Response to Office Action

PRONTO

Pronto Software Limited

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)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 87761853
LAW OFFICE ASSIGNED LAW OFFICE 112
MARK SECTION
MARK http://uspto.report/TM/87761853/mark.png
LITERAL ELEMENT PRONTO
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (009)(current)
INTERNATIONAL CLASS 009
DESCRIPTION
Software for providing, managing, and delivering the computing requirements of organisations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; computer software; computer application software; software languages; operating and control systems; downloadable software; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (API's); electronic publications (downloadable); computer hardware and devices; software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; software, applications, devices and computing systems associated with business intelligence and context aware systems; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project management
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 04/00/2010
        FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (009)(proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Software for providing, managing, and delivering the computing requirements of organisations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; Computer software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; computer software; computer software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer application software; computer application software for mobile phones, portable media players, and handheld computers, namely, computer application software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading and for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software languages; control system for the remote observation, management and operation of computer hardware and software, comprising computers, software, electromechanical controls, and video display screens; operating and control systems; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (APIs); downloadable software; downloadable electronic publications in the nature of instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (API's); computer hardware and peripheral devices; electronic publications (downloadable); software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; computer hardware and devices; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; software, applications, devices and computing systems associated with business intelligence and context aware systems; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project management
FINAL DESCRIPTION
Computer software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; computer software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer application software for mobile phones, portable media players, and handheld computers, namely, computer application software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading and for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); control system for the remote observation, management and operation of computer hardware and software, comprising computers, software, electromechanical controls, and video display screens; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (APIs); downloadable electronic publications in the nature of instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning; computer hardware and peripheral devices; software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; software, applications, devices and computing systems associated with business intelligence and context aware systems; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project management
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 04/00/2010
       FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (016)(current)
INTERNATIONAL CLASS 016
DESCRIPTION Printed matter, including training manuals; publications
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 04/00/2010
        FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (016)(proposed)
INTERNATIONAL CLASS 016
TRACKED TEXT DESCRIPTION
Printed matter, including training manuals; Printed matter, namely, training manuals concerning computer software; publications; publications, namely, instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning
FINAL DESCRIPTION
Printed matter, namely, training manuals concerning computer software; publications, namely, instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 04/00/2010
       FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (035)(current)
INTERNATIONAL CLASS 035
DESCRIPTION
Retailing, wholesaling and online sale of computer software and other information technology products; enterprise resource planning; business management assistance; professional business consultancy services; business research; compilation and systemization of information into computer databases; recruitment and personnel management services; provision of personnel, including temporary staff; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (API's), project management; provision of services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 04/00/2010
        FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (035)(proposed)
INTERNATIONAL CLASS 035
TRACKED TEXT DESCRIPTION
Retailing, wholesaling and online sale of computer software and other information technology products; Retail store services, wholesale store services, and online retail store and wholesale store services featuring computer software and other information technology products; enterprise resource planning; business management assistance; professional business consultancy services; business research; compilation and systemization of information into computer databases; recruitment and personnel management services; provision of personnel, including temporary staff; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (API's), project management; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (APIs), project management; provision of services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems; provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems
FINAL DESCRIPTION
Retail store services, wholesale store services, and online retail store and wholesale store services featuring computer software and other information technology products; enterprise resource planning; business management assistance; professional business consultancy services; business research; compilation and systemization of information into computer databases; recruitment and personnel management services; provision of personnel, including temporary staff; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (APIs), project management; provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 04/00/2010
       FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (041)(current)
INTERNATIONAL CLASS 041
DESCRIPTION
Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (API's), and information technology; arranging and conducting seminars and conferences; providing non-downloadable electronic publications
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 04/00/2010
        FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (041)(proposed)
INTERNATIONAL CLASS 041
TRACKED TEXT DESCRIPTION
Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (API's), and information technology; Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; arranging and conducting seminars and conferences; arranging and conducting seminars and conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; providing non-downloadable electronic publications; providing non-downloadable electronic publications in the nature of brochures, newsletters and training manuals in the field of enterprise resource planning
FINAL DESCRIPTION
Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; arranging and conducting seminars and conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; providing non-downloadable electronic publications in the nature of brochures, newsletters and training manuals in the field of enterprise resource planning
