Response to Office Action

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 1957 (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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86834056 TERRIER(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86834056/large) has been amended as follows:

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

In the Office Action mailed March 24, 2016, the Examining Attorney required various amendments to the goods and services. With thanks to the Examining Attorney for her suggestions, Applicant has made the required amendments.

With respect to two phrases in Class 42, the Examining Attorney required clarification as to whether the software was downloadable or non-downloadable software:

For “providing a web site featuring software development tools and application programming interfaces for use by software and application developers,” Applicant has clarified that it will be available in both forms, as well as clarifying the nature of the goods and services in more detail.

For “providing network-based application programming interfaces for use by software and application developers,” Applicant has clarified that it will be online software, as well as clarifying the nature of the goods and services in more detail.

In light of the foregoing, Applicant requests that the application be approved for publication.



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 use in software development; computer software for use in programming other computer software; computer software providing a programming language; computer software in the nature of a programming language, language processor, and language interpreter; computer software for interacting with and utilizing application programming interfaces; computer software for use in voice recognition and speech processing applications
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 for use in software development; computer software for use in programming other computer software; computer software providing a programming language; computer software for use in programming featuring a programming language; computer software in the nature of a programming language, language processor, and language interpreter; computer software for use in programming as a programming language, language processor, and language interpreter; computer software for interacting with and utilizing application programming interfaces; computer software for use in voice recognition and speech processing applications; downloadable software development tools and application programming interface software for use by software and application developers to integrate natural language processing capabilities into websites, into other software, and into other applications, provided via a websiteClass 009 for computer software for use in software development; computer software for use in programming other computer software; computer software for use in programming featuring a programming language; computer software for use in programming as a programming language, language processor, and language interpreter; computer software for interacting with and utilizing application programming interfaces; computer software for use in voice recognition and speech processing applications; downloadable software development tools and application programming interface software for use by software and application developers to integrate natural language processing capabilities into websites, into other software, and into other applications, provided via a website
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 providing temporary use of online non-downloadable computer software for use in software development; providing temporary use of online non-downloadable computer software for use in programming other computer software; providing temporary use of online non-downloadable computer software providing a programming language; providing temporary use of online non-downloadable computer software in the nature of a programming language, language processor, and language interpreter; providing temporary use of online non-downloadable computer software for interacting with and utilizing application programming interfaces; providing temporary use of online non-downloadable computer software for use in voice recognition and speech processing applications; providing a web site featuring software development tools and application programming interfaces for use by software and application developers; providing network-based application programming interfaces for use by software and application developers
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: providing temporary use of online non-downloadable computer software for use in software development; providing temporary use of online non-downloadable computer software for use in programming other computer software; providing temporary use of online non-downloadable computer software providing a programming language; providing temporary use of online non-downloadable computer software for use in programming featuring a programming language; providing temporary use of online non-downloadable computer software in the nature of a programming language, language processor, and language interpreter; providing temporary use of online non-downloadable computer software for use in programming as a programming language, language processor, and language interpreter; providing temporary use of online non-downloadable computer software for interacting with and utilizing application programming interfaces; providing temporary use of online non-downloadable computer software for use in voice recognition and speech processing applications; providing a web site featuring software development tools and application programming interfaces for use by software and application developers; providing, via a website, temporary use of online non-downloadable software development tools and application programming interface software for use by software and application developers to integrate natural language processing capabilities into websites, into other software, and into other applications; providing network-based application programming interfaces for use by software and application developers; providing temporary use of online non-downloadable network-based application programming interface software for use by software and application developers to integrate natural language processing capabilities into websites, into other software, and into other applicationsClass 042 for providing temporary use of online non-downloadable computer software for use in software development; providing temporary use of online non-downloadable computer software for use in programming other computer software; providing temporary use of online non-downloadable computer software for use in programming featuring a programming language; providing temporary use of online non-downloadable computer software for use in programming as a programming language, language processor, and language interpreter; providing temporary use of online non-downloadable computer software for interacting with and utilizing application programming interfaces; providing temporary use of online non-downloadable computer software for use in voice recognition and speech processing applications; providing, via a website, temporary use of online non-downloadable software development tools and application programming interface software for use by software and application developers to integrate natural language processing capabilities into websites, into other software, and into other applications; providing temporary use of online non-downloadable network-based application programming interface software for use by software and application developers to integrate natural language processing capabilities into websites, into other software, and into other applications
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)
Response Signature
Signature: /JeffersonScher/     Date: 08/15/2016
Signatory's Name: Jefferson F. Scher
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 650-812-3400

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.

        
Serial Number: 86834056
Internet Transmission Date: Mon Aug 15 21:58:18 EDT 2016
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2016081521581849
9801-86834056-55050e44bb5b8f5b6a2b5b0276
ad5b94f49bdb401d2bf140c8cfc42795a6910f-N
/A-N/A-20160815215246120277