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. 87110794 DXS(Standard Characters, see http://uspto.report/TM/87110794/mark.png) has been amended as follows:

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

Dear Examiner LaMont:

 

Applicant hereby timely responds to the Office Action dated November 7, 2016, as follows:

 

AMENDMENTS

 

            Please amend the classification of goods and services as follows:

 

--Class 9:  Data processing equipment and computers; computer software, namely, computer software for computer system and application development; computer programs for data and document capture, transmission, storage and indexing; computer software for remote monitoring and analysis, namely, monitoring and analysis of consumer response to website content; data processing software, namely, computer software for use in the collection and analysis of data, namely, analysis of data with respect to consumer response to website content; communication software, namely, software for monitoring and controlling communication between computers and automated machine systems; data capture apparatus in the nature of computer hardware and software for recording and analysing consumer response to website content; data collection apparatus and software, namely, computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; electronic computer databases in the field of data collection and analysis, namely, data collection and analysis with respect to consumer response to website content, recorded on computer media; computer peripherals; computer accessories, namely, computer keypads, computer memories, computer mice, computer screens, computer mounts; downloadable electronic publications, namely, pamphlets, brochures, newsletters, journals and magazines in the field of data collection and analysis; computer programs for editing images, sound and video; interactive multimedia computer game programs; computer software for communicating with users of hand-held computers; computer software for wireless content delivery; computer software for the synchronization of data between a remote station or unit and a fixed or remote station or unit; computer software, namely, software development tools for internet, website, extranet, and intranet management, analytics and content management; computer software, namely software to enable searching of data, namely computer search engine software; data processing software namely software for processing graphic representations; computer software to automate data warehousing; artificial intelligence apparatus namely, computers and computer software for creating, storing and analyzing data for use in predictive recommendations and content search optimization; structural and replacement parts and fittings for all of the aforesaid goods.

Class 35:  Advertising; business management; business administration; providing office functions in the nature of maintaining and analysing computerized data records for the benefit of others; business research; market research; consumer research; business research in the field of advertising; compilation of statistics and statistical information into computer databases in the field of customer experience and feedback all for business or commercial purposes; statistical analysis and reporting namely statistical evaluation of marketing data; consumer response analysis, namely, conducting consumer tracking behaviour analysis and consumer trend analysis; analysis of advertising response, namely, analysis of consumer behaviour in response to advertising; loyalty scheme services, namely, promoting the goods and services of others by means of the issuance of loyalty reward cards; administration of consumer loyalty programs, namely, administration of computer data collated in response to the issuance of loyalty reward cards; database management, namely, collating of data in computer databases; database management; business information services; commercial information agency services; computerized business information services; systemization of information into computer databases; benchmarking services, namely, consumer behavior analysis and consumer trend analysis; benchmarking services namely evaluation of business organization practices; arranging of online business competitions for advertising purposes; promoting the sale of goods and services of others through promotional contests; consultation, information and advisory services relating to all the aforesaid services; computerised analysis of business data namely, testing, analysis and evaluation of consumer response to the goods and services of others; analysis and evaluation of websites for business management purposes, namely, collating and analyzing information in the field of consumer response to website content.

 

Class 42:  Design and development of computer hardware and software; technical data analysis services, namely, chemical analysis; computer systems analysis; analytic services relating to computers, namely computer system analysis; analytic services relating to computers, namely, computer system analysis; analytical services relating to computer programmes, namely, computer programming analysis; testing, analysis and monitoring of mobile telecommunication signals; testing, analysis and monitoring of computer networks; website usability testing services; design and development of computer software in the field of testing and analysis methods; quality control, namely, analysis of the performance of computer systems and global communications networks of others; design services relating to the development of computerised information processing systems namely, design and development of information processing software; providing temporary use of on-line non-downloadable operating software for computer networks and servers; computer software consultancy services; development of computer programmes; providing temporary use of non-downloadable computer software for use in database management; data mining; data warehousing; database design; creating and hosting websites, namely, electronic commerce websites and business presentation websites for others; website design; programming of customized web pages; development and testing of computing methods and algorithms for the digital design industry; providing a website featuring technology that enables technical measuring and testing of computer data; design of computerized measurement systems for use in data research and analysis; market research to analyze consumer behavior and consumer trends using computerized measurement technology; consultation, information and advisory services relating to all the aforesaid services; compilation of statistical data for use in scientific research.--

 

Please enter the following significant statement :

The term DXS has no meaning in the relevant industry when applied to the goods and/or services described in the application..

