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. 86143372 ZEBRA(Standard Characters, see http://uspto.report/TM/86143372/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) services, namely, hosting software that allows real-time exchange of information with and access to information from people, devices, machines and equipment and software applications that interact with that data; computer software development services and computer consulting services for businesses, including but not limited to remote management and/or hosting of computer applications for others; consultancy services for the design, selection, implementation, modification, maintenance and use of computer software systems; technical advice related to the installation of computer software; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer diagnostic services; consultancy services in the nature of advising and assisting with the implementation, installation, configuration, modification and maintenance of computer software that allows real-time exchange of information with and access to information from people, devices, machines and equipment and applications that interact with that data, as well as advising and assisting with the implementation and configuration of computer hardware that allows real-time exchange of information with and access to information from people, devices, machines and equipment and applications that interact with that data; Providing a website featuring non-downloadable software for allowing users and software applications to interface with and manage people, devices, machines and equipment and to provide messaging, management and memory storage services; consulting with regard to computer systems, computer network connectivity, and software applications design and deployment; computer software services, namely, development, maintenance, repair, and installation of computer software, and troubleshooting of computer software problems; technical support services in the nature of diagnosing computer software problems; upgrade and updating of computer software; authoring, design and customization of computer software and middleware; providing information in the field of computer software and middleware; computer software consultation in the field of computer software and middleware; support services with regard to computer systems, computer network connectivity hardware and computer, namely, troubleshooting and diagnosing of problems; computer services, namely, providing remote management of remote devices via computer networks for others
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: Software as a service (SAAS) services, namely, hosting software that allows real-time exchange of information with and access to information from people, devices, machines and equipment and software applications that interact with that data; computer software development services and computer consulting services for businesses, including but not limited to remote management and/or hosting of computer applications for others; computer software development services and computer consulting services for businesses; remote management and hosting of computer applications for others; consultancy services for the design, selection, implementation, modification, maintenance and use of computer software systems; technical advice related to the installation of computer software; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer diagnostic services; consultancy services in the nature of advising and assisting with the implementation, installation, configuration, modification and maintenance of computer software that allows real-time exchange of information with and access to information from people, devices, machines and equipment and applications that interact with that data, as well as advising and assisting with the implementation and configuration of computer hardware that allows real-time exchange of information with and access to information from people, devices, machines and equipment and applications that interact with that data; Providing a website featuring non-downloadable software for allowing users and software applications to interface with and manage people, devices, machines and equipment and to provide messaging, management and memory storage services; consulting with regard to computer systems, computer network connectivity, and software applications design and deployment; computer software services, namely, development, maintenance, repair, and installation of computer software, and troubleshooting of computer software problems; technical support services in the nature of diagnosing computer software problems; upgrade and updating of computer software; providing information in the field of computer software and middleware; authoring, design and customization of computer software and middleware; providing information in the field of computer software and middleware development via an on-line website; computer software consultation in the field of computer software and middleware; support services with regard to computer systems, computer network connectivity hardware and computer, namely, troubleshooting and diagnosing of problems; computer services, namely, providing remote management of remote devices via computer networks for othersClass 042 for Software as a service (SAAS) services, namely, hosting software that allows real-time exchange of information with and access to information from people, devices, machines and equipment and software applications that interact with that data; computer software development services and computer consulting services for businesses; remote management and hosting of computer applications for others; consultancy services for the design, selection, implementation, modification, maintenance and use of computer software systems; technical advice related to the installation of computer software; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; computer diagnostic services; consultancy services in the nature of advising and assisting with the implementation, installation, configuration, modification and maintenance of computer software that allows real-time exchange of information with and access to information from people, devices, machines and equipment and applications that interact with that data, as well as advising and assisting with the implementation and configuration of computer hardware that allows real-time exchange of information with and access to information from people, devices, machines and equipment and applications that interact with that data; Providing a website featuring non-downloadable software for allowing users and software applications to interface with and manage people, devices, machines and equipment and to provide messaging, management and memory storage services; consulting with regard to computer systems, computer network connectivity, and software applications design and deployment; computer software services, namely, development, maintenance, repair, and installation of computer software, and troubleshooting of computer software problems; technical support services in the nature of diagnosing computer software problems; upgrade and updating of computer software; authoring, design and customization of computer software and middleware; providing information in the field of computer software and middleware development via an on-line website; computer software consultation in the field of computer software and middleware; support services with regard to computer systems, computer network connectivity hardware and computer, namely, troubleshooting and diagnosing of problems; computer services, namely, providing remote management of remote devices via computer networks for others
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
Claim of Active Prior Registration(s)
The applicant claims ownership of U.S. Registration Number(s) 4128951, 2173307, and 4050058.


SIGNATURE(S)
Response Signature
Signature: /Brett A. August/     Date: 06/27/2014
Signatory's Name: Brett A. August
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 312-554-8000

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: 86143372
Internet Transmission Date: Fri Jun 27 14:59:54 EDT 2014
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2014062714595421
3893-86143372-5007f5112309e9f95953d6ed55
a149e43c9a25f45f36eddf445bcc22968c7139f9
-N/A-N/A-20140627130020451915