Response to Office Action

ADOBE

ADOBE INC.

Response to Office Action

PTO Form 1957 (Rev 9/2005)
OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 86014310
LAW OFFICE ASSIGNED LAW OFFICE 109
MARK SECTION
MARK http://uspto.report/TM/86014310/mark.png
LITERAL ELEMENT ADOBE
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
ARGUMENT(S)
Please see argument text attached within the Evidence section.
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_66192178162-124930626_._ADOBE_OAR_CL35.pdf
       CONVERTED PDF FILE(S)
       (7 pages)
\\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0002.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0003.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0004.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0005.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0006.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0007.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0008.JPG
       ORIGINAL PDF FILE evi_66192178162-124930626_._Exhibits_A-I.pdf
       CONVERTED PDF FILE(S)
       (19 pages)
\\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0009.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0010.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0011.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0012.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0013.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0014.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0015.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0016.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0017.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0018.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0019.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0020.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0021.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0022.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0023.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0024.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0025.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0026.JPG
        \\TICRS\EXPORT16\IMAGEOUT16\860\143\86014310\xml5\ROA0027.JPG
DESCRIPTION OF EVIDENCE FILE Applicant's response and related Exhibits A through I.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 035
DESCRIPTION
Business consultation services in the fields of marketing, advertising and online business optimization; advertising and marketing consulting services, namely, providing advertising and marketing services for managing, distributing and serving advertising, improving ad targeting, facilitating buying or selling advertising, providing real-time reporting, and forecasting, managing, monitoring, executing and optimizing the performance of advertising and marketing campaigns; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, the use of other data from various sources, and the effectiveness of advertising and marketing campaigns; computerized database management; providing online searchable databases in the field of advertising and marketing campaign analytics; market research and business analyses; conducting business and market research surveys; preparing business reports electronically relating to customer and employee satisfaction and attitude, organizational climate or effectiveness, and the use of web sites; advertising and marketing consultancy; providing business intelligence services; providing business intelligence services in the field of advertising and marketing campaign analytics; providing advertising and marketing consulting in the field of social media; advertising, marketing and commercial information services via the Internet, computer networks, other telecommunications networks, and mobile communications devices; business data analysis; statistical analysis and reporting services for business purposes; product merchandising services and business merchandising display services
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 09/03/2008
        FIRST USE IN COMMERCE DATE At least as early as 09/03/2008
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 035
TRACKED TEXT DESCRIPTION
Business consultation services in the fields of marketing, advertising and online business optimization; Business consultation services in the field of online business optimization; advertising and marketing consulting services, namely, providing advertising and marketing services for managing, distributing and serving advertising, improving ad targeting, facilitating buying or selling advertising, providing real-time reporting, and forecasting, managing, monitoring, executing and optimizing the performance of advertising and marketing campaigns; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, and the use of other data from various sources; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, the use of other data from various sources, and the effectiveness of advertising and marketing campaigns; computerized database management; providing business intelligence services; providing online searchable databases in the field of advertising and marketing campaign analytics; business data analysis; market research and business analyses; statistical analysis and reporting services for business purposes; conducting business and market research surveys; product merchandising services and business merchandising display services; preparing business reports electronically relating to customer and employee satisfaction and attitude, organizational climate or effectiveness, and the use of web sites; advertising and marketing consultancy; providing business intelligence services in the field of advertising and marketing campaign analytics; providing advertising and marketing consulting in the field of social media; advertising, marketing and commercial information services via the Internet, computer networks, other telecommunications networks, and mobile communications devices
FINAL DESCRIPTION
Business consultation services in the field of online business optimization; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, and the use of other data from various sources; computerized database management; providing business intelligence services; business data analysis; statistical analysis and reporting services for business purposes; product merchandising services and business merchandising display services
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 09/03/2008
       FIRST USE IN COMMERCE DATE At least as early as 09/03/2008
SIGNATURE SECTION
RESPONSE SIGNATURE /Lynne E. Graybeal/
SIGNATORY'S NAME Lynne E. Graybeal
SIGNATORY'S POSITION Attorney of Record, Washington State Bar Member
SIGNATORY'S PHONE NUMBER 206.359.8000
DATE SIGNED 05/01/2014
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Thu May 01 14:04:56 EDT 2014
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XXX-
20140501140456075076-8601
4310-5004aed89508280bcb63
43b573547259fb913e7717851
854053bfe69f95d4dabf9-N/A
-N/A-20140501124930626354



