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. 88294503 SMARTFIELD ICON(Standard Characters, see http://uspto.report/TM/88294503/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 Software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; database privacy management software, namely, software for filtering access to databases using criteria determined by the user; computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
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: Software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; Downloadable software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; downloadable computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; database privacy management software, namely, software for filtering access to databases using criteria determined by the user; downloadable database privacy management software, namely, software for filtering access to databases using criteria determined by the user; computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites; downloadable computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websitesClass 009 for Downloadable software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; downloadable computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; downloadable database privacy management software, namely, software for filtering access to databases using criteria determined by the user; downloadable computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
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, namely, electronically gathering, analyzing, and formatting personal and private identity data and personal and private data relating to user behavior on websites and mobile applications to allow users to manage that data on computer and telecommunications networks; software as a service services(SAAS), namely, providing an online non-downloadable software platform for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
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, namely, electronically gathering, analyzing, and formatting personal and private identity data and personal and private data relating to user behavior on websites and mobile applications to allow users to manage that data on computer and telecommunications networks; Computer services, namely, cloud computing featuring software for electronically gathering, analyzing, and formatting personal and private identity data and personal and private data relating to user behavior on websites and mobile applications to allow users to manage that data on computer and telecommunications networks; software as a service services(SAAS), namely, providing an online non-downloadable software platform for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websitesClass 042 for Computer services, namely, cloud computing featuring software for electronically gathering, analyzing, and formatting personal and private identity data and personal and private data relating to user behavior on websites and mobile applications to allow users to manage that data on computer and telecommunications networks; software as a service services(SAAS), namely, providing an online non-downloadable software platform for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
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.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use ICON apart from the mark as shown.


Miscellaneous Statement
The Applicant requests suspension of its application pending disposition of Application No. 88185260.


SIGNATURE(S)
Response Signature
Signature: /ChelseaaBush/     Date: 07/26/2019
Signatory's Name: Chelseaa Bush
Signatory's Position: Attorney for Applicant, CA bar member

Signatory's Phone Number: 650-815-2635

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: 88294503
Internet Transmission Date: Fri Jul 26 14:07:55 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-201907261407554748
33-88294503-62048a3308e9124d6e2b284c5dd1
1c7ad6ebc7c61f740e08b640af59675bd852-N/A
-N/A-20190726140349132816