 

REMARKS

 

AMENDMENTS:    

The Examiner has requested clarification of certain goods and has also requested that Applicant  indicate the common commercial name of certain goods. In response to that requirement, applicant herewith enters its amended description. Applicant has not addressed the Examiner’s  request to clarify the phrase, “design of computerized measurement systems for use in data research and analysis” in Class 042, however, as Applicant is not aware of any common commercial name or term for these systems. 

 

 

CONCLUSION:

In light of the foregoing amendments and remarks, Applicant respectfully submits that the application is now conditioned to be passed to publication on the Principal Register, and such is earnestly requested. If a telephone conference may be of assistance in properly resolving any outstanding issues, the Examiner is respectfully requested to contact Applicant’s undersigned attorney.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Data processing equipment and computers; computer software, namely, computer software for computer system and application development; computer programs for data and document capture, transmission, storage and indexing; computer software for remote monitoring and analysis; data processing software, namely, computer software for use in the collection and analysis of data; communication software, namely, software for monitoring and controlling communication between computers and automated machine systems; data capture apparatus; data collection apparatus and software, namely, computers equipment and computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer databases in the field of data collection and analysis; computer peripherals; computer accessories, namely, computer keypads, computer memories, computer mice, computer screens, computer mounts; downloadable electronic publications, namely, pamphlets, brochures, newsletters, journals and magazines in relation to data collection and analysis; computer programs for editing images, sound and video; interactive multimedia computer game programs; computer software for communicating with users of hand-held computers; computer software for wireless content delivery; computer software for the synchronization of data between a remote station or unit and a fixed or remote station or unit; computer software, namely, software development tools for internet, website, extranet, and intranet management, analytics and content management; computer software, namely, software to enable searching of data; data processing software, namely, software for processing graphic representations; computer software to automate data warehousing; artificial intelligence apparatus namely, computers and computer software for creating, storing and analysing data for use in predictive recommendations and content search optimization; parts and fittings for all of the aforesaid goods
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000314564 filed 01/21/2016]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000314564 registered 05/20/2016 with a renewal date of 01/21/2026 and an expiration date of 01/21/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Data processing equipment and computers; computer software, namely, computer software for computer system and application development; computer programs for data and document capture, transmission, storage and indexing; computer software for remote monitoring and analysis; computer software for remote monitoring and analysis, namely, monitoring and analysis of consumer response to website content; data processing software, namely, computer software for use in the collection and analysis of data; data processing software, namely, computer software for use in the collection and analysis of data, namely, analysis of data with respect to consumer response to website content; communication software, namely, software for monitoring and controlling communication between computers and automated machine systems; data capture apparatus; data capture apparatus in the nature of computer hardware and software for recording and analysing consumer response to website content; data collection apparatus and software, namely, computers equipment and computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; data collection apparatus and software, namely, computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; computer databases in the field of data collection and analysis; electronic computer databases in the field of data collection and analysis, namely, data collection and analysis with respect to consumer response to website content, recorded on computer media; computer peripherals; computer accessories, namely, computer keypads, computer memories, computer mice, computer screens, computer mounts; downloadable electronic publications, namely, pamphlets, brochures, newsletters, journals and magazines in relation to data collection and analysis; downloadable electronic publications, namely, pamphlets, brochures, newsletters, journals and magazines in the field of data collection and analysis; computer programs for editing images, sound and video; interactive multimedia computer game programs; computer software for communicating with users of hand-held computers; computer software for wireless content delivery; computer software for the synchronization of data between a remote station or unit and a fixed or remote station or unit; computer software, namely, software development tools for internet, website, extranet, and intranet management, analytics and content management; computer software, namely, software to enable searching of data; computer software, namely software to enable searching of data, namely computer search engine software; data processing software, namely, software for processing graphic representations; data processing software namely software for processing graphic representations; computer software to automate data warehousing; artificial intelligence apparatus namely, computers and computer