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)

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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 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. 88332230 RUBIDEX(Standard Characters, see http://uspto.report/TM/88332230/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for downloadable cloud-based software for storing, managing, decrypting and encrypting electronic data; downloadable computer software for use in the encryption and decryption and safeguarding of digital files including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer game software; downloadable interactive game software; downloadable video game software; downloadable electronic game software for wireless devices and cellular phones; downloadable compiler software; downloadable computer software for encryption; downloadable computer software development tools and kits comprised of widgets for building graphical user interface; downloadable computer operating software; downloadable computer graphics software; downloadable graphical user interface software; downloadable data compression software; downloadable network access server operating software; downloadable computer software for administration of computer networks; downloadable document management software; downloadable database management software; downloadable software for database management; downloadable computer software for authorizing access to databases; downloadable software for processing images, graphics and text; downloadable computer application software for mobile phones for writing encrypted data to the cloud; downloadable geographic information system software; downloadable computer software for application and database integration; downloadable computer software for processing digital music files; downloadable computer chatbot software for simulating conversations; downloadable computer software for producing financial models; downloadable database management software for use by financial advisors; downloadable software development tools for the creation of mobile internet applications and client interfaces; downloadable computer software for administration of computer local area networks; downloadable computer software for communicating with users of hand-held computers; downloadable computer software for creating searchable databases of information and data; downloadable computer software for controlling and managing access server applications; downloadable computer software and firmware for operating system programs; downloadable computer software to maintain and operate computer system; downloadable computer software for controlling and managing patient medical information; downloadable computer software for use in customer relationship management; downloadable computer software to monitor and control factory manufacturing processes; downloadable computer software for use as a cryptocurrency wallet; external computer hard drives featuring software for data encryption and electronic storage of data; downloadable computer application software for mobile phones for use in database management and electronic storage of data; downloadable computer communications software to allow customers to access bank account information and transact bank business; downloadable communications software for connecting computer networks users and global computer networks; downloadable software for monitoring and controlling communication between computers and automated machine systems; downloadable electronic data files and databases, namely, blocks of encrypted data known as .BL or .CSV files for use with computer software; computer hardware and recorded computer software for retail inventory management, sold as a unit; downloadable enterprise software in the nature of a database for non- transactional data and a search engine for database content; downloadable computer e-commerce software to allow users to perform electronic business transactions via a global computer network
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: downloadable cloud-based software for storing, managing, decrypting and encrypting electronic data; downloadable computer software for use in the encryption and decryption and safeguarding of digital files including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer game software; downloadable interactive game software; downloadable video game software; downloadable electronic game software for wireless devices and cellular phones; downloadable compiler software; downloadable computer software for encryption; downloadable computer software development tools and kits comprised of widgets for building graphical user interface; downloadable computer operating software; downloadable computer graphics software; downloadable graphical user interface software; downloadable data compression software; downloadable network access server operating software; downloadable computer software for administration of computer networks; downloadable document management software; downloadable database management software; downloadable software for database management; downloadable computer software for authorizing access to databases; downloadable software for processing images, graphics and text; downloadable computer application software for mobile phones for writing encrypted data to the cloud; downloadable geographic information system software; downloadable computer software for application and database integration; downloadable computer software for processing digital music files; downloadable computer chatbot software for simulating conversations; downloadable computer software for producing financial models; downloadable database management software for use by financial advisors; downloadable software development tools for the creation of mobile internet applications and client interfaces; downloadable computer software for administration of computer local area networks; downloadable computer software for communicating with users of hand-held computers; downloadable computer software for creating searchable databases of information and data; downloadable computer software for controlling and managing access server applications; downloadable computer software and firmware for operating system programs; downloadable computer software to maintain and operate computer system; downloadable computer software for controlling and managing patient medical information; downloadable computer software for use in