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. 88472833 PARASOFT SELENIC(Standard Characters, see http://uspto.report/TM/88472833/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 DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORS
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 DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORS; DOWNLOADABLE SOFTWARE FOR DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORSClass 009 for DOWNLOADABLE SOFTWARE FOR DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORS
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 SOFTWARE AS A SERVICE FOR DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORS
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 AS A SERVICE FOR DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORS; SOFTWARE AS A SERVICE FEATURING SOFTWARE FOR DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORSClass 042 for SOFTWARE AS A SERVICE FEATURING SOFTWARE FOR DETECTING AND CORRECTING COMPUTER PROGRAMMING ERRORS
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 AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: PARASOFT SELENIC, a corporation of California, having an address of
      101 East Huntington Drive, Second Floor
      Monrovia, California 91016-3414
      United States

Proposed: PARASOFT CORPORATION, a corporation of California, having an address of
      101 East Huntington Drive, Second Floor
      Monrovia, California 91016-3414
      United States

The applicant's current attorney information: Raymond R. Tabandeh. Raymond R. Tabandeh of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is located at

      P.O. BOX 29001
      GLENDALE, California 91209-9001
      US
The docket/reference number is 175530.

The phone number is 626-795-9900.

The fax number is 626-577-8800.

The email address is pto@lrrc.com

The applicants proposed attorney information: Raymond R. Tabandeh. Raymond R. Tabandeh of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      P.O. BOX 29001
      GLENDALE, California 91209-9001
      United States
The docket/reference number is 175530.

The phone number is 626-795-9900.

The fax number is 626-577-8800.

The email address is pto@lrrc.com

Raymond R. Tabandeh 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: RAYMOND R. TABANDEH. RAYMOND R. TABANDEH of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is located at

      P.O. BOX 29001
      GLENDALE, California 91209-9001
      US
The docket/reference number is 175530.

The phone number is 626-795-9900.

The fax number is 626-577-8800.

The email address is pto@lrrc.com

The applicants proposed correspondence information: Raymond R. Tabandeh. Raymond R. Tabandeh of LEWIS ROCA ROTHGERBER CHRISTIE LLP, is located at

      P.O. BOX 29001
      GLENDALE, California 91209-9001
      United States
The docket/reference number is 175530.

The phone number is 626-795-9900.

The fax number is 626-577-8800.

The email address is pto@lrrc.com

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 2004140, 3833825, 3643594, and others.


Miscellaneous Statement
Applicant's name was unintentionally incorrectly specified, which is now corrected


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: /Raymond Tabandeh/      Date: 09/18/2019
Signatory's Name: Raymond R. Tabandeh
Signatory's Position: Attorney of record,CA bar member,Reg.No.43945
Signatory's Phone Number: 626-795-9900


Response Signature
Signature: /Raymond Tabandeh/     Date: 09/18/2019
Signatory's Name: Raymond R. Tabandeh
Signatory's Position: Attorney of record,CA bar member,Reg.No.43945

Signatory's Phone Number: 626-795-9900

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:    RAYMOND R. TABANDEH
   LEWIS ROCA ROTHGERBER CHRISTIE LLP
   
   P.O. BOX 29001
   GLENDALE, California 91209-9001
Mailing Address:    Raymond R. Tabandeh
   LEWIS ROCA ROTHGERBER CHRISTIE LLP
   P.O. BOX 29001
   GLENDALE, California 91209-9001
        
Serial Number: 88472833
Internet Transmission Date: Wed Sep 18 18:25:22 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20190918182522021
753-88472833-6101978cc4d0cfc5341a799b2cf
1f79993434c230bca855345b7665bbfbd9fb5-N/
A-N/A-20190918182012801261