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. 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 class of goods/services in the application:
Current: Class 009 for downloadable cloud-based software for storing, managing, decrypting and encrypting electronic data; 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; computer game software; interactive game software; video game software; electronic game software for wireless devices and cellular phones; compiler software; computer software for encryption; computer software development tools and kits; computer operating software; computer graphics software; graphical user interface software; data compression software; network access server operating software; computer software for administration of computer networks; document management software; database management software; downloadable software for database management; computer software for authorizing access to databases; software for processing images, graphics and text; computer application software for mobile phones; downloadable geographic information system software; computer software for application and database integration; computer software for processing digital music files; computer chatbot software for simulating conversations; electronic software updates, namely, downloadable computer software and associated data files for updating computer software provided via computer and communication networks; computer software for producing financial models; database management software for use by financial advisors; software development tools for the creation of mobile internet applications and client interfaces; computer software for administration of computer local area networks; computer software for communicating with users of hand-held computers; computer software for creating searchable databases of information and data; computer software for controlling and managing access server applications; computer software and firmware for operating system programs; computer software to maintain and operate computer system; computer software for controlling and managing patient medical information; computer software for use in customer relationship management; computer software to monitor and control factory manufacturing processes; computer software for use as a cryptocurrency wallet; external computer hard drives featuring software for data encryption and electronic storage of data; computer application software for mobile phones, namely, use in database management and electronic storage of data; computer communications software to allow customers to access bank account information and transact bank business; communications software for connecting computer networks users and global computer networks; software for monitoring and controlling communication between computers and automated machine systems; downloadable electronic data files and databases for use with computer software; computer hardware and software for retail inventory management; enterprise software in the nature of a database for non-transactional data and a search engine for database content; computer e-commerce software to allow users to perform electronic business transactions via a global computer network
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: downloadable cloud-based software for storing, managing, decrypting and encrypting electronic data; 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 software for use in the encryption and decryption and safeguarding of digital files including audio, video, text, binary, still images, graphics and multimedia files; computer game software; downloadable computer game software; interactive game software; downloadable interactive game software; video game software; downloadable video game software; electronic game software for wireless devices and cellular phones; downloadable electronic game software for wireless devices and cellular phones; compiler software; downloadable compiler software; computer software for encryption; downloadable computer software for encryption; computer software development tools and kits; downloadable computer software development tools and kits comprised of widgets for building graphical user interface; computer operating software; downloadable computer operating software; computer graphics software; downloadable computer graphics software; graphical user interface software; downloadable graphical user interface software; data compression software; downloadable data compression software; network access server operating software; downloadable network access server operating software; computer software for administration of computer networks; downloadable computer software for administration of computer networks; document management software; downloadable document management software; database management software; downloadable database management software; downloadable software for database management; computer software for authorizing access to databases; downloadable computer software for authorizing access to databases; software for processing images, graphics and text; downloadable software for processing images, graphics and text; computer application software for mobile phones; downloadable computer application software for mobile phones for writing encrypted data to the cloud; downloadable geographic information system software; computer software for application and database integration; downloadable computer software for application and database integration; computer software for processing digital music files; downloadable computer software for processing digital music files; computer chatbot software for simulating conversations; downloadable computer chatbot software for simulating conversations; electronic software updates, namely, downloadable computer software and associated data files for updating computer software provided via computer and communication networks; downloadable computer software for producing financial models; computer software for producing financial models; downloadable database management software for use by financial advisors; database management software for use by financial advisors; downloadable software development tools for the creation of mobile internet applications and client interfaces; software development tools for the creation of mobile internet applications and client interfaces; downloadable computer software for administration of computer local area networks; computer software for administration of computer local area networks; downloadable computer software for communicating with users of hand-held computers; computer software for communicating with users of hand-held computers; downloadable computer software for creating searchable databases of information and data; computer software for creating searchable databases of information and data; downloadable computer software for controlling and managing access server applications; computer software for controlling and managing access server applications; downloadable computer software and firmware for operating system programs; computer software and firmware for operating system programs; downloadable computer software to maintain and operate computer system; computer software to maintain and operate computer system; downloadable computer software for controlling and managing patient medical information; computer software for controlling and managing patient medical information; downloadable computer software for use in customer relationship management; computer software for use in customer relationship management; downloadable computer software to monitor and control factory manufacturing processes; computer software to monitor and control factory manufacturing processes; downloadable computer software for use as a cryptocurrency wallet; 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; computer application software for mobile phones, namely, 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; 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; communications software for connecting computer networks users and global computer networks; downloadable software for monitoring