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. 88298350 I (Stylized and/or with Design, see http://uspto.report/TM/88298350/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: I (Stylized and/or with Design, see http://uspto.report/TM/88298350/mark.png)
Proposed: I (Stylized and/or with Design, see mark)
The applicant is not claiming color as a feature of the mark.
The mark consists of a lock with an "I" in the padlock body.

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

Please see arguments attached in the Evidence Section. Thank you!

EVIDENCE

Original PDF file:
evi_2092361064-20191106200107687021_._Response_to_Office_Action_I_Lock_Design_Mark.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable software for imbedding images with 3D geographic location information, date and time, title, and group identifiers; Downloadable software for capturing, certifying, transmitting, and processing images, photos, sound recordings, video, and other visual media; Downloadable software for remote storage and retrieval of certified media with 3D geographic location information, date and time, title, and group identifiers
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 06/01/2013 and first used in commerce at least as early as 06/01/2013 , and is now in use in such commerce.

Proposed: Class 009 for Downloadable software for imbedding images with 3D geographic location information, date and time, title, and group identifiers; Downloadable software for capturing, certifying, transmitting, and processing images, photos, sound recordings, video, and other visual media; Downloadable software for remote storage and retrieval of certified media with 3D geographic location information, date and time, title, and group identifiers
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 06/01/2013 and first used in commerce at least as early as 06/01/2013 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Platform as a service (PaaS) featuring computer software platforms for securely integrating Internet portal access and datacenters in order to provide users certified media with 3D geographic location information, date and time, title, and group identifiers; Platform as a Service (PaaS) featuring technology for processing, securely transmitting, and certifying images, videos, sound recordings, and other visual media; Computer services, namely, computer software platforms for securely integrating internet portal access and datacenters in order to provide users certified media with 3D geographic location information, data, and time, title, and group identifiers; Computer services, namely, computer software technology for processing, securely transmitting, and certifying images, videos, sound recordings, and other visual media
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 06/01/2013 and first used in commerce at least as early as 06/01/2013 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Platform as a service (PaaS) featuring computer software platforms for securely integrating Internet portal access and datacenters in order to provide users certified media with 3D geographic location information, date and time, title, and group identifiers; Platform as a Service (PaaS) featuring technology for processing, securely transmitting, and certifying images, videos, sound recordings, and other visual media; Computer services, namely, computer software platforms for securely integrating internet portal access and datacenters in order to provide users certified media with 3D geographic location information, data, and time, title, and group identifiers; Computer services, namely, online non-downloadable computer software platforms for securely integrating internet portal access and datacenters in order to provide users certified media with 3D geographic location information, data, and time, title, and group identifiers; Computer services, namely, computer software technology for processing, securely transmitting, and certifying images, videos, sound recordings, and other visual media; Computer services, namely, online non-downloadable computer software technology for processing, securely transmitting, and certifying images, videos, sound recordings, and other visual mediaClass 042 for Platform as a service (PaaS) featuring computer software platforms for securely integrating Internet portal access and datacenters in order to provide users certified media with 3D geographic location information, date and time, title, and group identifiers; Platform as a Service (PaaS) featuring technology for processing, securely transmitting, and certifying images, videos, sound recordings, and other visual media; Computer services, namely, online non-downloadable computer software platforms for securely integrating internet portal access and datacenters in order to provide users certified media with 3D geographic location information, data, and time, title, and group identifiers; Computer services, namely, online non-downloadable computer software technology for processing, securely transmitting, and certifying images, videos, sound recordings, and other visual media
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 06/01/2013 and first used in commerce at least as early as 06/01/2013 , and is now in use in such commerce.
The applicant's current attorney information: Miya Yusa. Miya Yusa of POLSINELLI LLP, is located at

      THREE EMBARCADERO CENTER, SUITE 2400
      SAN FRANCISCO, California 94111
      US
The docket/reference number is 084842614065.

The phone number is 415-248-2100.

The email address is uspt@polsinelli.com

The applicants proposed attorney information: Miya Yusa. Other appointed attorneys are Adam S. Weiss; Matthew J. Smith; Daniel P. Mullarkey; Rachel A. Rice; and Monica M. Gutierrez. Miya Yusa of POLSINELLI 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

      Suite 2400
      THREE EMBARCADERO CENTER, SUITE 2400
      SAN FRANCISCO, California 94111
      United States
The docket/reference number is 084842614065.

The phone number is 415-248-2100.

The email address is uspt@polsinelli.com

Miya Yusa 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: MIYA YUSA. MIYA YUSA of POLSINELLI LLP, is located at

      THREE EMBARCADERO CENTER, SUITE 2400
      SAN FRANCISCO, California 94111
      US
The docket/reference number is 084842614065.

The email address is uspt@polsinelli.com; tmsanfrancisco@polsinelli.com; ipdocket@polsinelli.com

The applicants proposed correspondence information: Miya Yusa. Miya Yusa of POLSINELLI LLP, is located at

      Suite 2400
      THREE EMBARCADERO CENTER, SUITE 2400
      SAN FRANCISCO, California 94111
      United States
The docket/reference number is 084842614065.

The phone number is 415-248-2100.

The email address is uspt@polsinelli.com; rrice@polsinelli.com; vharvey@polsinelli.com; myusa@polsinelli.com

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /Rachel A. Rice/     Date: 11/06/2019
Signatory's Name: Rachel A. Rice
Signatory's Position: Associate Attorney, Polsinelli PC, Colorado bar member

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:    MIYA YUSA
   POLSINELLI LLP
   
   THREE EMBARCADERO CENTER, SUITE 2400
   SAN FRANCISCO, California 94111
Mailing Address:    Miya Yusa
   POLSINELLI LLP
   Suite 2400
   THREE EMBARCADERO CENTER, SUITE 2400
   SAN FRANCISCO, California 94111
        
Serial Number: 88298350
Internet Transmission Date: Wed Nov 06 20:08:34 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.X-2019110620083437
0513-88298350-700fb29353be20827beca4d2d6
72ee7ce89cb37de55dc63cf6d37567ae91b09210
-N/A-N/A-20191106200107687021