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. 88062882 BLOXONE(Standard Characters, see http://uspto.report/TM/88062882/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 The arguments attached in PDF format. has been attached.
Original PDF file:
evi_73162199134-20190227201945369062_._ROA_BLOXONE_88062882.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for integrated software and computer system, namely, an Internet server appliance for high performance computer networking; computer software for network security, namely, software for managing, monitoring, and providing information regarding network security; computer software for use in managing, tracking, and auditing network data; network access server operating software; computer software for providing security features to control access from malware or other unauthorized intrusion or vulnerabilities on a computer network; computer software for network infrastructure management; computer hardware for analyzing and managing performance of computer networks; software for tagging, collecting, tracking, analyzing, integrating, controlling, managing, safeguarding, protecting, and sharing a wide variety of data and information from various sources; computer software programs to assist in cloud and virtualization monitoring and management; computer software for the administration of computer networks in the field of computer networks and network 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: integrated software and computer system, namely, an Internet server appliance for high performance computer networking; computer software for network security, namely, software for managing, monitoring, and providing information regarding network security; computer software for providing security features to control access from malware or other unauthorized intrusion or vulnerabilities on a computer network; computer software for use in managing, tracking, and auditing network data; computer software for the administration of computer networks in the field of computer networks and network security; network access server operating software; computer software for network infrastructure management; computer hardware for analyzing and managing performance of computer networks; software for tagging, collecting, tracking, analyzing, integrating, controlling, managing, safeguarding, protecting, and sharing a wide variety of data and information from various sources; computer software programs to assist in cloud and virtualization monitoring and managementClass 009 for computer software for network security, namely, software for managing, monitoring, and providing information regarding network security; computer software for providing security features to control access from malware or other unauthorized intrusion or vulnerabilities on a computer network; computer software for the administration of computer networks in the field of computer networks and network security
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 computer consultation services in the nature of providing computer network infrastructure analysis, design of computer hardware for identification and resolution of potential issues affecting network performance, and providing consultation and advice regarding implementation and use of such hardware; providing information to others in the field of computer technology and computer network performance; computer security services, namely, restricting access to and by computer networks to and of undesired websites and media; domain name system (DNS) management and maintenance services, namely, maintenance of computer hardware and software relating to domain name system server computer security and prevention of computer risks to domain name systems; updating of computer hardware and software relating to computer security and prevention of computer risks for domain name systems; computer security service, namely, restricting access to and by computer networks, namely, domain name system servers, to and of undesired web sites, media and individuals and facilities; monitoring of computer systems, namely, domain name systems, by remote access to ensure proper functioning; technical support, namely, monitoring technological functions of computer domain name systems; computer software as a service for application and data integration, data analytics, integrated computer system software, desktop virtualization software, server virtualization, and cloud computing in the field of computer technology and computer network performance; computer software as a service to assist in cloud and virtualization monitoring and management; providing technological consulting and assistance in the field of computer hardware and software, namely, providing information and advice about computers, computer software, computer systems and components via the internet; computer services, namely, provision of current data for use in detecting, quarantining and eliminating of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices; consulting in the field of virtualization technologies for enterprises and businesses
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: computer consultation services in the nature of providing computer network infrastructure analysis, design of computer hardware for identification and resolution of potential issues affecting network performance, and providing consultation and advice regarding implementation and use of such hardware; computer security services, namely, restricting access to and by computer networks to and of undesired websites and media; providing information to others in the field of computer technology and computer network performance; domain name system (DNS) management and maintenance services, namely, maintenance of computer software relating to domain name system server computer security and prevention of computer risks to domain name systems; monitoring of computer systems, namely, domain name systems, by remote access to ensure proper functioning; domain name system (DNS) management and maintenance services, namely, maintenance of computer hardware and software relating to domain name system server computer security and prevention of computer risks to domain name systems; technical support, namely, monitoring technological functions of computer domain name systems; updating of computer hardware and software relating to computer security and prevention of computer risks for domain name systems; computer software-as-a- service (SaaS) services featuring software that assists in cloud and virtualization monitoring and management; computer security service, namely, restricting access to and by computer networks, namely, domain name system servers, to and of undesired web sites, media and individuals and facilities; computer software as a service for application and data integration, data analytics, integrated computer system software, desktop virtualization software, server virtualization, and cloud computing in the field of computer technology and computer network performance; computer software as a service to assist in cloud and virtualization monitoring and management; providing technological consulting and assistance in the field of computer hardware and software, namely, providing information and advice about computers, computer software, computer systems and components via the internet; computer services, namely, provision of current data for use in detecting, quarantining and eliminating of viruses, worms, trojans, spyware, adware, malware and unauthorized data and programs on computers and electronic devices; consulting in the field of virtualization technologies for enterprises and businessesClass 042 for computer security services, namely, restricting access to and by computer networks to and of undesired websites and media; domain name system (DNS) management and maintenance services, namely, maintenance of computer software relating to domain name system server computer security and prevention of computer risks to domain name systems; monitoring of computer systems, namely, domain name systems, by remote access to ensure proper functioning; technical support, namely, monitoring technological functions of computer domain name systems; computer software-as-a- service (SaaS) services featuring software that assists in cloud and virtualization monitoring and management
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 037 for domain name system (DNS) management and maintenance services, namely, maintenance of computer hardware relating to domain name system server computer security and prevention of computer risks to domain name systems; providing technological consulting and assistance in the field of computer hardware, namely, providing advice about the repair and maintenance of computers and computer components via the internet
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.

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: /Holly Pranger/      Date: 02/27/2019
Signatory's Name: Holly Pranger
Signatory's Position: Attorney of Record, California Bar Member
Signatory's Phone Number: 415-885-9800


Response Signature
Signature: /Holly Pranger/     Date: 02/27/2019
Signatory's Name: Holly Pranger
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 415-885-9800

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: 88062882
RAM Accounting Date: 02/28/2019
        
Serial Number: 88062882
Internet Transmission Date: Wed Feb 27 20:24:54 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201902272024547
89238-88062882-620d2462d596c15a6181a1301
aecc4e416cd9a3cd9f2e1fcbb3d8f1ebaa79b4a-
CC-7083-20190227201945369062