Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85519228 SIRI(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85519228) has been amended as follows:

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

Identification of Services

 

As indicated elsewhere in this response, Applicant Apple Inc. (“Apple”) hereby amends its identification of services to read in its entirety as follows:

 

Computer programming; design and development of computer hardware and software; design, development and maintenance of proprietary computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; rental of computer hardware and software apparatus and equipment; consulting services related to the implementation, use and operation of computer hardware, computer software, and consumer electronics for others; technical support services, namely, troubleshooting of computer software problems; technical support and consultation services for developing computer systems, databases and applications; providing information in the fields of computer hardware and software development; website creation, design and maintenance services; website hosting services; application service provider (ASP) services featuring hosting computer software applications of others; application service provider (ASP) services featuring computer software and providing online non-downloadable software, namely, computer game software, computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer software for personal information management, database management software, database synchronization software, character recognition software, voice recognition software, speech to text conversion software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software, computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal contact information, computer software for global positioning and for providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer software for making travel arrangements, and computer software for making reservations at hotels and restaurants; providing search engines for obtaining data via the internet and other electronic communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; information, advisory and consultancy services relating to all the aforesaid

 

Apple notes that the examining attorney has asked Apple to provide further specification for the term “information, advisory and consultancy services relating to all the aforesaid.”  Apple respectfully submits that the identification is not indefinite.  This phrase appears in numerous other Apple allowed applications and registrations in Class 42, as shown in the attached exhibit.  Apple would like to retain this language for the sake of consistency with its other applications and registrations.  While the examining attorney is obviously not bound by the prior determinations of the examining corps, these prior decisions demonstrate that other examining attorneys did not find this language to be indefinite.  As such, Apple respectfully requests that the examining attorney withdraw the request to amend this language, and approve the application for publication.

EVIDENCE

Original PDF file:
evi_2041552263-173014026_._SIRI___Class_42_OAR___Exhibit.pdf
Converted PDF file(s) ( 23 pages)
Evidence-1
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer programming; design and development of computer hardware and software; design, development and maintenance of proprietary computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; rental of computer hardware and software apparatus and equipment; computer hardware and software consulting services; support and consultation services for developing computer systems, databases and applications; providing computer hardware or software information online; website creation, design and maintenance services; website hosting services; application service provider (ASP) services featuring hosting computer software applications of others; application service provider (ASP) services featuring software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications; application service provider (ASP) services featuring software for use in connection with voice recognition software and voice-enabled software applications; providing online non-downloadable software; providing search engines for obtaining data via the internet and other electronic communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; electronic data storage services; information, advisory and consultancy services relating to all the aforesaid
Original Filing Basis:
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 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 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[ Jamaica application number 58536 filed 07/22/2011]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer programming; design and development of computer hardware and software; design, development and maintenance of proprietary computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; rental of computer hardware and software apparatus and equipment; computer hardware and software consulting services; consulting services related to the implementation, use and operation of computer hardware, computer software, and consumer electronics for others; support and consultation services for developing computer systems, databases and applications; technical support services, namely, troubleshooting of computer software problems; providing computer hardware or software information online; technical support and consultation services for developing computer systems, databases and applications; providing information in the fields of computer hardware and software development; website creation, design and maintenance services; website hosting services; application service provider (ASP) services featuring software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications; application service provider (ASP) services featuring hosting computer software applications of others; application service provider (ASP) services featuring software for use in connection with voice recognition software and voice-enabled software applications; application service provider (ASP) services featuring computer software and providing online non-downloadable software, namely, computer game software, computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer software for personal information management, database management software, database synchronization software, character recognition software, voice recognition software, speech to text conversion software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software, computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal contact information, computer software for global positioning and for providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer software for making travel arrangements, and computer software for making reservations at hotels and restaurants; providing online non-downloadable software; providing search engines for obtaining data via the internet and other electronic communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; information, advisory and consultancy services relating to all the aforesaid; electronic data storage servicesClass 042 for Computer programming; design and development of computer hardware and software; design, development and maintenance of proprietary computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition; rental of computer hardware and software apparatus and equipment; consulting services related to the implementation, use and operation of computer hardware, computer software, and consumer electronics for others; technical support services, namely, troubleshooting of computer software problems; technical support and consultation services for developing computer systems, databases and applications; providing information in the fields of computer hardware and software development; website creation, design and maintenance services; website hosting services; application service provider (ASP) services featuring hosting computer software applications of others; application service provider (ASP) services featuring computer software and providing online non-downloadable software, namely, computer game software, computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio, video, and multimedia content, and electronic publications, computer software for personal information management, database management software, database synchronization software, character recognition software, voice recognition software, speech to text conversion software, voice-enabled software applications, electronic mail and messaging software, mobile telephone software, computer software for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server, computer software used to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders, and events on an electronic calendar, computer software for storing, organizing, and accessing phone numbers, addresses, and other personal contact information, computer software for global positioning and for providing travel directions, computer software for enabling hands-free use of a mobile phone through voice recognition, computer software for making travel arrangements, and computer software for making reservations at hotels and restaurants; providing search engines for obtaining data via the internet and other electronic communications networks; creating indexes of online information, sites and other resources available on global computer networks for others; information, advisory and consultancy services relating to all the aforesaid
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 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 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 [ Jamaica application number 58536 filed 07/22/2011]. 15 U.S.C.Section 1126(d), as amended.

SIGNATURE(S)
Response Signature
Signature: /David Weiskopf/     Date: 08/30/2012
Signatory's Name: David Weiskopf
Signatory's Position: Attorney of record, California bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85519228
Internet Transmission Date: Thu Aug 30 18:07:15 EDT 2012
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2012083018071545
4395-85519228-490b351ff177ee3dea0d318c28
1ab96177-N/A-N/A-20120830173014026398