customer relationship management; downloadable computer software to monitor and control factory manufacturing processes; downloadable computer software for use as a cryptocurrency wallet; external computer hard drives featuring software for data encryption and electronic storage of data; downloadable computer application software for mobile phones for use in database management and electronic storage of data; downloadable computer communications software to allow customers to access bank account information and transact bank business; downloadable communications software for connecting computer networks users and global computer networks; downloadable software for monitoring and controlling communication between computers and automated machine systems; downloadable electronic data files and databases, namely, blocks of encrypted data known as .BL or .CSV files for use with computer software; · downloadable electronic data files and databases featuring encrypted data for use with computer software to create and maintain block chain networks and distributed networks; computer hardware and recorded computer software for retail inventory management, sold as a unit; downloadable enterprise software in the nature of a database for non- transactional data and a search engine for database content; downloadable computer e-commerce software to allow users to perform electronic business transactions via a global computer networkClass 009 for downloadable cloud-based software for storing, managing, decrypting and encrypting electronic data; downloadable computer software for use in the encryption and decryption and safeguarding of digital files including audio, video, text, binary, still images, graphics and multimedia files; downloadable computer game software; downloadable interactive game software; downloadable video game software; downloadable electronic game software for wireless devices and cellular phones; downloadable compiler software; downloadable computer software for encryption; downloadable computer software development tools and kits comprised of widgets for building graphical user interface; downloadable computer operating software; downloadable computer graphics software; downloadable graphical user interface software; downloadable data compression software; downloadable network access server operating software; downloadable computer software for administration of computer networks; downloadable document management software; downloadable database management software; downloadable software for database management; downloadable computer software for authorizing access to databases; downloadable software for processing images, graphics and text; downloadable computer application software for mobile phones for writing encrypted data to the cloud; downloadable geographic information system software; downloadable computer software for application and database integration; downloadable computer software for processing digital music files; downloadable computer chatbot software for simulating conversations; downloadable computer software for producing financial models; downloadable database management software for use by financial advisors; downloadable software development tools for the creation of mobile internet applications and client interfaces; downloadable computer software for administration of computer local area networks; downloadable computer software for communicating with users of hand-held computers; downloadable computer software for creating searchable databases of information and data; downloadable computer software for controlling and managing access server applications; downloadable computer software and firmware for operating system programs; downloadable computer software to maintain and operate computer system; downloadable computer software for controlling and managing patient medical information; downloadable computer software for use in customer relationship management; downloadable computer software to monitor and control factory manufacturing processes; downloadable computer software for use as a cryptocurrency wallet; external computer hard drives featuring software for data encryption and electronic storage of data; downloadable computer application software for mobile phones for use in database management and electronic storage of data; downloadable computer communications software to allow customers to access bank account information and transact bank business; downloadable communications software for connecting computer networks users and global computer networks; downloadable software for monitoring and controlling communication between computers and automated machine systems; · downloadable electronic data files and databases featuring encrypted data for use with computer software to create and maintain block chain networks and distributed networks; computer hardware and recorded computer software for retail inventory management, sold as a unit; downloadable enterprise software in the nature of a database for non- transactional data and a search engine for database content; downloadable computer e-commerce software to allow users to perform electronic business transactions via a global computer network
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.
Correspondence Information (current):
      Andrew Roppel
      PRIMARY EMAIL FOR CORRESPONDENCE: ARoppel@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pctrademarks@perkinscoie.com

The docket/reference number is 137008.4001.
Correspondence Information (proposed):
      Andrew Roppel
      PRIMARY EMAIL FOR CORRESPONDENCE: ARoppel@perkinscoie.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): pctrademarks@perkinscoie.com

The docket/reference number is 137008.4001.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /Andrew Roppel/     Date: 03/10/2020
Signatory's Name: Andrew Roppel
Signatory's Position: Attorney for Applicant, Colorado bar member

Signatory's Phone Number: 303-291-2300

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.

Mailing Address:    Andrew Roppel
   Perkins Coie LLP
   
   1201 Third Avenue, Suite 4900
   Seattle, Washington 98101
Mailing Address:    Andrew Roppel
   Perkins Coie LLP
   1201 Third Avenue, Suite 4900
   Seattle, Washington 98101
        
Serial Number: 88332230
Internet Transmission Date: Tue Mar 10 16:10:11 ET 2020
TEAS Stamp: USPTO/RFR-XXX.XX.XXX.XXX-202003101610116
96527-88332230-710b78b935c311062b4df34d1
13bbfb2615a4546aeb9436f84d82269e76ae6cb4
2-N/A-N/A-20200310160333849028