Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 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 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
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: 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; arranging and conducting business tutorials, business seminars and business conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technologyClass 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; arranging and conducting business tutorials, business seminars and business conferences in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology
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 (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
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 (APIs), and information technology; Education and training, namely, providing classes, seminars, tutorials and workshops in the field of 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; arranging and conducting educational seminars, educational tutorials and educational 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 planningClass 041 for Education and training, namely, providing classes, seminars, tutorials and workshops in the field of enterprise resource planning, cloud computing, internet, web services, Application Programming Interfaces (APIs), and information technology; arranging and conducting educational seminars, educational tutorials and educational 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.

SIGNATURE(S)
Response Signature
Signature: /Dwayne K. Goetzel/     Date: 07/16/2019
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: Tue Jul 16 15:18:32 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2019071615183272103
8-87761853-6209cb08266b310c9b4b955868789
e44381291091dbc03025a1b7b7b317f48528-N/A
-N/A-20190716150900957093