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. 88212541  (Stylized and/or with Design, see http://uspto.report/TM/88212541/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 Downloadable computer software for use in business intelligence and automation control for data analytics and business process orchestration; downloadable computer software using neural networks for the purpose of real-time business intelligence and automation control for data analytics and business process orchestration; downloadable computer software, namely, money laundering detection system; downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; downloadable cloud computing software for data analytics and business process orchestration; downloadable cloud-computing software for deploying and integrating virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform
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: Downloadable computer software for use in business intelligence and automation control for data analytics and business process orchestration; downloadable computer software using neural networks for the purpose of real-time business intelligence and automation control for data analytics and business process orchestration; downloadable computer software, namely, money laundering detection system; downloadable computer software for detecting money laundering; downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; downloadable cloud computing software for data analytics and business process orchestration; downloadable cloud-computing software for deploying and integrating virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platformClass 009 for Downloadable computer software for use in business intelligence and automation control for data analytics and business process orchestration; downloadable computer software using neural networks for the purpose of real-time business intelligence and automation control for data analytics and business process orchestration; downloadable computer software for detecting money laundering; downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; downloadable cloud computing software for data analytics and business process orchestration; downloadable cloud-computing software for deploying and integrating virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform
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 Providing temporary use of non-downloadable computer software for use in business intelligence and automation control for data analytics and business process orchestration; providing temporary use of non-downloadable computer software using neural networks for the purpose of real-time business intelligence and automation control for data analytics and business process orchestration; providing temporary use of non-downloadable computer software, namely, money laundering detection system; providing temporary use of non-downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; providing temporary use of non-downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; cloud computing featuring software used in storing, managing, and processing data via the internet; design and development of computer software for creation and deployment of noninvasive, distributed solutions through use of network enabled components
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: Providing temporary use of non-downloadable computer software for use in business intelligence and automation control for data analytics and business process orchestration; providing temporary use of non-downloadable computer software using neural networks for the purpose of real-time business intelligence and automation control for data analytics and business process orchestration; providing temporary use of non-downloadable computer software, namely, money laundering detection system; providing temporary use of non-downloadable computer software for detecting money laundering; providing temporary use of non-downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; providing temporary use of non-downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; cloud computing featuring software use in storing, managing, and processing data via the internet; cloud computing featuring software used in storing, managing, and processing data via the internet; design and development of computer software for creation and deployment of noninvasive, distributed solutions through use of network enabled component; design and development of computer software for creation and deployment of noninvasive, distributed solutions through use of network enabled componentsClass 042 for Providing temporary use of non-downloadable computer software for use in business intelligence and automation control for data analytics and business process orchestration; providing temporary use of non-downloadable computer software using neural networks for the purpose of real-time business intelligence and automation control for data analytics and business process orchestration; providing temporary use of non-downloadable computer software for detecting money laundering; providing temporary use of non-downloadable computer software, namely, software that enables distribution of cache data sources for query processing and distributed disk caching of large data and analysis requests; cloud computing featuring software use in storing, managing, and processing data via the internet; design and development of computer software for creation and deployment of noninvasive, distributed solutions through use of network enabled component
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.

The applicant's current attorney information: Justin D. Swindells. Justin D. Swindells of NIXON PEABODY LLP, is located at

      70 WEST MADISON, SUITE 3500
      CHICAGO, Illinois 60602-4224
      US
The docket/reference number is 051788-513US.

The phone number is 312-425-8534.

The email address is nptm@nixonpeabody.com

The applicants proposed attorney information: Justin D. Swindells. Other appointed attorneys are Daniel J. Burnham, John C. Gatz, Elizabeth Baio, Janet Garetto, Sorin Cimpoes, Wayne Tang, Peter Prommer, Bradley M. Taub, Deanna Kunze, Jason Kunze, Kevin Gualano, Ben Rosborough, Angelo Christopher, Ariel Roth, Lauren Arnold, Jennette Psihoules, and Alexis Grilli. Justin D. Swindells of NIXON PEABODY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      70 WEST MADISON, SUITE 3500
      CHICAGO, Illinois 60602-4224
      United States
The docket/reference number is 051788-513US.

The phone number is 312-425-8534.

The email address is nptm@nixonpeabody.com

Justin D. Swindells submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JUSTIN D. SWINDELLS. JUSTIN D. SWINDELLS of NIXON PEABODY LLP, is located at

      70 WEST MADISON, SUITE 3500
      CHICAGO, Illinois 60602-4224
      US
The docket/reference number is 051788-513US.

The phone number is 312-425-8534.

The email address is nptm@nixonpeabody.com

The applicants proposed correspondence information: Justin D. Swindells. Justin D. Swindells of NIXON PEABODY LLP, is located at

      70 WEST MADISON, SUITE 3500
      CHICAGO, Illinois 60602-4224
      United States
The docket/reference number is 051788-513US.

The phone number is 312-425-8534.

The email address is nptm@nixonpeabody.com

SIGNATURE(S)
Response Signature
Signature: /Lauren J Arnold/     Date: 12/27/2019
Signatory's Name: Lauren J. Arnold
Signatory's Position: Attorney of Record, Maryland Bar Member

Signatory's Phone Number: 202-585-8000

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JUSTIN D. SWINDELLS
   NIXON PEABODY LLP
   
   70 WEST MADISON, SUITE 3500
   CHICAGO, Illinois 60602-4224
Mailing Address:    Justin D. Swindells
   NIXON PEABODY LLP
   70 WEST MADISON, SUITE 3500
   CHICAGO, Illinois 60602-4224
        
Serial Number: 88212541
Internet Transmission Date: Fri Dec 27 11:00:36 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201912271100361
18062-88212541-700e3fdd4ee48897eea341c21
39a9590385cb22e447ceb354c62d6b6272b6f3a7
-N/A-N/A-20191227094505704057