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. 88349521 AWAKE(Standard Characters, see http://uspto.report/TM/88349521/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 Information technology troubleshooting, namely, investigation, research and diagnosis of computer system and computer network threats; Computer consultation in the field of computer security to detect and assess information security vulnerability; computer services, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats, malware and unauthorized data and programs on computers, computer systems, networks, hardware, software applications, digital devices, and mobile devices; computer security services for protecting and managing enterprise networks; computer security services, namely, restricting and detecting unauthorized access to enterprise computer networks; technical support and consulting services related to security and vulnerability of, and cyber-attacks and threats against computers, computer systems, networks, hardware, software applications, digital devices, digital data, and mobile devices; technical and consulting services related to designing, developing, customizing, configuring, deploying, installing, maintaining, analyzing, integrating, repairing, and managing of cyber-security systems for others; technical support services in the nature of detecting and diagnosing computer hardware and software security problems and vulnerabilities, updating and maintenance of computer software relating to computer security and to prevention and mitigation of computer risks; cloud computing services featuring software and databases for use in computer security and prevention and mitigation of computer risks; computer security consultancy in the field of malware, intrusion and penetration testing and diagnosis of computers and networks to assess information technology security and vulnerability; application service provider (asp) featuring software for use for detection, blocking, and facilitating removal and remediation of viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats and other malware in computers, computer systems, networks, hardware, software applications, digital devices, and mobile digital devices; application service provider (asp) featuring software that provides secure virtual computer systems and virtual computing environments
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 05/00/2017 and first used in commerce at least as early as 05/00/2017 , and is now in use in such commerce.

