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. 88383846 PRIVOWNY APP(Standard Characters, see http://uspto.report/TM/88383846/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 Software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; database privacy management software, namely, software for filtering access to databases using criteria determined by the user; computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
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: Software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; Downloadable and/or recorded computer software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; downloadable and/or recorded computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; database privacy management software, namely, software for filtering access to databases using criteria determined by the user; database privacy management software, namely, downloadable and/or recorded computer software for filtering access to databases using criteria determined by the user; computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites; downloadable and/or recorded computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websitesClass 009 for Downloadable and/or recorded computer software for personal and private identity data management and data management of personal and private data relating to user behavior on websites and mobile applications; downloadable and/or recorded computer software for personal and private identity data management and data management of personal and private data relating to user behavior on computer and telecommunications networks; database privacy management software, namely, downloadable and/or recorded computer software for filtering access to databases using criteria determined by the user; downloadable and/or recorded computer software for storing and retrieving login credentials securely and generating strong passwords, for blocking unwanted third party advertisements, for controlling access to users' email addresses when filling out marketing forms or registering for goods and services online, and for tracking personal and private identity data entered on websites and for tracking personal and private data relating to user behavior entered on websites
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, electronically gathering, analyzing, and formatting data to allow users to manage personal and private data on computer and telecommunications networks
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, electronically gathering, analyzing, and formatting data to allow users to manage personal and private data on computer and telecommunications networks; Computer services, namely, cloud computing featuring software for electronically gathering, analyzing, and formatting personal and private identity data to allow users to manage that data on computer and telecommunications networksClass 042 for Computer services, namely, cloud computing featuring software for electronically gathering, analyzing, and formatting personal and private identity data to allow users to manage that data on computer and telecommunications networks
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: Harold Milstein. Harold Milstein of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      379 LYTTON AVENUE
      PALO ALTO, California 94301
      US
The docket/reference number is 24RX-155848.

The phone number is 650-815-2600.

The fax number is 650-815-2601.

The email address is svtmdocketing@sheppardmullin.com

The applicants proposed attorney information: Harold Milstein. Other appointed attorneys are Chelseaa Bush. Harold Milstein of SHEPPARD MULLIN RICHTER & HAMPTON 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

      379 LYTTON AVENUE
      PALO ALTO, California 94301
      United States
The docket/reference number is 24RX-155848.

The phone number is 650-815-2600.

The fax number is 650-815-2601.

The email address is svtmdocketing@sheppardmullin.com

Harold Milstein 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: HAROLD MILSTEIN. HAROLD MILSTEIN of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      379 LYTTON AVENUE
      PALO ALTO, California 94301
      US
The docket/reference number is 24RX-155848.

The phone number is 650-815-2600.

The fax number is 650-815-2601.

The email address is svtmdocketing@sheppardmullin.com

The applicants proposed correspondence information: Harold Milstein. Harold Milstein of SHEPPARD MULLIN RICHTER & HAMPTON LLP, is located at

      379 LYTTON AVENUE
      PALO ALTO, California 94301
      United States
The docket/reference number is 24RX-155848.

The phone number is 650-815-2600.

The fax number is 650-815-2601.

The email address is svtmdocketing@sheppardmullin.com

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


Miscellaneous Statement
Applicant submits that very similar language to "Computer services, namely, cloud computing featuring software for electronically gathering, analyzing, and formatting personal and private identity data to allow users to manage that data on computer and telecommunications networks" was accepted in its application serial no. 88294503 and Applicant requests that the language be accepted in this case.


SIGNATURE(S)
Response Signature
Signature: /ChelseaaBush/     Date: 09/12/2019
Signatory's Name: Chelseaa Bush
Signatory's Position: Attorney for Applicant, CA bar member

Signatory's Phone Number: 650-815-2600

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:    HAROLD MILSTEIN
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   
   379 LYTTON AVENUE
   PALO ALTO, California 94301
Mailing Address:    Harold Milstein
   SHEPPARD MULLIN RICHTER & HAMPTON LLP
   379 LYTTON AVENUE
   PALO ALTO, California 94301
        
Serial Number: 88383846
Internet Transmission Date: Thu Sep 12 17:32:49 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-201909121732498424
18-88383846-61062da8e0211777444e88d34f5b
698e359be77991ca9e53252271c7ae35a6af2-N/
A-N/A-20190912172136350961