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. 88233957  (Stylized and/or with Design, see http://uspto.report/TM/88233957/mark.png) has been amended as follows:

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

This is responsive to the Office Action issued on March 11, 2019.

 

Applicant appreciates and acknowledges that a search of records at the U.S. Patent and Trademark Office revealed no conflicting applications or registrations that would bar registration of Applicant’s mark under Trademark Act Section 2(d).

 

In the Office Action, the Examiner has requested clarification of the applied for services. In view of the Examiner’s requirement to clarify the services, Applicant wishes to amend the services of the application as outlined below:

 

Class 42: Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources, including in the nature of the integration of computer systems and networks; Computerized services, namely, digital identity authentication and verification services, namely, providing authentication of personal identification information or other data via a secure on-line network; and Computerized identity management services in the nature of electronic monitoring of personally identifying information to detect false or fraudulent identity information via the internet; Computer services, namely, providing deployment and management of computer networks and wireless computer networks for others; and technical support services, namely, the monitoring of computer and technological functions of computer network systems for others and the periodic upgrading of computer software for others; Providing an on-line network environment that features technology that enables users to share and access data; Computer security services, namely, connecting data stores for data verification and authentication 

 

With this amendment, Applicant believes the application is now in condition for publication. Therefore, a Notice of Publication is respectfully requested.

 

Please direct any inquiry regarding this response or application to Annie Hartnett at 617-521-7012 or hartnett@fr.com.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources, including the integration of computer systems and networks; Computer services, namely, digital identity authentication and verification and identity management; Computer services, namely, providing deployment and management of computer networks and wireless computer networks for others and technical support, namely, the monitoring of computer and network systems for others and the periodic upgrading of computer software for others; Providing an on-line network environment that features technology that enables users to share and access data; Computer security services, namely, connecting data stores for data verification and authentication
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 09/00/2012 and first used in commerce at least as early as 09/00/2012 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources, including the integration of computer systems and networks; Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources in the nature of the integration of computer systems and networks; Computer services, namely, digital identity authentication and verification and identity management; Computerized digital identity authentication and verification services, namely, providing authentication of personal identification information or other data via a secure on-line network; Computer services, namely, providing deployment and management of computer networks and wireless computer networks for others and technical support, namely, the monitoring of computer and network systems for others and the periodic upgrading of computer software for others; Computerized identity management services in the nature of electronic monitoring of personally identifying information to detect false or fraudulent identity information via the internet; Computer services, namely, providing deployment and management of computer networks and wireless computer networks for others; Computer security services, namely, connecting data stores for data verification and authentication; technical support services, namely, the monitoring of computer and technological functions of computer network systems for others and the periodic upgrading of computer software for others; Providing an on-line network environment that features technology that enables users to share and access dataClass 042 for Computer services, namely, providing on-demand unification of internal and external computer networks, users, and Internet resources in the nature of the integration of computer systems and networks; Computerized digital identity authentication and verification services, namely, providing authentication of personal identification information or other data via a secure on-line network; Computerized identity management services in the nature of electronic monitoring of personally identifying information to detect false or fraudulent identity information via the internet; Computer services, namely, providing deployment and management of computer networks and wireless computer networks for others; technical support services, namely, the monitoring of computer and technological functions of computer network systems for others and the periodic upgrading of computer software for others; Providing an on-line network environment that features technology that enables users to share and access data
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 09/00/2012 and first used in commerce at least as early as 09/00/2012 , and is now in use in such commerce.
The applicant's current attorney information: Kristen McCallion. Kristen McCallion of FISH & RICHARDSON P.C., is located at

      P.O. BOX 1022
      MINNEAPOLIS, Minnesota 55440
      US
The docket/reference number is 420460081001.

The phone number is 212-765-5070.

The fax number is 877-769-7945.

The email address is tmdoctc@fr.com

The applicants proposed attorney information: Kristen McCallion. Other appointed attorneys are Keith A. Barritt, Vivian Cheng, Timothy A. French, Jonathan Jekel, Nancy Ly, John P. McCormick, P. Weston Musselman, Jr., Michelle O. Parsons, Russell N. Rippamonti, Debra S. Serota, Catherine H. Stockell, Jerre B. Swann, Jr., Lisa Greenwald-Swire, Ryan Thomas, Kerrijane John, Sarah Kelleher, Annie Hartnett, Charles Bahlert and Cynthia Johnson Walden. Kristen McCallion of FISH & RICHARDSON P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      P.O. BOX 1022
      MINNEAPOLIS, Minnesota 55440
      United States
The docket/reference number is 420460081001.

The phone number is 212-765-5070.

The fax number is 877-769-7945.

The email address is tmdoctc@fr.com

Kristen McCallion 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: KRISTEN MCCALLION. KRISTEN MCCALLION of FISH & RICHARDSON P.C., is located at

      P.O. BOX 1022
      MINNEAPOLIS, Minnesota 55440
      US
The docket/reference number is 420460081001.

The phone number is 212-765-5070.

The fax number is 877-769-7945.

The email address is tmdoctc@fr.com; rhea@fr.com

The applicants proposed correspondence information: Kristen McCallion. Kristen McCallion of FISH & RICHARDSON P.C., is located at

      P.O. BOX 1022
      MINNEAPOLIS, Minnesota 55440
      United States
The docket/reference number is 420460081001.

The phone number is 212-765-5070.

The fax number is 877-769-7945.

The email address is tmdoctc@fr.com; rhea@fr.com

SIGNATURE(S)
Response Signature
Signature: /Annie Hartnett/     Date: 09/11/2019
Signatory's Name: Annie Hartnett
Signatory's Position: Associate Attorney, Fish & Richardson P.C., Iowa bar member

Signatory's Phone Number: 617-521-7012

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:    KRISTEN MCCALLION
   FISH & RICHARDSON P.C.
   
   P.O. BOX 1022
   MINNEAPOLIS, Minnesota 55440
Mailing Address:    Kristen McCallion
   FISH & RICHARDSON P.C.
   P.O. BOX 1022
   MINNEAPOLIS, Minnesota 55440
        
Serial Number: 88233957
Internet Transmission Date: Wed Sep 11 16:47:37 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019091116473739
8063-88233957-6106d889cbc213b3e48737a81e
9ceeedfd8f9bb1467e034663bfc4d977f7ebef68
a-N/A-N/A-20190911161633830214