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. 88322295 R (Stylized and/or with Design, see http://uspto.report/TM/88322295/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 042 for Computer services, namely, cloud hosting, managed hosting, server hosting, managed software hosting, and website hosting services; Technical support services, namely, remote and on-site hosting, database, data, Internet, software, administration and infrastructure management services for others; Technical support services, namely, monitoring, administration and management of cloud computing, information technology, devices, and application systems; Infrastructure as a service (IAAS); Computer technology support services, namely, help desk and troubleshooting services; Application service provider featuring application programming interface (API); Server and device administration services; Computer software platform administration services; Managed computer storage services; Managed hosting services; Providing guidance in the area of technology; Assisting customers in migrating to the cloud; Protecting and securing business data; Network security management services; Addressing security, regulatory and compliance issues for others and consulting relating thereto; Providing a customized infrastructure featuring dedicated servers and a hosting environment optimized for speed and availability; Consolidating data centers for others; Disaster recovery services; Electronic data back-up services; Providing a hybrid computer network for others; Providing server virtualization services; Providing on demand distributed denial of services (DDoS) migration services; Providing dedicated servers that customers can scale to the cloud; Research, design and deployment of computer software and infrastructure for others; Colocation services; Application management services; Business intelligence as a service; Managing analytics platforms for others; Managing and interpreting data regarding customer behavior for others; Database administration services; Database design and architecture services; Auditing application architecture and software delivery process for others; Technical support services; Providing e-mail services, namely, electronic mail security and virus protection services; Application service provider featuring application programming interface (API) software for receiving, validating and providing event notifications to users in the field of cloud computing, cloud hosting, managed hosting, server hosting and managed server hosting; Consulting services in field of computing and cloud computing; Computer software consulting; Computer programming; Maintenance of computer software; Providing a web hosting platform for customers and/or potential customers
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, cloud hosting, managed hosting, server hosting, managed software hosting, and website hosting services; Computer services, namely, cloud hosting provider services, server hosting, and managed hosting services in the nature of hosting the software and websites of others through virtual servers and managed data center facilities; Technical support services, namely, remote and on-site hosting, database, data, Internet, software, administration and infrastructure management services for others; Technical support services, namely, remote infrastructure management services for administration and hosting of public and private cloud computing IT application systems relating to databases, data, the Internet, cloud computing software; Technical support services, namely, monitoring, administration and management of cloud computing, information technology, devices, and application systems; Technical support services, namely, providing technical advice in the field of information technology as it pertains to the monitoring, administration and management of cloud-based software application systems; Infrastructure as a service (IAAS); Enterprise class Infrastructure as a Service (IaaS), namely, cloud based disaster data recovery services; Computer technology support services, namely, help desk and troubleshooting services; Computer technology support services, namely, help desk services and diagnosing computer software problems; Application service provider featuring application programming interface (API); Application service provider (ASP), namely, hosting application programming interface (API) software applications of others; Server and device administration services; Computer security services in the nature of administering digital certificates for servers; Computer software platform administration services; Technical support services, namely, remote administration of computer software platform applications; Managed computer storage services; Electronic storage services, namely, managed computer data storage services; Managed hosting services; Computer services, namely, managed cloud hosting provider services; Providing guidance in the area of technology; Consulting in the field of virtualization technologies for enterprises and businesses; Assisting customers in migrating to the cloud; Cloud migration services in the nature of migration of computer software to the cloud for others; Protecting and securing business data; Data encryption services for providing security and anonymity for electronically transmitted sensitive business data of others; Network security management services; Computer security services, namely, restricting unauthorized network access by users without credentials; Addressing security, regulatory and compliance issues for others and consulting relating thereto; Computer disaster recovery planning services; Providing a customized infrastructure featuring dedicated servers and a hosting environment optimized for speed and availability; Electronic data back-up services; Consolidating data centers for others; Computer network design for others, namely, providing hybrid computer networks for others; Disaster recovery services; Software as a service (SAAS) services featuring software for server virtualization; Data migration services, namely, migrating data for others after a demand distributed denial of services (DDoS) attack; Providing a hybrid computer network for others; Computer services, namely, providing dedicated, virtual application servers that customers can scale to the cloud; Providing server virtualization services; Research, design and deployment of computer software for others; Providing on demand distributed denial of services (DDoS) migration services; Research and design of computer infrastructure for others; Providing dedicated servers that customers can scale