Proposed:
Tracked Text Description: information technology troubleshooting, namely, investigation, research and diagnosis of computer system and computer network threats; Computer consultation in the field of computer security to detect and assess information security vulnerability; computer services, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats, malware and unauthorized data and programs on computers, computer systems, networks, hardware, software applications, digital devices, and mobile devices; computer security services for protecting and managing enterprise networks; computer security services, namely, restricting and detecting unauthorized access to enterprise computer networks; technical support and consulting services related to security and vulnerability of, and cyber-attacks and threats against computers, computer systems, networks, hardware, software applications, digital devices, digital data, and mobile devices; technical and consulting services related to designing, developing, customizing, configuring, deploying, installing, maintaining, analyzing, integrating, repairing, and managing of cyber-security systems for others; technical support and consulting services related to designing, developing, customizing, configuring, deploying, installing, maintaining, analyzing, integrating, repairing, and managing of cyber-security systems for others; technical support services in the nature of detecting and diagnosing computer hardware and software security problems and vulnerabilities, updating and maintenance of computer software relating to computer security and to prevention and mitigation of computer risks; cloud computing services featuring software and databases for use in computer security and prevention and mitigation of computer risks; computer security consultancy in the field of malware, intrusion and penetration testing and diagnosis of computers and networks to assess information technology security and vulnerability; application service provider (asp) featuring software for use for detection, blocking, and facilitating removal and remediation of viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats and other malware in computers, computer systems, networks, hardware, software applications, digital devices, and mobile digital devices; application service provider (asp) featuring software that provides secure virtual computer systems and virtual computing environments; providing temporary use of non-downloadable, artificial-intelligence based network security software that detects and prioritizes mal-intent and behavioral threats from internal and external sources and performs autonomous incident triage; providing temporary use of non-downloadable computer software for use in protecting and managing enterprise security; providing temporary use of non-downloadable computer software for digital security; providing temporary use of non-downloadable computer software and non-downloadable software platform, all for monitoring enterprise networks and computer systems to protect against malicious attacks; providing temporary use of non-downloadable computer software for monitoring data and communications for security purposes; providing temporary use of non-downloadable computer software for protecting private information on enterprise networks; providing temporary use of non-downloadable computer software for implementing computer, software and network security measures; providing temporary use of non-downloadable computer software for monitoring and detecting security breaches; providing temporary use of non-downloadable computer software that provides intrusion alert, threat protection and other security functions; providing temporary use of non-downloadable anti-malware software applications; providing temporary use of non-downloadable computer software for providing network, Internet, and computer security; providing temporary use of non-downloadable computer software for scanning, detecting, remediating and removing viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats and other malware; providing temporary use of non-downloadable Internet security software, including namely, computer software for use in the monitoring and control of computer and online activity; providing temporary use of non-downloadable computer software for identifying and preventing malicious attacks on, and unauthorized activities and intrusions in computers, computer systems, networks, hardware, software applications, digital devices, and mobile devices; providing temporary use of non-downloadable computer software for providing secure networks; providing temporary use of non-downloadable computer software for security analytics; providing temporary use of non-downloadable computer software for network traffic analysis; providing temporary use of non-downloadable computer software for network detection and response; providing temporary use of non-downloadable computer software for threat investigations and incident response; providing temporary use of non-downloadable computer software for threat huntingClass 042 for information technology troubleshooting, namely, investigation, research and diagnosis of computer system and computer network threats; Computer consultation in the field of computer security to detect and assess information security vulnerability; computer services, namely, on-line scanning, detecting, quarantining and eliminating of viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats, malware and unauthorized data and programs on computers, computer systems, networks, hardware, software applications, digital devices, and mobile devices; computer security services for protecting and managing enterprise networks; computer security services, namely, restricting and detecting unauthorized access to enterprise computer networks; technical support and consulting services related to security and vulnerability of, and cyber-attacks and threats against computers, computer systems, networks, hardware, software applications, digital devices, digital data, and mobile devices; technical support and consulting services related to designing, developing, customizing, configuring, deploying, installing, maintaining, analyzing, integrating, repairing, and managing of cyber-security systems for others; technical support services in the nature of detecting and diagnosing computer hardware and software security problems and vulnerabilities, updating and maintenance of computer software relating to computer security and to prevention and mitigation of computer risks; cloud computing services featuring software and databases for use in computer security and prevention and mitigation of computer risks; computer security consultancy in the field of malware, intrusion and penetration testing and diagnosis of computers and networks to assess information technology security and vulnerability; application service provider (asp) featuring software for use for detection, blocking, and facilitating removal and remediation of viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats and other malware in computers, computer systems, networks, hardware, software applications, digital devices, and mobile digital devices; application service provider (asp) featuring software that provides secure virtual computer systems and virtual computing environments; providing temporary use of non-downloadable, artificial-intelligence based network security software that detects and prioritizes mal-intent and behavioral threats from internal and external sources and performs autonomous incident triage; providing temporary use of non-downloadable computer software for use in protecting and managing enterprise security; providing temporary use of non-downloadable computer software for digital security; providing temporary use of non-downloadable computer software and non-downloadable software platform, all for monitoring enterprise networks and computer systems to protect against malicious attacks; providing temporary use of non-downloadable computer software for monitoring data and communications for security purposes; providing temporary use of non-downloadable computer software for protecting private information on enterprise networks; providing temporary use of non-downloadable computer software for implementing computer, software and network security measures; providing temporary use of non-downloadable computer software for monitoring and detecting security breaches; providing temporary use of non-downloadable computer software that provides intrusion alert, threat protection and other security functions; providing temporary use of non-downloadable anti-malware software applications; providing temporary use of non-downloadable computer software for providing network, Internet, and computer security; providing temporary use of non-downloadable computer software for scanning, detecting, remediating and removing viruses, worms, trojans, adware, spyware, rootkits, backdoors, zero-day attacks, data exfiltration, phishing, bots, time bombs, cyber-attacks, malicious attacks, advanced persistent threats and other malware; providing temporary use of non-downloadable Internet security software, including namely, computer software for use in the monitoring and control of computer and online activity; providing temporary use of non-downloadable computer software for identifying and preventing malicious attacks on, and unauthorized activities and intrusions in computers, computer systems, networks, hardware, software applications, digital devices, and mobile devices; providing temporary use of non-downloadable computer software for providing secure networks; providing temporary use of non-downloadable computer software for security analytics; providing temporary use of non-downloadable computer software for network traffic analysis; providing temporary use of non-downloadable computer software for network detection and response; providing temporary use of non-downloadable computer software for threat investigations and incident response; providing temporary use of non-downloadable computer software for threat hunting
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 05/00/2017 and first used in commerce at least as early as 05/00/2017 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 037 for technical support and consulting services related to customizing, installing, maintaining and repairing cyber-security computer hardware systems for others
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 05/00/2017 and first used in commerce at least as early as 05/00/2017 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 037 . The specimen(s) submitted consists of a datasheet listing the technical support services available to the user .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-1045820710-20191101124347767218_._AWAKE_class_37.pdf
Converted PDF file(s) ( 1 page)
Specimen File1

