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. 88005849 ONEEDGE(Standard Characters, see http://uspto.report/TM/88005849/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Actual text response; pages from dictionary.com has been attached.
Original PDF file:
evi_1082912599-20190304173155673454_._ONEEDGE-RESOA.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_1082912599-20190304173155673454_._ON.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_1082912599-20190304173155673454_._ONE.pdf
Converted PDF file(s) ( 5 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Original PDF file:
evi_1082912599-20190304173155673454_._EDGE.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

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 establishing and managing connections of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for managing information data flow, control, and security of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for managing the lifecycle of intelligent edge devices, sensors, assets and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for enabling 3rd party developers and partners to create their own customized applications; Software for firmware-over-the-air (FOTA); Software for light weight machine to machine (LwM2M) protocol applications; Software for device management; Software for remote provisioning; Software for troubleshooting; Software for application enablement; Embedded security software; Embedded connectivity management software; Module embedded software
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Software for establishing and managing connections of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for managing information data flow, control, and security of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for managing the lifecycle of intelligent edge devices, sensors, assets and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for enabling 3rd party developers and partners to create their own customized applications; Software for firmware-over-the-air (FOTA); Software for light weight machine to machine (LwM2M) protocol applications; Software for device management; Software for device management, namely, for establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software for remote provisioning; Software for remote provisioning, namely, for remote identification of intelligent edge devices to the servers that they connect to, to the network providers and any other information systems they are associated with; Software for troubleshooting; Software for troubleshooting, namely, for diagnosing and resolving issues with establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software for application enablement; Software for application enablement, namely, for running software components in a cellular module's processing architecture; Embedded security software; Embedded security software, namely, for the prevention of unauthorized use and configuration of the intelligent edge devices and securing the data pipe between the device and final destination; Embedded connectivity management software; Embedded connectivity management software, namely, for correction or enhancement of wireless transmission and reception; Module embedded software; Module embedded software, namely, software modules running inside wireless modules assembled into intelligent edge devices; all of the foregoing not for Computer operating software for use with set-top boxes; computer software for use in accessing and viewing interactive content via global computer networks, wireless networks and electronic communication networks; graphical user interface software for televisions, smart phones, PC tablets, mobile and electronic devices; computer software for the reproduction, processing and streaming of audio, video and multimedia content; interactive multimedia software used for personalized content, programming, advertising and messaging on televisions, smart phones, PC tablets and video transmission apparatus; computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures to enhance the user experience; telecommunications computer software for receiving, converting, transmitting, streaming, and reviewing audio, video, graphics, images, data and informationClass 009 for Software for establishing and managing connections of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for managing information data flow, control, and security of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for managing the lifecycle of intelligent edge devices, sensors, assets and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software for enabling 3rd party developers and partners to create their own customized applications; Software for firmware-over-the-air (FOTA); Software for light weight machine to machine (LwM2M) protocol applications; Software for device management, namely, for establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software for remote provisioning, namely, for remote identification of intelligent edge devices to the servers that they connect to, to the network providers and any other information systems they are associated with; Software for troubleshooting, namely, for diagnosing and resolving issues with establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software for application enablement, namely, for running software components in a cellular module's processing architecture; Embedded security software, namely, for the prevention of unauthorized use and configuration of the intelligent edge devices and securing the data pipe between the device and final destination; Embedded connectivity management software, namely, for correction or enhancement of wireless transmission and reception; Module embedded software, namely, software modules running inside wireless modules assembled into intelligent edge devices; all of the foregoing not for Computer operating software for use with set-top boxes; computer software for use in accessing and viewing interactive content via global computer networks, wireless networks and electronic communication networks; graphical user interface software for televisions, smart phones, PC tablets, mobile and electronic devices; computer software for the reproduction, processing and streaming of audio, video and multimedia content; interactive multimedia software used for personalized content, programming, advertising and messaging on televisions, smart phones, PC tablets and video transmission apparatus; computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures to enhance the user experience; telecommunications computer software for receiving, converting, transmitting, streaming, and reviewing audio, video, graphics, images, data and information
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) services featuring software for establishing and managing connections of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for managing information data flow, control, and security of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for managing the lifecycle of intelligent edge devices, sensors, assets and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for enabling 3rd party developers and partners to create their own customized applications; Software as a service (SAAS) services featuring software for firmware-over-the-air (FOTA); Software as a service (SAAS) services featuring software for light weight machine to machine (LwM2M) protocol applications; Software as a service (SAAS) services featuring software for device management; Software as a service (SAAS) services featuring software for remote provisioning; Software as a service (SAAS) services featuring software for troubleshooting; Software as a service (SAAS) services featuring software for application enablement; Software as a service (SAAS) services featuring software for embedded security; Software as a service (SAAS) services featuring software for embedded connectivity management
