| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
79076838 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 108 |
| MARK SECTION (no change) |
| ARGUMENT(S) |
| The Examiner has refused registration in International Classes 09 and 42 based on a likelihood of confusion with the mark in U.S. Registration No.
3691609. In response, Applicant has deleted International Classes 09 and 42 from its application in order to obviate any potential confusion between the marks. Accordingly, Applicant
respectfully requests that the Examiner withdraw the refusal to register under Section 2(d) of the Trademark Act. |
| GOODS AND/OR SERVICES SECTION (009)(class deleted) |
| INTERNATIONAL CLASS |
009 |
| DESCRIPTION |
| Software to be used in the field of security, telephone protection, security and risk management; software for the protecting of
transactions; software for encoding and decoding data; software for forensic investigation and fraud inquiries |
| GOODS AND/OR SERVICES SECTION (035)(current) |
| INTERNATIONAL CLASS |
035 |
| DESCRIPTION |
| Accountancy, including forensic accountancy, also for the purpose of detecting fraud and in the context of fraud inquiries; audits in
the fields of business organisation and business economics; commercial screening of companies and persons; commercial inquiries; secondment of personnel; consultancy in the fields of business
organisation, business economics and business administration; business organisation consultancy and commercial consultancy with regard to security management systems; consultancy in the fields of
commercial risk management and commercial process management; market research; management consultancy in the context of security services; compilation and systemising of information and data on
persons and organisations that can pose a threat to the democratic legal order or the state security; company audits |
| GOODS AND/OR SERVICES SECTION (035)(proposed) |
| INTERNATIONAL CLASS |
035 |
| TRACKED TEXT DESCRIPTION |
Accountancy, including forensic accountancy, also for the purpose of detecting fraud and in the context of fraud
inquiries; audits in the fields of business organisation and business economics; commercial screening of companies and
persons; commercial screening of companies and persons on behalf of others; commercial inquiries; commercial inquiries, namely, business inquiries; secondment of personnel; consultancy in the fields of business
organisation, business economics and business administration; business organisation consultancy and commercial consultancy with regard to security management
systems; business organisation consultancy and commercial consultancy with regard to security management systems, namely, business information management;
consultancy in the fields of commercial risk management and commercial process management; consultancy in the field of
commercial risk management, namely business risk management, and consultancy in the field of commercial process management, namely business process management; market
research; management consultancy in the context of security services; business management consultancy in the context of
security services; compilation and systemising of information and data on persons and organisations that can pose a threat to the democratic legal order or the state
security; company audits |
| FINAL DESCRIPTION |
| Accountancy, including forensic accountancy, also for the purpose of detecting fraud and in the context of fraud inquiries; audits in
the fields of business organisation and business economics; commercial screening of companies and persons on behalf of others; commercial inquiries, namely, business inquiries; secondment of
personnel; consultancy in the fields of business organisation, business economics and business administration; business organisation consultancy and commercial consultancy with regard to security
management systems, namely, business information management; consultancy in the field of commercial risk management, namely business risk management, and consultancy in the field of commercial
process management, namely business process management; market research; business management consultancy in the context of security services; compilation and systemising of information and data on
persons and organisations that can pose a threat to the democratic legal order or the state security; company audits |
| GOODS AND/OR SERVICES SECTION (042)(class deleted) |
| INTERNATIONAL CLASS |
042 |
| DESCRIPTION |
| Scientific and technological services, as well as the corresponding screening in connection with safety; forensic inquiries carried
out in the context of ICT services, in particular of, but not limited to, the fields of fraud, damage and liability; forensic investigation and analysis in the field of information technology;
drawing up expert reports as a result of forensic investigations, inter alia in the fields of fraud, damage and liability; consultancy with regard to the provision of information in surroundings
where information technology is used (EDP auditing); inquiries in the field of IT in connection with auditing and security; protection, repair and recovery of computer data; development and
consultancy in the field of security technology, services of ICT specialists for the protection of computer data, all in the context of ICT services; computer programming in the fields of forensic
investigation and fraud inquiries; consultancy and inquiries in the field of information technology, including the investigation of computer fraud and computer misuse; consultancy in the field of the
safe use of computer hardware and computer software; design, development and updating of software, in particular for its application in the context of security, security and risk management; as well
as consultancy in these fields |
| GOODS AND/OR SERVICES SECTION (045)(current) |
| INTERNATIONAL CLASS |
045 |
| DESCRIPTION |
| Security services; carrying out (personality) screening and analyses and drawing up (investigation) reports and analyses in these
fields, as well as carrying out detective activities in the fields of crime, security and safety; consultancy services in the field of safety and security; consultancy and information in the fields
of risk management, safety care and crime management; drawing up risk and safety analyses, risk identification and risk assessment, as well as consultancy in these fields, for the purpose of risk
reduction in the field of security and safety; drawing up expert reports in the fields of risk management, safety care and crime management; consultancy with regard to security in order to prevent
fraud, as well as the detection, prosecution and judging of parties causing danger (a lack of security); provision of information and consultancy regarding security for the protection of persons and
goods, inter alia with regard to potential dangers to national security; security services for the protection of persons and goods in order to screen persons and organisations posing a threat to the
democratic legal order or the state security; consultancy and assistance regarding the safety and security of persons and goods in order to promote security measures regarding state secrets and
