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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88427743 COGNIZANT (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8842774 3/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software for use in medical practice management, database management, managed health care plan management, health care insurance claim and policy adjudicating, health case management, health data profiling, data mining, data base management, data access and reporting, scheduling, decision support systems, general accounting, and exchanging data between different computer operating systems and hardware platforms; downloadable computer software for database management, data storage, data mining, data access and reporting, scheduling, data migration, data administration, and data analysis in the fields of health care, ambulatory care, managed care, life sciences, insurance, and financial services; downloadable computer software for use in business data integration, business data processing, business data analysis, and customer service; downloadable software for use in omnichannel marketing; downloadable software for enterprise automation, robotics and AI
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Downloadable computer software for use in medical practice management, database management, managed health care plan management, health care insurance claim and policy adjudicating, health case management, health data profiling, data mining, data base management, data access and reporting, scheduling, decision support systems, general accounting, and exchanging data between different computer operating systems and hardware platforms; downloadable computer software for database management, data storage, data mining, data access and reporting, scheduling, data migration, data administration, and data analysis in the fields of health care, ambulatory care, managed care, life sciences, insurance, and financial services; downloadable computer software for use in business data integration, business data processing, business data analysis, and customer service; downloadable computer software for use in business data integration, business data processing, business data analysis; downloadable computer software for use in customer service, namely, responding to customer inquiries for others in the field of health care, insurance claims, and medical practice management; downloadable software for enterprise automation, robotics and AI; downloadable software for use in omnichannel marketing; downloadable software for enterprise automation and AI, namely, using artificial intelligence for speech recognition knowledge reasoning, machine learning and computer vision.Class 009 for Downloadable computer software for use in medical practice management, database management, managed health care plan management, health care insurance claim and policy adjudicating, health case management, health data profiling, data mining, data base management, data access and reporting, scheduling, decision support systems, general accounting, and exchanging data between different computer operating systems and hardware platforms; downloadable computer software for database management, data storage, data mining, data access and reporting, scheduling, data migration, data administration, and data analysis in the fields of health care, ambulatory care, managed care, life sciences, insurance, and financial services; downloadable computer software for use in business data integration, business data processing, business data analysis; downloadable computer software for use in customer service, namely, responding to customer inquiries for others in the field of health care, insurance claims, and medical practice management; downloadable software for use in omnichannel marketing; downloadable software for enterprise automation and AI, namely, using artificial intelligence for speech recognition knowledge reasoning, machine learning and computer vision.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 035 for Business consulting and professional business consulting services in the field of business strategy, business initiatives, digital transformation, information technology, finance and accounting; business consulting services in the field of organizational change management; program management, namely, business services in the nature of business process re-engineering services for the implementation, adoption and maintenance of enterprise digital solutions; providing business advice, consulting, and information in the field of marketing, namely, research, evaluations, and analytics related to digital advertising, measuring advertising expenditures, measuring audience participation, and measuring conversion rates; advising on, designing, and developing creative advertising content for digital advertising services; advertising and business advising on the use of AI solutions and data analytics to measure effectiveness of digital advertising campaigns; advertising and business advising and consulting on the purchase and sale of digital media inventory for use in generating ad impressions; providing omnichannel marketing services and marketing strategy; development of business strategy and digital marketing strategy for business; development of eCommerce business strategy; development of platform-based business analytics solutions, namely, business consulting regarding the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions; advising on, designing, and developing business strategies for enterprise automation, robotics and AI; advising on business solutions for information management, namely, providing business information management advice; advising on, designing, and developing business strategies for digitization of services/sales; business data analysis; digital engineering, namely, business process re-engineering services and development of digital business processes; advising on the introduction of new products and sales channels; advising on, designing, and developing strategies for improving customer service and satisfaction; advising on, designing, and developing strategies for the transformation of business support services; business operations management; business advising on the application of intelligent systems to manufacturing and logistics operations, namely, manufacturing strategies and supply chain management; business analysis of business