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. 88353062 CLOUDXPER (Stylized and/or with Design, see http://uspto.report/TM/88353062/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 Attached is a PDF response to the Office Action has been attached.
Original PDF file:
evi_20918088130-20191205162051891168_._CLOUDXPER_OAR.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Optical apparatus and instruments except for glasses and photographic apparatus; Downloadable video files; Downloadable electronic technical data sheets; Downloadable cloud computing software; Data storage media; Earphones for use with mobile telecommunication devices; Photographic apparatus and instruments; Eyeglasses; Humanoid robots with artificial intelligence; Electric audio and visual apparatus and instruments; Electrical controlling devices; Electricity measuring apparatus and instruments; Telecommunication machines and implements; Electronic control circuits; Electric batteries; Precision measuring apparatus; Computer software platforms; Cloud server; Computer software to access cloud
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: Optical apparatus and instruments except for glasses and photographic apparatus; Downloadable video files in the field of education related to cloud-computing and big data; Downloadable video files; Downloadable data files in the field of cloud-computing and big data; Downloadable electronic technical data sheets; Downloadable software for management of cloud computing service; Downloadable cloud computing software; Digital data storage apparatus in the field of cloud computing; Data storage media; Earphones for use with mobile telecommunication devices; Electronic apparatus for taking images; Photographic apparatus and instruments; Eyeglasses; Humanoid tactical robots with artificial intelligence; Humanoid robots with artificial intelligence; Smartphone, tablet, TV, laptop, desktop, digital signage; Electric audio and visual apparatus and instruments; Electronic controllers for data management and analysis; Electrical controlling devices; Electronic meters for measuring and analyzing electricity; Electricity measuring apparatus and instruments; Electronic apparatus for use in telecommunication for cloud computing and big data; Telecommunication machines and implements; Electronic controllers for managing cloud computing service; Electronic control circuits; Electric batteries for cloud computing service; Electric batteries; Electronic apparatus for measuring the precision of the cloud computing service; Precision measuring apparatus; Computer software platforms for cloud computing service; Computer software platforms; Computer server for cloud computing system; Cloud server; Computer software for access to cloud computing system; Computer software to access cloudClass 009 for Downloadable video files in the field of education related to cloud-computing and big data; Downloadable data files in the field of cloud-computing and big data; Downloadable software for management of cloud computing service; Digital data storage apparatus in the field of cloud computing; Earphones for use with mobile telecommunication devices; Electronic apparatus for taking images; Eyeglasses; Humanoid tactical robots with artificial intelligence; Smartphone, tablet, TV, laptop, desktop, digital signage; Electronic controllers for data management and analysis; Electronic meters for measuring and analyzing electricity; Electronic apparatus for use in telecommunication for cloud computing and big data; Electronic controllers for managing cloud computing service; Electric batteries for cloud computing service; Electronic apparatus for measuring the precision of the cloud computing service; Computer software platforms for cloud computing service; Computer server for cloud computing system; Computer software for access to cloud computing system
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 035 for Advertising and business advice; Advertising; Provision of business information via global computer networks; Retail store services featuring downloadable cloud computing software; Wholesale store services featuring data storage devices; Retail store services featuring data communications hardware; Compilation and systematization of information in databanks; Retail store services featuring software for use in database management; Statistical evaluations of marketing data; Business data analysis; Analysis of market research data; Provision of commercial information from on-line databases; Systemization of information into computer databases; Collection, systematization, compilation and analysis of business data and information stored in computer databases; Retail store services featuring cloud server
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: Advertising and business advice; Advertising and business advice relating cloud computing services; Advertising; Provision of business information via global computer networks; Retail store services featuring downloadable cloud computing software; Wholesale store services featuring data storage devices; Retail store services featuring data communications hardware; Compilation and systematization of information in databanks; Compilation and systematization of information in databanks for cloud computing system; Retail store services featuring software for use in database management; Statistical evaluations of marketing data; Business data analysis; Analysis of market research data; Provision of commercial information from on-line databases; Systemization of information into computer databases; Collection, systematization, compilation and analysis of business data and information stored in computer databases; Retail store services featuring cloud server; Retail store services featuring cloud server for cloud computingClass 035 for Advertising and business advice relating cloud computing services; Advertising; Provision of business information via global computer networks; Retail store services featuring downloadable cloud computing software; Wholesale store services featuring data storage devices; Retail store services featuring data communications hardware; Compilation and systematization of information in databanks for cloud computing system; Retail store services featuring software for use in database management; Statistical evaluations of marketing data; Business data analysis; Analysis of market research data; Provision of commercial information from on-line databases; Systemization of information into computer databases; Collection, systematization, compilation and analysis of business data and information stored in computer databases; Retail store services featuring cloud server for cloud computing
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 036 for Providing information and advice in the field of finance; Providing information relating to credit inquiries of enterprises; Rental of commercial facilities related to data center; Consulting and information concerning insurance; Real estate appraisal; Rental of business premises; Commercial real estate agency services; Real estate management services relating to commercial buildings; Providing information in the field of real estate via the Internet; Financial analysis and consultation
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 information and advice in the field of finance; Providing information relating to credit inquiries of enterprises; Providing information relating to corporate credit; Rental of commercial facilities related to data center; Rental of facilities of data centers for server hosting and cloud computing services; Consulting and information concerning insurance; Real estate appraisal; Rental of business premises; Commercial real estate agency services; Real estate management services relating to commercial buildings; Providing information in the field of real estate via the Internet; Financial analysis and consultationClass 036 for Providing information and advice in the field of finance; Providing information relating to corporate credit; Rental of facilities of data centers for server hosting and cloud computing services; Consulting and information concerning insurance; Real estate appraisal; Commercial real estate agency services; Real estate management services relating to commercial buildings; Providing information in the field of real estate via the Internet; Financial analysis and consultation
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 038 for Providing access to global computer networks and other computer networks; Providing access to a global computer information network; Rental of telecommunication devices and equipment enabling connection to networks; Providing on-line facilities for real-time interaction with other computer users; Rental of data communications equipment; Rental of broadcasting equipment; Rental of apparatus for the broadcast of video signals; Provision of communications facilities for interchange of electronic data; Providing access to cloud server; Rental of communication apparatus and implements; Rental of telecommunication machines and apparatus; Rental of telecommunications apparatus and installations
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 access to global computer networks and other computer networks; Providing access to a global computer information network; Rental of telecommunication devices and equipment enabling connection to networks; Providing on-line facilities for real-time interaction with other computer users; Rental of data communications equipment; Rental of broadcasting equipment; Rental of apparatus for the broadcast of video signals; Provision of communications facilities for interchange of electronic data; Provision of network equipment for interchange of electronic data in the field of cloud computing; Providing access to cloud server; Rental of communication apparatus and implements; Rental of telecommunication machines and apparatus; Rental of telecommunications apparatus and installationsClass 038 for Providing access to global computer networks and other computer networks; Providing access to a global computer information network; Rental of telecommunication devices and equipment enabling connection to networks; Providing on-line facilities for real-time interaction with other computer users; Rental of data communications equipment; Rental of broadcasting equipment; Rental of apparatus for the broadcast of video signals; Provision of network equipment for interchange of electronic data in the field of cloud computing; Providing access to cloud server; Rental of communication apparatus and implements
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 Architectural services; Preparation of technical reports; Rental of apparatus for data storage; Development of computer software for big data processing; Commercial space design; Providing Paa S (platform as a service); Development of new technology for others; Product design and development for others; Product design; Cloud computing services; Computer hardware development to access cloud; Computer software development to access cloud; Cloud computing
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: Architectural services; Preparation of technical reports; Preparation of reports related to management and analysis of cloud computing service; Rental of apparatus for data storage; Development of computer software for big data processing; Design of commercial space for cloud computing service; Commercial space design; Providing PaaS (platform as a service) for use in cloud-computing service, big data service, and database management service; Providing Paa S (platform as a service); Development of new technology for others in the field of cloud computing and big data services; Development of new technology for others; System designs for cloud-computing and big data services; Product design and development for others; Consulting services in the field of cloud-computing; Product design; Computer hardware development to access cloud; Cloud computing services; Computer software development to access cloud; Services for building cloud computing system; Cloud computingClass 042 for Architectural services; Preparation of reports related to management and analysis of cloud computing service; Development of computer software for big data processing; Design of commercial space for cloud computing service; Providing PaaS (platform as a service) for use in cloud-computing service, big data service, and database management service; Development of new technology for others in the field of cloud computing and big data services; System designs for cloud-computing and big data services; Consulting services in the field of cloud-computing; Computer hardware development to access cloud; Computer software development to access cloud; Services for building cloud computing system
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: Michael J. Frodsham. Michael J. Frodsham of WORKMAN NYDEGGER, is located at

