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. 90304112 TROVE(Standard Characters, see http://uspto.report/TM/90304112/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence has been attached: Attached please find the Response to Office Action in addition to supporting Exhibits.
Original PDF file:
evi_661926434-20210709150 504081085_._E_-_App._No._ 90304112_-_Response_to_Of fice_Action_-_7.8.2021.pdf
Converted PDF file(s) ( 8 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8
Original PDF file:
evi_661926434-20210709150 504081085_._EXHIBIT_A_-_C ited_Registrations.pdf
Converted PDF file(s) ( 13 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13
Original PDF file:
evi_661926434-20210709150 504081085_._EXHIBIT_B_-_C ited_Application.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_661926434-20210709150 504081085_._EXHIBIT_C_-_A bandoned_App.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for computer software; downloadable computer software for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; computer software for user data capture, storage and analysis; computer software allowing users to perform electronic business transactions via a global computer network; computer software for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency
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[ South Africa application number 2020/12095TM-3672 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: computer software; Downloadable computer software for use in the field of artificial intelligence (AI) processing and machine learning, namely, software for submitting images and digital files to train third party machine learning models; downloadable computer software for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; computer software for user data capture, storage and analysis; downloadable computer software for user data capture, storage and analysis for use in the field of artificial intelligence (AI) processing and machine learning; computer software allowing users to perform electronic business transactions via a global computer network; downloadable computer software allowing users to perform electronic business transactions via a global computer network for use in the field of artificial intelligence (AI) processing and machine learning; computer software for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency; downloadable computer software for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency for use in the field of artificial intelligence (AI) processing and machine learning, all of the foregoing excluding downloadable software for the electronic transmission of email, downloadable computer game software and video game software, downloadable computer software for predictive data science and predictive data science analysis, and downloadable software to automate the provisioning and management of databases in a cloud computing environmentClass 009 for Downloadable computer software for use in the field of artificial intelligence (AI) processing and machine learning, namely, software for submitting images and digital files to train third party machine learning models; downloadable computer software for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; downloadable computer software for user data capture, storage and analysis for use in the field of artificial intelligence (AI) processing and machine learning; downloadable computer software allowing users to perform electronic business transactions via a global computer network for use in the field of artificial intelligence (AI) processing and machine learning; downloadable computer software for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency for use in the field of artificial intelligence (AI) processing and machine learning, all of the foregoing excluding downloadable software for the electronic transmission of email, downloadable computer game software and video game software, downloadable computer software for predictive data science and predictive data science analysis, and downloadable software to automate the provisioning and management of databases in a cloud computing environment
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


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 [ South Africa application number 2020/12095TM-3672 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:

Current:
Class 035 for on-line marketplace services; on-line marketplace services, namely, operating an on-line marketplace featuring information, data, images, and digital files
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[ South Africa application number 2020/12096TM-3729 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: on-line marketplace services; Operating an on-line marketplace for use in the field of artificial intelligence (AI) and machine learning for contributors to submit images and digital files for AI projects to train third party machine learning models; on-line marketplace services, namely, operating an on-line marketplace featuring information, data, images, and digital filesClass 035 for Operating an on-line marketplace for use in the field of artificial intelligence (AI) and machine learning for contributors to submit images and digital files for AI projects to train third party machine learning models; on-line marketplace services, namely, operating an on-line marketplace featuring information, data, images, and digital files
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


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 [ South Africa application number 2020/12096TM-3729 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:

Current:
Class 038 for telecommunications
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[ South Africa application number 2020/12097TM-3730 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: telecommunications; Telecommunications services, namely, transmission and retrieval of data, images, and digital files through computer networks, wireless networks, and the internet to enable third parties to train machine learning models for use in the field of artificial intelligence, all of the foregoing excluding the electronic transmission of e-mailClass 038 for Telecommunications services, namely, transmission and retrieval of data, images, and digital files through computer networks, wireless networks, and the internet to enable third parties to train machine learning models for use in the field of artificial intelligence, all of the foregoing excluding the electronic transmission of e-mail
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


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 [ South Africa application number 2020/12097TM-3730 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following:

Current:
Class 042 for software as a service (saas) services; platform as a service (paas) services; software as a service (saas) services featuring non-downloadable software for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; platform as a service (paas) services featuring non-downloadable computer software platforms for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; software as a service (saas) services featuring non-downloadable computer software used for user data capture, storage and analysis; platform as a service (paas) featuring non-downloadable computer software platforms used for user data capture, storage and analysis; software as a service (saas) services featuring non-downloadable computer software allowing users to perform electronic business transactions via a global computer network; platform as a service (paas) services featuring non-downloadable computer software platforms allowing users to perform electronic business transactions via a global computer network; software as a service (saas) services featuring non-downloadable computer software used for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency; platform as a service (paas) services featuring computer software platforms used for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency; providing a website featuring information in the field of transactions involving information, data, images and digital files; providing a website featuring technology that enables users access to and information about transactions involving information, data, images, and digital files
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[ South Africa application number 2020/12098TM-3731 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: software as a service (saas) services; Software as a service (saas) services featuring non-downloadable software for use in the field of artificial intelligence (AI) processing and machine learning, namely, software for submitting images and digital files to train third party machine learning models; platform as a service (paas) services; platform as a service (paas) services featuring non-downloadable computer software platforms for use in the field of artificial intelligence (AI) processing and machine learning, namely, software for submitting images and digital files to train third party machine learning models; software as a service (saas) services featuring non-downloadable software for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; platform as a service (paas) services featuring non-downloadable computer software platforms for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; software as a service (saas) services featuring non-downloadable computer software used for user data capture, storage and analysis; platform as a service (paas) featuring non-downloadable computer software platforms used for user data capture, storage and analysis; software as a service (saas) services featuring non-downloadable computer software allowing users to perform electronic business transactions via a global computer network; platform as a service (paas) services featuring non-downloadable computer software platforms allowing users to perform electronic business transactions via a global computer network; software as a service (saas) services featuring non-downloadable computer software used for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency; platform as a service (paas) services featuring computer software platforms used for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency; providing a website featuring information in the field of transactions involving information, data, images and digital files; providing a website featuring technology that enables users access to and information about transactions involving information, data, images, and digital files; providing a website featuring technology that enables users access to and information about transactions involving information, data, images, and digital files, all of the foregoing excluding non-downloadable software for the electronic transmission of email, non-downloadable computer software for predictive data science and predictive data science analysis services, and non-downloadable software to automate the provisioning and management of databases in a cloud computing environmentClass 042 for Software as a service (saas) services featuring non-downloadable software for use in the field of artificial intelligence (AI) processing and machine learning, namely, software for submitting images and digital files to train third party machine learning models; platform as a service (paas) services featuring non-downloadable computer software platforms for use in the field of artificial intelligence (AI) processing and machine learning, namely, software for submitting images and digital files to train third party machine learning models; software as a service (saas) services featuring non-downloadable software for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; platform as a service (paas) services featuring non-downloadable computer software platforms for use in connection with buying, selling, sharing, searching, downloading, customizing, integrating and reviewing information, data, images, and digital files; software as a service (saas) services featuring non-downloadable computer software used for user data capture, storage and analysis; platform as a service (paas) featuring non-downloadable computer software platforms used for user data capture, storage and analysis; software as a service (saas) services featuring non-downloadable computer software allowing users to perform electronic business transactions via a global computer network; platform as a service (paas) services featuring non-downloadable computer software platforms allowing users to perform electronic business transactions via a global computer network; software as a service (saas) services featuring non-downloadable computer software used for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency; platform as a service (paas) services featuring computer software platforms used for generating coupon codes, payment processing, payment fraud detection, and creating, using and managing virtual currency; providing a website featuring information in the field of transactions involving information, data, images and digital files; providing a website featuring technology that enables users access to and information about transactions involving information, data, images, and digital files, all of the foregoing excluding non-downloadable software for the electronic transmission of email, non-downloadable computer software for predictive data science and predictive data science analysis services, and non-downloadable software to automate the provisioning and management of databases in a cloud computing environment
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


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 [ South Africa application number 2020/12098TM-3731 filed 05/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Correspondence Information (current):
      KAREN KREIDER GAUNT
      PRIMARY EMAIL FOR CORRESPONDENCE: karen.gaunt@dinsmore.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): DSMSTrademarks@Dinsmore.com; erick.rivera@dinsmore.com; luke.curran@dinsmore.com

The docket/reference number is 128291-4.
Correspondence Information (proposed):
      Karen Kreider Gaunt
      PRIMARY EMAIL FOR CORRESPONDENCE: karen.gaunt@dinsmore.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): DSMSTrademarks@Dinsmore.com; erick.rivera@dinsmore.com; luke.curran@dinsmore.com

The docket/reference number is 128291-4.

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: /Karen Kreider Gaunt/     Date: 07/09/2021
Signatory's Name: Karen Kreider Gaunt
Signatory's Position: Attorney of Record, Ohio Bar Member
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:    KAREN KREIDER GAUNT
   DINSMORE & SHOHL LLP
   255 E. FIFTH ST, SUITE 1900
   255 E. FIFTH ST, SUITE 1900
   CINCINNATI, Ohio 45202
Mailing Address:    Karen Kreider Gaunt
   DINSMORE & SHOHL LLP
   255 E. FIFTH ST, SUITE 1900
   255 E. FIFTH ST, SUITE 1900
   CINCINNATI, Ohio 45202
        
Serial Number: 90304112
Internet Transmission Date: Mon Jul 12 09:52:59 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20210712095259885
252-90304112-780d9a5c940b011fa93e98d19bf
b618ef0f91143b56ca9746726b12cee8e7aa8e-N
/A-N/A-20210709150504081085