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. 88013160 CLEARWATER (Stylized and/or with Design, see http://uspto.report/TM/88013160/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 with the Evidence section.

EVIDENCE
Evidence in the nature of The actual text of the argument, along with Exhibit 1, TSDR information for Cited Registration No. 4160477; Exhibit 2, screenshots from website of Cited Registration No. 3448426; Exhibit 3, screenshots from website of Cited Registration No. 3511046; Exhibit 4, Consent Agreement between Three Cited Registrations; and Exhibit 5, screenshots from Applicant's website. has been attached.
Original PDF file:
evi_1244220226-20190307174510330271_._CLEARWATER_Mark_and_Design_-_OA_Response.pdf
Converted PDF file(s) ( 13 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Original PDF file:
evi_1244220226-20190307174510330271_._Exhibit_1_-_TSDR_of_Cited_Registration.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_1244220226-20190307174510330271_._Exhibit_2_-_Clearwater_Analytics_Screenshots.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_1244220226-20190307174510330271_._Exhibit_3_-_Clearwater_Advisors_Screenshot.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_1244220226-20190307174510330271_._Exhibit_4_-_Clearwater_Consent_Agreement.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_1244220226-20190308093934524013_._Exhibit_5_-_screenshots_from_Applicant_s_website.pdf
Converted PDF file(s) ( 17 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business consulting services in the fields of cyber risk management, HIPAA, HIPAA risk analysis, compliance with security, privacy, and breach notification statutes and regulations, and information security; Business risk assessment services; Third party risk assessment services; Cyber risk strategic advisory services, regulatory advisory services
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Business consulting services in the fields of cyber risk management, HIPAA, HIPAA risk analysis, compliance with security, privacy, and breach notification statutes and regulations, and information security; Business risk assessment services; Third party risk assessment services; Third party business risk assessment services; Cyber risk strategic advisory services, regulatory advisory servicesClass 035 for Business consulting services in the fields of cyber risk management, HIPAA, HIPAA risk analysis, compliance with security, privacy, and breach notification statutes and regulations, and information security; Business risk assessment services; Third party business risk assessment services
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 HIPAA compliance, cyber risk assessment and management, information risk management and reporting, risk analytics, maintenance of historical records, and documentation of actions relating to risk management; Software as a service (SAAS) services featuring software for HIPAA compliance, including workflow automation, regulatory compliance, and reporting, and documentation of actions related to compliance remediation; Electronic data back-up services; Virtual CISO services, namely, advisory services in the field of planning, design and management of information security, privacy and cyber risk management; Testing of information system security
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 HIPAA compliance, cyber risk assessment and management, information risk management and reporting, risk analytics, maintenance of historical records, and documentation of actions relating to risk management; Software as a service (SAAS) services featuring software for HIPAA compliance, cyber risk assessment and management, information risk management and reporting, namely, for the provision of risk analytics, maintenance of historical records, and documentation of actions relating to risk management; Software as a service (SAAS) services featuring software for HIPAA compliance, including workflow automation, regulatory compliance, and reporting, and documentation of actions related to compliance remediation; Software as a service (SAAS) services featuring software for HIPAA compliance, namely, workflow automation, regulatory compliance in the nature of satisfying and documenting an organization's compliance with the HIPAA requirements, completing periodic risk analysis, managing risks identified, and reporting and documentation of actions related to compliance remediation; Electronic data back-up services; Virtual CISO services, namely, advisory services in the field of planning, design and management of information security, privacy and cyber risk management; Computer security consultancy, namely, Virtual CISO services, namely, advisory services in the field of planning, design and management of information security, privacy and cyber risk management; Testing of information system security; Testing of information system security, namely, computer security consultancy in the field of vulnerability scanning and penetration testing of computers and networks to assess information security vulnerability; Cyber risk strategic advisory services, namely, computer security and risk management consultancyClass 042 for Software as a service (SAAS) services featuring software for HIPAA compliance, cyber risk assessment and management, information risk management and reporting, namely, for the provision of risk analytics, maintenance of historical records, and documentation of actions relating to risk management; Software as a service (SAAS) services featuring software for HIPAA compliance, namely, workflow automation, regulatory compliance in the nature of satisfying and documenting an organization's compliance with the HIPAA requirements, completing periodic risk analysis, managing risks identified, and reporting and documentation of actions related to compliance remediation; Electronic data back-up services; Computer security consultancy, namely, Virtual CISO services, namely, advisory services in the field of planning, design and management of information security, privacy and cyber risk management; Testing of information system security, namely, computer security consultancy in the field of vulnerability scanning and penetration testing of computers and networks to assess information security vulnerability; Cyber risk strategic advisory services, namely, computer security and risk management consultancy
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 hereby adds the following class of goods/services to the application:
New: Class 045 for Regulatory advisory services, namely, regulatory compliance consulting in the fields of HIPAA privacy, data breach notification, and security rule compliance
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.

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a circular design formed by four stylized human figures holding hands, creating the outline of a Greek cross all next to the stylized wording "CLEARWATER".

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Julie Laemmle Watts/      Date: 03/08/2019
Signatory's Name: Julie Laemmle Watts
Signatory's Position: Associate Attorney, Wyatt, Tarrant & Combs, Kentucky Bar Member
Signatory's Phone Number: 5025627130


Response Signature
Signature: /Julie Laemmle Watts/     Date: 03/08/2019
Signatory's Name: Julie Laemmle Watts
Signatory's Position: Associate Attorney, Wyatt, Tarrant & Combs, LLP, Kentucky Bar Member

Signatory's Phone Number: 5025627130

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.

        
RAM Sale Number: 88013160
RAM Accounting Date: 03/08/2019
        
Serial Number: 88013160
Internet Transmission Date: Fri Mar 08 09:55:03 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019030809550349
4446-88013160-620703435a153ef639f583fde4
2de818ff479634f74e47619cc6615af881f19d2a
-CC-7845-20190308093934524013