TEAS Request Reconsideration after FOA

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 88365982 ALLOY(Standard Characters, see http://uspto.report/TM/88365982/mark.png) has been amended as follows:

EVIDENCE
Evidence has been attached: complete written response to final office action
Original PDF file:
evi_7112724124-2020070614 1247660318_._619T001A1-US _RFOA.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/00/2002 and first used in commerce at least as early as 03/00/2002 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Computer software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management; Computer software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management, the foregoing excluding computer software for use in data management for Business-to-Business and Application-to-Application integration activitiesClass 009 for Computer software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management, the foregoing excluding computer software for use in data management for Business-to-Business and Application-to-Application integration activities
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/00/2002 and first used in commerce at least as early as 03/00/2002 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 035 for Auditing services, namely, detecting, collecting, analyzing and reporting software, hardware and devices on a computer network
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/00/2002 and first used in commerce at least as early as 03/00/2002 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Auditing services, namely, detecting, collecting, analyzing and reporting software, hardware and devices on a computer network; Auditing services, namely, detecting, collecting, analyzing and reporting software, hardware and devices on a computer network, the foregoing services excluding data management services for Business-to-Business and Application-to-Application integration activitiesClass 035 for Auditing services, namely, detecting, collecting, analyzing and reporting software, hardware and devices on a computer network, the foregoing services excluding data management services for Business-to-Business and Application-to-Application integration activities
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/00/2002 and first used in commerce at least as early as 03/00/2002 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 042 for Software as a service (SAAS) services featuring software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management
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: Software as a service (SAAS) services featuring software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management; Software as a service (SAAS) services featuring software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management, the foregoing services excluding data management services for Business-to-Business and Application-to-Application integration activitiesClass 042 for Software as a service (SAAS) services featuring software for use in business management, customer management, asset inventory management, help desk service management, information technology management and network management, the foregoing services excluding data management services for Business-to-Business and Application-to-Application integration activities
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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Alloy Software, Inc., AKA Alloy Software, a corporation of New Jersey, having an address of
      400 Broadacres Drive, Suite 100
      Bloomfield, New Jersey 07003
      United States

Proposed: Alloy Software, Inc., AKA Alloy Software, a corporation of New Jersey, having an address of
      400 Broadacres Drive, Suite 100
      Bloomfield, New Jersey 07003
      United States
      Email Address: XXXX
Correspondence Information (current):
      John H. Choi
      PRIMARY EMAIL FOR CORRESPONDENCE: jchoi@jchoilaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 619T001A1-US.
Correspondence Information (proposed):
      John H. Choi
      PRIMARY EMAIL FOR CORRESPONDENCE: jchoi@jchoilaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): email@jchoilaw.com

The docket/reference number is 619T001A1-US.

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

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /John H. Choi/     Date: 07/06/2020
Signatory's Name: John H. Choi
Signatory's Position: Attorney of Record, NJ Bar Member

Signatory's Phone Number: 201.580.6600

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    John H. Choi
   JOHN H. CHOI & ASSOCIATES LLC
   
   65 CHALLENGER ROAD, SUITE 100
   RIDGEFIELD PARK, New Jersey 07660
Mailing Address:    John H. Choi
   JOHN H. CHOI & ASSOCIATES LLC
   65 CHALLENGER ROAD, SUITE 100
   RIDGEFIELD PARK, New Jersey 07660
        
Serial Number: 88365982
Internet Transmission Date: Mon Jul 06 14:17:43 ET 2020
TEAS Stamp: USPTO/RFR-XX.XXX.XXX.XX-2020070614174397
7745-88365982-710ac842e0fbbe19288626a28a
1c1451679a2ae891a28c3cb214e5860dd5cdee4-
N/A-N/A-20200706141247660318