Extension of Time to File SOU

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 1581 (Rev 09/2005)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 1581 (Rev 09/2005)

OMB No. 0651-0054 (Exp 12/31/2020)

SOU Extension Request
(15 U.S.C. Section 1051(d))

To the Commissioner for Trademarks:

MARK: PARDOT (see, http://uspto.report/TM/87634396/mark.png)
SERIAL NUMBER: 87634396

OWNER AND/OR ENTITY INFORMATION
The owner proposes to amend the following:
Current: salesforce.com, inc., having an address of
      SALESFORCE TOWER, 415 MISSION ST, 3RD FL
      SAN FRANCISCO, California 94105
      United States
      Phone: 415-589-3120
      Email: XXXX
Proposed: salesforce.com, inc., having an address of
      SALESFORCE TOWER, 415 MISSION ST, 3RD FL
      SAN FRANCISCO, California 94105
      United States
      Phone:
      Fax:
      Email: XXXX

The owner requests a six-month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application.    The Notice of Allowance mailing date was 10/23/2018.

For International Class 009:
Current identification: Downloadable computer programs and computer software recorded on data media for retrieving, analyzing, and managing multimedia data from computer networks, including the Internet and on mobile terminals; downloadable computer software and computer software recorded on data media for the scanning, displaying, processing and output of multimedia data on computer networks, including the Internet, and on mobile terminals; computer operating programs; interfaces for computers and mobile devices, namely, mobile phones, mobile computers and tablet computers; downloadable electronic publications in the nature of articles, white papers, brochures, fliers, fact sheets, slip sheets, data sheets, application notes, training manuals, leaflets, and journals in the fields of business software, business management and business consultancy; downloadable software for generating embeddable code for websites, for the purpose of creating, customizing, deploying, scheduling, tracking, analyzing and managing online content on users' websites, on social media websites and other online forums; downloadable software for creating and deploying customized interactive content on social profiles; computer software development tools; website development software; computer software for computer system and application development, deployment and management; computer software to facilitate communicating online and through other shared networks and for customizing computer application user interfaces; downloadable software for generating embeddable code for websites; downloadable software for creating and deploying customized interactive content on social media profiles

All ITU goods/services in this class are to be deleted or processed according to a separately filed Statement of Use and/or according to a request to divide.


For International Class 035:
Current identification: Advertising services, namely, television advertising, online advertising on computer networks, radio advertising, advertising by mail order, bill-posting, print and Internet advertising; advertising via mobile radio networks; television advertising directed to mobile phones; advertising conducted via streaming video on mobile phone applications; advertising on the Internet for others; advertising agency services; business consultancy services for others in connection with corporate profiles and customer engagement on the Internet and other media; sales promotion for others; public relations; rental of advertising space on the Internet; arranging and conducting special events for commercial, promotional or advertising purposes; multimedia advertising agency services; auctioneering on the Internet; advisory services relating to advertising and marketing; business organization and management consultancy, namely, development of business concepts; business management advisory and consultancy services; trading of information and contacts over the Internet for others for business purposes; compilation and systemization of data and information into computer databases; compilation of statistics for business purposes; office functions, namely, administration and indexing of data and information for business purposes; office functions, namely, creating indexes of information and on-line searchable databases for business purposes; compilation of data, namely, image, audio and/ or video data in computer databases for business purposes; monitoring of social websites, internet postings, web content, and online content of others for customer-specified topics and to capture relevant content on those topics, and providing documentation and analysis of that online content to others for business purposes; marketing analysis of brand engagement, namely, brand evaluation services in the nature of managing, analyzing, reviewing and reporting about brand content and impact effectiveness on social media websites and social networks, and analyzing of online brand engagement

