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. 90560674 OASIS(Standard Characters, see http://uspto.report/TM/90560674/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 045 for Social networking services, namely, providing online chat rooms in the field of computer video gaming

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable and non-downloadable computer software and computer software application for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; downloadable and non-downloadable computer software for telephone and chat communications; downloadable and non-downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks
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 and non-downloadable computer software and computer software application for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; Downloadable computer software and computer software application for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; downloadable and non-downloadable computer software for telephone and chat communications; downloadable software for telephone and chat communications; downloadable and non-downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks; downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networksClass 009 for Downloadable computer software and computer software application for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; downloadable software for telephone and chat communications; downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks
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 038 for Telecommunications services, namely, providing online chat rooms and electronic bulletin boards for the transmission of messages among users in the field of computer video gaming; voice chat services; internet services, namely, providing electronic transmission and streaming of digital media, messages, images, music, games, and data; voice over internet protocol services
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: Telecommunications services, namely, providing online chat rooms and electronic bulletin boards for the transmission of messages among users in the field of computer video gaming; voice chat services; internet services, namely, providing electronic transmission and streaming of digital media, messages, images, music, games, and data; voice over internet protocol services; providing online chat rooms for social networking in the field of computer video gamingClass 038 for Telecommunications services, namely, providing online chat rooms and electronic bulletin boards for the transmission of messages among users in the field of computer video gaming; voice chat services; internet services, namely, providing electronic transmission and streaming of digital media, messages, images, music, games, and data; voice over internet protocol services; providing online chat rooms for social networking in the field of computer video gaming
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 Technological services, namely, providing downloadable and non-downloadable software for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; providing downloadable and non-downloadable computer software for telephone and chat communications; providing downloadable and non-downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks; creating and maintaining an interactive website for others featuring resources for social networking and sending messages, photos, and text, graphics, audio, and video files to other users
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: Technological services, namely, providing downloadable and non-downloadable software for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; Technological services, namely, providing non-downloadable software for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; providing downloadable and non-downloadable computer software for telephone and chat communications; providing non-downloadable computer software for telephone and chat communications; providing downloadable and non-downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks; providing non-downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks; creating and maintaining an interactive website for others featuring resources for social networking and sending messages, photos, and text, graphics, audio, and video files to other usersClass 042 for Technological services, namely, providing non-downloadable software for social networking and sending messages, photos, and text, graphics, audio, and video files to other users; providing non-downloadable computer software for telephone and chat communications; providing non-downloadable computer software for streaming audiovisual materials via the internet, mobile devices, wireless internet networks or systems, and other computer and electronic communication networks; creating and maintaining an interactive website for others featuring resources for social networking and sending messages, photos, and text, graphics, audio, and video files to other users
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):
      FRANCIS TOLDI
      PRIMARY EMAIL FOR CORRESPONDENCE: hptrademarks@hp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 85996048.
Correspondence Information (proposed):
      Francis Toldi
      PRIMARY EMAIL FOR CORRESPONDENCE: hptrademarks@hp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 85996048.

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: /Francis Toldi/     Date: 10/15/2021
Signatory's Name: Francis Toldi
Signatory's Position: Attorney of record
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:    FRANCIS TOLDI
   HP INC.
   
   1501 PAGE MILL ROAD
   PALO ALTO, California 94304
Mailing Address:    Francis Toldi
   HP INC.
   1501 PAGE MILL ROAD
   PALO ALTO, California 94304
        
Serial Number: 90560674
Internet Transmission Date: Fri Oct 15 12:54:26 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.X.XX-202110151254260838
34-90560674-781a5e4a3e91b92e32041e940fa7
065bff78896ce281fa5e34a36ba2c62116ee6b-N
/A-N/A-20211015120138947296