regarding other vulnerable data and parts vitally important to the maintenance of society; legal services, including carrying out inquiries regarding legal issues and the legal screening of companies
and persons; consultancy regarding industrial property; inquiries (technical and legal) regarding issues connected with the protection of industrial property; copyright management |
| GOODS AND/OR SERVICES SECTION (045)(proposed) |
| INTERNATIONAL CLASS |
045 |
| TRACKED TEXT DESCRIPTION |
Security services; Security services, namely providing security
assessments for business and governmental agencies; carrying out (personality) screening and analyses and drawing up (investigation) reports and analyses in
these fields, as well as carrying out detective activities in the fields of crime, security and safety; providing pre-employment background screening by carrying
out personality screening and analyses and drawing up investigation reports and analyses in these fields; consultancy services in the field of safety and
security; detective activities, namely detective investigations in the fields of crime, security and safety; consultancy
and information in the fields of risk management, safety care and crime management; consultancy services in the field of security and the safety needs of
commercial and industrial companies; drawing up risk and safety analyses, risk identification and risk assessment, as well as consultancy in these fields, for
the purpose of risk reduction in the field of security and safety; consultancy and information in the fields of homeland safety and security risk management and
crime occurrence management; drawing up expert reports in the fields of risk management, safety care and crime management; drawing up homeland security risk and safety analyses, risk identification and risk assessment, as well as consultancy in these fields, for the purpose of risk reduction in the field of
homeland security and safety; consultancy with regard to security in order to prevent fraud, as well as the detection, prosecution and judging of parties
causing danger (a lack of security); drawing up expert reports in the fields of homeland security risk management, safety care and crime occurrence
management; consultancy with regard to security in order to prevent fraud in the field of insurance, credit cards and banking; fraud and identify theft detection and protection services; consultancy and assistance regarding the safety and security of persons and goods in order
to promote security measures regarding state secrets and regarding other vulnerable data and parts vitally important to the maintenance of society; legal
services to assist with the lack of security, namely protection and judging of parties causing danger; provision of information and consultancy regarding security for the
protection of persons and goods, inter alia with regard to potential dangers to national security; security services for the protection of persons and goods in order to
screen persons and organisations posing a threat to the democratic legal order or the state security; inquiries (technical and legal) regarding issues
connected with the protection of industrial property; consultancy assistance regarding the safety and security of persons and goods in order to promote
security measures regarding state secrets and regarding other vulnerable data and parts vitally important to the maintenance of society; legal services, including carrying
out inquiries regarding legal issues and the legal screening of companies and persons; consultancy regarding industrial property; technical and legal inquiries regarding issues connected with the protection of industrial property; copyright management |
| FINAL DESCRIPTION |
| Security services, namely providing security assessments for business and governmental agencies; providing pre-employment background
screening by carrying out personality screening and analyses and drawing up investigation reports and analyses in these fields; detective activities, namely detective investigations in the fields of
crime, security and safety; consultancy services in the field of security and the safety needs of commercial and industrial companies; consultancy and information in the fields of homeland safety and
security risk management and crime occurrence management; drawing up homeland security risk and safety analyses, risk identification and risk assessment, as well as consultancy in these fields, for
the purpose of risk reduction in the field of homeland security and safety; drawing up expert reports in the fields of homeland security risk management, safety care and crime occurrence management;
consultancy with regard to security in order to prevent fraud in the field of insurance, credit cards and banking; fraud and identify theft detection and protection services; legal services to assist
with the lack of security, namely protection and judging of parties causing danger; provision of information and consultancy regarding security for the protection of persons and goods, inter alia
with regard to potential dangers to national security; security services for the protection of persons and goods in order to screen persons and organisations posing a threat to the democratic legal
order or the state security; consultancy assistance regarding the safety and security of persons and goods in order to promote security measures regarding state secrets and regarding other vulnerable
data and parts vitally important to the maintenance of society; legal services, including carrying out inquiries regarding legal issues and the legal screening of companies and persons; consultancy
regarding industrial property; technical and legal inquiries regarding issues connected with the protection of industrial property; copyright management |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/audra kemp/ |
| SIGNATORY'S NAME |
Audra Kemp |
| SIGNATORY'S POSITION |
Attorney |
| DATE SIGNED |
05/14/2010 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Fri May 14 13:56:46 EDT 2010 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XX.XX-20
100514135646678791-790768
38-460da1bb2ec4dd1bede616
1a12b8395ae3-N/A-N/A-2010
0514134310296392 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
79076838 has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Examiner has refused registration in International Classes 09 and 42 based on a likelihood of confusion with the mark in U.S. Registration No. 3691609. In response, Applicant has deleted
International Classes 09 and 42 from its application in order to obviate any potential confusion between the marks. Accordingly, Applicant respectfully requests that the Examiner withdraw the
refusal to register under Section 2(d) of the Trademark Act.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Software to be used in the field of security, telephone protection, security and risk management; software for the protecting of transactions; software for encoding and decoding data;
software for forensic investigation and fraud inquiries
Applicant hereby deletes the following class of goods/services from the application.
