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. 87703161 THE ELEMENT(Standard Characters, see http://uspto.report/TM/87703161/mark.png) has been amended as follows:

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

Remarks

                This is in response to the Office Action dated February 1, 2018. 

                The Examining Attorney has initially refused registration in light of U.S. Registration No.’s 4217453 and 5163994, and has indicated that the refusals pertain to “providing temporary use of non-downloadable software for controlling, deploying, operating, configuring, provisioning and virtualizing computers and networks, and for information management” and “providing temporary use of nondownloadable software for regulatory compliance, monitoring computer network access and activity, data encryption and decryption, cryptography, computer user authentication, compliance monitoring, data backup, data recovery, data archiving and deduplication, cloud infrastructure management and automation, cloud, web and application performance monitoring, database management, data warehousing, data center operation and automation, application and database integration, data transmission and data storage, business intelligence, business process insight, data analytics, information management, knowledge management, customer relationship management, enterprise resource planning and risk management” in International Class 42. 

Applicant requests withdrawal of these refusals since the services to which they pertain no longer appear in the identification of services as amended herein. 

The Examining Attorney has also objected to portions of Applicant’s identification of services in International Classes 35 and 42.  Applicant appreciates the Examining Attorney’s guidance and believes the amendments submitted herein obviate these objections.  In this regard, Applicant notes that “business risk management consultation” and “planning, design and implementation of computer technologies for others” appear in the Trademark ID Manual and that with the limitations shown the amended ID falls fully within the scope of the original ID. 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business administration services; providing office functions; business management consulting services; business consulting services in the fields of information technology (IT), business process improvement and outsourcing, and enterprise architecture; outsource service provider in the fields of IT consulting and business process professionals; business strategic planning services in the field of information technology; IT asset management services, namely, reporting on service histories, utilization of IT assets, end of product life information and replacement costs all related to IT equipment; compilation and systemization of information into computer databases; database management; on-line ordering services in the field of computer hardware, software and peripherals; promotion and marketing services and related consulting in the field of information and computer technology; customer relationship management; business IT risk management consultation; marketing consulting; consultation in the field of energy efficiency
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: Business administration services; providing office functions; business management consulting services; business consulting services in the fields of information technology (IT), business process improvement and outsourcing, and enterprise architecture; outsource service provider in the fields of IT consulting and business process professionals; outsource service provider in the field of business process management; business strategic planning services in the field of information technology; IT asset management services, namely, reporting on service histories, utilization of IT assets, end of product life information and replacement costs all related to IT equipment; compilation and systemization of information into computer databases; database management; on-line ordering services in the field of computer hardware, software and peripherals; promotion and marketing services and related consulting in the field of information and computer technology; customer relationship management; business IT risk management consultation; business risk management consultation, namely, consulting about business risks which are associated with or can be mitigated using information technology; marketing consulting; consultation in the field of energy efficiencyClass 035 for Business administration services; providing office functions; business management consulting services; business consulting services in the fields of information technology (IT), business process improvement and outsourcing, and enterprise architecture; outsource service provider in the field of business process management; business strategic planning services in the field of information technology; IT asset management services, namely, reporting on service histories, utilization of IT assets, end of product life information and replacement costs all related to IT equipment; compilation and systemization of information into computer databases; database management; on-line ordering services in the field of computer hardware, software and peripherals; promotion and marketing services and related consulting in the field of information and computer technology; customer relationship management; business risk management consultation, namely, consulting about business risks which are associated with or can be mitigated using information technology; marketing consulting; consultation in the field of energy efficiency
