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. 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:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Arguments for Response to Office Action has been attached.
Original PDF file:
evi_241623252-20191029185945867559_._PRISMA_ROA_.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 045 for monitoring of computer systems for security purposes

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; 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; computer hardware, namely, firewalls and networks security devices in the nature of network routers; computer software for computer network security; downloadable computer software for computer network securityClass 009 for computer hardware, namely, firewalls and networks security devices in the nature of network routers; 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
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 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
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: John L. Slafsky. John L. Slafsky of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304
      US
The docket/reference number is 42284-TM1019.

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: John L. Slafsky. Other appointed attorneys are Aaron D. Hendelman, Alyssa M. Worsham, Christine K. Au-Yeung, Brandon P. Leahy, Chelsea E. Carbone, Susanna P. Lichter, Ava R. Miller. John L. Slafsky 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
      United States
The docket/reference number is 42284-TM1019.

The phone number is 650-493-9300.

The fax number is 650-493-6811.

The email address is trademarks@wsgr.com

John L. Slafsky 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: JOHN L. SLAFSKY. JOHN L. SLAFSKY of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304
      US
The docket/reference number is 42284-TM1019.

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: John L. Slafsky. John L. Slafsky of WILSON SONSINI GOODRICH & ROSATI, is located at

      650 PAGE MILL ROAD
      PALO ALTO, California 94304
      United States
The docket/reference number is 42284-TM1019.

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: /Christine K. Au-Yeung/     Date: 10/29/2019
Signatory's Name: Christine K. Au-Yeung
Signatory's Position: Attorney of record

Signatory's Phone Number: 6504939300

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:    JOHN L. SLAFSKY
   WILSON SONSINI GOODRICH & ROSATI
   
   650 PAGE MILL ROAD
   PALO ALTO, California 94304
Mailing Address:    John L. Slafsky
   WILSON SONSINI GOODRICH & ROSATI
   650 PAGE MILL ROAD
   PALO ALTO, California 94304
        
Serial Number: 88300125
Internet Transmission Date: Tue Oct 29 19:05:02 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20191029190502935
056-88300125-70082416c177cbb525ec3ccb998
ed7943d9b8ec60a997109462a32eefcc45f7258f
-N/A-N/A-20191029185945867559