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. 88474593 FRAME(Standard Characters, see http://uspto.report/TM/88474593/mark.png) has been amended as follows:

EVIDENCE
Evidence in the nature of arguments in response to the Section 2(e)(1) refusal and exhibits referenced therein has been attached.
Original PDF file:
evi_19294203253-20200306141938559602_._FRAME_-_OA_Response.pdf
Converted PDF file(s) ( 28 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
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Evidence-22
Evidence-23
Evidence-24
Evidence-25
Evidence-26
Evidence-27
Evidence-28

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Downloadable computer software for deploying, operating and managing a desktop-as-a-service platform for enterprises and the respective enterprise's end users; downloadable computer software for an enterprise desktop-as-a-service platform that is managed by a cloud software-as-a-service controller

Applicant proposes to amend the following:
Current: Class 042 for Providing online, non-downloadable computer software for building, deploying, operating, and managing a desktop-as-a-service platform for cloud-based applications and desktops for enterprises and end users; providing cloud computing services, namely, providing a cloud desktop-as-a-service platform for building, deploying, operating, and managing cloud-based applications and desktops for enterprises and end users; providing online, non-downloadable computer software for a cloud desktop-as-a-service platform; providing a cloud desktop-as-a-service platform
Proposed:
Tracked Text Description: Providing online, non-downloadable computer software for building, deploying, operating, and managing a desktop-as-a-service platform for cloud-based applications and desktops for enterprises and end users; providing cloud computing services, namely, providing a cloud desktop-as-a-service platform for building, deploying, operating, and managing cloud-based applications and desktops for enterprises and end users; providing cloud computing services, namely, providing a cloud-based desktop-as-a-service software platform for building, deploying, operating, and managing cloud-based applications and desktops for enterprises and end users; providing online, non-downloadable computer software for a cloud desktop-as-a-service platform; providing online, non-downloadable computer software for a cloud-based desktop-as-a-service software platform for others; providing a cloud desktop-as-a-service platform; providing cloud-computing services featuring software for a desktop-as-a-service platform for othersClass 042 for Providing online, non-downloadable computer software for building, deploying, operating, and managing a desktop-as-a-service platform for cloud-based applications and desktops for enterprises and end users; providing cloud computing services, namely, providing a cloud-based desktop-as-a-service software platform for building, deploying, operating, and managing cloud-based applications and desktops for enterprises and end users; providing online, non-downloadable computer software for a cloud-based desktop-as-a-service software platform for others; providing cloud-computing services featuring software for a desktop-as-a-service platform for others
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 03/00/2015 and first used in commerce at least as early as 03/00/2015 , and is now in use in such commerce.
In International Class 042, the mark was first used at least as early as 03/00/2015 and first used in commerce at least as early as 03/00/2015.

Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of a screenshot of Applicant's website advertising the services in connection with the mark.
"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:
SPU1-19294203253-20200306141938559602_._FRAME_Specimen.pdf
Converted PDF file(s) ( 4 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Nutanix, Inc., a corporation of Delaware, having an address of
      1740 Technology Drive, Suite 150
      San Jose, California 95110
      United States

Proposed: Nutanix, Inc., a corporation of Delaware, having an address of
      1740 Technology Drive, Suite 150
      San Jose, California 95110
      United States
      Email Address: IPdocketing@Venable.com

The owner's/holder's current attorney information: Andrew D. Price. Andrew D. Price of VENABLE LLP, is located at

      P.O. BOX 34385
      WASHINGTON, District of Columbia 20043-9998
      United States
The docket/reference number is 505267.
      The phone number is 202-344-8156.
      The fax number is 202.344.8300.
      The email address is trademarkdocket@venable.com

The owner's/holder's proposed attorney information: Andrew D. Price. Other appointed attorneys are Rebecca A. Liebowitz, Halle B. Markus, Steven B. Powell, Marjorie W. Norman, Catherine S. Mitros, Paula E. Hopkins, and Sean T. Phelan. Andrew D. Price 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 505267.
      The phone number is 202-344-8156.
      The fax number is 202.344.8300.
      The email address is trademarkdocket@venable.com

Andrew D. Price 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.Correspondence Information (current):
      ANDREW D. PRICE
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ADPrice@venable.com; HBMarkus@Venable.com; PJWyles@Venable.com

The docket/reference number is 505267.
Correspondence Information (proposed):
      Andrew D. Price
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarkdocket@venable.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ADPrice@venable.com; HBMarkus@Venable.com; PJWyles@Venable.com

The docket/reference number is 505267.

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)
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: /jameseparsons/      Date: 03/06/2020
Signatory's Name: James E. Parsons
Signatory's Position: Deputy General Counsel
Signatory's Phone Number: 6692454169 EXT 2077


Response Signature
Signature: /Halle B. Markus/     Date: 03/06/2020
Signatory's Name: Halle B. Markus
Signatory's Position: Attorney of Record, Venable LLP, DC Bar member

Signatory's Phone Number: 202.344.4725

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:    ANDREW D. PRICE
   VENABLE LLP
   
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
Mailing Address:    Andrew D. Price
   VENABLE LLP
   P.O. BOX 34385
   WASHINGTON, District of Columbia 20043-9998
        
Serial Number: 88474593
Internet Transmission Date: Fri Mar 06 17:28:05 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202003061728050
81793-88474593-710f17a518cc29ee884ccab7e
e9f1ec0ae35f77edbabed6e5a6591efdce6221c7
-N/A-N/A-20200306141938559602