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 04/00/2010
       FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Services in relation to computing devices, software and the Internet for the requirements of organisations, or individuals; computer software design, development, consultation, installation and maintenance services, including in the field of mobile applications; information technology services for managing and or provision of: administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APl's) .and other information technology services; cloud computing; software as a service (SaaS); platform as a service (PaaS) software and other similar concepts described "as a Service"; providing temporary use of on-line non-downloadable software; online provision of web-based software and web-based applications (non-downloadable); computer and technology services for integration of technologies, platforms, devices, applications, apps and the Internet of Things; hosting of computer devices, managed services; software applications, apps, integration platforms, service platforms, databases, websites software as a service ("Saas"), weblogs and web portal services; providing search engines for the Internet and the Cloud; providing search services and compilations of information; technological and software consultancy services; rental of web servers; web site design consultancy; digital security services; risk management services; project management services
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 04/00/2010
        FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
        FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Services in relation to computing devices, software and the Internet for the requirements of organisations, or individuals; Services in relation to computing devices, software and the Internet, namely, computer consultation and computer software consultation concerning the use of software and the Internet in managing the computing requirements of organizations or individuals; computer software design, development, consultation, installation and maintenance services, including in the field of mobile applications; information technology services for managing and or provision of: administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APl's) .and other information technology services; computer services, namely, management of information technology (IT) systems employed in the areas of enterprise administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APIs); cloud computing; other information technology services, namely, providing information regarding information technology (IT) and the planning and design of information technology systems; software as a service (SaaS); cloud computing for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); platform as a service (PaaS) software and other similar concepts described "as a Service"; software as a service (SAAS) services featuring software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of on-line non-downloadable software; platform as a service (PAAS) featuring computer software platforms for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); online provision of web-based software and web-based applications (non-downloadable); providing temporary use of on-line non-downloadable software for use in for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of a web-based software application for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); hosting of computer devices, managed services; computer and technology services for integration of technologies, platforms, devices, applications, apps and the Internet of Things; software applications, apps, integration platforms, service platforms, databases, websites software as a service ("Saas"), weblogs and web portal services; application service provider, namely, hosting and managing software and applications in the fields of business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software as a service (SAAS) services, namely, hosting software for use by others for use with software applications, apps, integration platforms, service platforms, databases, websites software, weblogs and web portal services; providing search services and compilations of information; providing search engines for the Internet and the cloud; technological and software consultancy services; providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; computer technological and software consultancy services; rental of web servers; digital security services; web site design consultancy; risk management services; computer security services in the nature of user identity and access management, user authentication and digital certificate management, computer project management services; project management services
FINAL DESCRIPTION
Services in relation to computing devices, software and the Internet, namely, computer consultation and computer software consultation concerning the use of software and the Internet in managing the computing requirements of organizations or individuals; computer software design, development, consultation, installation and maintenance services, including in the field of mobile applications; computer services, namely, management of information technology (IT) systems employed in the areas of enterprise administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APIs); other information technology services, namely, providing information regarding information technology (IT) and the planning and design of information technology systems; cloud computing for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software as a service (SAAS) services featuring software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); platform as a service (PAAS) featuring computer software platforms for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of on-line non-downloadable software for use in for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of a web-based software application for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer and technology services for integration of technologies, platforms, devices, applications, apps and the Internet of Things; application service provider, namely, hosting and managing software and applications in the fields of business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software as a service (SAAS) services, namely, hosting software for use by others for use with software applications, apps, integration platforms, service platforms, databases, websites software, weblogs and web portal services; providing search engines for the Internet and the cloud; providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; computer technological and software consultancy services; rental of web servers; web site design consultancy; computer security services in the nature of user identity and access management, user authentication and digital certificate management, computer project management services
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 04/00/2010
       FIRST USE IN COMMERCE DATE At least as early as 04/00/2010
FILING BASIS Section 44(e)
       FOREIGN REGISTRATION NUMBER 1731806
       FOREIGN REGISTRATION
       COUNTRY
Australia
       FOREIGN REGISTRATION
       DATE
11/02/2015
       FOREIGN EXPIRATION DATE 11/02/2025
ADDITIONAL STATEMENTS SECTION
ACTIVE PRIOR REGISTRATION(S) The applicant claims ownership of active prior U.S. Registration Number(s) 2683972, 3721711, 3721712, and others.
SIGNATURE SECTION
RESPONSE SIGNATURE /Dwayne K. Goetzel/
SIGNATORY'S NAME Dwayne K. Goetzel
SIGNATORY'S POSITION Attorney for Applicant
SIGNATORY'S PHONE NUMBER 512-853-8860
DATE SIGNED 11/09/2018
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Nov 09 17:12:21 EST 2018
TEAS STAMP USPTO/ROA-XX.XX.XX.X-2018
1109171221669245-87761853
-610473395dc43a366bc74b54
25af47df3a26c7c88e87c0df6
455730333364526e-N/A-N/A-
20181109165349028516



