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. 88207292 SMARTER PLANET(Standard Characters, see http://uspto.report/TM/88207292/mark.png) has been amended as follows:

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

DUPLICATE REGISTRATIONS NOT PERMITTED

The Examining Attorney has stated that the registration is refused because the application appears to be an exact duplicate of U.S. Registration No. 4194891.  U.S. Registration No. 4194891 has since expired.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer hardware and computer software; computer hardware, namely, computers, computer servers and storage devices; computer software for use in controlling the operation and execution of computer systems, programs, and networks; computer software for use in connecting disparate computer networks and systems, computer servers and storage devices; computer operating system software; computer software for linking together computers and for enabling computing across a globally accessible network; computer software for managing hardware, software and processes that exist within an information technology environment, computer systems combining hardware and software, instructional manuals sold as a unit therewith. Cloud computing system, namely, network integrating computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resources and computer systems that integrate Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses
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 hardware and computer software; Computer hardware, namely, computers, computer servers and storage devices; computer software for use in controlling the operation and execution of computer systems, programs, and networks; computer software for use in connecting disparate computer networks and systems, computer servers and storage devices; computer operating system software; computer software for linking together computers and for enabling computing across a globally accessible network; computer software for managing hardware, software and processes that exist within an information technology environment, computer systems combining hardware and software, instructional manuals sold as a unit therewith; computer software for managing hardware, software and processes that exist within an information technology environment, computer systems combining hardware and software, instructional manuals sold as a unit therewith. Cloud computing system, namely, network integrating computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resources and computer systems that integrate Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses; cloud computing system, namely, network integrated computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resources and computer systems that integrate Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responsesClass 009 for Computer hardware, namely, computers, computer servers and storage devices; computer software for use in controlling the operation and execution of computer systems, programs, and networks; computer software for use in connecting disparate computer networks and systems, computer servers and storage devices; computer operating system software; computer software for linking together computers and for enabling computing across a globally accessible network; computer software for managing hardware, software and processes that exist within an information technology environment, computer systems combining hardware and software, instructional manuals sold as a unit therewith; cloud computing system, namely, network integrated computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resources and computer systems that integrate Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses
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 016 for Printed materials; printed materials, namely, books, brochures, informational sheets, instructional manuals, written presentations, instructional and teaching materials, all in the field of computers, computer services, information technology and electronic business transactions via a global computer network
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: Printed materials; Printed materials, namely, books, brochures, informational sheets, instructional manuals, written presentations, instructional and teaching materials, all in the field of computers, computer services, information technology and electronic business transactions via a global computer networkClass 016 for Printed materials, namely, books, brochures, informational sheets, instructional manuals, written presentations, instructional and teaching materials, all in the field of computers, computer services, information technology and electronic business transactions via a global computer network
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 035 for Business management consulting services and business consulting services; business development services; market research studies; data processing services; arranging and conducting trade show exhibitions in the field of computers, information technology and electronic business transactions via a global computer network and advertising services for a computer systems that integrates Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses
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: Class 035 for Business management consulting services and business consulting services; business development services; market research studies; data processing services; arranging and conducting trade show exhibitions in the field of computers, information technology and electronic business transactions via a global computer network and advertising services for a computer systems that integrates Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses
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 041 for Educational services; conferences, exhibitions, symposiums, presentations, technical demonstrations and training seminars, all in the field of information technology and computer products and 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: Educational services; Educational services, namely, conducting conferences, exhibitions, symposiums, presentations, technical demonstrations and training seminars, all in the field of information technology and computer products and services; conferences, exhibitions, symposiums, presentations, technical demonstrations and training seminars, all in the field of information technology and computer products and servicesClass 041 for Educational services, namely, conducting conferences, exhibitions, symposiums, presentations, technical demonstrations and training seminars, all in the field of information technology and computer products and 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 Computer services; computer systems integration services; computer consultation services; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; technical support services, namely, troubleshooting of computers, servers and computer software problems (computing services); computer systems design services for others; computer systems analysis; interconnection of computer hardware and software, namely, integration of computer systems and networks; computer software and hardware testing services, namely, testing of computer software, computers and servers; installation, updating and maintenance of computer software; computer programming for others; cloud computing services, namely, computing services to enable network integrating computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resources
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 services; Computer systems integration services; computer software consultation services; computer consultation services; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; technical support services, namely, troubleshooting of computers, servers and computer software problems (computing services); computer systems design services for others; computer systems analysis; interconnection of computer hardware and software, namely, integration of computer systems and networks; computer software and hardware testing services, namely, testing of computer software, computers and servers; installation, updating and maintenance of computer software; computer programming for others; cloud computing services, namely, dynamic provisioning, virtualization, and consumption metering of computer resources; cloud computing services, namely, computing services to enable network integrating computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resourcesClass 042 for Computer systems integration services; computer software consultation services; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; technical support services, namely, troubleshooting of computers, servers and computer software problems (computing services); computer systems design services for others; computer systems analysis; interconnection of computer hardware and software, namely, integration of computer systems and networks; computer software and hardware testing services, namely, testing of computer software, computers and servers; installation, updating and maintenance of computer software; computer programming for others; cloud computing services, namely, dynamic provisioning, virtualization, and consumption metering of computer resources
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: /Valerie Calloway/     Date: 06/21/2019
Signatory's Name: Valerie Calloway
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 914-765-7246

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: 88207292
Internet Transmission Date: Fri Jun 21 10:57:14 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201906211057146001
27-88207292-620e241ad0f568f68396a264aba5
3c398549a13dad53ff99114e6a2545bb6619a-N/
A-N/A-20190620230540958470