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. 88396206 TRANSFORMING OUR BUSINESS TO TRANSFORM THE PLANET(Standard Characters, see http://uspto.report/TM/88396206/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Technical consulting in the fields of mining and mining automation; Implementation of robotics and remote operations in the field of mining

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for mining and mining automation processes, including the integration of advanced analytics with autonomous mine equipment
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1958012 filed 04/17/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software for mining and mining automation processes, including the integration of advanced analytics with autonomous mine equipment; Downloadable computer software for mining and mining automation process, namely, downloadable software for the integration of advanced analytics with autonomous mine equipmentClass 009 for Downloadable computer software for mining and mining automation process, namely, downloadable software for the integration of advanced analytics with autonomous mine equipment
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1958012 filed 04/17/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 037 for Providing information in the field of mining including information on mining automation, operations and technological advancements and innovations over a global computer network
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1958012 filed 04/17/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Providing information in the field of mining including information on mining automation, operations and technological advancements and innovations over a global computer network; Technical consulting in the fields of mining extraction and mining extraction automation; Mining extraction of lead, copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining extraction, namely, information concerning mining extraction automation, operations, and technological advancements and innovations over a global computer networkClass 037 for Technical consulting in the fields of mining extraction and mining extraction automation; Mining extraction of lead, copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining extraction, namely, information concerning mining extraction automation, operations, and technological advancements and innovations over a global computer network
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1958012 filed 04/17/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Research and development in the fields of mining and mining automation; Platform as a service featuring computer software platforms in the fields of mining and mining automation including real time analysis and control of assets and operations; Hosting a digital platform in the fields of mining and mining automation
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1958012 filed 04/17/2019]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Research and development in the fields of mining and mining automation; Platform as a service featuring computer software platforms in the fields of mining and mining automation including real time analysis and control of assets and operations; Platform as a service featuring computer software platforms for real time analysis and control of assets and mining logistical operations in the fields of mining and mining automation; Hosting a digital platform in the fields of mining and mining automation; Application service provider, namely, hosting a digital platform comprised of applications, software and web sites for others in the fields of mining and mining automation; Mining exploration services in the field of lead, copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining exploration, namely, information concerning mining exploration automation, operations and technological advancements and innovations over a global computer network; Technical consulting in the field of mining explorationClass 042 for Research and development in the fields of mining and mining automation; Platform as a service featuring computer software platforms for real time analysis and control of assets and mining logistical operations in the fields of mining and mining automation; Application service provider, namely, hosting a digital platform comprised of applications, software and web sites for others in the fields of mining and mining automation; Mining exploration services in the field of lead, copper, zinc, germanium, indium, cadmium, silver, molybdenum, and metallurgical and thermal coal provided via robotics; Providing information in the field of mining exploration, namely, information concerning mining exploration automation, operations and technological advancements and innovations over a global computer network; Technical consulting in the field of mining exploration
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1958012 filed 04/17/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Elizabeth K. Rucki. Elizabeth K. Rucki of BAKER BOTTS L.L.P., is located at

      SUITE 900
      2001 ROSS AVENUE
      DALLAS, Texas 75201
      US
The docket/reference number is 064483.Teck.

The phone number is 214-953-6500.

The fax number is 214-661-4899.

The email address is daltmdept@bakerbotts.com

The applicants proposed attorney information: Elizabeth K. Rucki. Other appointed attorneys are Paul Reilly; Tyler Beas. Elizabeth K. Rucki of BAKER BOTTS L.L.P., 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 900
      2001 ROSS AVENUE
      DALLAS, Texas 75201
      United States
The docket/reference number is 064483.Teck.

The phone number is 214-953-6500.

The fax number is 214-661-4899.

The email address is daltmdept@bakerbotts.com

Elizabeth K. Rucki 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: ELIZABETH K. RUCKI. ELIZABETH K. RUCKI of BAKER BOTTS L.L.P., is located at

      SUITE 900
      2001 ROSS AVENUE
      DALLAS, Texas 75201
      US
The docket/reference number is 064483.Teck.

The phone number is 214-953-6500.

The fax number is 214-661-4899.

The email address is daltmdept@bakerbotts.com; elizabeth.rucki@bakerbotts.com; laura.johnson@bakerbotts.com

The applicants proposed correspondence information: Elizabeth K. Rucki. Elizabeth K. Rucki of BAKER BOTTS L.L.P., is located at

      SUITE 900
      2001 ROSS AVENUE
      DALLAS, Texas 75201
      United States
The docket/reference number is 064483.0140.

The phone number is 214-953-6500.

The fax number is 214-661-4899.

The email address is daltmdept@bakerbotts.com; elizabeth.rucki@bakerbotts.com; cecily.porterfield@bakerbotts.com

SIGNATURE(S)
Response Signature
Signature: /Elizabeth K. Rucki/     Date: 11/11/2019
Signatory's Name: Elizabeth K. Rucki
Signatory's Position: Attorney of Record, a Texas bar member of the law firm of Baker Botts LLP

Signatory's Phone Number: 2149536926

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:    ELIZABETH K. RUCKI
   BAKER BOTTS L.L.P.
   SUITE 900
   2001 ROSS AVENUE
   DALLAS, Texas 75201
Mailing Address:    Elizabeth K. Rucki
   BAKER BOTTS L.L.P.
   SUITE 900
   2001 ROSS AVENUE
   DALLAS, Texas 75201
        
Serial Number: 88396206
Internet Transmission Date: Mon Nov 11 13:27:43 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20191111132743711
674-88396206-700fcc4cd67d58aafc5dd6fa09f
5e255e7fddd45eece79c9a54dadf5d72577565-N
/A-N/A-20191111131853019820