to the cloud; Computer co-location services, namely, providing facilities for the location of computer servers with the equipment of others; Research, design and deployment of computer software and infrastructure for others; Internet-based application service provider, namely, managing the code, applications, and software for web sites of others; Colocation services; Business intelligence as a service; Application management services; Platform as a service (PAAS) featuring computer software platforms for use in database management for customers in their various fields; Technical support services, namely, administration of database applications; Managing analytics platforms for others; Database design and architectural services; Managing and interpreting data regarding customer behavior for others; Auditing application architecture and software delivery process for others; Database administration services; Technical support services, namely, installation, administration, and troubleshooting of web and database applications; Database design and architecture services; Computer security services, namely, providing virus protection services for electronic mail and scanning of electronic mail for security threats; Application service provider featuring application programming interface (API) software for receiving, validating and providing event notifications to users in the field of cloud computing, cloud hosting, managed hosting, server hosting and managed server hosting; Technical support services; Consulting services in field of computing and cloud computing; Providing e-mail services, namely, electronic mail security and virus protection services; Computer software consulting; Computer programming; Maintenance of computer software; Providing a web hosting platform for digital libraries; Troubleshooting in the nature of diagnosing problems with cloud computing software, software applications, software hosting, websites, online databases and database software, and electronic digital content; Administration of websites for third parties, namely, providing an online business account administration service for others in the field of hosting and management of computer hardware, computer operating systems, and computer application infrastructure; Providing a web hosting platform for customers and/or potential customersClass 042 for Computer services, namely, cloud hosting provider services, server hosting, and managed hosting services in the nature of hosting the software and websites of others through virtual servers and managed data center facilities; Technical support services, namely, remote infrastructure management services for administration and hosting of public and private cloud computing IT application systems relating to databases, data, the Internet, cloud computing software; Technical support services, namely, providing technical advice in the field of information technology as it pertains to the monitoring, administration and management of cloud-based software application systems; Enterprise class Infrastructure as a Service (IaaS), namely, cloud based disaster data recovery services; Computer technology support services, namely, help desk services and diagnosing computer software problems; Application service provider (ASP), namely, hosting application programming interface (API) software applications of others; Computer security services in the nature of administering digital certificates for servers; Technical support services, namely, remote administration of computer software platform applications; Electronic storage services, namely, managed computer data storage services; Computer services, namely, managed cloud hosting provider services; Consulting in the field of virtualization technologies for enterprises and businesses; Cloud migration services in the nature of migration of computer software to the cloud for others; Data encryption services for providing security and anonymity for electronically transmitted sensitive business data of others; Computer security services, namely, restricting unauthorized network access by users without credentials; Computer disaster recovery planning services; Electronic data back-up services; Computer network design for others, namely, providing hybrid computer networks for others; Software as a service (SAAS) services featuring software for server virtualization; Data migration services, namely, migrating data for others after a demand distributed denial of services (DDoS) attack; Computer services, namely, providing dedicated, virtual application servers that customers can scale to the cloud; Research, design and deployment of computer software for others; Research and design of computer infrastructure for others; Computer co-location services, namely, providing facilities for the location of computer servers with the equipment of others; Internet-based application service provider, namely, managing the code, applications, and software for web sites of others; Business intelligence as a service; Platform as a service (PAAS) featuring computer software platforms for use in database management for customers in their various fields; Technical support services, namely, administration of database applications; Database design and architectural services; Auditing application architecture and software delivery process for others; Technical support services, namely, installation, administration, and troubleshooting of web and database applications; Computer security services, namely, providing virus protection services for electronic mail and scanning of electronic mail for security threats; Application service provider featuring application programming interface (API) software for receiving, validating and providing event notifications to users in the field of cloud computing, cloud hosting, managed hosting, server hosting and managed server hosting; Consulting services in field of computing and cloud computing; Computer software consulting; Computer programming; Maintenance of computer software; Providing a web hosting platform for digital libraries; Troubleshooting in the nature of diagnosing problems with cloud computing software, software applications, software hosting, websites, online databases and database software, and electronic digital content; Administration of websites for third parties, namely, providing an online business account administration service for others in the field of hosting and management of computer hardware, computer operating systems, and computer application infrastructure
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: Glenn Bacal. Glenn Bacal of BACAL LAW GROUP, P.C., is located at