software application portfolios; designing and developing business processes to assist in compliance with regulatory obligations; providing business information via a website; advising on, designing, and developing business strategies for the management of front office, middle office and back office business functions; business process as a service (BPaaS) services featuring supply chain, human resources, marketing, business analytics, and business asset management outsourcing services; quality engineering namely, collection and analysis of quality metric data for business purposes; assurance transformation services, namely, quality management services in the nature of business management services for establishing business quality policy, and determining business means for implementing those policies to improve customer satisfaction; business consulting in the field of user acceptance, automation, performance testing and test data management; business management outsourcing (BMO) services; business process outsourcing (BPO) services, namely, outsourcing of business operations, human resources operations in the nature of serving as a human resources department for others, supply chain operations in the nature of supply chain operations management services, customer service operations in the nature of customer service management for others and claims processing in the nature of collecting and analyzing claims data from healthcare and insurance organizations for business purposes; business consulting and business management services in the fields of blockchain and cryptocurrency; compilation and analysis of business data in the field of blockchain technology and cryptocurrency
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Business consulting and professional business consulting services in the field of business strategy, business initiatives, digital transformation, information technology, finance and accounting; business consulting services in the field of organizational change management; program management, namely, business services in the nature of business process re-engineering services for the implementation, adoption and maintenance of enterprise digital solutions; providing business advice, consulting, and information in the field of marketing, namely, research, evaluations, and analytics related to digital advertising, measuring advertising expenditures, measuring audience participation, and measuring conversion rates; advising on, designing, and developing creative advertising content for digital advertising services; advertising and business advising on the use of AI solutions and data analytics to measure effectiveness of digital advertising campaigns; advertising and business advising and consulting on the purchase and sale of digital media inventory for use in generating ad impressions; providing omnichannel marketing services and marketing strategy; development of business strategy and digital marketing strategy for business; development of eCommerce business strategy; development of platform-based business analytics solutions, namely, business consulting regarding the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions; advising on, designing, and developing business strategies for enterprise automation, robotics and AI; advising on business solutions for information management, namely, providing business information management advice; advising on, designing, and developing business strategies for digitization of services/sales; business data analysis; digital engineering, namely, business process re-engineering services and development of digital business processes; advising on the introduction of new products and sales channels; advising on, designing, and developing strategies for improving customer service and satisfaction; advising on, designing, and developing strategies for the transformation of business support services; business operations management; business advising on the application of intelligent systems to manufacturing and logistics operations, namely, manufacturing strategies and supply chain management; business analysis of business software application portfolios; designing and developing business processes to assist in compliance with regulatory obligations; providing business information via a website; advising on, designing, and developing business strategies for the management of front office, middle office and back office business functions; business process as a service (BPaaS) services featuring supply chain, human resources, marketing, business analytics, and business asset management outsourcing services; quality engineering namely, collection and analysis of quality metric data for business purposes; assurance transformation services, namely, quality management services in the nature of business management services for establishing business quality policy, and determining business means for implementing those policies to improve customer satisfaction; business consulting in the field of user acceptance, automation, performance testing and test data management; business management outsourcing (BMO) services; business management outsourcing (BMO) services, namely, outsource service provider in the field of business management; business process outsourcing (BPO) services, namely, outsourcing of business operations, human resources operations in the nature of serving as a human resources department for others, supply chain operations in the nature of supply chain operations management services, customer service operations in the nature of customer service management for others and claims processing in the nature of collecting and analyzing claims data from healthcare and insurance organizations for business purposes; business process outsourcing (BPO) services, namely, namely, outsource service provider in the fields of business operations, human resources operations in the nature of serving as a human resources department for others, supply chain operations in the nature of supply chain operations management services, customer service operations in the nature of customer service management for others and claims processing in the nature of collecting and analyzing claims data from healthcare and insurance organizations for business purposes; business consulting and business management services in the fields of blockchain and cryptocurrency; compilation and analysis of business data in the field of