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. 87242244 CONNECTION (Stylized and/or with Design, see http://uspto.report/TM/87242244/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Arguments in response to the likelihood of confusion refusal and Exhibits A, B, and C thereto has been attached.
Original PDF file:
evi_73238119221-20170831134438975733_._Response_to_OA_for_Serial_No._87242244.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_73238119221-20170831134438975733_._Exhibit_A_to_Response_to_OA_for_Serial_No._87242244.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_73238119221-20170831134438975733_._Exhibit_B_to_Response_to_OA_for_Serial_No._87242244.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_73238119221-20170831134438975733_._Exhibit_C_to_Response_to_OA_for_Serial_No._87242244.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Consulting services in the field of information technology, computer hardware and software and electronics goods; consultation and advisory services in the fields of computer hardware, software, computer peripherals, computer systems, computer networks and computer security; technical support services, namely, troubleshooting of computer hardware and software problems; integration and configuration of computer systems and computer networks for others; information technology support services, namely, monitoring network systems via information technology service support centers and helpdesks; computer systems analysis; design and development of computer systems and computer networks for others; customization of computer hardware and software; maintenance of computer software; computer programming; testing of computer hardware and software; computer virus protection services; managing and protecting electronic messaging systems by means of anti-spam protection and filtering of unwanted e-mails; the provision of firewalls for computer networks; online maintenance of computer software made by others; online consultation services for others in the fields of selection, implementation and use of computer hardware and software systems made by others; providing a web site featuring temporary use of non-downloadable software for enabling users to review information technology (IT) products and services, submit and approve requisitions for IT equipment and services, and purchase IT equipment and services
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: Consulting services in the field of information technology, computer hardware and software and electronics goods; Information technology consulting services; consultation and advisory services in the fields of computer hardware, software, computer peripherals, computer systems, computer networks and computer security; technical support services, namely, troubleshooting of computer software problems; technical support services, namely, troubleshooting of computer hardware and software problems; integration and configuration of computer systems and computer networks for others; information technology support services, namely, monitoring network systems via information technology service support centers and helpdesks; computer systems analysis; maintenance of computer software; design and development of computer systems and computer networks for others; computer virus protection services; customization of computer hardware and software; managing and protecting electronic messaging systems by means of anti-spam protection and filtering of unwanted e-mails; the provision of firewalls for computer networks; computer programming; providing a web site featuring temporary use of non-downloadable software for enabling users to review information technology (IT) products and services, submit and approve requisitions for IT equipment and services, and purchase IT equipment and services; testing of computer hardware and software; online maintenance of computer software made by others; online consultation services for others in the fields of selection, implementation and use of computer hardware and software systems made by othersClass 042 for Information technology consulting services; technical support services, namely, troubleshooting of computer software problems; integration and configuration of computer systems and computer networks for others; information technology support services, namely, monitoring network systems via information technology service support centers and helpdesks; computer systems analysis; maintenance of computer software; computer virus protection services; managing and protecting electronic messaging systems by means of anti-spam protection and filtering of unwanted e-mails; the provision of firewalls for computer networks; providing a web site featuring temporary use of non-downloadable software for enabling users to review information technology (IT) products and services, submit and approve requisitions for IT equipment and services, and purchase IT equipment and services
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: /Jennifer Heisler Lavalley/     Date: 08/31/2017
Signatory's Name: Jennifer Heisler Lavalley
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 781-585-4504

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: 87242244
Internet Transmission Date: Thu Aug 31 13:53:52 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201708311353525
26011-87242244-510421b1615b54664a54b94b3
1a51999c43acacd04550282e5c72b2a8cceb6840
-N/A-N/A-20170831134438975733