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. 88511770 INTELLECTUAL PROPERTY AS A SERVICE(Standard Characters, see http://uspto.report/TM/88511770/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 035 for Consultancy and advisory services in the field of business management, business strategy and business operations; business research; business development services; market analysis; consultation and analysis in the fields of business management, business strategy and business operations; business consultation and analysis services, namely, providing surveys and analysis reports in the nature of best practices and benchmarking of business processes; benchmark analysis, namely, conducting studies for others regarding best business practices; business consultation and business management, analysis services for optimizing business management practices regarding the employment of cloud-based enterprise application and process automation software, pursuant to best practices and benchmarking analyses. Consulting services in the field of cloud computing, namely, consultation for businesses and computer systems analysis services for optimizing of cloud-based enterprise application and process automation software, pursuant to best practices and benchmarking analyses
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 04/29/2016 and first used in commerce at least as early as 04/29/2016 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Consultancy and advisory services in the field of business management, business strategy and business operations; business research; business development services; market analysis; consultation and analysis in the fields of business management, business strategy and business operations; business consultation and analysis services, namely, providing surveys and analysis reports in the nature of best practices and benchmarking of business processes; benchmark analysis, namely, conducting studies for others regarding best business practices; business consultation and business management, analysis services for optimizing business management practices regarding the employment of cloud-based enterprise application and process automation software, pursuant to best practices and benchmarking analyses. Consulting services in the field of cloud computing, namely, consultation for businesses and computer systems analysis services for optimizing of cloud-based enterprise application and process automation software, pursuant to best practices and benchmarking analyses; business consultation and business management, analysis services for optimizing business management practices regarding the employment of cloud-based enterprise application and process automation software, pursuant to best practices and benchmarking analysesClass 035 for Consultancy and advisory services in the field of business management, business strategy and business operations; business research; business development services; market analysis; consultation and analysis in the fields of business management, business strategy and business operations; business consultation and analysis services, namely, providing surveys and analysis reports in the nature of best practices and benchmarking of business processes; benchmark analysis, namely, conducting studies for others regarding best business practices; business consultation and business management, analysis services for optimizing business management practices regarding the employment of cloud-based enterprise application and process automation software, pursuant to best practices and benchmarking analyses
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 04/29/2016 and first used in commerce at least as early as 04/29/2016 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Consulting services in the field of cloud computing, namely, consultation for businesses and computer systems analysis services for optimizing of cloud-based enterprise application and process automation software, pursuant to best practices and benchmarking analyses
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 04/29/2016 and first used in commerce at least as early as 04/29/2016 , and is now in use in such commerce.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: The Hackett Group, Inc, a corporation of Florida, having an address of
      1001 Brickell Bay Dr. Ste. 3000
      Miami, Florida 33131
      United States
      305-858-8000
      305-858-0008
Proposed: The Hackett Group, Inc, a corporation of Florida, having an address of
      1001 Brickell Bay Dr. Ste. 3000
      Miami, Florida 33131
      United States
      Email Address: khenrich@thehackettgroup.com
      305-858-8000
      305-858-0008

The owner's/holder's current attorney information: John Cyril Malloy, III (a member of the Bar of the State of Florida). John Cyril Malloy, III (a member of the Bar of the State of Florida) of MALLOY & MALLOY, P.L., is located at

      2800 S.W. 3RD AVENUE
      MIAMI, Florida 33129
      United States
The docket/reference number is 3145.40214.
      The phone number is 305-858-8000.
      The fax number is 305-858-0008.
      The email address is JCMalloy@malloylaw.com

The owner's/holder's proposed attorney information: John Cyril Malloy, III (a member of the Bar of the State of Florida). John Cyril Malloy, III (a member of the Bar of the State of Florida) of MALLOY & MALLOY, P.L., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2800 S.W. 3RD AVENUE
      MIAMI, Florida 33129
      United States
The docket/reference number is 3145.40214.
      The phone number is 305-858-8000.
      The fax number is 305-858-0008.
      The email address is JCMalloy@malloylaw.com

John Cyril Malloy, III (a member of the Bar of the State of Florida) 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):
      JOHN CYRIL MALLOY, III (A MEMBER OF THE BAR OF THE
      PRIMARY EMAIL FOR CORRESPONDENCE: JCMalloy@malloylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Trademarks@malloylaw.com; Filing@malloylaw.com

The docket/reference number is 3145.40214.
Correspondence Information (proposed):
      John Cyril Malloy, III (a member of the Bar of the State of Florida)
      PRIMARY EMAIL FOR CORRESPONDENCE: JCMalloy@malloylaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): Trademarks@malloylaw.com; Filing@malloylaw.com

The docket/reference number is 3145.40214.

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).

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5984650.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /John Cyril Malloy, III/     Date: 02/24/2020
Signatory's Name: John Cyril Malloy, III
Signatory's Position: Attorney of record, Florida bar meber

Signatory's Phone Number: 305-858-8000

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:    JOHN CYRIL MALLOY, III (A MEMBER OF THE BAR OF THE
   MALLOY & MALLOY, P.L.
   
   2800 S.W. 3RD AVENUE
   MIAMI, Florida 33129
Mailing Address:    John Cyril Malloy, III (a member of the Bar of the State of Florida)
   MALLOY & MALLOY, P.L.
   2800 S.W. 3RD AVENUE
   MIAMI, Florida 33129
        
RAM Sale Number: 88511770
RAM Accounting Date: 02/24/2020
        
Serial Number: 88511770
Internet Transmission Date: Mon Feb 24 15:49:52 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202002241549526
69561-88511770-710db92e0c08575d8989747dc
c5b9a13da184dcef958db3ecd869bced83d68a27
e5-CC-49517571-20200224154827502601