software for creating, storing and analysing data for use in predictive recommendations and content search optimization; artificial intelligence apparatus namely, computers and computer software for creating, storing and analyzing data for use in predictive recommendations and content search optimization; parts and fittings for all of the aforesaid goods; structural and replacement parts and fittings for all of the aforesaid goods.Class 009 for Data processing equipment and computers; computer software, namely, computer software for computer system and application development; computer programs for data and document capture, transmission, storage and indexing; computer software for remote monitoring and analysis, namely, monitoring and analysis of consumer response to website content; data processing software, namely, computer software for use in the collection and analysis of data, namely, analysis of data with respect to consumer response to website content; communication software, namely, software for monitoring and controlling communication between computers and automated machine systems; data capture apparatus in the nature of computer hardware and software for recording and analysing consumer response to website content; data collection apparatus and software, namely, computer software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information; electronic computer databases in the field of data collection and analysis, namely, data collection and analysis with respect to consumer response to website content, recorded on computer media; computer peripherals; computer accessories, namely, computer keypads, computer memories, computer mice, computer screens, computer mounts; downloadable electronic publications, namely, pamphlets, brochures, newsletters, journals and magazines in the field of data collection and analysis; computer programs for editing images, sound and video; interactive multimedia computer game programs; computer software for communicating with users of hand-held computers; computer software for wireless content delivery; computer software for the synchronization of data between a remote station or unit and a fixed or remote station or unit; computer software, namely, software development tools for internet, website, extranet, and intranet management, analytics and content management; computer software, namely software to enable searching of data, namely computer search engine software; data processing software namely software for processing graphic representations; computer software to automate data warehousing; artificial intelligence apparatus namely, computers and computer software for creating, storing and analyzing data for use in predictive recommendations and content search optimization; structural and replacement parts and fittings for all of the aforesaid goods.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000314564 filed 01/21/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000314564 registered 05/20/2016 with a renewal date of 01/21/2026 and an expiration date of 01/21/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or 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 Advertising; business management; business administration; providing office functions in the nature of maintaining and analysing computerized data records; business research; market research; consumer research; advertising research; compilation of statistical data for use in scientific research; compilation of statistics and statistical information into computer databases in the field of customer experience and feedback; statistical analysis and reporting, namely, statistical evaluation of marketing data; consumer response analysis, namely, conducting consumer tracking behaviour analysis and consumer trend analysis; analysis of advertising response, namely, analysis of consumer behaviour in response to advertising; loyalty scheme services, namely, promoting the goods and services of others by means of the issuance of loyalty reward cards; administration of consumer loyalty programs, namely, administration of computer data collated in response to the issuance of loyalty reward cards; collating of data in computer databases; database management; business information services; commercial information; computerised business information services; systemisation of information into computer databases; benchmarking services in the field of consumer behaviour analysis and consumer trend analysis; benchmarking services, namely, evaluation of business organisation practices; arranging of online competitions for advertising purposes; promoting the sale of goods and services of others through promotional contests; consultation, information and advisory services relating to all the aforesaid services
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000314564 filed 01/21/2016]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000314564 registered 05/20/2016 with a renewal date of 01/21/2026 and an expiration date of 01/21/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Advertising; business management; business administration; providing office functions in the nature of maintaining and analysing computerized data records; providing office functions in the nature of maintaining and analysing computerized data records for the benefit of others; business research; market research; consumer research; advertising research; business research in the field of advertising; compilation of statistical data for use in scientific research; compilation of statistics and statistical information into computer databases in the field of customer experience and feedback all for business or commercial purposes; compilation of statistics and statistical information into computer databases in the field of customer experience and feedback; statistical analysis and reporting namely statistical evaluation of marketing data; statistical analysis and reporting, namely, statistical evaluation of marketing data; consumer response analysis, namely, conducting