   CLARK HILL PLC
   
   130 EAST RANDOLPH ST., SUITE 3900
   CHICAGO, Illinois 60601
Mailing Address:    Adam J. Fromm
   CLARK HILL PLC
   130 EAST RANDOLPH ST., SUITE 3900
   CHICAGO, Illinois 60601
        
Serial Number: 90062789
Internet Transmission Date: Mon May 10 13:34:09 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2021051013340925
1428-90062789-780be174ca7b06a56fbe4dddda
1e16c732c11cc1f3358e489c02cb2983a3acd14-
N/A-N/A-20210510125145925665