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)

---

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. 88368006 DELL EMC POWER ONE(Standard Characters, see http://uspto.report/TM/88368006/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 Computer hardware, namely, computer servers; storage servers; networking servers; computer hardware and software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units; computer software for data management, data storage, networking and virtualization; data backups and data restoration; computer network devices, namely, switches, routers, firewalls and telephony; computer hardware namely, firewalls and telephony; computer software for providing network and data security; computer software for capturing and storing streaming data
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: Computer hardware, namely, computer servers; storage servers; computer storage servers; networking servers; computer hardware and software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units; computer hardware and recorded computer software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units; computer software for data management, data storage, networking and virtualization; downloadable computer software for data management, data storage, networking and virtualization; data backups and data restoration; computer network devices, namely, switches, routers, firewalls and telephony; computer network devices, namely, switches, routers, firewalls and telephony in the nature of computer network interface devices; computer hardware namely, firewalls and telephony; computer hardware, namely, firewalls and telephony; computer software for providing network and data security; downloadable computer software for providing network and data security; computer software for capturing and storing streaming data; downloadable computer software for capturing and storing streaming data; all of the foregoing excluding calculation and analysis software, calculation templates, calculator software, user and training manuals for use therewith all sold as a unit, and batteries.Class 009 for Computer hardware, namely, computer servers; computer storage servers; networking servers; computer hardware and recorded computer software, namely, data storage and retrieval apparatus, comprising processors, networks, memories, operating software and data storage units; downloadable computer software for data management, data storage, networking and virtualization; data backups and data restoration; computer network devices, namely, switches, routers, firewalls and telephony in the nature of computer network interface devices; computer hardware, namely, firewalls and telephony; downloadable computer software for providing network and data security; downloadable computer software for capturing and storing streaming data; all of the foregoing excluding calculation and analysis software, calculation templates, calculator software, user and training manuals for use therewith all sold as a unit, and batteries.
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 Computer services, namely, computer consultation, customization of computer software, computer hardware and software design and development, deployment and installation of computer software; computer security services, namely, monitoring the security status of computer networks and generating security responses based on network intrusion alerts
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: Computer services, namely, computer consultation, customization of computer software, computer hardware and software design and development, deployment and installation of computer software; Computer services, namely, computer consultation in the nature of computer technology consultancy, customization of computer software, computer hardware and software design and development, deployment and installation of computer software, but excluding calculation and analysis software, calculation templates, calculator software, user and training manuals for use therewith all sold as a unit; computer security services, namely, monitoring the security status of computer networks and generating security responses based on network intrusion alerts; computer security services, namely, monitoring the security status of computer networks and generating security responses based on network intrusion alerts.Class 042 for Computer services, namely, computer consultation in the nature of computer technology consultancy, customization of computer software, computer hardware and software design and development, deployment and installation of computer software, but excluding calculation and analysis software, calculation templates, calculator software, user and training manuals for use therewith all sold as a unit; computer security services, namely, monitoring the security status of computer networks and generating security responses based on network intrusion alerts.
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: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      US
The docket/reference number is SKP-60770.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

The applicants proposed attorney information: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      United States
The docket/reference number is SKP-60770.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

JOHN P. MURTAUGH 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: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      US
The docket/reference number is SKP-60770.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com

The applicants proposed correspondence information: JOHN P. MURTAUGH. JOHN P. MURTAUGH of PEARNE & GORDON LLP, is located at

      1801 EAST 9TH STREET, SUITE 1200
      CLEVELAND, Ohio 44114-3108
      United States
The docket/reference number is SKP-60771.

The phone number is 216-579-1700.

The fax number is 216-579-6073.

The email address is tmdocket@pearne.com; lhawkins@pearne.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use POWER apart from the mark as shown.


Miscellaneous Statement


Original PDF file:
mis-162254154130-20191212173156859506_._60070_REMARKS.pdf
Converted PDF file(s) ( 2 pages)
Miscellaneous File1
Miscellaneous File2

SIGNATURE(S)
Response Signature
Signature: /jpmurtaugh/     Date: 12/12/2019
Signatory's Name: JOHN P. MURTAUGH
Signatory's Position: Attorney of Record/Ohio Bar Member

Signatory's Phone Number: 216-579-1700

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:    JOHN P. MURTAUGH
   PEARNE & GORDON LLP
   
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114-3108
Mailing Address:    JOHN P. MURTAUGH
   PEARNE & GORDON LLP
   1801 EAST 9TH STREET, SUITE 1200
   CLEVELAND, Ohio 44114-3108
        
Serial Number: 88368006
Internet Transmission Date: Thu Dec 12 17:38:30 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20191212173830
034736-88368006-700729378ab2b72603d4ca1c
6395a9e6887ff37388f64f8d3c7a8bfbb7551ab1
af0-N/A-N/A-20191212173156859506