Response to Office Action

ZEROFOX

ZEROFOX, INC.

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 87912036
LAW OFFICE ASSIGNED LAW OFFICE 117
MARK SECTION
MARK FILE NAME http://uspto.report/TM/87912036/mark.png
LITERAL ELEMENT ZEROFOX
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
GOODS AND/OR SERVICES SECTION (041)(no change)
GOODS AND/OR SERVICES SECTION (042)(current)
INTERNATIONAL CLASS 042
DESCRIPTION
Software as a service (SAAS) services featuring temporary use of non-downloadable cyber security software for use on social media and digital platforms and providing alerts identifying malicious or dangerous content
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 10/13/2014
        FIRST USE IN COMMERCE DATE At least as early as 10/13/2014
GOODS AND/OR SERVICES SECTION (042)(proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Software as a service (SAAS) services featuring temporary use of non-downloadable cyber security software for use on social media and digital platforms and providing alerts identifying malicious or dangerous content; Social media management, namely, providing technology consulting in the field of social media; Recovery of computer data, namely, recovery of hijacked accounts; Electronic monitoring of the internet using computers and sensors for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Electronic monitoring of social media and digital platforms using computers and sensors for data collection to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers and threats of violence
FINAL DESCRIPTION
Social media management, namely, providing technology consulting in the field of social media; Recovery of computer data, namely, recovery of hijacked accounts; Electronic monitoring of the internet using computers and sensors for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Electronic monitoring of social media and digital platforms using computers and sensors for data collection to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers and threats of violence
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 10/13/2014
       FIRST USE IN COMMERCE DATE At least as early as 10/13/2014
GOODS AND/OR SERVICES SECTION (045)(current)
INTERNATIONAL CLASS 045
DESCRIPTION
Domain name management and recovery services; social media username registration, social media management and recovery of hijacked accounts; brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; brand management online, namely, preparing and sending notices of misuse and removing leaked or stolen content; Intellectual property protection services, namely, Internet surveillance and monitoring to detect possible infringement, domain name abuse and cyber squatting, and remediation services; social media and digital platforms monitoring to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers, threats of violence, and compliance issues
FILING BASIS Section 1(a)
        FIRST USE ANYWHERE DATE At least as early as 03/15/2016
        FIRST USE IN COMMERCE DATE At least as early as 03/15/2016
GOODS AND/OR SERVICES SECTION (045)(proposed)
INTERNATIONAL CLASS 045
TRACKED TEXT DESCRIPTION
Domain name management and recovery services; Domain name management and recovery services, namely, Domain name registration, monitoring, and domain name acquisition services; social media username registration, social media management and recovery of hijacked accounts; Social media username registration; brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Intellectual property watch services in the field of brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; brand management online, namely, preparing and sending notices of misuse and removing leaked or stolen content; brand management online, namely, brand monitoring and protection by preparing and sending notices of misuse and removing leaked or stolen content; Intellectual property protection services, namely, Internet surveillance and monitoring to detect possible infringement, domain name abuse and cyber squatting, and remediation services; Tracking and monitoring regulatory requirements in the field of social media and digital platforms for regulatory compliance purposes; social media and digital platforms monitoring to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers, threats of violence, and compliance issues
FINAL DESCRIPTION
Domain name management and recovery services, namely, Domain name registration, monitoring, and domain name acquisition services; Social media username registration; Intellectual property watch services in the field of brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; brand management online, namely, brand monitoring and protection by preparing and sending notices of misuse and removing leaked or stolen content; Tracking and monitoring regulatory requirements in the field of social media and digital platforms for regulatory compliance purposes
FILING BASIS Section 1(a)
       FIRST USE ANYWHERE DATE At least as early as 03/15/2016
       FIRST USE IN COMMERCE DATE At least as early as 03/15/2016
SIGNATURE SECTION
RESPONSE SIGNATURE /Jacqueline L. Patt/
SIGNATORY'S NAME Jacqueline L. Patt
SIGNATORY'S POSITION Attorney of record, DC and MD bar member
SIGNATORY'S PHONE NUMBER 202-888-7885
DATE SIGNED 02/22/2019
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Feb 22 16:57:47 EST 2019
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XX-2
0190222165747169115-87912
036-62092307e536fe63c3c17
a1ca41a7b3ff58c1014bfaffd
70d54a7363432357e077-N/A-
N/A-20190222161542757945