This filing does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently modified; these goods/services are either being permanently deleted or included in a separately filed Statement of Use with a Request to Divide: Advertising services, namely, television advertising, online advertising on computer networks, radio advertising, advertising by mail order, bill-posting, print and Internet advertising; advertising via mobile radio networks; television advertising directed to mobile phones; advertising conducted via streaming video on mobile phone applications; advertising on the Internet for others; advertising agency services; sales promotion for others; public relations; rental of advertising space on the Internet; arranging and conducting special events for commercial, promotional or advertising purposes; multimedia advertising agency services; auctioneering on the Internet; business organization and management consultancy, namely, development of business concepts; business management advisory and consultancy services; trading of information and contacts over the Internet for others for business purposes; compilation of data, namely, image, audio and/ or video data in computer databases for business purposes;

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class: business consultancy services for others in connection with corporate profiles and customer engagement on the Internet and other media; advisory services relating to advertising and marketing; compilation and systemization of data and information into computer databases; compilation of statistics for business purposes; office functions, namely, administration and indexing of data and information for business purposes; office functions, namely, creating indexes of information and on-line searchable databases for business purposes; monitoring of social websites, internet postings, web content, and online content of others for customer-specified topics and to capture relevant content on those topics, and providing documentation and analysis of that online content to others for business purposes; marketing analysis of brand engagement, namely, brand evaluation services in the nature of managing, analyzing, reviewing and reporting about brand content and impact effectiveness on social media websites and social networks, and analyzing of online brand engagement

For International Class 042:
Current identification: Providing temporary use of on-line non-downloadable software to store, manage, track, analyze, and report data, and for use in database management, for use as spreadsheet, for word processing, and for data storage in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; providing temporary use of online non-downloadable computer software application development tools and online non-downloadable programming language software for use in developing, analyzing, coding, checking, and controlling other computer software; providing temporary use of online non-downloadable computer software that implements a procedural and object-oriented programming language to store, manage, track, analyze, and report data, and for use in database management, for use as spreadsheet, for word processing, and for data storage in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others, and consulting services related thereto; software as a service (SaaS) services, namely, hosting software for use by others to store, manage, track, analyze, and report data, and for use in database management, for use as spreadsheet, for word processing, and for data storage in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; technical research in the field of designing and developing computers and computer software systems for use in connection with marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; web site design consultancy; computer services, namely, electronic digitizing of documents; duplication of computer programs; information technology consulting services; installation of computer software; packaging design services; technical research in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; quality control, namely, computer monitoring service which tracks application software performance, performs periodic maintenance and provides reports and alerts concerning such performance; recovery of computer data; rental of web servers; research and development of new products for others; server hosting; design and development of computer hardware and software; computer software consultancy; computer system design and analysis; data conversion of computer programs and data, not physical conversion; maintenance of computer software; monitoring of computer systems by remote access to ensure proper functioning; rental of computer software; providing temporary use of online non-downloadable software for generating embeddable code for websites; providing temporary use of online non-downloadable software for creating and deploying customized interactive content on social media profiles; creating websites for others for business purposes

This filing does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently modified; these goods/services are either being permanently deleted or included in a separately filed Statement of Use with a Request to Divide: online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others, and consulting services related thereto; web site design consultancy; computer services, namely, electronic digitizing of documents; duplication of computer programs; information technology consulting services; installation of computer software; packaging design services; quality control, namely, computer monitoring service which tracks application software performance, performs periodic maintenance and provides reports and alerts concerning such performance; recovery of computer data; research and development of new products for others; design and development of computer hardware and software; computer system design and analysis; ; creating websites for others for business purposes

