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. 85909031 GOTHAM(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85909031) has been amended as follows:

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

BOX RESPONSE NO FEE

Commissioner for Trademarks

P.O. Box 1451

Alexandria, Virginia 22313-1451

 

Dear Trademark Commissioner:

 RESPONSE TO OFFICE ACTION

 This responds to the Office Action dated August 13, 2013, for the mark GOTHAM, U.S. Application No. 85/909031.

       I.      Specimen

Applicant has amended its application to claim Class 9 as intent to use; therefore, no substitute specimen is required.

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application as of the filing date of the application.

    II.      Identification of Goods and Services

            The Examining Attorney has objected to Applicant’s identification of goods in Class 9, and the identification of services in Class 42. Applicant respectfully requests that the Examining Attorney allow the application to publish with the following amended identifications:

Class 9:            downloadable large-scale data integration and analytics computer software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information, the foregoing software also recorded on computer media;

 Class 42:          software-as-service (SaaS) featuring large-scale data integration and analytics software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information

  III.      Response to 2(d) Refusal: Likelihood of Confusion

The Examining Attorney cited U.S. Registration No. 3663728 as a preliminary bar to the registration of Applicant’s mark.  As Applicant has now amended the description of goods and services to clarify that there is no potential for confusion, Applicant asks that the citation to U.S. Registration No. 3663728 be withdrawn.  Likewise, the prior pending U.S. Application Serial No. 85/557576 is not of concern.  Therefore, Applicant respectfully requests that its mark be approved for publication.

CONCLUSION

 Applicant has responded to all matters in the Office Action. Should the Examining Attorney have any questions with regard to this Response or to any matter relating to this Application, in general, a telephone call to Applicant’s undersigned representative at the telephone number listed below would be greatly appreciated.

 

 Respectfully submitted,

__/ofleming/_______________

Olivia M. Fleming

BARNES & THORNBURG

Attorney for Applicant

11 South Meridian Street

Indianapolis, Indiana 46204

317-236-1313

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information
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 07/15/2012 and first used in commerce at least as early as 07/15/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: computer software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information; downloadable large-scale data integration and analytics computer software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information, the foregoing software also recorded on computer mediaClass 009 for downloadable large-scale data integration and analytics computer software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information, the foregoing software also recorded on computer media
Deleted Filing Basis: 1(a)
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for computer software consulting and design services for others; computer hardware consulting and design services for others; technical support services, namely, troubleshooting of computer hardware, software and computer network problems, maintenance of computer software; software-as-service (SaaS) or application service provider services (ASP), namely hosting software applications of others; information technology consultation; computer security consulting services; computer services for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information
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 07/15/2012 and first used in commerce at least as early as 07/15/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: computer software consulting and design services for others; software-as-service (SaaS) featuring large-scale data integration and analytics software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information; computer hardware consulting and design services for others; technical support services, namely, troubleshooting of computer hardware, software and computer network problems, maintenance of computer software; software-as-service (SaaS) or application service provider services (ASP), namely hosting software applications of others; information technology consultation; computer security consulting services; computer services for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and informationClass 042 for software-as-service (SaaS) featuring large-scale data integration and analytics software for information and data integration, analysis, management, collaboration, algorithmic and human-driven exploration, viewing, modeling, exporting, visualization, organization, modification, book marking, transmission, storage, exchange, sharing, querying, auditing, collection, editing, hosting, security, and tracking of data and information
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 07/15/2012 and first used in commerce at least as early as 07/15/2012 , and is now in use in such commerce.
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: /ofleming/      Date: 02/13/2014
Signatory's Name: Olivia M. Fleming
Signatory's Position: Attorney of Record, Indiana bar member
Signatory's Phone Number: 317-236-1313


Response Signature
Signature: /ofleming/     Date: 02/13/2014
Signatory's Name: Olivia M. Fleming
Signatory's Position: Attorney of Record, Indiana bar member

Signatory's Phone Number: 317-236-1313

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: 85909031
Internet Transmission Date: Thu Feb 13 18:28:32 EST 2014
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2014021318283230
8336-85909031-5002b21a0268f2624c8387e3bc
f3628f5a4089e6c61eacf228346ad69da973f20-
N/A-N/A-20140213182146152423