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. 88421657 GEMINI (Stylized and/or with Design, see http://uspto.report/TM/88421657/mark.png) has been amended as follows:

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

Arguments, Declaration, and Exhibits enclosed

EVIDENCE
Evidence in the nature of arguments, Declaration of Rose Kautz, and exhibits has been attached.
Original PDF file:
evi_249421206-20200107163147508472_._GEMINI_Design_-_OAR.pdf
Converted PDF file(s) ( 16 pages)
Evidence-1
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Original PDF file:
evi_249421206-20200107163147508472_._GEMINI_Design_-_Kautz_Decl.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_249421206-20200107163147508472_._EXHIBITS_A-Q.pdf
Converted PDF file(s) ( 72 pages)
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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 use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence
Original Filing Basis:
Proposed:
Tracked Text Description: Downloadable computer software for use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence; Recorded computer software for use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence, none of the foregoing for use in connection with energy productionClass 009 for Recorded computer software for use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence, none of the foregoing for use in connection with energy production
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, 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 application filing date. 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. The mark was first used at least as early as 06/00/2017 and first used in commerce at least as early as 06/00/2017 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 009 . The specimen(s) submitted consists of photos showing the mark with goods contained within .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-249421206-20200107163147508472_._GEMINI_Design_-_Class_9_-_Specimen.pdf
Converted PDF file(s) ( 5 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SaaS) services featuring software for use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence
Original Filing Basis:
Proposed:
Tracked Text Description: Software as a service (SaaS) services featuring software for use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence; Software as a service (SaaS) services featuring software for use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence, none of the foregoing for use in connection with energy productionClass 042 for Software as a service (SaaS) services featuring software for use in enterprise data collection, transmission, visualization, integration, analysis, management, and storage using machine learning and artificial intelligence, none of the foregoing for use in connection with energy production
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: Anne H. Peck. Anne H. Peck of COOLEY LLP, is located at

      SUITE 700
      1299 PENNSYLVANIA AVENUE NW
      WASHINGTON, District of Columbia 20004
      US

The phone number is 650-843-5096.

The email address is trademarks@cooley.com

The applicants proposed attorney information: Anne H. Peck. Other appointed attorneys are Salsabil Ahmed, Susan Piascik Christoff, John W. Crittenden, Brian Focarino, Bobby A. Ghajar, Colette A. Ghazarian, Rebecca Givner-Forbes, Katherine E. Green, Jeffrey H. Greene, Kelley B. Harrington, Shannan Higgins, Ariana G. Hiscott, Brendan J. Hughes, Rose Mendenhall Kautz, Judd D. Lauter, Lori A. Levine, John Paul Oleksiuk, Marcus D. Peterson, Elisa Rosen, Dina Roumiantseva, Shane Rumbaugh, Jane van Benten, and Colleen Wellington-Caban. Anne H. Peck of Cooley 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

      1299 Pennsylvania Avenue, NW, Suite 700
      Washington, District of Columbia 20004
      United States
The docket/reference number is 333123-20000.

The phone number is 650-843-5096.

The fax number is (202) 842-7899.

The email address is trademarks@cooley.com

Anne H. Peck 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: ANNE H. PECK. ANNE H. PECK of COOLEY LLP, is located at

      SUITE 700
      1299 PENNSYLVANIA AVENUE NW
      WASHINGTON, District of Columbia 20004
      US

The phone number is 650-843-5096.

The email address is trademarks@cooley.com; peckah@cooley.com; jlauter@cooley.com; eyu@cooley.com; eortiz@cooley.com

The applicants proposed correspondence information: Anne H. Peck. Anne H. Peck of Cooley LLP, is located at

      1299 Pennsylvania Avenue, NW, Suite 700
      Washington, District of Columbia 20004
      United States
The docket/reference number is 333123-20000.

The phone number is 650-843-5096.

The fax number is (202) 842-7899.

The email address is trademarks@cooley.com

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a highly stylized version of the term GEMINI in which the letter G is represented by a circle with an unshaded horizontal bar intersecting the letter G and extending through the letter E, which is represented as a thick rectangle. The letter M is represented as two triangles connected at the bottom. Each letter I is represented by a slender rectangle. The letter N is shown as two triangles separated by a diagonal space. The point of one triangle faces up and the point of the other triangle faces down.

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: /Chris Seybold/      Date: 01/07/2020
Signatory's Name: Chris Seybold
Signatory's Position: Chief Financial Officer
Signatory's Phone Number: N/A


Response Signature
Signature: /Rose Kautz/     Date: 01/07/2020
Signatory's Name: Rose Kautz
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 3108836422

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:    ANNE H. PECK
   COOLEY LLP
   SUITE 700
   1299 PENNSYLVANIA AVENUE NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Anne H. Peck
   Cooley LLP
   1299 Pennsylvania Avenue, NW, Suite 700
   Washington, District of Columbia 20004
        
Serial Number: 88421657
Internet Transmission Date: Tue Jan 07 18:07:14 EST 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200107180714835
433-88421657-700a4586f31bce1147850d679a8
65479dd31712dff3142fba303fe827cb4276bd-N
/A-N/A-20200107170730458878