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 Scientific and technological services, namely, research, design and development in the field of edge computing, datacenter architecture and hybrid cloud computing; consulting services in the field of software as a service (SAAS); technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; consulting in the field of cloud computing and big data analytics; technical consulting in the field of unified communications hardware and software; IT consulting including in the fields of applications transformation, integration, modernization, migration, design, development, implementation, testing, optimization and operation, computer project management, IT mobility and workplace services, IT aspects of business processes, customer relationship management, finance and administration, computer application delivery, converged and hyper-converged IT infrastructure, utility industry services and operations; updating and maintaining cloud-based computer software through on-line updates, enhancements and patches; technical support services, namely, migration of datacenter, server and database applications; computer services, namely, cloud hosting provider services; application service provider (ASP), namely, hosting computer software applications of others; providing virtual and non-virtual application servers, web servers, file servers, redundancy servers, and database servers of variable capacity to others; professional computer services, namely, network analysis, LAN/WAN design, wireless engineering, virtualization and computer project management; computer services, namely, integration of private and public cloud computing environments; cloud computing featuring software for use in database management and in data warehousing; database development services; data mining; backup services for computer data; off-site data backup; data migration services; data encryption and decoding services; electronic data storage; providing temporary use of non-downloadable software for controlling, deploying, operating, configuring, provisioning and virtualizing computers and networks, and for information management; providing temporary use of non-downloadable software for information technology (IT) management, process automation, security, reporting, forecasting, infrastructure fault and performance monitoring, and IT service desk and help desk functions; providing temporary use of non-downloadable software for data protection; providing temporary use of non-downloadable software for regulatory compliance, monitoring computer network access and activity, data encryption and decryption, cryptography, computer user authentication, compliance monitoring, data backup, data recovery, data archiving and deduplication, cloud infrastructure management and automation, cloud, web and application performance monitoring, database management, data warehousing, data center operation and automation, application and database integration, data transmission and data storage, business intelligence, business process insight, data analytics, information management, knowledge management, customer relationship management, enterprise resource planning and risk management; providing temporary use of non-downloadable software for software development, deployment, testing, delivery and application lifecycle management; providing temporary use of non- downloadable software for virtualizing and managing computers, computer hardware and software, servers and computer networks; software as a service services (SAAS) featuring software for use in database management; providing temporary use of non-downloadable software for managing software licenses
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: Scientific and technological services, namely, research, design and development in the field of edge computing, datacenter architecture and hybrid cloud computing; Scientific and technological services, namely, research, product design and product development in the field of edge computing, datacenter architecture and hybrid cloud computing; scientific and technological services, namely, design of computer technologies for others in the field of edge computing, datacenter architecture and hybrid cloud computing; consulting services in the field of software as a service (SAAS); technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; consulting in the field of cloud computing and big data analytics; technical consulting in the field of unified communications hardware and software; IT consulting including in the fields of applications transformation, integration, modernization, migration, design, development, implementation, testing, optimization and operation, computer project management, IT mobility and workplace services, IT aspects of business processes, customer relationship management, finance and administration, computer application delivery, converged and hyper-converged IT infrastructure, utility industry services and operations; updating and maintaining cloud-based computer software through on-line updates, enhancements and patches; technical support services, namely, migration of datacenter, server and database applications; computer services, namely, cloud hosting provider services; application service provider (ASP), namely, hosting computer software applications of others; providing virtual and non-virtual application servers, web servers, file servers, redundancy servers, and database servers of variable capacity to others; professional computer services, namely, network analysis, LAN/WAN design, wireless engineering, virtualization and computer project management; computer services, namely, integration of private and public cloud computing environments; cloud computing featuring software for use in database management and in data warehousing; database development services; data mining; backup services for computer data; off-site data backup; data migration services; data encryption and decoding services; providing temporary use of non-downloadable software for controlling, deploying, operating, configuring, provisioning and virtualizing computers and networks, and for information management; electronic data storage; providing temporary use of non-downloadable software for