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. 86014310 ADOBE(Standard Characters, see http://uspto.report/TM/86014310/mark.png) has been amended as follows:

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

Please see argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Applicant's response and related Exhibits A through I. has been attached.
Original PDF file:
evi_66192178162-124930626_._ADOBE_OAR_CL35.pdf
Converted PDF file(s) ( 7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Original PDF file:
evi_66192178162-124930626_._Exhibits_A-I.pdf
Converted PDF file(s) ( 19 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19

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 services in the fields of marketing, advertising and online business optimization; advertising and marketing consulting services, namely, providing advertising and marketing services for managing, distributing and serving advertising, improving ad targeting, facilitating buying or selling advertising, providing real-time reporting, and forecasting, managing, monitoring, executing and optimizing the performance of advertising and marketing campaigns; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, the use of other data from various sources, and the effectiveness of advertising and marketing campaigns; computerized database management; providing online searchable databases in the field of advertising and marketing campaign analytics; market research and business analyses; conducting business and market research surveys; preparing business reports electronically relating to customer and employee satisfaction and attitude, organizational climate or effectiveness, and the use of web sites; advertising and marketing consultancy; providing business intelligence services; providing business intelligence services in the field of advertising and marketing campaign analytics; providing advertising and marketing consulting in the field of social media; advertising, marketing and commercial information services via the Internet, computer networks, other telecommunications networks, and mobile communications devices; business data analysis; statistical analysis and reporting services for business purposes; product merchandising services and business merchandising display services
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 09/03/2008 and first used in commerce at least as early as 09/03/2008 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Business consultation services in the fields of marketing, advertising and online business optimization; Business consultation services in the field of online business optimization; advertising and marketing consulting services, namely, providing advertising and marketing services for managing, distributing and serving advertising, improving ad targeting, facilitating buying or selling advertising, providing real-time reporting, and forecasting, managing, monitoring, executing and optimizing the performance of advertising and marketing campaigns; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, and the use of other data from various sources; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, the use of other data from various sources, and the effectiveness of advertising and marketing campaigns; computerized database management; providing business intelligence services; providing online searchable databases in the field of advertising and marketing campaign analytics; business data analysis; market research and business analyses; statistical analysis and reporting services for business purposes; conducting business and market research surveys; product merchandising services and business merchandising display services; preparing business reports electronically relating to customer and employee satisfaction and attitude, organizational climate or effectiveness, and the use of web sites; advertising and marketing consultancy; providing business intelligence services in the field of advertising and marketing campaign analytics; providing advertising and marketing consulting in the field of social media; advertising, marketing and commercial information services via the Internet, computer networks, other telecommunications networks, and mobile communications devicesClass 035 for Business consultation services in the field of online business optimization; collecting, reporting, analyzing and integrating data related to the use of websites and applications of others, and the use of other data from various sources; computerized database management; providing business intelligence services; business data analysis; statistical analysis and reporting services for business purposes; product merchandising services and business merchandising display services
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 09/03/2008 and first used in commerce at least as early as 09/03/2008 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Lynne E. Graybeal/     Date: 05/01/2014
Signatory's Name: Lynne E. Graybeal
Signatory's Position: Attorney of Record, Washington State Bar Member

Signatory's Phone Number: 206.359.8000

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: 86014310
Internet Transmission Date: Thu May 01 14:04:56 EDT 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201405011404560
75076-86014310-5004aed89508280bcb6343b57
3547259fb913e7717851854053bfe69f95d4dabf
9-N/A-N/A-20140501124930626354


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