consumer tracking behaviour analysis and consumer trend analysis; analysis of advertising response, namely, analysis of consumer behaviour in response to advertising; loyalty scheme services, namely, promoting the goods and services of others by means of the issuance of loyalty reward cards; administration of consumer loyalty programs, namely, administration of computer data collated in response to the issuance of loyalty reward cards; database management, namely, collating of data in computer databases; collating of data in computer databases; database management; business information services; commercial information agency services; commercial information; computerized business information services; computerised business information services; systemization of information into computer databases; systemisation of information into computer databases; benchmarking services, namely, consumer behavior analysis and consumer trend analysis; benchmarking services in the field of consumer behaviour analysis and consumer trend analysis; benchmarking services namely evaluation of business organization practices; benchmarking services, namely, evaluation of business organisation practices; arranging of online business competitions for advertising purposes; arranging of online competitions for advertising purposes; promoting the sale of goods and services of others through promotional contests; consultation, information and advisory services relating to all the aforesaid services; computerised analysis of business data namely, testing, analysis and evaluation of consumer response to the goods and services of others; analysis and evaluation of websites for business management purposes, namely, collating and analyzing information in the field of consumer response to website contentClass 035 for Advertising; business management; business administration; providing office functions in the nature of maintaining and analysing computerized data records for the benefit of others; business research; market research; consumer research; business research in the field of advertising; compilation of statistics and statistical information into computer databases in the field of customer experience and feedback all for business or commercial purposes; statistical analysis and reporting namely statistical evaluation of marketing data; consumer response analysis, namely, conducting consumer tracking behaviour analysis and consumer trend analysis; analysis of advertising response, namely, analysis of consumer behaviour in response to advertising; loyalty scheme services, namely, promoting the goods and services of others by means of the issuance of loyalty reward cards; administration of consumer loyalty programs, namely, administration of computer data collated in response to the issuance of loyalty reward cards; database management, namely, collating of data in computer databases; database management; business information services; commercial information agency services; computerized business information services; systemization of information into computer databases; benchmarking services, namely, consumer behavior analysis and consumer trend analysis; benchmarking services namely evaluation of business organization practices; arranging of online business competitions for advertising purposes; promoting the sale of goods and services of others through promotional contests; consultation, information and advisory services relating to all the aforesaid services; computerised analysis of business data namely, testing, analysis and evaluation of consumer response to the goods and services of others; analysis and evaluation of websites for business management purposes, namely, collating and analyzing information in the field of consumer response to website content
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000314564 filed 01/21/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000314564 registered 05/20/2016 with a renewal date of 01/21/2026 and an expiration date of 01/21/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or 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 Design and development of computer hardware and software; computerised analysis of data, namely, testing, analysis and evaluation of consumer response to the goods and services of others; technical data analysis services; computer systems analysis; analytic services relating to computers; analytical services relating to computer programmes; analytic services relating to websites; analysis and evaluation of web sites, namely, collating and analysing information on consumer response to website content; testing, analysis and monitoring of mobile telecommunication signals; testing, analysis and monitoring of computer networks; website usability testing services; design and development of testing and analysis methods; analysis of the performance of computer systems and global communications networks; design services relating to the development of computerised information processing systems; providing temporary use of on-line non-downloadable operating software for computer networks and servers; computer software consultancy services; development of computer programmes; providing temporary use of non-downloadable computer software for use in database management; data mining; data warehousing; database design; creating and hosting websites, namely, electronic commerce websites, business presentation websites; website design; programming of customized web pages; development and testing of computing methods and algorithms; technical measuring and testing of computer data; design of computerized measurement systems for use in data research and analysis; research in computerized measurement technology for use in the analysis of consumer behaviour and consumer trends; consultation, information and advisory services relating to all the aforesaid services