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Software as a service (SAAS) services featuring software for establishing and managing connections of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for managing information data flow, control, and security of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for managing the lifecycle of intelligent edge devices, sensors, assets and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for enabling 3rd party developers and partners to create their own customized applications; Software as a service (SAAS) services featuring software for firmware-over-the-air (FOTA); Software as a service (SAAS) services featuring software for light weight machine to machine (LwM2M) protocol applications; Software as a service (SAAS) services featuring software for device management; Software as a service (SAAS) services featuring software for device management, namely, for establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software as a service (SAAS) services featuring software for remote provisioning; Software as a service (SAAS) services featuring software for remote provisioning, namely, for remote identification of intelligent edge devices to the servers that they connect to, to the network providers and any other information systems they are associated with; Software as a service (SAAS) services featuring software for troubleshooting; Software as a service (SAAS) services featuring software for troubleshooting, namely, for diagnosing and resolving issues with establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software as a service (SAAS) services featuring software for application enablement; Software as a service (SAAS) services featuring software for application enablement, namely, for running software components in a cellular module's processing architecture; Software as a service (SAAS) services featuring software for embedded security; Software as a service (SAAS) services featuring software for embedded security, namely, for the prevention of unauthorized use and configuration of the intelligent edge devices and securing the data pipe between the device and final destination; Software as a service (SAAS) services featuring software for embedded connectivity management; Software as a service (SAAS) services featuring software for embedded connectivity management, namely, for correction or enhancement of wireless transmission and reception; all of the foregoing not for Computer operating software for use with set-top boxes; computer software for use in accessing and viewing interactive content via global computer networks, wireless networks and electronic communication networks; graphical user interface software for televisions, smart phones, PC tablets, mobile and electronic devices; computer software for the reproduction, processing and streaming of audio, video and multimedia content; interactive multimedia software used for personalized content, programming, advertising and messaging on televisions, smart phones, PC tablets and video transmission apparatus; computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures to enhance the user experience; telecommunications computer software for receiving, converting, transmitting, streaming, and reviewing audio, video, graphics, images, data and informationClass 042 for Software as a service (SAAS) services featuring software for establishing and managing connections of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for managing information data flow, control, and security of intelligent edge devices, sensors, assets, and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for managing the lifecycle of intelligent edge devices, sensors, assets and things that are part of an Internet of Things (IoT) or machine to machine (M2M) solution; Software as a service (SAAS) services featuring software for enabling 3rd party developers and partners to create their own customized applications; Software as a service (SAAS) services featuring software for firmware-over-the-air (FOTA); Software as a service (SAAS) services featuring software for light weight machine to machine (LwM2M) protocol applications; Software as a service (SAAS) services featuring software for device management, namely, for establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software as a service (SAAS) services featuring software for remote provisioning, namely, for remote identification of intelligent edge devices to the servers that they connect to, to the network providers and any other information systems they are associated with; Software as a service (SAAS) services featuring software for troubleshooting, namely, for diagnosing and resolving issues with establishing and managing connections, data flow, control, security, and lifecycle of intelligent edge devices; Software as a service (SAAS) services featuring software for application enablement, namely, for running software components in a cellular module's processing architecture; Software as a service (SAAS) services featuring software for embedded security, namely, for the prevention of unauthorized use and configuration of the intelligent edge devices and securing the data pipe between the device and final destination; Software as a service (SAAS) services featuring software for embedded connectivity management, namely, for correction or enhancement of wireless transmission and reception; all of the foregoing not for Computer operating software for use with set-top boxes; computer software for use in accessing and viewing interactive content via global computer networks, wireless networks and electronic communication networks; graphical user interface software for televisions, smart phones, PC tablets, mobile and electronic devices; computer software for the reproduction, processing and streaming of audio, video and multimedia content; interactive multimedia software used for personalized content, programming, advertising and messaging on televisions, smart phones, PC tablets and video transmission apparatus; computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures to enhance the user experience; telecommunications computer software for receiving, converting, transmitting, streaming, and reviewing audio, video, graphics, images, data and information
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /JZ/     Date: 03/04/2019
Signatory's Name: Jacqueline Zion
Signatory's Position: Attorney (NY bar member)

Signatory's Phone Number: 6468780800

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: 88005849
Internet Transmission Date: Mon Mar 04 17:40:54 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019030417405463
3891-88005849-620d93b90ecddbd5c429e7f52b
fd1de2abcb8e77973446b429af5b852290194b-N
/A-N/A-20190304173155673454