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. 87761853 PRONTO(Standard Characters, see http://uspto.report/TM/87761853/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Software for providing, managing, and delivering the computing requirements of organisations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; computer software; computer application software; software languages; operating and control systems; downloadable software; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (API's); electronic publications (downloadable); computer hardware and devices; software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; software, applications, devices and computing systems associated with business intelligence and context aware systems; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project management
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Software for providing, managing, and delivering the computing requirements of organisations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; Computer software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; computer software; computer software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer application software; computer application software for mobile phones, portable media players, and handheld computers, namely, computer application software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading and for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software languages; control system for the remote observation, management and operation of computer hardware and software, comprising computers, software, electromechanical controls, and video display screens; operating and control systems; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (APIs); downloadable software; downloadable electronic publications in the nature of instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (API's); computer hardware and peripheral devices; electronic publications (downloadable); software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; computer hardware and devices; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; software, applications, devices and computing systems associated with business intelligence and context aware systems; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project managementClass 009 for Computer software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading; computer software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer application software for mobile phones, portable media players, and handheld computers, namely, computer application software for providing, managing, and delivering the computing requirements of organizations or individuals in the area of information management, service provision, directories, community facilitation, information exchange, demand and supply matching and brokering, transacting, analytics, collaboration, sharing, or trading and for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); control system for the remote observation, management and operation of computer hardware and software, comprising computers, software, electromechanical controls, and video display screens; computer software, for managing accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, software for provision of cloud services, web services, provision of service, device or application connectivity, web apps, mobile apps, platform provision, artificial intelligence, and Application Programming Interfaces (APIs); downloadable electronic publications in the nature of instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning; computer hardware and peripheral devices; software, devices and platforms for the integration of technologies, platforms, devices, applications and the Internet of Things; software and computing devices used for hosting of computer devices, software applications, apps, integration platforms and service platforms; software, applications, devices and computing systems associated with digital marketing, and digital marketing technologies; software, applications, devices and computing systems associated with business intelligence and context aware systems; computer software for consumer intelligence, social intelligence, the sharing economy, digital security, risk management, and project management
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Printed matter, including training manuals; publications
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Printed matter, including training manuals; Printed matter, namely, training manuals concerning computer software; publications; publications, namely, instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planningClass 016 for Printed matter, namely, training manuals concerning computer software; publications, namely, instructional, training, operational, reference and informational brochures, training manuals and newsletters, all in the field of enterprise resource planning
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retailing, wholesaling and online sale of computer software and other information technology products; enterprise resource planning; business management assistance; professional business consultancy services; business research; compilation and systemization of information into computer databases; recruitment and personnel management services; provision of personnel, including temporary staff; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (API's), project management; provision of services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Retailing, wholesaling and online sale of computer software and other information technology products; Retail store services, wholesale store services, and online retail store and wholesale store services featuring computer software and other information technology products; enterprise resource planning; business management assistance; professional business consultancy services; business research; compilation and systemization of information into computer databases; recruitment and personnel management services; provision of personnel, including temporary staff; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (API's), project management; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (APIs), project management; provision of services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems; provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systemsClass 035 for Retail store services, wholesale store services, and online retail store and wholesale store services featuring computer software and other information technology products; enterprise resource planning; business management assistance; professional business consultancy services; business research; compilation and systemization of information into computer databases; recruitment and personnel management services; provision of personnel, including temporary staff; business consultancy in relation to administration of information technology, namely, cloud computing, internet, web services, Application Programming Interfaces (APIs), project management; provision of marketing services in relation to digital marketing and digital marketing technologies, including software, applications, devices, and computing systems
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (API's), and information technology; arranging and conducting seminars and conferences; providing non-downloadable electronic publications
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (API's), and information technology; Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; arranging and conducting seminars and conferences; arranging and conducting seminars and conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; providing non-downloadable electronic publications; providing non-downloadable electronic publications in the nature of brochures, newsletters and training manuals in the field of enterprise resource planningClass 041 for Education and training, particularly in relation to enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; arranging and conducting seminars and conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; providing non-downloadable electronic publications in the nature of brochures, newsletters and training manuals in the field of enterprise resource planning