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ United Kingdom application number UK0000314564 filed 01/21/2016]. 15 U.S.C.Section 1126(d), as amended.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000314564 registered 05/20/2016 with a renewal date of 01/21/2026 and an expiration date of 01/21/2026 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Design and development of computer hardware and software; computerised analysis of data, namely, testing, analysis and evaluation of consumer response to the goods and services of others; technical data analysis services, namely, chemical analysis; technical data analysis services; computer systems analysis; analytic services relating to computers, namely computer system analysis; analytic services relating to computers; analytic services relating to computers, namely, computer system analysis; analytical services relating to computer programmes; analytical services relating to computer programmes, namely, computer programming analysis; analytic services relating to websites; testing, analysis and monitoring of mobile telecommunication signals; analysis and evaluation of web sites, namely, collating and analysing information on consumer response to website content; testing, analysis and monitoring of computer networks; website usability testing services; design and development of computer software in the field of testing and analysis methods; quality control, namely, analysis of the performance of computer systems and global communications networks of others; design and development of testing and analysis methods; design services relating to the development of computerised information processing systems namely, design and development of information processing software; analysis of the performance of computer systems and global communications networks; providing temporary use of on-line non-downloadable operating software for computer networks and servers; design services relating to the development of computerised information processing systems; computer software consultancy services; development of computer programmes; providing temporary use of non-downloadable computer software for use in database management; data mining; data warehousing; database design; creating and hosting websites, namely, electronic commerce websites and business presentation websites for others; website design; creating and hosting websites, namely, electronic commerce websites, business presentation websites; programming of customized web pages; development and testing of computing methods and algorithms for the digital design industry; providing a website featuring technology that enables technical measuring and testing of computer data; development and testing of computing methods and algorithms; design of computerized measurement systems for use in data research and analysis; technical measuring and testing of computer data; market research to analyze consumer behavior and consumer trends using computerized measurement technology; consultation, information and advisory services relating to all the aforesaid services; research in computerized measurement technology for use in the analysis of consumer behaviour and consumer trends; compilation of statistical data for use in scientific researchClass 042 for Design and development of computer hardware and software; technical data analysis services, namely, chemical analysis; computer systems analysis; analytic services relating to computers, namely computer system analysis; analytic services relating to computers, namely, computer system analysis; analytical services relating to computer programmes, namely, computer programming analysis; testing, analysis and monitoring of mobile telecommunication signals; testing, analysis and monitoring of computer networks; website usability testing services; design and development of computer software in the field of testing and analysis methods; quality control, namely, analysis of the performance of computer systems and global communications networks of others; design services relating to the development of computerised information processing systems namely, design and development of information processing software; providing temporary use of on-line non-downloadable operating software for computer networks and servers; computer software consultancy services; development of computer programmes; providing temporary use of non-downloadable computer software for use in database management; data mining; data warehousing; database design; creating and hosting websites, namely, electronic commerce websites and business presentation websites for others; website design; programming of customized web pages; development and testing of computing methods and algorithms for the digital design industry; providing a website featuring technology that enables technical measuring and testing of computer data; design of computerized measurement systems for use in data research and analysis; market research to analyze consumer behavior and consumer trends using computerized measurement technology; consultation, information and advisory services relating to all the aforesaid services; compilation of statistical data for use in scientific research
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ United Kingdom application number UK0000314564 filed 01/21/2016]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ United Kingdom registration number UK0000314564 registered 05/20/2016 with a renewal date of 01/21/2026 and an expiration date of 01/21/2026 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
DXS appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance.


SIGNATURE(S)
Response Signature
Signature: /pbhuff35901/     Date: 05/05/2017
Signatory's Name: Pamela B. Huff
Signatory's Position: Attorney for Applicant; Texas Bar Member

Signatory's Phone Number: 210-554-5450

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: 87110794
Internet Transmission Date: Fri May 05 17:51:33 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2017050517513303
6996-87110794-590643218725bff3ad16ffc952
862f22ac9c9ed3c465f7243048d787ae3d1c2482
-N/A-N/A-20170505174500227102