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class: Providing temporary use of on-line non-downloadable software to store, manage, track, analyze, and report data, and for use in database management, for use as spreadsheet, for word processing, and for data storage in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; providing temporary use of online non-downloadable computer software application development tools and online non-downloadable programming language software for use in developing, analyzing, coding, checking, and controlling other computer software; providing temporary use of online non-downloadable computer software that implements a procedural and object-oriented programming language to store, manage, track, analyze, and report data, and for use in database management, for use as spreadsheet, for word processing, and for data storage in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; software as a service (SaaS) services, namely, hosting software for use by others to store, manage, track, analyze, and report data, and for use in database management, for use as spreadsheet, for word processing, and for data storage in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; technical research in the field of designing and developing computers and computer software systems for use in connection with marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; technical research in the field of marketing automation, lead generation, e-mail targeting, sales pipeline acceleration, marketing Return on Investment (ROI) calculation, marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, cloud computing, data management, data analytics, and business intelligence analytics; rental of web servers; server hosting; computer software consultancy; data conversion of computer programs and data, not physical conversion; maintenance of computer software; monitoring of computer systems by remote access to ensure proper functioning; rental of computer software; providing temporary use of online non-downloadable software for generating embeddable code for websites; providing temporary use of online non-downloadable software for creating and deploying customized interactive content on social media profiles

For International Class 045:
Current identification: Licensing of computer systems and software; online social networking services for others

This filing does NOT cover the following goods/services listed in either the application or Notice of Allowance or as subsequently modified; these goods/services are either being permanently deleted or included in a separately filed Statement of Use with a Request to Divide: Licensing of computer systems and software;

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class: online social networking services for others

This is the third extension request. The applicant has made the following ongoing efforts to use the mark in commerce on or in connection with each of those goods/services covered by the extension request: product or service research or development ; market research ; promotional activities

A Statement of Use has already been submitted or is being submitted along with the Extension request as evidence that applicant believes that it has made valid use of the mark in commerce.   If the USPTO finds the Statement of Use to be fatally defective, the applicant requests additional time to file an amended or substitute Statement of Use.

The applicant's current Attorney Information:
      Beth M. Goldman      ORRICK, HERRINGTON & SUTCLIFFE LLP

      IP Prosecution Department
      2050 Main Street, Suite 1100
      IRVINE, California 92614-8255
      United States
      Phone: 415-773-5700
      Fax: 415-773-5759
      The docket/reference number is 27263-6066
      Email: ipprosecutionsf@orrick.com


The applicant's proposed Attorney Information:
      Beth M. Goldman      ORRICK, HERRINGTON & SUTCLIFFE LLP

      IP Prosecution Department
      2050 Main Street, Suite 1100
      IRVINE, California 92614-8255
      United States
      Phone: 415-773-5700
      Fax: 415-773-5759
      The docket/reference number is 27263-6066
      Email: ipprosecutionsf@orrick.com


Correspondence Information (current):
      BETH M. GOLDMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: ipprosecutionsf@orrick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): beth.goldman@orrick.com; blee@orrick.com; eaghnami@orrick.com; ccivil@orrick.com

Correspondence Information (proposed):
      Beth M. Goldman
      PRIMARY EMAIL FOR CORRESPONDENCE: ipprosecutionsf@orrick.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): beth.goldman@orrick.com; blee@orrick.com; eaghnami@orrick.com; aparker@orrick.com


Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).





A fee payment in the amount of $375 will be submitted with the form, representing payment for 3 classes.


Declaration

STATEMENTS: The signatory believes that: the applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all the goods/services under Section 1(b) in the notice of allowance or as subsequently modified, or, if applicable, the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with all the goods/services/collective membership organization under Section 1(b) in the notice of allowance or as subsequently modified; and that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, members and concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any resulting registration, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.


Signature: /Kristin de la Vega/      Date Signed: 04/23/2020
Signatory's Name: de la Vega, Kristin
Signatory's Position: Trademark Counsel
Signatory's Phone: N/A

Mailing Address:
   ORRICK, HERRINGTON & SUTCLIFFE LLP
   IP Prosecution Department
   2050 Main Street, Suite 1100
   IRVINE, California 92614-8255

RAM Sale Number: 87634396
RAM Accounting Date: 04/23/2020

Serial Number: 87634396
Internet Transmission Date: Thu Apr 23 20:40:47 ET 2020
TEAS Stamp: USPTO/ESU-X.XX.XXX.X-2020042320404701331
7-87634396-7103f568d798e5bc321c63082a281
ef8bf8d7812c1b3f418fba4a473d11bbc2afa-DA
-40468626-20200423170012285134