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. 87912036 ZEROFOX (Stylized and/or with Design, see http://uspto.report/TM/87912036/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 042 for Software as a service (SAAS) services featuring temporary use of non-downloadable cyber security software for use on social media and digital platforms and providing alerts identifying malicious or dangerous content
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 10/13/2014 and first used in commerce at least as early as 10/13/2014 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Software as a service (SAAS) services featuring temporary use of non-downloadable cyber security software for use on social media and digital platforms and providing alerts identifying malicious or dangerous content; Social media management, namely, providing technology consulting in the field of social media; Recovery of computer data, namely, recovery of hijacked accounts; Electronic monitoring of the internet using computers and sensors for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Electronic monitoring of social media and digital platforms using computers and sensors for data collection to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers and threats of violenceClass 042 for Social media management, namely, providing technology consulting in the field of social media; Recovery of computer data, namely, recovery of hijacked accounts; Electronic monitoring of the internet using computers and sensors for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Electronic monitoring of social media and digital platforms using computers and sensors for data collection to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers and threats of violence
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 10/13/2014 and first used in commerce at least as early as 10/13/2014 , and is now in use in such commerce.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 045 for Domain name management and recovery services; social media username registration, social media management and recovery of hijacked accounts; brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; brand management online, namely, preparing and sending notices of misuse and removing leaked or stolen content; Intellectual property protection services, namely, Internet surveillance and monitoring to detect possible infringement, domain name abuse and cyber squatting, and remediation services; social media and digital platforms monitoring to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers, threats of violence, and compliance issues
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 03/15/2016 and first used in commerce at least as early as 03/15/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Domain name management and recovery services; Domain name management and recovery services, namely, Domain name registration, monitoring, and domain name acquisition services; social media username registration, social media management and recovery of hijacked accounts; Social media username registration; brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; Intellectual property watch services in the field of brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; brand management online, namely, preparing and sending notices of misuse and removing leaked or stolen content; brand management online, namely, brand monitoring and protection by preparing and sending notices of misuse and removing leaked or stolen content; Intellectual property protection services, namely, Internet surveillance and monitoring to detect possible infringement, domain name abuse and cyber squatting, and remediation services; Tracking and monitoring regulatory requirements in the field of social media and digital platforms for regulatory compliance purposes; social media and digital platforms monitoring to eliminate domain squatting, typo phishing campaigns, spearfishing, spoofed accounts, data leakage targeted attacks, account takeovers, threats of violence, and compliance issuesClass 045 for Domain name management and recovery services, namely, Domain name registration, monitoring, and domain name acquisition services; Social media username registration; Intellectual property watch services in the field of brand monitoring and business reputation monitoring services, namely, monitoring the internet for use, misuse, and unauthorized use of brand names, trademarks, social media monitoring, domain name monitoring for abuse and cyber squatting; brand management online, namely, brand monitoring and protection by preparing and sending notices of misuse and removing leaked or stolen content; Tracking and monitoring regulatory requirements in the field of social media and digital platforms for regulatory compliance purposes
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 03/15/2016 and first used in commerce at least as early as 03/15/2016 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /Jacqueline L. Patt/     Date: 02/22/2019
Signatory's Name: Jacqueline L. Patt
Signatory's Position: Attorney of record, DC and MD bar member

Signatory's Phone Number: 202-888-7885

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: 87912036
Internet Transmission Date: Fri Feb 22 16:57:47 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019022216574716
9115-87912036-62092307e536fe63c3c17a1ca4
1a7b3ff58c1014bfaffd70d54a7363432357e077
-N/A-N/A-20190222161542757945



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