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. 85304149 PERFORCE (Stylized and/or with Design, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85304149) has been amended as follows:

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

Applicant has retained counsel who has filed a Petition to Cancel the mark compared to which ours was deemed too similar. The TTAB has instituted Cancellation Proceeding 92054900 accordingly. We hereby request the suspension of our application pending the outcome of the cancellation proceeding.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer programs for versioning source code, digital assets (still images, video, and audio content), web content, and documents from business processes and intellectual property to medical images and legal records; Computer software platforms for versioning source code, digital assets (still images, video, and audio content), web content, and documents from business processes and intellectual property to medical images and legal records
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.

Proposed:
Tracked Text Description: Computer programs for versioning source code, digital assets (still images, video, and audio content), web content, and documents from business processes and intellectual property to medical images and legal records; Computer programs for versioning source code, web content, and documents from business processes and intellectual property to medical images and legal records and for versioning digital assets in the nature of still images, video, and audio content; Computer software platforms for versioning source code, digital assets (still images, video, and audio content), web content, and documents from business processes and intellectual property to medical images and legal records; Computer software platforms for versioning source code, web content, and documents from business processes and intellectual property to medical images and legal records and for versioning digital assets in the nature of still images, video, and audio contentClass 009 for Computer programs for versioning source code, web content, and documents from business processes and intellectual property to medical images and legal records and for versioning digital assets in the nature of still images, video, and audio content; Computer software platforms for versioning source code, web content, and documents from business processes and intellectual property to medical images and legal records and for versioning digital assets in the nature of still images, video, and audio content
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.

ADDITIONAL STATEMENTS
Color Claim
The color(s) yellow PMS 123U and black is/are claimed as a feature of the mark.

Description of mark
The mark consists of a yellow diamond above two yellow downward pointing chevrons, to the left of the word PERFORCE in black, stylized lettering.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant has had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii); and/or the applicant has had a bona fide intention to exercise legitimate control over the use of the mark in commerce by its members. 37 C.F. R. Sec. 2.44. If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods and/or services listed in the application as of the application filing date or as of the date of any submitted allegation of use. 37 C.F.R. Secs. 2.34(a)(1)(i); and/or the applicant has exercised legitimate control over the use of the mark in commerce by its members. 37 C.F.R. Sec. 2.44. The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Carolyn E. Ewing/      Date: 02/03/2012
Signatory's Name: Carolyn E. Ewing
Signatory's Position: Vice President
Signatory's Phone Number: 510-545-5404


Response Signature
Signature: /Carolyn E. Ewing/     Date: 02/03/2012
Signatory's Name: Carolyn E. Ewing
Signatory's Position: Vice President

Signatory's Phone Number: 510-545-5404

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either (1) the applicant or (2) a person(s) with legal authority to bind the applicant; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 85304149
Internet Transmission Date: Fri Feb 03 17:05:13 EST 2012
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2012020317051352
5754-85304149-490b1e088239557eaa68868882
542a3799-N/A-N/A-20120203162707458409