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. 88408057 COGNISENSE(Standard Characters, see http://uspto.report/TM/88408057/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of a pdf titled COGNISENSE Office Action Response has been attached.
Original PDF file:
evi_19294203253-20191101183232344239_._COGNISENSE_Office_Action_Response.pdf
Converted PDF file(s) ( 17 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Downloadable computer software for capturing geo-located quality of service information, configuration data, performance management data, fault management data cell traces and probe data relating to network, subscriber and handset performance from a mobile network; downloadable computer software for analysing data and presenting actionable insights to aid engineering analytics relating to network, subscriber and handset performance and business analytics relating to mobile network subscriber's usage
Original Filing Basis:
The applicant, 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, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Proposed:
Tracked Text Description: Downloadable computer software for capturing geo-located quality of service information, configuration data, performance management data, fault management data cell traces and probe data relating to network, subscriber and handset performance from a mobile network; downloadable computer software for analysing data and presenting actionable insights to aid engineering analytics relating to network, subscriber and handset performance and business analytics relating to mobile network subscriber's usage; none of the foregoing to include administering a diagnostic test for cognitive assessmentClass 009 for Downloadable computer software for capturing geo-located quality of service information, configuration data, performance management data, fault management data cell traces and probe data relating to network, subscriber and handset performance from a mobile network; downloadable computer software for analysing data and presenting actionable insights to aid engineering analytics relating to network, subscriber and handset performance and business analytics relating to mobile network subscriber's usage; none of the foregoing to include administering a diagnostic test for cognitive assessment
Deleted Filing Basis: 1(a)
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 Providing temporary use of web-based software for capturing geo-located quality of service information, configuration data, performance management data, fault management data cell traces and probe data relating to network, subscriber and handset performance from a mobile network; Providing temporary use of web-based software for analysing data and presenting actionable insights to aid engineering analytics relating to network, subscriber and handset performance and business analytics relating to mobile network subscriber's usage
Original Filing Basis:
The applicant, 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, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Proposed:
Tracked Text Description: Providing temporary use of web-based software for capturing geo-located quality of service information, configuration data, performance management data, fault management data cell traces and probe data relating to network, subscriber and handset performance from a mobile network; Providing temporary use of web-based software for analysing data and presenting actionable insights to aid engineering analytics relating to network, subscriber and handset performance and business analytics relating to mobile network subscriber's usage; none of the foregoing to include administering a diagnostic test for cognitive assessmentClass 042 for Providing temporary use of web-based software for capturing geo-located quality of service information, configuration data, performance management data, fault management data cell traces and probe data relating to network, subscriber and handset performance from a mobile network; Providing temporary use of web-based software for analysing data and presenting actionable insights to aid engineering analytics relating to network, subscriber and handset performance and business analytics relating to mobile network subscriber's usage; none of the foregoing to include administering a diagnostic test for cognitive assessment
Deleted Filing Basis: 1(a)
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: Rebecca A. Liebowitz. Rebecca A. Liebowitz of VENABLE LLP, is located at

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      US
The docket/reference number is 42749-502558.

The phone number is 202-344-4976.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com

The applicants proposed attorney information: Rebecca A. Liebowitz. Other appointed attorneys are Andrew D. Price, Marjorie W. Norman, Kristen S. Ruisi, Halle B. Markus, Steven B. Powell, Paula E. Hopkins, Sean T. Phelan, Catherine Mitros, Michael Hirsch, Kelly L. Williams. Rebecca A. Liebowitz of VENABLE 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

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      United States
The docket/reference number is 42749-502558.

The phone number is 202-344-4976.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com

Rebecca A. Liebowitz 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: REBECCA A. LIEBOWITZ. REBECCA A. LIEBOWITZ of VENABLE LLP, is located at

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      US
The docket/reference number is 42749-502558.

The phone number is 202-344-4976.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com; rliebowitz@venable.com; cmitros@venable.com; pjmiles@venable.com

The applicants proposed correspondence information: Rebecca A. Liebowitz. Rebecca A. Liebowitz of VENABLE LLP, is located at

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      United States
The docket/reference number is 42749-502558.

The phone number is 202-344-4976.

The fax number is 202-344-8300.

The email address is trademarkdocket@venable.com; rliebowitz@venable.com; cmitros@venable.com; pjmiles@venable.com

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_19294203253-183232344_._COGNISENSE_Declaration.pdf
Converted PDF file(s) (1 page)
Signature File1
Signatory's Name: Philip Giuntini
Signatory's Position: President

Response Signature
Signature: /Catherine Mitros/     Date: 11/01/2019
Signatory's Name: Catherine Mitros
Signatory's Position: Associate Attorney, Venable LLP, DC Bar Member

Signatory's Phone Number: 202-344-4998

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:    REBECCA A. LIEBOWITZ
   VENABLE LLP
   
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
Mailing Address:    Rebecca A. Liebowitz
   VENABLE LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
        
Serial Number: 88408057
Internet Transmission Date: Fri Nov 01 18:44:53 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201911011844532
02443-88408057-700c146d645cb3e2671d84055
12ba5193ca36db462e95587c0cf195f4a247a6e-
N/A-N/A-20191101183232344239