Class 042 for Scientific and technological services, as well as the corresponding screening in connection with safety; forensic inquiries carried out in the context of ICT services, in particular of,
but not limited to, the fields of fraud, damage and liability; forensic investigation and analysis in the field of information technology; drawing up expert reports as a result of forensic
investigations, inter alia in the fields of fraud, damage and liability; consultancy with regard to the provision of information in surroundings where information technology is used (EDP auditing);
inquiries in the field of IT in connection with auditing and security; protection, repair and recovery of computer data; development and consultancy in the field of security technology, services of
ICT specialists for the protection of computer data, all in the context of ICT services; computer programming in the fields of forensic investigation and fraud inquiries; consultancy and inquiries in
the field of information technology, including the investigation of computer fraud and computer misuse; consultancy in the field of the safe use of computer hardware and computer software; design,
development and updating of software, in particular for its application in the context of security, security and risk management; as well as consultancy in these fields
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Accountancy, including forensic accountancy, also for the purpose of detecting fraud and in the context of fraud inquiries; audits in the fields of business organisation
and business economics; commercial screening of companies and persons; commercial inquiries; secondment of personnel; consultancy in the fields of business organisation, business economics and
business administration; business organisation consultancy and commercial consultancy with regard to security management systems; consultancy in the fields of commercial risk management and
commercial process management; market research; management consultancy in the context of security services; compilation and systemising of information and data on persons and organisations that can
pose a threat to the democratic legal order or the state security; company audits
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: Accountancy, including forensic accountancy, also for the purpose of detecting fraud and in the context of fraud inquiries;
audits in the fields of business organisation and business economics;
commercial screening of companies and persons;
commercial screening of companies and persons on behalf of others;
commercial inquiries;
commercial inquiries,
namely, business inquiries;
secondment of personnel;
consultancy in the fields of business organisation, business economics and business
administration;
business organisation consultancy and commercial consultancy with regard to security management systems;
business organisation consultancy and commercial consultancy with regard to security management systems, namely, business information management;
consultancy in the fields of commercial risk management and commercial process management;
consultancy in the field of commercial risk management,
namely business risk management, and consultancy in the field of commercial process management, namely business process management;
market research;
management consultancy in the context of security services;
business management consultancy in the context of security services;
compilation and systemising of information and data on persons and organisations that can pose a threat to the democratic legal order or the state security;
company auditsClass 035 for Accountancy, including forensic accountancy, also for the purpose of detecting fraud and in the context of fraud inquiries; audits in the fields of business
organisation and business economics; commercial screening of companies and persons on behalf of others; commercial inquiries, namely, business inquiries; secondment of personnel; consultancy in the
fields of business organisation, business economics and business administration; business organisation consultancy and commercial consultancy with regard to security management systems, namely,
business information management; consultancy in the field of commercial risk management, namely business risk management, and consultancy in the field of commercial process management, namely
business process management; market research; business management consultancy in the context of security services; compilation and systemising of information and data on persons and organisations
that can pose a threat to the democratic legal order or the state security; company audits
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Security services; carrying out (personality) screening and analyses and drawing up (investigation) reports and analyses in these fields, as well as carrying out
detective activities in the fields of crime, security and safety; consultancy services in the field of safety and security; consultancy and information in the fields of risk management, safety care
and crime management; drawing up risk and safety analyses, risk identification and risk assessment, as well as consultancy in these fields, for the purpose of risk reduction in the field of security
and safety; drawing up expert reports in the fields of risk management, safety care and crime management; consultancy with regard to security in order to prevent fraud, as well as the detection,
prosecution and judging of parties causing danger (a lack of security); provision of information and consultancy regarding security for the protection of persons and goods, inter alia with regard to
potential dangers to national security; security services for the protection of persons and goods in order to screen persons and organisations posing a threat to the democratic legal order or the
state security; consultancy and assistance regarding the safety and security of persons and goods in order to promote security measures regarding state secrets and regarding other vulnerable data and
