TEAS Request Reconsideration after FOA

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 86503592 DST (Stylized and/or with Design, see http://tmng-al.gov.uspto.report/resting2/api/img/86503592/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 045 for analyzing data in computer databases for research and development, business, accounting, and marketing purposes

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer software in the field of financial services for managing, analyzing, and performing tasks related to data, data processing equipment, computers, and computer application software for devices capable of accessing the internet, including general computing devices, server computers, personal computers, and mobile devices, namely software for use in managing, analyzing, and performing tasks related to data
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 software in the field of financial services for managing, analyzing, and performing tasks related to data, data processing equipment, computers, and computer application software for devices capable of accessing the internet, including general computing devices, server computers, personal computers, and mobile devices, namely software for use in managing, analyzing, and performing tasks related to data; computer software in the field of financial services for managing, analyzing, and performing tasks related to data, data processing equipment, computers, and computer application software for devices capable of accessing the internet, namely general computing devices, server computers, personal computers, and mobile devices, namely software for use in managing, analyzing, and performing tasks related to dataClass 009 for computer software in the field of financial services for managing, analyzing, and performing tasks related to data, data processing equipment, computers, and computer application software for devices capable of accessing the internet, namely general computing devices, server computers, personal computers, and mobile devices, namely software for use in managing, analyzing, and performing tasks related to data
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 035 for analysis of consumer research data and statistics; analysis of market research data and statistics; business data analysis; business research services, namely, providing analysis of real data on specific business issues; compiling and analysing statistics, data and other sources of information for business purposes; data processing services; statistical evaluations of marketing data; systemization of data in computer databases; business consulting services in the field of data analysis
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: analysis of consumer research data and statistics; analysis of market research data and statistics; business data analysis; business research services, namely, providing analysis of real data on specific business issues; compiling and analysing statistics, data and other sources of information for business purposes; data processing services; statistical evaluations of marketing data; systemization of data in computer databases; business consulting services in the field of data analysis; analyzing data in computer databases for research and development in the fields of business and marketingClass 035 for analysis of consumer research data and statistics; analysis of market research data and statistics; business data analysis; business research services, namely, providing analysis of real data on specific business issues; compiling and analysing statistics, data and other sources of information for business purposes; data processing services; statistical evaluations of marketing data; systemization of data in computer databases; business consulting services in the field of data analysis; analyzing data in computer databases for research and development in the fields of business and marketing
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 041 for education and training provided through use of written material, electronic material, classes, and individualized sessions; electronic publications comprising books, magazines, articles, posts, emails, newsletters, and web pages in the field of data analytics
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: education and training provided through use of written material, electronic material, classes, and individualized sessions; education and training provided through use of written material, electronic material, classes, and individualized sessions in the field of data analytics; electronic publications comprising books, magazines, articles, posts, emails, newsletters, and web pages in the field of data analyticsClass 041 for education and training provided through use of written material, electronic material, classes, and individualized sessions in the field of data analytics; electronic publications comprising books, magazines, articles, posts, emails, newsletters, and web pages in the field of data analytics
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 hereby adds the following class of goods/services to the application:
New: Class 036 (Original Class: 045 ) for analyzing data in computer databases for research and development in the field of accounting
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.

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Scott J. Slavick/     Date: 02/11/2016
Signatory's Name: Scott J. Slavick
Signatory's Position: Attorney of Record

Signatory's Phone Number: 312-321-4200

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 86503592
Internet Transmission Date: Thu Feb 11 13:24:46 EST 2016
TEAS Stamp: USPTO/RFR-XX.XX.XXX.XXX-2016021113244657
1105-86503592-550c6d35b8d2ac7c6e6f34f188
482fec1cf7e387fb10860bd593aca3b925056-N/
A-N/A-20160211130903445791