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. 87627712 PRODIGY(Standard Characters, see http://uspto.report/TM/87627712/mark.png) has been amended as follows:

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

Please see attachment "Response to Office Action US Serial No. 87627712."

EVIDENCE
Evidence in the nature of "Response to Office Action US Serial No. 87627712" and Exhibits A-C (Product descriptions and marketing from Applicant's and Opposing Mark's websites). has been attached.
Original PDF file:
evi_10012161210-20180501160514874483_._Exhibit_A.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Original PDF file:
evi_10012161210-20180501160514874483_._Exhibit_B.pdf
Converted PDF file(s) ( 1 page)
Evidence-1
Original PDF file:
evi_10012161210-20180501160514874483_._Exhibit_C.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_10012161210-20180501160514874483_._Response_to_Office_Action_US_Serial_No._87627712.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

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 and hardware for data analysis, machine learning, artificial intelligence, robotics, and robots; Computer software for computer system and application development, deployment and management; Software for determining and predicting patterns in data; Software for training data models using machine learning and deep learning processes; Software for machine learning and deep learning algorithms and processes; Software for data analysis, evaluation, calculation, and processing; Downloadable mobile applications for determining and predicting patterns in data; Downloadable mobile applications for machine learning and deep learning algorithms and processes; Downloadable mobile applications for training data models using machine learning and deep learning processes; Downloadable mobile applications for data analysis, evaluation, calculation, and processing
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 and hardware for data analysis, machine learning, artificial intelligence, robotics, and robots; Computer software and hardware for machine learning, artificial intelligence, robotics, and robots; Computer software for computer system and application development, deployment and management; Software for determining and predicting patterns in data; Software for training data models using machine learning and deep learning processes; Software for machine learning and deep learning algorithms and processes; Downloadable mobile applications for determining and predicting patterns in data; Software for data analysis, evaluation, calculation, and processing; Downloadable mobile applications for machine learning and deep learning algorithms and processes; Downloadable mobile applications for training data models using machine learning and deep learning processes; Downloadable mobile applications for data analysis, evaluation, calculation, and processingClass 009 for Computer software and hardware for machine learning, artificial intelligence, robotics, and robots; Software for determining and predicting patterns in data; Software for training data models using machine learning and deep learning processes; Software for machine learning and deep learning algorithms and processes; Downloadable mobile applications for determining and predicting patterns in data; Downloadable mobile applications for machine learning and deep learning algorithms and processes; Downloadable mobile applications for training data models using machine learning and deep learning processes
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 Computer systems analysis; Research and development of technology in the field of determining and predicting patterns in data; Research and development of technology in the field of training data models using machine learning and deep learning processes; Research and development of technology in the field of data analysis, evaluation, calculation, and processing; Research and development of technology in the field of machine learning and deep learning algorithms and processes; Software development and product development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software development consulting in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software as a service (SAAS) services featuring software for determining and predicting patterns in data; Software as a service (SAAS) services featuring software for machine learning and deep learning algorithms and processes; Software as a service (SAAS) services featuring software for training data models using machine learning and deep learning processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in determining and predicting patterns in data; Software as a service (SAAS) services, namely, hosting software for use by others for use in training data models using machine learning and deep learning processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in machine learning and deep learning algorithms and processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in data analysis, evaluation, calculation, and processing; Technology consultation and research in the field of artificial intelligence, robotics, and robots; Technology consultation and research in the field of machine learning and deep learning algorithms and processes; Technology consultation and research in the field of training data models using machine learning and deep learning processes; Advanced product research in the field of artificial intelligence; Computer software development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Design and development of software and hardware for data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Design and development of software in the field of mobile applications; Design and development of computer software; Design and development of on-line computer software systems; Development and creation of computer programmes for data processing; Providing information in the fields of technology and software development via an on-line website; Scientific and technological services, namely, research and design in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Scientific and technological services, namely, scientific research and development of software and hardware in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Writing of data processing programs
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 systems analysis; Research and development of technology in the field of training data models using machine learning and deep learning processes; Research and development of technology in the field of determining and predicting patterns in data; Research and development of technology in the field of machine learning and deep learning algorithms and processes; Software development and product development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Research and development of technology in the field of data analysis, evaluation, calculation, and processing; Software development consulting in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software as a service (SAAS) services featuring software for determining and predicting patterns in data; Software as a service (SAAS) services featuring software for machine learning and deep learning algorithms and processes; Software as a service (SAAS) services featuring software for training data models using machine learning and deep learning processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in determining and predicting patterns in data; Software as a service (SAAS) services, namely, hosting software for use by others for use in training data models using machine learning and deep learning processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in machine learning and deep learning algorithms and processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in data analysis, evaluation, calculation, and processing; Technology consultation and research in the field of artificial intelligence, robotics, and robots; Technology consultation and research in the field of machine learning and deep learning algorithms and processes; Technology consultation and research in the field of training data models using machine learning and deep learning processes; Advanced product research in the field of artificial intelligence; Computer software development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Design and development of software and hardware for data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Design and development of software in the field of mobile applications;  Scientific and technological services, namely, research and design in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Scientific and technological services, namely, scientific research and development of software and hardware in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Design and development of computer software; Design and development of on-line computer software systems; Development and creation of computer programmes for data processing; Providing information in the fields of technology and software development via an on-line website; Scientific and technological services, namely, research and design in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Writing of data processing programsClass 042 for Research and development of technology in the field of training data models using machine learning and deep learning processes; Research and development of technology in the field of machine learning and deep learning algorithms and processes; Software development and product development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software development consulting in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Software as a service (SAAS) services featuring software for determining and predicting patterns in data; Software as a service (SAAS) services featuring software for machine learning and deep learning algorithms and processes; Software as a service (SAAS) services featuring software for training data models using machine learning and deep learning processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in determining and predicting patterns in data; Software as a service (SAAS) services, namely, hosting software for use by others for use in training data models using machine learning and deep learning processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in machine learning and deep learning algorithms and processes; Software as a service (SAAS) services, namely, hosting software for use by others for use in data analysis, evaluation, calculation, and processing; Technology consultation and research in the field of artificial intelligence, robotics, and robots; Technology consultation and research in the field of machine learning and deep learning algorithms and processes; Technology consultation and research in the field of training data models using machine learning and deep learning processes; Advanced product research in the field of artificial intelligence; Computer software development in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Design and development of software and hardware for data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Design and development of software in the field of mobile applications; Scientific and technological services, namely, research and design in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots; Scientific and technological services, namely, scientific research and development of software and hardware in the field of data analysis and processing, machine learning, artificial intelligence, robotics, and robots
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: /Gandhar Savur/     Date: 05/01/2018
Signatory's Name: Gandhar Savur
Signatory's Position: Attorney of Record, New York 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: 87627712
Internet Transmission Date: Tue May 01 17:32:23 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201805011732234
74720-87627712-51056e137ed5fd9f6e68f3a68
82c6cd8e4a818177aeca7a74b52fbb43763d0ae1
1-N/A-N/A-20180501160514874483