parts vitally important to the maintenance of society; legal services, including carrying out inquiries regarding legal issues and the legal screening of companies and persons; consultancy regarding
industrial property; inquiries (technical and legal) regarding issues connected with the protection of industrial property; copyright management
Original Filing Basis:
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
Proposed:
Tracked Text Description: Security services;
Security services, namely providing security assessments for business and
governmental agencies;
carrying out (personality) screening and analyses and drawing up (investigation) reports and analyses in these fields, as well as carrying
out detective activities in the fields of crime, security and safety;
providing pre-employment background screening by carrying out personality screening and
analyses and drawing up investigation reports and analyses in these fields;
consultancy services in the field of safety and security;
detective activities, namely detective investigations in the fields of crime, security and safety;
consultancy and information in the fields of
risk management, safety care and crime management;
consultancy services in the field of security and the safety needs of commercial and industrial
companies;
drawing up risk and safety analyses, risk identification and risk assessment, as well as consultancy in these fields, for the purpose of risk
reduction in the field of security and safety;
consultancy and information in the fields of homeland safety and security risk management and crime occurrence
management;
drawing up expert reports in the fields of risk management, safety care and crime management;
drawing up
homeland security risk and safety analyses, risk identification and risk assessment, as well as consultancy in these fields, for the purpose of risk reduction in the field of homeland security and
safety;
consultancy with regard to security in order to prevent fraud, as well as the detection, prosecution and judging of parties causing danger (a lack of
security);
drawing up expert reports in the fields of homeland security risk management, safety care and crime occurrence management;
consultancy with regard to security in order to prevent fraud in the field of insurance, credit cards and banking;
fraud and identify theft
detection and protection services;
consultancy and assistance regarding the safety and security of persons and goods in order to promote security measures
regarding state secrets and regarding other vulnerable data and parts vitally important to the maintenance of society;
legal services to assist with the lack
of security, namely protection and judging of parties causing danger;
provision of information and consultancy regarding security for the protection of persons and goods,
inter alia with regard to potential dangers to national security;
security services for the protection of persons and goods in order to screen persons and organisations
posing a threat to the democratic legal order or the state security;
inquiries (technical and legal) regarding issues connected with the protection of
industrial property;
consultancy assistance regarding the safety and security of persons and goods in order to promote security measures regarding state
secrets and regarding other vulnerable data and parts vitally important to the maintenance of society;
legal services, including carrying out inquiries regarding legal
issues and the legal screening of companies and persons;
consultancy regarding industrial property;
technical and legal inquiries
regarding issues connected with the protection of industrial property;
copyright managementClass 045 for Security services, namely providing security assessments for
business and governmental agencies; providing pre-employment background screening by carrying out personality screening and analyses and drawing up investigation reports and analyses in these fields;
detective activities, namely detective investigations in the fields of crime, security and safety; consultancy services in the field of security and the safety needs of commercial and industrial
companies; consultancy and information in the fields of homeland safety and security risk management and crime occurrence management; drawing up homeland security risk and safety analyses, risk
identification and risk assessment, as well as consultancy in these fields, for the purpose of risk reduction in the field of homeland security and safety; drawing up expert reports in the fields of
homeland security risk management, safety care and crime occurrence management; consultancy with regard to security in order to prevent fraud in the field of insurance, credit cards and banking;
fraud and identify theft detection and protection services; legal services to assist with the lack of security, namely protection and judging of parties causing danger; provision of information and
consultancy regarding security for the protection of persons and goods, inter alia with regard to potential dangers to national security; security services for the protection of persons and goods in
order to screen persons and organisations posing a threat to the democratic legal order or the state security; consultancy assistance regarding the safety and security of persons and goods in order
to promote security measures regarding state secrets and regarding other vulnerable data and parts vitally important to the maintenance of society; legal services, including carrying out inquiries
regarding legal issues and the legal screening of companies and persons; consultancy regarding industrial property; technical and legal inquiries regarding issues connected with the protection of
industrial property; copyright management
Filing Basis Section 66(a), Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.
SIGNATURE(S)
Response Signature
Signature: /audra kemp/ Date: 05/14/2010
Signatory's Name: Audra Kemp
Signatory's Position: Attorney
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: 79076838
Internet Transmission Date: Fri May 14 13:56:46 EDT 2010
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20100514135646678
791-79076838-460da1bb2ec4dd1bede6161a12b
8395ae3-N/A-N/A-20100514134310296392