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 |
88178494 |
LAW OFFICE ASSIGNED |
LAW OFFICE 115 |
MARK SECTION |
MARK |
http://uspto.report/TM/88178494/mark.png |
LITERAL ELEMENT |
INTELLICODE |
STANDARD CHARACTERS |
YES |
USPTO-GENERATED IMAGE |
YES |
MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
GOODS AND/OR SERVICES SECTION (009)(current) |
INTERNATIONAL CLASS |
009 |
DESCRIPTION |
Computer software development tools; computer software, namely, AI-enabled software to assist in software development |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 05/07/2018 |
FIRST USE IN COMMERCE DATE |
At least as early as 05/07/2018 |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018/12556 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
05/07/2018 |
GOODS AND/OR SERVICES SECTION (009)(proposed) |
INTERNATIONAL CLASS |
009 |
TRACKED TEXT DESCRIPTION |
Computer software development tools; computer software, namely, AI-enabled
software to assist in software development; computer software, namely, artificial intelligence-enabled software for assisting with software
development |
FINAL DESCRIPTION |
Computer software development tools; computer software, namely, artificial intelligence-enabled software for assisting with software
development |
FILING BASIS |
Section 1(a) |
FIRST USE ANYWHERE DATE |
At least as early as 05/07/2018 |
FIRST USE IN COMMERCE DATE |
At least as early as 05/07/2018 |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018/12556 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
05/07/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
GOODS AND/OR SERVICES SECTION (042)(current) |
INTERNATIONAL CLASS |
042 |
DESCRIPTION |
Software as a service (SaaS) services for use in developing, reviewing, and testing other computer programs and applications; software
as a service (SaaS) services for assisting developers in creating, improving, and reviewing program code for use in multiple application programs |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018/12557 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
05/07/2018 |
GOODS AND/OR SERVICES SECTION (042)(proposed) |
INTERNATIONAL CLASS |
042 |
TRACKED TEXT DESCRIPTION |
Software as a service (SaaS) services for use in developing, reviewing, and testing other computer
programs and applications; Software as a service (SaaS) services featuring software for developing, reviewing, and testing other computer programs and
applications; software as a service (SaaS) services for assisting developers in creating, improving, and reviewing program code for use in multiple application
programs; software as a service (SaaS) services featuring software for assisting developers in creating, improving, and reviewing program code for use in
multiple application programs |
FINAL DESCRIPTION |
Software as a service (SaaS) services featuring software for developing, reviewing, and testing other computer programs and
applications; software as a service (SaaS) services featuring software for assisting developers in creating, improving, and reviewing program code for use in multiple application programs |
FILING BASIS |
Section 1(b) |
FILING BASIS |
Section 44(d) |
FOREIGN APPLICATION NUMBER |
2018/12557 |
FOREIGN APPLICATION COUNTRY |
South Africa |
FOREIGN FILING DATE |
05/07/2018 |
INTENT TO
PERFECT 44(d)
|
At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the
basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration. |
SIGNATURE SECTION |
RESPONSE SIGNATURE |
/MEM/ |
SIGNATORY'S NAME |
Matthew E. Moersfelder |
SIGNATORY'S POSITION |
Attorney of Record, Washington Bar Member |
SIGNATORY'S PHONE NUMBER |
2067578014 |
DATE SIGNED |
03/08/2019 |
AUTHORIZED SIGNATORY |
YES |
FILING INFORMATION SECTION |
SUBMIT DATE |
Fri Mar 08 18:28:15 EST 2019 |
TEAS STAMP |
USPTO/ROA-XX.X.XXX.XX-201
90308182815366543-8817849
4-6206e51ba3543bac558a0c3
cfb226a124d95325b04ede60e
bf5289df914c82dc-N/A-N/A-
20190308131529152899 |
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.
88178494 INTELLICODE(Standard Characters, see http://uspto.report/TM/88178494/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 009 for Computer software development tools; computer software, namely, AI-enabled software to assist in software development
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 05/07/2018 and first used in commerce at least as early as 05/07/2018 , and
is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ South Africa application number 2018/12556 filed 05/07/2018]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Computer software development tools;
computer software, namely, AI-enabled software to assist in software
development;
computer software, namely, artificial intelligence-enabled software for assisting with software developmentClass 009 for Computer software
development tools; computer software, namely, artificial intelligence-enabled software for assisting with software development
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 05/07/2018 and first used in commerce at least as early as 05/07/2018 , and
is now in use in such commerce.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ South Africa application number 2018/12556 filed 05/07/2018]. 15
U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SaaS) services for use in developing, reviewing, and testing other computer programs and applications; software as a service (SaaS) services for
assisting developers in creating, improving, and reviewing program code for use in multiple application programs
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.
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
For a certification 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, 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, and the
applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ South Africa application number 2018/12557 filed 05/07/2018]. 15 U.S.C.Section 1126(d), as
amended.
Proposed:
Tracked Text Description: Software as a service (SaaS) services for use in developing, reviewing, and testing other computer programs and applications;
Software as a service (SaaS) services featuring software for developing, reviewing, and testing other computer programs and applications;
software as a service (SaaS) services for assisting developers in creating, improving, and reviewing program code for use in multiple application programs;
software as a service (SaaS) services featuring software for assisting developers in creating, improving, and reviewing program code for use in multiple application programsClass
042 for Software as a service (SaaS) services featuring software for developing, reviewing, and testing other computer programs and applications; software as a service (SaaS) services featuring
software for assisting developers in creating, improving, and reviewing program code for use in multiple application programs
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.
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority
based upon a foreign application.
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, 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, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ South Africa application number 2018/12557 filed 05/07/2018]. 15
U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but
is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.
SIGNATURE(S)
Response Signature
Signature: /MEM/ Date: 03/08/2019
Signatory's Name: Matthew E. Moersfelder
Signatory's Position: Attorney of Record, Washington Bar Member
Signatory's Phone Number: 2067578014
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: 88178494
Internet Transmission Date: Fri Mar 08 18:28:15 EST 2019
TEAS Stamp: USPTO/ROA-XX.X.XXX.XX-201903081828153665
43-88178494-6206e51ba3543bac558a0c3cfb22
6a124d95325b04ede60ebf5289df914c82dc-N/A
-N/A-20190308131529152899