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. 88352339 DAVIS(Standard Characters, see http://uspto.report/TM/88352339/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

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

EVIDENCE
Evidence in the nature of Arguments; Exs. A and B as referenced in arguments. has been attached.
Original PDF file:
evi_10823222131-20191202002551727284_._DAVIS_arguments.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_10823222131-20191202002551727284_._EX._A.pdf
Converted PDF file(s) ( 10 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Original PDF file:
evi_10823222131-20191202002551727284_._EX._B.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Interfaces for computers; downloadable graphical user interface software; Downloadable computer programs for user interface design; voice command and recognition software, speech to text conversion software; Downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; downloadable middleware for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; downloadable middleware for providing an interface between software applications and operating systems; downloadable computer software for use as an application programming interface (API); downloadable middleware for software application integration; downloadable middleware for providing an interface to artificial intelligence engine software
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: Interfaces for computers; downloadable graphical user interface software; Downloadable computer programs for user interface design; voice command and recognition software, speech to text conversion software; downloadable voice command and recognition software, downloadable speech to text conversion software; Downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; Downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language processing in chat applications and voice-enabled devices; downloadable middleware for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; downloadable middleware for providing an interface between software applications and operating systems; downloadable computer software for use as an application programming interface (API); downloadable middleware for software application integration; downloadable middleware for providing an interface to artificial intelligence engine softwareClass 009 for Interfaces for computers; downloadable graphical user interface software; Downloadable computer programs for user interface design; downloadable voice command and recognition software, downloadable speech to text conversion software; Downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language processing in chat applications and voice-enabled devices; downloadable middleware for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; downloadable middleware for providing an interface between software applications and operating systems; downloadable computer software for use as an application programming interface (API); downloadable middleware for software application integration; downloadable middleware for providing an interface to artificial intelligence engine software
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 Providing temporary use of online non-downloadable middleware for providing an interface between software applications and operating systems; Software as a service (SaaS) featuring computer software for use as an application programming interface (API); Software as a service (SaaS) featuring computer software for voice command and recognition software, speech to text conversion software; Providing online on-downloadable graphical user interface software, computer programs for user interface design, voice command and recognition software, and speech to text conversion software; providing online non-downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; providing online non-downloadable middleware for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; providing temporary use of online non-downloadable middleware for providing an interface between an artificial intelligence engine and software for application performance management and analytic software
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: Providing temporary use of online non-downloadable middleware for providing an interface between software applications and operating systems; Software as a service (SaaS) featuring computer software for use as an application programming interface (API); Software as a service (SaaS) featuring computer software for voice command and recognition software, speech to text conversion software; Software as a service (SaaS) featuring computer software for voice command and recognition software and speech to text conversion software; Providing online on-downloadable graphical user interface software, computer programs for user interface design, voice command and recognition software, and speech to text conversion software; providing online non-downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; providing online non-downloadable middleware for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; providing temporary use of online non-downloadable middleware for providing an interface between an artificial intelligence engine and software for application performance management and analytic software; providing temporary use of online non-downloadable middleware for providing an interface between an artificial intelligence engine and non-downloadable software for application performance management and non-downloadable analytic softwareClass 042 for Providing temporary use of online non-downloadable middleware for providing an interface between software applications and operating systems; Software as a service (SaaS) featuring computer software for use as an application programming interface (API); Software as a service (SaaS) featuring computer software for voice command and recognition software and speech to text conversion software; Providing online on-downloadable graphical user interface software, computer programs for user interface design, voice command and recognition software, and speech to text conversion software; providing online non-downloadable interface software using artificial intelligence for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; providing online non-downloadable middleware for enabling users to use voice commands and natural language in chat applications and voice-enabled devices; providing temporary use of online non-downloadable middleware for providing an interface between an artificial intelligence engine and non-downloadable software for application performance management and non-downloadable analytic software
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: Anessa Owen Kramer. Anessa Owen Kramer of HONIGMAN LLP, is located at

      39400 WOODWARD AVENUE, SUITE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      US

The email address is trademark@honigman.com

The applicants proposed attorney information: Anessa Owen Kramer. Other appointed attorneys are Jennifer M. Hetu, Julie E. Reitz, Angela Sujek, Nicole Kryzhan, Amanda M. Blackburn. Anessa Owen Kramer of HONIGMAN 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

      39400 WOODWARD AVE STE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      United States
The docket/reference number is 239523447663.

The phone number is 2485668452.

The fax number is 2485668453.

The email address is trademark@honigman.com

Anessa Owen Kramer 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: ANESSA OWEN KRAMER. ANESSA OWEN KRAMER of HONIGMAN LLP, is located at

      39400 WOODWARD AVENUE, SUITE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      US

The email address is trademark@honigman.com

The applicants proposed correspondence information: Anessa Owen Kramer. Anessa Owen Kramer of HONIGMAN LLP, is located at

      39400 WOODWARD AVE STE 101
      BLOOMFIELD HILLS, Michigan 48304-5151
      United States
The docket/reference number is 239523447663.

The phone number is 2485668452.

The fax number is 2485668453.

The email address is trademark@honigman.com

SIGNATURE(S)
Response Signature
Signature: /jmh/     Date: 12/02/2019
Signatory's Name: Jennifer M. Hetu
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 2485668452

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:    ANESSA OWEN KRAMER
   HONIGMAN LLP
   
   39400 WOODWARD AVENUE, SUITE 101
   BLOOMFIELD HILLS, Michigan 48304-5151
Mailing Address:    Anessa Owen Kramer
   HONIGMAN LLP
   39400 WOODWARD AVE STE 101
   BLOOMFIELD HILLS, Michigan 48304-5151
        
Serial Number: 88352339
Internet Transmission Date: Mon Dec 02 00:35:23 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201912020035236
48852-88352339-7001a4d299c9ff733d189c76e
e86079a7c6e6e4cb42077b49c8515d16e8ad6dc-
N/A-N/A-20191202002551727284