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)

---

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. 88232507 DOMINO (Stylized and/or with Design, see http://uspto.report/TM/88232507/mark.png) has been amended as follows:

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

The registrations cited as grounds for the Section 2(d) refusal are owned by Applicant.  Applicant corrected the entity information in those registrations by filing Section 7 requests on September 6, 2019, such that the information in those registrations is now consistent with the information in this application.  In light of this, Applicant respectfully requests that the Section 2(d) refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Providing a cloud-based software platform for use in data analysis and modeling; providing temporary use of non-downloadable software for use in data analysis and modeling
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 a cloud-based software platform for use in data analysis and modeling; Providing a cloud-based, online, non-downloadable software platform for use in data analysis and modeling; providing temporary use of non-downloadable software for use in data analysis and modeling; providing temporary use of online non-downloadable software for use in data analysis and modeling.Class 042 for Providing a cloud-based, online, non-downloadable software platform for use in data analysis and modeling; providing temporary use of online non-downloadable software for use in data analysis and modeling.
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: Brandon P. Leahy. Brandon P. Leahy of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      US
The docket/reference number is 50717-TM1003.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

The applicants proposed attorney information: Brandon P. Leahy. Other appointed attorneys are John L. Slafsky, Aaron D. Hendelman, Alyssa M. Worsham, Christine K. Au-Yeung, Chelsea Carbone, Susanna P. Lichter, Ava R. Miller. Brandon P. Leahy of WILSON SONSINI GOODRICH & ROSATI, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      United States
The docket/reference number is 50717-TM1003.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

Brandon P. Leahy 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: BRANDON P. LEAHY. BRANDON P. LEAHY of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      US
The docket/reference number is 50717-TM1003.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

The applicants proposed correspondence information: Brandon P. Leahy. Brandon P. Leahy of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304-1050
      United States
The docket/reference number is 50717-TM1003.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

SIGNATURE(S)
Response Signature
Signature: /Brandon P. Leahy/     Date: 09/16/2019
Signatory's Name: Brandon P. Leahy
Signatory's Position: Attorney of Record, California bar member

Signatory's Phone Number: Not Required

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:    BRANDON P. LEAHY
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
Mailing Address:    Brandon P. Leahy
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304-1050
        
Serial Number: 88232507
Internet Transmission Date: Tue Sep 17 14:32:12 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019091714321259
8333-88232507-610fe3dab79fe8a772e85b1fa8
c12d5d7c8e2a686d1a7fdb941bc9b77e2865d44-
N/A-N/A-20190916193412972037