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. 88373576 DERWENT (Stylized and/or with Design, see http://uspto.report/TM/88373576/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 035 for Providing competitive intelligence research services; patent portfolio auditing services to identify opportunities for monetization of portfolio; administrative and paralegal support in the nature of patent docketing, patent application drafting and prosecution, and administrative and paralegal support related to patent litigation, Consulting services on the topic of monetization; IP licensing management
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 competitive intelligence research services; patent portfolio auditing services to identify opportunities for monetization of portfolio; patent portfolio business auditing and analysis services to identify opportunities for monetization of portfolio; administrative and paralegal support in the nature of patent docketing, patent application drafting and prosecution, and administrative and paralegal support related to patent litigation, Consulting services on the topic of monetization; business consulting services on the topic of monetization of Intellectual Property; IP licensing management; Intellectual Property licensing managementClass 035 for Providing competitive intelligence research services; patent portfolio business auditing and analysis services to identify opportunities for monetization of portfolio; business consulting services on the topic of monetization of Intellectual Property; Intellectual Property licensing 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Information services, namely, providing scientific and patent information to legal professionals, inventors, IP licensing specialists, companies focused on research and development or securing patent rights; and providing access to an interactive computer database in the field of scientific and patent information to legal professionals, inventors, IP licensing specialists, companies focused on research and development or securing patent rights
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: Information services, namely, providing scientific and patent information to legal professionals, inventors, IP licensing specialists, companies focused on research and development or securing patent rights; Providing access to an interactive computer database in the field of scientific and scientific patent information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights; and providing access to an interactive computer database in the field of scientific and patent information to legal professionals, inventors, IP licensing specialists, companies focused on research and development or securing patent rights; Scientific information services, namely, providing scientific patent information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rightsClass 042 for Providing access to an interactive computer database in the field of scientific and scientific patent information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights; Scientific information services, namely, providing scientific patent information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights
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 045 for Patent research; legal consulting services on the topic of patents; translation of documents related to the patent application and prosecution process; Consulting services in the nature of legal support services for IP licensing, prosecution strategy, and enforcement
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: Patent research; Patent legal research; legal consulting services on the topic of patents; translation of documents related to the patent application and prosecution process; Consulting services in the nature of legal support services for intellectual property licensing, prosecution strategy, and enforcement; Consulting services in the nature of legal support services for IP licensing, prosecution strategy, and enforcement; Administrative legal and paralegal support services in the nature of patent docketing, patent application drafting and prosecution, and administrative legal and paralegal support services related to patent litigation; Legal information services, namely, providing patent legal information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rightsClass 045 for Patent legal research; legal consulting services on the topic of patents; Consulting services in the nature of legal support services for intellectual property licensing, prosecution strategy, and enforcement; Administrative legal and paralegal support services in the nature of patent docketing, patent application drafting and prosecution, and administrative legal and paralegal support services related to patent litigation; Legal information services, namely, providing patent legal information to legal professionals, inventors, intellectual property licensing specialists, and companies focused on research and development of securing patent rights
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 hereby adds the following class of goods/services to the application:
New: Class 041 for Translation services related to patent application and prosecution documents
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: Alexandre A. Montagu. Alexandre A. Montagu of MONTAGULAW, P.C., is located at

      4TH FLOOR
      1120 AVENUE OF THE AMERICAS
      NEW YORK, New York 10036
      US

The phone number is 212-996-1287.

The fax number is 212-996-9579.

The email address is trademarks@montagulaw.com

The applicants proposed attorney information: Alexandre A. Montagu. Other appointed attorneys are Paula Upson and Thomas Walsh. Alexandre A. Montagu of MontaguLaw, P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      4th Floor
      1120 Avenue of the Americas
      New York, New York 10036
      United States

The phone number is 212-996-1287.

The fax number is 212-996-9579.

The email address is trademarks@montagulaw.com

Alexandre A. Montagu 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: ALEXANDRE A. MONTAGU. ALEXANDRE A. MONTAGU of MONTAGULAW, P.C., is located at

      4TH FLOOR
      1120 AVENUE OF THE AMERICAS
      NEW YORK, New York 10036
      US

The phone number is 212-996-1287.

The fax number is 212-996-9579.

The email address is trademarks@montagulaw.com

The applicants proposed correspondence information: Alexandre A. Montagu. Alexandre A. Montagu of MontaguLaw, P.C., is located at

      4th Floor
      1120 Avenue of the Americas
      New York, New York 10036
      United States

The phone number is 212-996-1287.

The fax number is 212-996-9579.

The email address is trademarks@montagulaw.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a teal sunburst with lines of staggering length followed by the black word DERWENT. The color white represents background that is not a part of the mark.

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: /pku/      Date: 12/10/2019
Signatory's Name: Paula K. Upson
Signatory's Position: Attorney of Record, CT Bar Member
Signatory's Phone Number: 212-996-1287


Response Signature
Signature: /pku/     Date: 12/10/2019
Signatory's Name: Paula K. Upson
Signatory's Position: Attorney of Record, CT Bar Member

Signatory's Phone Number: 212-996-1287

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:    ALEXANDRE A. MONTAGU
   MONTAGULAW, P.C.
   4TH FLOOR
   1120 AVENUE OF THE AMERICAS
   NEW YORK, New York 10036
Mailing Address:    Alexandre A. Montagu
   MontaguLaw, P.C.
   4th Floor
   1120 Avenue of the Americas
   New York, New York 10036
        
RAM Sale Number: 88373576
RAM Accounting Date: 12/10/2019
        
Serial Number: 88373576
Internet Transmission Date: Tue Dec 10 13:20:31 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912101320315
73269-88373576-70049b61d9732652e919f3639
e838117f62707ea3ed6a2d7811ff4b6e8c2145-D
A-20315517-20191210130557850844