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. 90254764 NEXEL (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9025476 4/large) has been amended as follows:

EVIDENCE
Evidence has been attached: a PDF copy of the Applicant's arguments and a signed Declaration attesting to the ownership of Application No. 88024092 for the "NEXEL" mark, along with the payment receipt for the Assignment recently filed with the USPTO for Application No. 88024092
Original PDF file:
evi_26001700fba0123040a82 fd072223a72-2021052717265 8880530_._ROA-NEXEL-90254 764.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_26001700fba0123040a82 fd072223a72-2021052717265 8880530_._SIGNED-Declarat ion-Ownership_of_Prior_Ap pl-90254764.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_26001700fba0123040a82 fd072223a72-2021052717265 8880530_._Assign_Receipt- NEXEL-88024092.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 038 for Telecommunication services, namely, voice mail services, toll free telephone services in the nature of providing a dedicated toll-free number, visual voicemail and voicemail-to-email services, telephone call logging, caller ID Control and wireless PBX services; Voice over Internet protocol (VOIP) services, Session Initiation Protocol (SIP) Trunking, IVR (Interactive Voice Response), automatic call recording, text messaging and multimedia messaging; call management and phone administration, namely, telephone operator services and management of telephone call centers for others
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: Telecommunication services, namely, voice mail services, toll free telephone services in the nature of providing a dedicated toll-free number, visual voicemail and voicemail-to-email services, telephone call logging, caller ID Control and wireless PBX services; Voice over Internet protocol (VOIP) services, Session Initiation Protocol (SIP) Trunking, IVR (Interactive Voice Response), automatic call recording, text messaging and multimedia messaging; call management and phone administration, namely, telephone operator services and management of telephone call centers for othersClass 038 for Telecommunication services, namely, voice mail services, toll free telephone services in the nature of providing a dedicated toll-free number, visual voicemail and voicemail-to-email services, telephone call logging, caller ID Control and wireless PBX services; Voice over Internet protocol (VOIP) services, Session Initiation Protocol (SIP) Trunking, IVR (Interactive Voice Response), automatic call recording, text messaging and multimedia messaging
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 on-line non-downloadable software for customer relationship management; providing on-line non-downloadable software for personal and business contact management, and for communicating with customers, potential customers and business partners; providing on-line non-downloadable software for obtaining data and information about personal contacts and their companies for purposes of customer relationship management, sales, and marketing, and for managing, tracking, analyzing, and reporting data information in the fields of customer relationship management, sales, and marketing; providing on-line non-downloadable software for performing analytics and recommending actions in the field of CRM, sales, and marketing
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 on-line non-downloadable software for customer relationship management; providing on-line non-downloadable software for personal and business contact management, and for communicating with customers, potential customers and business partners; providing on-line nondownloadable software for personal and business contact management, and for communicating with customers, potential customers and business partners; providing on-line non-downloadable software for obtaining data and information about personal contacts and their companies for purposes of customer relationship management, sales, and marketing, and for managing, tracking, analyzing, and reporting data information in the fields of customer relationship management, sales, and marketing; providing on-line non-downloadable software for performing analytics and recommending actions in the field of CRM, sales, and marketingClass 042 for Providing on-line non-downloadable software for customer relationship management; providing on-line nondownloadable software for personal and business contact management, and for communicating with customers, potential customers and business partners; providing on-line non-downloadable software for obtaining data and information about personal contacts and their companies for purposes of customer relationship management, sales, and marketing, and for managing, tracking, analyzing, and reporting data information in the fields of customer relationship management, sales, and marketing; providing on-line non-downloadable software for performing analytics and recommending actions in the field of CRM, sales, and marketing
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):
      DEREK FAHEY
      PRIMARY EMAIL FOR CORRESPONDENCE: derek@plusfirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): info@plusfirm.com; jacqueline@plusfirm.com
Correspondence Information (proposed):
      Derek Fahey
      PRIMARY EMAIL FOR CORRESPONDENCE: derek@plusfirm.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): docket@plusfirm.com; jacqueline@plusfirm.com

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: /Derek Fahey/     Date: 06/01/2021
Signatory's Name: Derek Fahey
Signatory's Position: Attorney of Record

Signatory's Phone Number: 800-768-9399 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:    DEREK FAHEY
   THE PLUS IP FIRM
   
   101 NE 3RD AVENUE, SUITE 1500
   FORT LAUDERDALE, Florida 33301
Mailing Address:    Derek Fahey
   THE PLUS IP FIRM
   101 NE 3RD AVENUE, SUITE 1500
   FORT LAUDERDALE, Florida 33301
        
Serial Number: 90254764
Internet Transmission Date: Tue Jun 01 13:54:38 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202106011354388
23120-90254764-78042aad55ef7faa4559614e7
ce7b02d1f2c5a1675b97cb70797051661f957f6-
N/A-N/A-20210601135123830880