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. 90259961 AVATAR(Standard Characters, see http://uspto.report/TM/90259961/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 use in mobile devices for in providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable computer application software for mobile phones, namely, software for providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable mobile applications for providing anonymized electronic user profiles to online commercial vendors and businesses
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 mobile devices for in providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable software for use in mobile devices for providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable computer application software for mobile phones, namely, software for providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable mobile applications for providing anonymized electronic user profiles to online commercial vendors and businessesClass 009 for Downloadable software for use in mobile devices for providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable computer application software for mobile phones, namely, software for providing anonymized electronic user profiles to online commercial vendors and businesses; Downloadable mobile applications for providing anonymized electronic user profiles to online commercial vendors and businesses
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 035 for Providing a website for anonymised users with specific informed recommendations of specific consumer products and services validated by the users' inputted preferences; Online service for connecting anonymised users with retailers for the purpose of facilitating discounted purchases; Providing recommendations of service providers to consumers for commercial purposes; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Providing a website for connecting sellers with buyers; Providing a website featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; Collection and systematisation of information into computer databases; Collection and compilation of information into computer databases in the field of user preferences; Preparation of customized promotional and merchandising materials for others; Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies; Online service for sharing preferences of anonymised users over the internet to commercial vendors and businesses
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 for anonymised users with specific informed recommendations of specific consumer products and services validated by the users' inputted preferences; Providing a website for anonymized users with specific informed recommendations of specific consumer products and services validated by the users' inputted preferences; Online service for connecting anonymised users with retailers for the purpose of facilitating discounted purchases; Providing recommendations of service providers to consumers for commercial purposes; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Providing a website for connecting sellers with buyers; Providing a website featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; Collection and systematisation of information into computer databases; Collection and compilation of information into computer databases in the field of user preferences; Preparation of customized promotional and merchandising materials for others; Online service for sharing preferences of anonymised users over the internet to commercial vendors and businesses, namely, providing consumer product recommendations; Marketing and branding services, namely, providing customized communication programs to obtain consumer insights and develop branding strategies; Online service for sharing preferences of anonymised users over the internet to commercial vendors and businessesClass 035 for Providing a website for anonymized users with specific informed recommendations of specific consumer products and services validated by the users' inputted preferences; Online service for connecting anonymised users with retailers for the purpose of facilitating discounted purchases; Providing recommendations of service providers to consumers for commercial purposes; Providing a website for connecting sellers with buyers; Providing a website featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users; Collection and systematisation of information into computer databases; Collection and compilation of information into computer databases in the field of user preferences; Preparation of customized promotional and merchandising materials for others; Online service for sharing preferences of anonymised users over the internet to commercial vendors and businesses, namely, providing consumer product recommendations
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 Developing customized web pages featuring user-defined information; Developing customized web pages and other data feed formats featuring user-defined information; Computer services, namely, providing customized web pages featuring user-defined information; Providing a website that gives users the ability to create customized web pages featuring user-defined information; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Developing customized web pages featuring user-defined information. in the field of user preferences; Developing customized web pages and other data feed formats featuring user-defined information in the field of user preferences
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: Developing customized web pages featuring user-defined information; Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; Developing customized web pages and other data feed formats featuring user-defined information; Computer services, namely, providing customized web pages featuring user-defined information; Providing a website that gives users the ability to create customized web pages featuring user-defined information; Computer services in the nature of customized web pages and other data feed formats featuring user-defined information; Developing customized web pages featuring user-defined information. in the field of user preferences; Developing customized web pages and other data feed formats featuring user-defined information in the field of user preferencesClass 042 for Providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet
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


ADDITIONAL STATEMENTS
Miscellaneous Statement
In view of the amendment to the goods and services entered herewith, the Applicant believes that the Partial Refusal under Section 2(d) has been rendered moot.

Correspondence Information (current):
      Mr. Frederick A. Spaeth
      PRIMARY EMAIL FOR CORRESPONDENCE: dilworthip@dilworthip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): fspaeth@dilworthip.com

The docket/reference number is 354-020US.
Correspondence Information (proposed):
      Mr. Frederick A. Spaeth
      PRIMARY EMAIL FOR CORRESPONDENCE: dilworthip@dilworthip.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): fspaeth@dilworthip.com

The docket/reference number is 354-020US.

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: /Frederick A. Spaeth/      Date: 08/11/2021
Signatory's Name: Frederick A. Spaeth
Signatory's Position: Attorney of record, Connecticut Bar member
Signatory's Phone Number: 2032208496

Signature method: Sent to third party for signature

Response Signature
Signature: /Frederick A. Spaeth/     Date: 08/12/2021
Signatory's Name: Frederick A. Spaeth
Signatory's Position: Attorney of record, Connecticut Bar member

Signatory's Phone Number: 2032208496 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:    Mr. Frederick A. Spaeth
   DILWORTH IP LLC
   
   470 James Street, Suite 007
   New Haven, Connecticut 06513
Mailing Address:    Mr. Frederick A. Spaeth
   DILWORTH IP LLC
   470 James Street, Suite 007
   New Haven, Connecticut 06513
        
Serial Number: 90259961
Internet Transmission Date: Thu Aug 12 08:33:57 ET 2021
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXXX:XXXX:XXXX:X
XXX:XXX-20210812083357899214-90259961-78
126f3eb25f755105717e2c478dea8cf4baa61e75
7928f048b32cf4e3dfaf-N/A-N/A-20210811180
225187674