      SUITE 1000
      60 EAST SOUTH TEMPLE
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 20723.24.

The phone number is 801-533-9800.

The fax number is 8013281707.

The email address is mfrodsham@wnlaw.com

The applicants proposed attorney information: Michael J. Frodsham. Other appointed attorneys are All attorneys of Workman Nydegger. Michael J. Frodsham of Workman Nydegger, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      Suite 1000
      60 East South Temple
      Salt Lake City, Utah 84111
      United States
The docket/reference number is 20723.24.

The phone number is 801-533-9800.

The fax number is 8013281707.

The email address is mfrodsham@wnlaw.com

Michael J. Frodsham 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: MICHAEL J. FRODSHAM. MICHAEL J. FRODSHAM of WORKMAN NYDEGGER, is located at

      SUITE 1000
      60 EAST SOUTH TEMPLE
      SALT LAKE CITY, Utah 84111
      US
The docket/reference number is 20723.24.

The phone number is 801-321-8854.

The fax number is 8013281707.

The email address is mfrodsham@wnlaw.com; docketing@wnlaw.com

The applicants proposed correspondence information: Michael J. Frodsham. Michael J. Frodsham of Workman Nydegger, is located at

      Suite 1000
      60 East South Temple
      Salt Lake City, Utah 84111
      United States
The docket/reference number is 20723.24.

The phone number is 801-321-8854.

The fax number is 8013281707.

The email address is MFrodsham@WNLaw.com; Docketing@WNLaw.com

SIGNATURE(S)
Response Signature
Signature: /Michale J. Frodsham/     Date: 12/05/2019
Signatory's Name: Michael J. Frodsham
Signatory's Position: US Attorney of Record

Signatory's Phone Number: 801-321-8854

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:    MICHAEL J. FRODSHAM
   WORKMAN NYDEGGER
   SUITE 1000
   60 EAST SOUTH TEMPLE
   SALT LAKE CITY, Utah 84111
Mailing Address:    Michael J. Frodsham
   Workman Nydegger
   Suite 1000
   60 East South Temple
   Salt Lake City, Utah 84111
        
Serial Number: 88353062
Internet Transmission Date: Thu Dec 05 17:00:07 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201912051700078
67239-88353062-700308484ac8ed3235beb4cdf
31272d39a77e54af2b3c78b845c39f29c7afae-N
/A-N/A-20191205162051891168