blockchain technology and cryptocurrency; outsource service provider in the field of accounting for businesses.Class 035 for Business consulting and professional business consulting services in the field of business strategy, business initiatives, digital transformation, information technology, finance and accounting; business consulting services in the field of organizational change management; program management, namely, business services in the nature of business process re-engineering services for the implementation, adoption and maintenance of enterprise digital solutions; providing business advice, consulting, and information in the field of marketing, namely, research, evaluations, and analytics related to digital advertising, measuring advertising expenditures, measuring audience participation, and measuring conversion rates; advising on, designing, and developing creative advertising content for digital advertising services; advertising and business advising on the use of AI solutions and data analytics to measure effectiveness of digital advertising campaigns; advertising and business advising and consulting on the purchase and sale of digital media inventory for use in generating ad impressions; providing omnichannel marketing services and marketing strategy; development of business strategy and digital marketing strategy for business; development of eCommerce business strategy; development of platform-based business analytics solutions, namely, business consulting regarding the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions; advising on, designing, and developing business strategies for enterprise automation, robotics and AI; advising on business solutions for information management, namely, providing business information management advice; advising on, designing, and developing business strategies for digitization of services/sales; business data analysis; digital engineering, namely, business process re-engineering services and development of digital business processes; advising on the introduction of new products and sales channels; advising on, designing, and developing strategies for improving customer service and satisfaction; advising on, designing, and developing strategies for the transformation of business support services; business operations management; business advising on the application of intelligent systems to manufacturing and logistics operations, namely, manufacturing strategies and supply chain management; business analysis of business software application portfolios; designing and developing business processes to assist in compliance with regulatory obligations; providing business information via a website; advising on, designing, and developing business strategies for the management of front office, middle office and back office business functions; business process as a service (BPaaS) services featuring supply chain, human resources, marketing, business analytics, and business asset management outsourcing services; quality engineering namely, collection and analysis of quality metric data for business purposes; assurance transformation services, namely, quality management services in the nature of business management services for establishing business quality policy, and determining business means for implementing those policies to improve customer satisfaction; business consulting in the field of user acceptance, automation, performance testing and test data management; business management outsourcing (BMO) services, namely, outsource service provider in the field of business management; business process outsourcing (BPO) services, namely, namely, outsource service provider in the fields of business operations, human resources operations in the nature of serving as a human resources department for others, supply chain operations in the nature of supply chain operations management services, customer service operations in the nature of customer service management for others and claims processing in the nature of collecting and analyzing claims data from healthcare and insurance organizations for business purposes; business consulting and business management services in the fields of blockchain and cryptocurrency; compilation and analysis of business data in the field of blockchain technology and cryptocurrency; outsource service provider in the field of accounting for businesses.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 036 for Finance, accounting, and financial asset management outsourcing services for businesses
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Finance, accounting, and financial asset management outsourcing services for businesses; Finance and financial asset management outsourcing services for businesses, namely, outsource service provider in the fields of business finance procurement, business financial management and financial asset management.Class 036 for Finance and financial asset management outsourcing services for businesses, namely, outsource service provider in the fields of business finance procurement, business financial management and financial asset management.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, 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. The mark was first used at least as early as 07/25/2018 and first used in commerce at least as early as 07/25/2018 , and is now in use in such commerce. Correspondence Information (current):
      Ann K. Ford
      PRIMARY EMAIL FOR CORRESPONDENCE: dctrademarks@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Ann K. Ford
      PRIMARY EMAIL FOR CORRESPONDENCE: dctrademarks@dlapiper.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): alberto.zacapa@dlapiper.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /David M. Kramer/     Date: 10/26/2020
Signatory's Name: David M. Kramer
Signatory's Position: Attorney of record, DC Bar member

Signatory's Phone Number: 2027994153

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:    Ann K. Ford
   DLA PIPER LLP (US)
   
   500 EIGHTH STREET NW
   WASHINGTON, District of Columbia 20004
Mailing Address:    Ann K. Ford
   DLA PIPER LLP (US)
   500 EIGHTH STREET NW
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88427743
Internet Transmission Date: Mon Oct 26 19:15:17 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2020102619151760221
5-88427743-75058375289686435947a6c9b0307
78afb88e883529bba67bfb18b04bcbd8ca6b-N/A
-N/A-20201026180320635276