TEAS Request Reconsideration after FOA

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 1960 (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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88300125 PRISMA(Standard Characters, see http://uspto.report/TM/88300125/mark.png) has been amended as follows:

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

Palo Alto Networks, LLC (“Applicant”) hereby responds to the Office Action issued on November 1, 2019 on its application to register the PRISMA mark in International Classes 9 and 42 on the Principal Register.  In the Office Action, the Examining Attorney issued a partial Lanham Act Section 2(d) refusal as to the following goods and/or services:

Computer hardware, namely, firewalls and networks security devices in the nature of network routers” in International Class 9; and “Technological consultation in the field of computer networking and network security" in International Class 42.

The Examining Attorney found Applicant’s mark registrable for its other applied-for goods and/or services.  Although Applicant disagrees with the Examining Attorney's refusal, it nevertheless responds by deleting the above-noted goods and/or services to which the refusal pertains.

In addition, Examining Attorney required that applicant must submit an English translation of the word “Prisma.”  As previously indicated, consumers will not perceive Applicant’s PRISMA as a foreign word with an English meaning.  Nevertheless, Applicant hereby submits that, in some languages, an English translation of the word “Prisma” is “Prism.”

In light of the forgoing Applicant respectfully requests that this application be allowed to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for computer hardware, namely, firewalls and networks security devices in the nature of network routers; downloadable computer software for computer network security
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 hardware, namely, firewalls and networks security devices in the nature of network routers; downloadable computer software for computer network securityClass 009 for downloadable computer software for computer network security
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 technological consultation in the field of computer networking and network security; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems related to computer network security; software as a service (SAAS) services featuring software for use in computer network security; Software as a service (SAAS) services, namely, hosting software for use by others for use in computer network security; monitoring of computer systems for security purposes in the nature of cybersecurity, misconfigurations, unauthorized access, data breach, and detection and analysis of malware and zero-day exploits
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: technological consultation in the field of computer networking and network security; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems related to computer network security; software as a service (SAAS) services featuring software for use in computer network security; Software as a service (SAAS) services, namely, hosting software for use by others for use in computer network security; monitoring of computer systems for security purposes in the nature of cybersecurity, misconfigurations, unauthorized access, data breach, and detection and analysis of malware and zero-day exploitsClass 042 for technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems related to computer network security; software as a service (SAAS) services featuring software for use in computer network security; Software as a service (SAAS) services, namely, hosting software for use by others for use in computer network security; monitoring of computer systems for security purposes in the nature of cybersecurity, misconfigurations, unauthorized access, data breach, and detection and analysis of malware and zero-day exploits
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
Translation
The English translation of PRISMA in the mark is PRISM.


SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Joshua L. Simmons/     Date: 01/10/2020
Signatory's Name: Joshua L. Simmons
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: (212) 446-4989

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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 88300125
Internet Transmission Date: Fri Jan 10 13:19:21 EST 2020
TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.X-2020011013192148
0265-88300125-7001f1edc18b1791fee94bea24
6698521dffa45f8198539fecbdc453633af813d-
N/A-N/A-20200107161513361121