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. 85827341 SKYBOX(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85827341) has been amended as follows:

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

Prior Pending Applications – Suspension requested

The Examining Attorney has cited a number of prior pending applications as potential bars to registration of this mark.  Applicant requests suspension of the subject application pending the outcome of the prior applications.

The Examining Attorney has also objected to the specimens submitted to show use of the mark in classes 35 and 36.   Applicant respectfully requests reconsideration of this objection.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business consultation, namely, evaluation and management of information, asset and security risks; business research, analysis and development of information, asset and security risk reduction solutions and tools; business consultation, namely, development, implementation and management of business information, asset and security risk policies and solutions
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2003 and first used in commerce at least as early as 12/01/2003 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Business consultation, namely, evaluation and management of information, asset and security risks; business research, analysis and development of information, asset and security risk reduction solutions and tools; business research and analysis of information, asset and security risk reduction solutions and tools; business consultation, namely, development, implementation and management of business information, asset and security risk policies and solutionsClass 035 for Business consultation, namely, evaluation and management of information, asset and security risks; business research and analysis of information, asset and security risk reduction solutions and tools; business consultation, namely, development, implementation and management of business information, asset and security risk policies and solutions
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2003 and first used in commerce at least as early as 12/01/2003 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Asset risk assessment, namely, valuation of business assets
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2003 and first used in commerce at least as early as 12/01/2003 , and is now in use in such commerce.

Proposed: Class 036 for Asset risk assessment, namely, valuation of business assets
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2003 and first used in commerce at least as early as 12/01/2003 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design, development, implementation and project management of computer software and hardware used for information, asset and security risk solutions; non-downloadable software used to assess, evaluate, manage and develop solutions to information, asset and security risks
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2003 and first used in commerce at least as early as 12/01/2003 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Development of information, asset and security risk reduction software tools for business use; design, development, implementation and project management of computer software and hardware used for information, asset and security risk solutions; non-downloadable software used to assess, evaluate, manage and develop solutions to information, asset and security risksClass 042 for Development of information, asset and security risk reduction software tools for business use; design, development, implementation and project management of computer software and hardware used for information, asset and security risk solutions; non-downloadable software used to assess, evaluate, manage and develop solutions to information, asset and security risks
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 12/01/2003 and first used in commerce at least as early as 12/01/2003 , and is now in use in such commerce.
ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 3079576.


SIGNATURE(S)
Response Signature
Signature: /jgard/     Date: 11/08/2013
Signatory's Name: Julia Spoor Gard
Signatory's Position: Attorney for Applicant, Indiana and Illinois Bar Member

Signatory's Phone Number: 317-231-1313

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: 85827341
Internet Transmission Date: Fri Nov 08 12:39:53 EST 2013
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2013110812395356
8312-85827341-5007b71925f37fe192fe75c87f
7ea2e3c41261dfff5be139bbe9c0fbddb69fc3f9
-N/A-N/A-20131108123101761520