and controlling communication between computers and automated machine systems; 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 for use with computer software; computer hardware and recorded computer software for retail inventory management, sold as a unit; computer hardware and software for retail inventory management; downloadable enterprise software in the nature of a database for non- transactional data and a search engine for database content; 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; 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, 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for design, development, customization, installation and updating of computer software; design, development, customization, installation and updating of smartphone software; design, development, customization, installation and updating of mobile applications; design, development, customization and installation of private blockchain; design, development, customization, installation and updating of computer software related to blockchain; computer software consultation; computer hardware design; technical support services namely, diagnosing, debugging and troubleshooting computer software problems; remote computer network technical monitoring and software maintenance; design of computer websites; advisory services in the field of product development and quality improvement of software; design and development of software and hardware for processing and distribution of multimedia contents, multimedia data storing and recalling, compression and decompression of multimedia components; hosting the software, websites and other computer applications of others on a virtual private server; consulting in the field of configuration management for computer hardware and software; consultancy, maintenance and updating of computer software relating to computer security and prevention of computer risks; computer services, namely, integration of computer software into multiple systems and networks; providing an internet website portal in the fields of technology and software development; providing computer product advice relating to computer software and hardware; providing online non-downloadable computer software for use as a cryptocurrency wallet; cloud computing featuring software for use in database management and data storage; technical support services, namely, remote administration and management of in-house and hosted datacenter devices, databases and software applications; application service provider featuring application programming interface (API) software for allowing data retrieval, upload access and management; internet-based application service provider, namely, hosting, managing, developing, analyzing, and maintaining the code, applications, and software for web sites of others
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: design, development, customization, installation and updating of computer software; design, development, customization, installation and updating of smartphone software; design, development, customization, installation and updating of mobile applications; design, development, customization, installation and updating of mobile software applications; design, development, customization and installation of private blockchain; design, development, customization and installation of private blockchain software; design, development, customization, installation and updating of computer software related to blockchain; computer software consultation; computer hardware design; technical support services namely, diagnosing, debugging and troubleshooting computer software problems; technical support services namely, diagnosing, debugging and troubleshooting computer software problems for others; remote computer network technical monitoring and software maintenance; remote computer network technical monitoring, namely, monitoring of computer systems by remote access to ensure proper functioning; computer software maintenance; design of computer websites; advisory services in the field of product development and quality improvement of software; design and development of software and hardware for processing and distribution of multimedia contents, multimedia data storing and recalling, compression and decompression of multimedia components; hosting the software, websites and other computer applications of others on a virtual private server; consulting in the field of configuration management for computer hardware and software; consultancy, maintenance and updating of computer software relating to computer security and prevention of computer risks; computer services, namely, integration of computer software into multiple systems and networks; providing computer product advice relating to computer software and hardware; providing an internet website portal in the fields of technology and software development; providing online non-downloadable computer software for use as a cryptocurrency wallet; cloud computing featuring software for use in database management and data storage; technical support services, namely, remote administration and management of in-house and hosted datacenter devices, databases and software applications; application service provider featuring application programming interface (API) software for allowing data retrieval, upload access and management; internet-based application service provider, namely, hosting, managing, developing, analyzing, and maintaining the code, applications, and software for web sites of othersClass 042 for design, development, customization, installation and updating of computer software; design, development, customization, installation and updating of smartphone software; design, development, customization, installation and updating of mobile software applications; design, development, customization and installation of private blockchain software; design, development, customization, installation and updating of computer software related to blockchain; computer software consultation; computer hardware design; technical support services namely, diagnosing, debugging and troubleshooting computer software problems for others; remote computer network technical monitoring, namely, monitoring of computer systems by remote access to ensure proper functioning; computer software maintenance; design of computer websites; advisory services in the field of product development and quality improvement of software; design and development of software and hardware for processing and distribution of multimedia contents, multimedia data storing and recalling, compression and decompression of multimedia components; hosting the software, websites and other computer applications of others on a virtual private server; consulting in the field of configuration management for computer hardware and software; consultancy, maintenance and updating of computer software relating to computer security and prevention of computer risks; computer services, namely, integration of computer software into multiple systems and networks; providing an internet website portal in the fields of technology and software development; providing online non-downloadable computer software for use as a cryptocurrency wallet; cloud computing featuring software for use in database management and data storage; technical support services, namely, remote administration and management of in-house and hosted datacenter devices, databases and software applications; application service provider featuring application programming interface (API) software for allowing data retrieval, upload access and management; internet-based application service provider, namely, hosting, managing, developing, analyzing, and maintaining the code, applications, and software for web sites of others
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 hereby adds the following class of goods/services to the application:
New: Class 035 for providing computer product advice for consumers relating to computer software and hardware
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: Michele L. Lawson. Michele L. Lawson of SMITH & HOPEN, P.A., is located at