The applicant's current attorney information: Ariana G. Hiscott. Ariana G. Hiscott of COOLEY LLP, is located at

      1299 PENNSYLVANIA AVENUE NW, SUITE 700
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 334424-20000.

The email address is trademarks@cooley.com

The applicants proposed attorney information: Ariana G. Hiscott. Other appointed attorneys are Salsabil Ahmed, Susan Piascik Christoff, John W. Crittenden, Brian Focarino, Bobby A. Ghajar, Colette A. Ghazarian, Rebecca Givner-Forbes, Jeffrey H. Greene, Shannan Higgins, Brendan J. Hughes, Rose Mendenhall Kautz, Judd D. Lauter, Lori A. Levine, John Paul Oleksiuk, Anne H. Peck, Marcus D. Peterson, Elisa Rosen, Dina Roumiantseva, Shane Rumbaugh, Jane van Benten, and Colleen Wellington-Caban. Ariana G. Hiscott of COOLEY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1299 PENNSYLVANIA AVENUE NW, SUITE 700
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 334424-20000.

The email address is trademarks@cooley.com

Ariana G. Hiscott 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: ARIANA G. HISCOTT. ARIANA G. HISCOTT of COOLEY LLP, is located at

      1299 PENNSYLVANIA AVENUE NW, SUITE 700
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 334424-20000.

The email address is trademarks@cooley.com; ahiscott@cooley.com; myoung@cooley.com; jcrittenden@cooley.com

The applicants proposed correspondence information: Ariana G. Hiscott. Ariana G. Hiscott of COOLEY LLP, is located at

      1299 PENNSYLVANIA AVENUE NW, SUITE 700
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 334424-20000.

The email address is trademarks@cooley.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: / Rahul Kashyap/      Date: 11/05/2019
Signatory's Name: Rahul Kashyap
Signatory's Position: CEO

Response Signature
Signature: /John W. Crittenden/     Date: 11/05/2019
Signatory's Name: John W. Crittenden
Signatory's Position: Attorney of record, Member, State Bar of California

Signatory's Phone Number: 415 693-2090

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:    ARIANA G. HISCOTT
   COOLEY LLP
   
   1299 PENNSYLVANIA AVENUE NW, SUITE 700
   WASHINGTON, District of Columbia 20004
Mailing Address:    Ariana G. Hiscott
   COOLEY LLP
   1299 PENNSYLVANIA AVENUE NW, SUITE 700
   WASHINGTON, District of Columbia 20004
        
RAM Sale Number: 88349521
RAM Accounting Date: 11/05/2019
        
Serial Number: 88349521
Internet Transmission Date: Tue Nov 05 13:24:46 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2019110513244683
3411-88349521-700bb10ab479ebb4b58ae5e9c9
140562bfa17cf678ea0c0a22937ef89c459a6-DA
-24469894-20191101124347767218