      6991 EAST CAMELBACK ROAD, SUITE D-102
      SCOTTSDALE, Arizona 85251
      US
The docket/reference number is 60293-1081.

The phone number is 480-245-6233.

The email address is glenn.bacal@bacalgroup.com

The applicants proposed attorney information: Glenn Bacal. Other appointed attorneys are Sean Garrison. Glenn Bacal of BACAL LAW GROUP, 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

      6991 EAST CAMELBACK ROAD, SUITE D-102
      SCOTTSDALE, Arizona 85251
      United States
The docket/reference number is 60293-1081.

The phone number is 480-245-6233.

The email address is glenn.bacal@bacalgroup.com

Glenn Bacal 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: GLENN BACAL. GLENN BACAL of BACAL LAW GROUP, P.C., is located at

      6991 EAST CAMELBACK ROAD, SUITE D-102
      SCOTTSDALE, Arizona 85251
      US
The docket/reference number is 60293-1081.

The phone number is 480-245-6233.

The email address is glenn.bacal@bacalgroup.com; jamie.tuccio@bacalgroup.com

The applicants proposed correspondence information: Glenn Bacal. Glenn Bacal of BACAL LAW GROUP, P.C., is located at

      6991 EAST CAMELBACK ROAD, SUITE D-102
      SCOTTSDALE, Arizona 85251
      United States
The docket/reference number is 60293-1081.

The phone number is 480-245-6233.

The email address is glenn.bacal@bacalgroup.com; jamie.tuccio@bacalgroup.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Applicant has amended the class 42 services in this application 88322295 largely in accordance with the suggestions of the Examining Attorney. Applicant adopts the suggested description of services that the Examining Attorney indicated belong in class 35, namely "Database administration services, namely, updating and maintenance of data in computer databases; Business consulting services relating to the integration of the areas of business process technology, change management and operational sustainability; Disaster recovery services, namely, business planning and business continuity consulting," and then requesting, pursuant to TMEP 1402.08 that this be moved to the currently co-pending application for R (stylized in red) in class 35 application number 88322143 (for which you are also the assigned Examining Attorney). The Applicant also is requesting, again pursuant to TMEP 1402.08, in the response to the office action for R (stylized in red) application number 88322143, that certain services belonging in class 42 be moved to this co-pending application 88322295. Specifically we are requesting that the following services from the R (stylized in red) class 35 application, application number 88322143, be moved to this class 42 application 88322295: "Troubleshooting in the nature of diagnosing problems with cloud computing software, software applications, software hosting, websites, online databases and database software, and electronic digital content; Administration of websites for third parties, namely, providing an online business account administration service for others in the field of hosting and management of computer hardware, computer operating systems, and computer application infrastructure."


SIGNATURE(S)
Response Signature
Signature: /Glenn Bacal/     Date: 08/19/2019
Signatory's Name: Glenn Bacal
Signatory's Position: Attorney of record, Arizona bar member

Signatory's Phone Number: 4802456233

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:    GLENN BACAL
   BACAL LAW GROUP, P.C.
   
   6991 EAST CAMELBACK ROAD, SUITE D-102
   SCOTTSDALE, Arizona 85251
Mailing Address:    Glenn Bacal
   BACAL LAW GROUP, P.C.
   6991 EAST CAMELBACK ROAD, SUITE D-102
   SCOTTSDALE, Arizona 85251
        
Serial Number: 88322295
Internet Transmission Date: Mon Aug 19 16:07:41 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201908191607417
37985-88322295-610d917fdc83cd7e4385e4995
fbb2ebabeca0699f33993ce15837e7223be5d32d
9-N/A-N/A-20190819154120522696