      180 PINE AVENUE NORTH
      OLDSMAR, Florida 34677
      US
The docket/reference number is 3321.02.

The phone number is 813-925-8505.

The fax number is 800-726-1491.

The email address is trademarks@smithhopen.com

The applicants proposed attorney information: Michele L. Lawson. Michele L. Lawson of SMITH & HOPEN, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      180 PINE AVENUE NORTH
      OLDSMAR, Florida 34677
      United States
The docket/reference number is 3321.02.

The phone number is 813-925-8505.

The fax number is 800-726-1491.

The email address is trademarks@smithhopen.com

Michele L. Lawson 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: MICHELE L. LAWSON. MICHELE L. LAWSON of SMITH & HOPEN, P.A., is located at

      180 PINE AVENUE NORTH
      OLDSMAR, Florida 34677
      US
The docket/reference number is 3321.02.

The phone number is 813-925-8505.

The fax number is 800-726-1491.

The email address is trademarks@smithhopen.com

The applicants proposed correspondence information: Michele L. Lawson. Michele L. Lawson of SMITH & HOPEN, P.A., is located at

      180 PINE AVENUE NORTH
      OLDSMAR, Florida 34677
      United States
The docket/reference number is 3321.02.

The phone number is 813-925-8505.

The fax number is 800-726-1491.

The email address is trademarks@smithhopen.com

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /michele lawson/      Date: 11/06/2019
Signatory's Name: Michele Lawson
Signatory's Position: Attorney of Record
Signatory's Phone Number: 813-925-8505


Response Signature
Signature: /michele lawson/     Date: 11/06/2019
Signatory's Name: Michele Lawson
Signatory's Position: Attorney of Record

Signatory's Phone Number: 813-925-8505

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:    MICHELE L. LAWSON
   SMITH & HOPEN, P.A.
   
   180 PINE AVENUE NORTH
   OLDSMAR, Florida 34677
Mailing Address:    Michele L. Lawson
   SMITH & HOPEN, P.A.
   180 PINE AVENUE NORTH
   OLDSMAR, Florida 34677
        
RAM Sale Number: 88332230
RAM Accounting Date: 11/06/2019
        
Serial Number: 88332230
Internet Transmission Date: Wed Nov 06 11:16:13 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-201911061116131844
81-88332230-700e1fc8f9cdadb86ee7b2d1a598
b2a4407c5c681ed6a764f8113debe63212c25-CC
-16110835-20191106105815164312