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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87291971 GAMUT(Standard Characters, see http://uspto.report/TM/87291971/mark.png) has been amended as follows:

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

1.                   PRIOR FILED APPLICATION

The Examining Attorney noted the filing date of pending U.S. Application Serial No. 87097912 precedes applicant’s filing date, and that if the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  Applicant notes the referenced application was expressly abandoned on September 25, 2017.  Accordingly, there is no potential conflict with Applicant’s mark.

2.                   AMENDMENT TO IDENTIFICATION

Applicant amends the goods and services description as follows:

Class 09 

Current:
Computer software; Computer software and mobile device software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications

Proposed:
Computer software; Computer software and mobile device software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications

Class 42

Current:
Providing temporary use of non-downloadable software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Software as a service (SaaS) services featuring software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Log and machine data management services, namely, collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring and analyzing data generated by computer applications, computer systems, and computer networks for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Computer services, namely, design, development, analysis, programming and deployment of computer software, applications, systems and management solutions; Software-as-a-service; Updating and maintaining computer software

Proposed:
Providing temporary use of non-downloadable software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Software as a service (SaaS) services featuring software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Log and machine data management services; namely, collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring and analyzing data generated by computer applications, computer systems, and computer networks for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Computer services, namely, design, development, analysis, programming and deployment of computer software, applications, systems and management solutions; Software-as-a-service; Updating and maintaining computer software

As to Class 42, the Examining Attorney proposed amending the language “[l]og and machine data management services” to “[u]pdating and maintenance of database systems, including log {identify the specific nature of log data, e.g., audit trails} and machine data management services.”  Applicant respectively notes that “log management” is the common name and terminology for Applicant’s services (See, eg. http://en.wikipedia.org/wiki/Log_management and http://www.techopedia.com/definition/29394/log-management ).  “Log management” is also used to describe services in Class 42 in several existing US registrations (See, eg., Reg. Nos. 5108480, 5266269, 5230104, 5070989, 5070988, 4891628, 4788829).  Accordingly, Applicant asks the Examining Attorney to withdraw her objection to “[l]og and machine data management services” in the Class 42 identification. 

3.                   There Is No Likelihood of Confusion Because Applicant’s and Registrants’ Goods and Services Are Wholly Different

Applicant has amended the description of goods and services to address the Examining Attorney’s concerns and more accurately describe Applicant’s goods and services.  Applicant submits that the goods and services now associated with its mark are so distinct from the goods and services recited in the cited registrations (U.S. Reg. Nos. 4988569; 5167707) that there is no likelihood of confusion. 

4.                   Conclusion

In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw her objections and approve the application 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; Computer software and mobile device software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer 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; Computer software and mobile device software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applicationsClass 009 for Computer software and mobile device software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing temporary use of non-downloadable software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Software as a service (SaaS) services featuring software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Log and machine data management services, namely, collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring and analyzing data generated by computer applications, computer systems, and computer networks for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Computer services, namely, design, development, analysis, programming and deployment of computer software, applications, systems and management solutions; Software-as-a-service; Updating and maintaining computer software
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 non-downloadable software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Software as a service (SaaS) services featuring software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Log and machine data management services, namely, collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring and analyzing data generated by computer applications, computer systems, and computer networks for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Computer services, namely, design, development, analysis, programming and deployment of computer software, applications, systems and management solutions; Software-as-a-service; Updating and maintaining computer softwareClass 042 for Providing temporary use of non-downloadable software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Software as a service (SaaS) services featuring software for collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring, and analyzing data for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Log and machine data management services, namely, collecting, aggregating, storing, searching, alerting, reporting, visualizing, monitoring and analyzing data generated by computer applications, computer systems, and computer networks for monitoring and managing computers, electronic networks, mobile devices, internet enabled devices and other computer applications; Computer services, namely, design, development, analysis, programming and deployment of computer software, applications, systems and management solutions; Updating and maintaining computer software
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: /Matthew Slevin/     Date: 10/11/2017
Signatory's Name: Matthew Slevin
Signatory's Position: Attorney of Record, California Bar Member

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: 87291971
Internet Transmission Date: Wed Oct 11 16:03:26 EDT 2017
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201710111603268
58676-87291971-510e9f7b60ade35079c0a7cb7
5fa283873d17b9b396f5a6cc935958ed8e57fac4
-N/A-N/A-20171011154243381222