information technology (IT) management, process automation, security, reporting, forecasting, infrastructure fault and performance monitoring, and IT service desk and help desk functions; providing temporary use of non-downloadable software for data protection; providing temporary use of non-downloadable software for regulatory compliance, monitoring computer network access and activity, data encryption and decryption, cryptography, computer user authentication, compliance monitoring, data backup, data recovery, data archiving and deduplication, cloud infrastructure management and automation, cloud, web and application performance monitoring, database management, data warehousing, data center operation and automation, application and database integration, data transmission and data storage, business intelligence, business process insight, data analytics, information management, knowledge management, customer relationship management, enterprise resource planning and risk management; providing temporary use of non-downloadable software for software development, deployment, testing, delivery and application lifecycle management; providing temporary use of non- downloadable software for virtualizing and managing computers, computer hardware and software, servers and computer networks; software as a service services (SAAS) featuring software for use in database management; providing temporary use of non-downloadable software for managing software licenses; outsource service provider in the field of IT consultingClass 042 for Scientific and technological services, namely, research, product design and product development in the field of edge computing, datacenter architecture and hybrid cloud computing; scientific and technological services, namely, design of computer technologies for others in the field of edge computing, datacenter architecture and hybrid cloud computing; consulting services in the field of software as a service (SAAS); technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; consulting in the field of cloud computing and big data analytics; technical consulting in the field of unified communications hardware and software; IT consulting including in the fields of applications transformation, integration, modernization, migration, design, development, implementation, testing, optimization and operation, computer project management, IT mobility and workplace services, IT aspects of business processes, customer relationship management, finance and administration, computer application delivery, converged and hyper-converged IT infrastructure, utility industry services and operations; updating and maintaining cloud-based computer software through on-line updates, enhancements and patches; technical support services, namely, migration of datacenter, server and database applications; computer services, namely, cloud hosting provider services; application service provider (ASP), namely, hosting computer software applications of others; providing virtual and non-virtual application servers, web servers, file servers, redundancy servers, and database servers of variable capacity to others; professional computer services, namely, network analysis, LAN/WAN design, wireless engineering, virtualization and computer project management; computer services, namely, integration of private and public cloud computing environments; cloud computing featuring software for use in database management and in data warehousing; database development services; data mining; backup services for computer data; off-site data backup; data migration services; data encryption and decoding services; electronic data storage; providing temporary use of non-downloadable software for information technology (IT) management, process automation, security, reporting, forecasting, infrastructure fault and performance monitoring, and IT service desk and help desk functions; providing temporary use of non-downloadable software for data protection; providing temporary use of non-downloadable software for software development, deployment, testing, delivery and application lifecycle management; providing temporary use of non- downloadable software for virtualizing and managing computers, computer hardware and software, servers and computer networks; software as a service services (SAAS) featuring software for use in database management; providing temporary use of non-downloadable software for managing software licenses; outsource service provider in the field of IT consulting
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.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
James F. Struthers of Richard Law Group, having an address of
13355 Noel Road, Suite 1350 Dallas, Texas 75240
United States
clarissa@richardlawgroup.com
214 206-4300
214 206-4330
The attorney docket/reference number is 90517784 .
The Other Appointed Attorney(s): David Diamond, Molly Richard.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
MALIA ABRIL
HEWLETT PACKARD ENTERPRISE COMPANY
3000 HANOVER STREET, MS 1051
PALO ALTO
California
US
94304

Proposed:
James F. Struthers of Richard Law Group, having an address of
13355 Noel Road, Suite 1350 Dallas, Texas 75240
United States
clarissa@richardlawgroup.com;jim@richardlawgroup.com;malia.abril@hpe.com
214 206-4300
214 206-4330
The docket/reference number is 90517784 .



SIGNATURE(S)
Response Signature
Signature: /James F. Struthers/     Date: 07/30/2018
Signatory's Name: James F. Struthers
Signatory's Position: Attorney of Record, TX Bar Member

Signatory's Phone Number: 214 206-4300

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.

Mailing Address:    James F. Struthers
   Richard Law Group
   13355 Noel Road, Suite 1350
   Dallas, Texas 75240
        
Serial Number: 87703161
Internet Transmission Date: Mon Jul 30 10:36:36 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2018073010363637
9678-87703161-610ef88adba9f446ba23c5d415
f6f5d534b3ec9a95370fac3a8481c9a9d61464d-
N/A-N/A-20180730102836828423