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or 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 Services in relation to computing devices, software and the Internet for the requirements of organisations, or individuals; computer software design, development, consultation, installation and maintenance services, including in the field of mobile applications; information technology services for managing and or provision of: administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APl's) .and other information technology services; cloud computing; software as a service (SaaS); platform as a service (PaaS) software and other similar concepts described "as a Service"; providing temporary use of on-line non-downloadable software; online provision of web-based software and web-based applications (non-downloadable); computer and technology services for integration of technologies, platforms, devices, applications, apps and the Internet of Things; hosting of computer devices, managed services; software applications, apps, integration platforms, service platforms, databases, websites software as a service ("Saas"), weblogs and web portal services; providing search engines for the Internet and the Cloud; providing search services and compilations of information; technological and software consultancy services; rental of web servers; web site design consultancy; digital security services; risk management services; project management services
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Services in relation to computing devices, software and the Internet for the requirements of organisations, or individuals; Services in relation to computing devices, software and the Internet, namely, computer consultation and computer software consultation concerning the use of software and the Internet in managing the computing requirements of organizations or individuals; computer software design, development, consultation, installation and maintenance services, including in the field of mobile applications; information technology services for managing and or provision of: administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APl's) .and other information technology services; computer services, namely, management of information technology (IT) systems employed in the areas of enterprise administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APIs); cloud computing; other information technology services, namely, providing information regarding information technology (IT) and the planning and design of information technology systems; software as a service (SaaS); cloud computing for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); platform as a service (PaaS) software and other similar concepts described "as a Service"; software as a service (SAAS) services featuring software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of on-line non-downloadable software; platform as a service (PAAS) featuring computer software platforms for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); online provision of web-based software and web-based applications (non-downloadable); providing temporary use of on-line non-downloadable software for use in for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of a web-based software application for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); hosting of computer devices, managed services; computer and technology services for integration of technologies, platforms, devices, applications, apps and the Internet of Things; software applications, apps, integration platforms, service platforms, databases, websites software as a service ("Saas"), weblogs and web portal services; application service provider, namely, hosting and managing software and applications in the fields of business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software as a service (SAAS) services, namely, hosting software for use by others for use with software applications, apps, integration platforms, service platforms, databases, websites software, weblogs and web portal services; providing search services and compilations of information; providing search engines for the Internet and the cloud; technological and software consultancy services; providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; computer technological and software consultancy services; rental of web servers; digital security services; web site design consultancy; risk management services; computer security services in the nature of user identity and access management, user authentication and digital certificate management, computer project management services; project management servicesClass 042 for Services in relation to computing devices, software and the Internet, namely, computer consultation and computer software consultation concerning the use of software and the Internet in managing the computing requirements of organizations or individuals; computer software design, development, consultation, installation and maintenance services, including in the field of mobile applications; computer services, namely, management of information technology (IT) systems employed in the areas of enterprise administration, accounting, manufacturing, distribution, retailing, services, rental, project management and costing, maintenance management, forecasting, budgeting, reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales, supply chains, mobility solutions, scheduling, payroll, document management content management, master data management, cloud services, web services, sharing economy, collaboration, provision of service, device or application connectivity, web apps, and Application Programming Interfaces (APIs); other information technology services, namely, providing information regarding information technology (IT) and the planning and design of information technology systems; cloud computing for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software as a service (SAAS) services featuring software for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); platform as a service (PAAS) featuring computer software platforms for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of on-line non-downloadable software for use in for business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); providing temporary use of a web-based software application for use in business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); computer and technology services for integration of technologies, platforms, devices, applications, apps and the Internet of Things; application service provider, namely, hosting and managing software and applications in the fields of business process management and enterprise resource planning for supporting areas of accounting, manufacturing, distribution, retailing, equipment rental management, project management and costing, equipment maintenance management, business forecasting, budgeting and sales reporting, customer and supplier relationship management, inventory and warehouse management, quality management, web sales management, supply chain management, management of mobile computing equipment, employee scheduling and payroll, document management, content database management, master database management, software management relating to cloud services and web services, network management relating to network connectivity, web applications, and Application Programming Interfaces (APIs); software as a service (SAAS) services, namely, hosting software for use by others for use with software applications, apps, integration platforms, service platforms, databases, websites software, weblogs and web portal services; providing search engines for the Internet and the cloud; providing customized computer searching services, namely, searching and retrieving information at the customer's specific request via the Internet; computer technological and software consultancy services; rental of web servers; web site design consultancy; computer security services in the nature of user identity and access management, user authentication and digital certificate management, computer project management services
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 04/00/2010 and first used in commerce at least as early as 04/00/2010 , and is now in use in such commerce.
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Australia registration number 1731806 registered 11/02/2015 with a renewal date of __________ and an expiration date of 11/02/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2683972, 3721711, 3721712, and others.


SIGNATURE(S)
Response Signature
Signature: /Dwayne K. Goetzel/     Date: 11/09/2018
Signatory's Name: Dwayne K. Goetzel
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 512-853-8860

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: 87761853
Internet Transmission Date: Fri Nov 09 17:12:21 EST 2018
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2018110917122166924
5-87761853-610473395dc43a366bc74b5425af4
7df3a26c7c88e87c0df6455730333364526e-N/A
-N/A-20181109165349028516



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