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. 88516832 RUN AND REINVENT(Standard Characters, see http://uspto.report/TM/88516832/mark.png) has been amended as follows:

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

The examining attorney has refused registration in Class 9 "because the specimen in International Class 9 is not acceptable as a display associated with downloadable software and appears to be mere advertising material." Applicant respectfully notes that the specimen submitted is not mere advertising and is, instead, a screen shot from Applicant's electronic distribution portal ("EPD") from which Applicant's customers download Applicant's software. Users must log in to the portal in order to see a list of available software titles for download. The screen shot originally submitted shows a representative list of titles and also displays the RUN AND REINVENT mark. The same exact type of specimen has been used by the Applicant in numerous other Class 9 filings, including for example, in Registration Nos. 4759878, 4759871, 5433771, and 4807098. Similar specimens to the one submitted here were accepted in these and numerous other applications. To illustrate the nature of the EPD site, Applicant submits additional screen shots from the site clearly showing the manner in which the products may be downloaded.

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 and downloadable computer application software for mobile devices, desktop devices, and web applications for use in the field of general business processes, namely, as a help desk solution allowing a user to identify and resolve problems associated with the user's computer network; Downloadable computer software for use in maintaining a database of problems and solutions identified on a user's computer network; Downloadable computer software, namely, downloadable system management software focused on the provisioning, configuration, and change management of data center infrastructure; Downloadable computer software and programs for managing computer systems, databases, and applications, namely, providing data management, information technology process automation, application management, storage and performance optimization, and recovery of mainframe and distributed systems computers, and the databases, business applications, programs, and systems that operate therein; Downloadable computer software for computer systems and computer network management, namely, downloadable software for computer network monitoring and computer system diagnostics; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, namely, downloadable software for managing, deploying, and removing software applications, maintaining software inventories, maintaining software license compliance, and managing application security on mobile devices, desktop devices, and cloud computing networks; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, namely, downloadable software for use as a virtual concierge that provides awareness of and access to available services, content, and alerts; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides a virtual help desk and self-help computer and software support services; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides real-time, integrated service management of other computer software, information systems, computer hardware, computer networks, and information databases; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides real-time alerts and updates for end-to-end performance management; Downloadable computer software and downloadable computer application software for mobile devices that provides access to applications and services through a mobile operating system and interface; Downloadable computer software and downloadable computer application software for desktop devices that provides access to applications and services through a desktop operating system and interface; Downloadable computer software and downloadable computer application software for web-based devices that provides access to applications and services through a web-based system and interface; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides synchronization of applications and content across platforms and devices; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that delivers user-specific information about usage, compliance, location, applications, devices, and location-aware services and resources; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that delivers location-aware service, updates, and notifications; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides appointment scheduling and appointment notifications; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, to manage a concierge service; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides secure access and storage of documents; Downloadable computer software and programs for managing and monitoring computer systems, databases, and applications, namely, downloadable computer software and programs for providing data extraction, data capturing, data filtering, data analytics, security monitoring, data management, application management, performance optimization, self-management, and backup and recovery of mainframe databases; downloadable computer software and programs for automatically managing, diagnosing, repairing, securing, and optimizing mainframe processes; downloadable computer software and programs for security control of computer systems, namely, downloadable computer software and programs for providing real time notifications of security events, including network attacks, suspicious behavior and policy violations; downloadable computer software and programs for application development, namely, downloadable software that automates change requests into mainframe databases as part of the code lifecycle
Original Filing Basis:
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 07/11/2019 and first used in commerce at least as early as 07/11/2019 , and is now in use in such commerce.

Proposed: Class 009 for Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications for use in the field of general business processes, namely, as a help desk solution allowing a user to identify and resolve problems associated with the user's computer network; Downloadable computer software for use in maintaining a database of problems and solutions identified on a user's computer network; Downloadable computer software, namely, downloadable system management software focused on the provisioning, configuration, and change management of data center infrastructure; Downloadable computer software and programs for managing computer systems, databases, and applications, namely, providing data management, information technology process automation, application management, storage and performance optimization, and recovery of mainframe and distributed systems computers, and the databases, business applications, programs, and systems that operate therein; Downloadable computer software for computer systems and computer network management, namely, downloadable software for computer network monitoring and computer system diagnostics; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, namely, downloadable software for managing, deploying, and removing software applications, maintaining software inventories, maintaining software license compliance, and managing application security on mobile devices, desktop devices, and cloud computing networks; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, namely, downloadable software for use as a virtual concierge that provides awareness of and access to available services, content, and alerts; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides a virtual help desk and self-help computer and software support services; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides real-time, integrated service management of other computer software, information systems, computer hardware, computer networks, and information databases; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides real-time alerts and updates for end-to-end performance management; Downloadable computer software and downloadable computer application software for mobile devices that provides access to applications and services through a mobile operating system and interface; Downloadable computer software and downloadable computer application software for desktop devices that provides access to applications and services through a desktop operating system and interface; Downloadable computer software and downloadable computer application software for web-based devices that provides access to applications and services through a web-based system and interface; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides synchronization of applications and content across platforms and devices; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that delivers user-specific information about usage, compliance, location, applications, devices, and location-aware services and resources; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that delivers location-aware service, updates, and notifications; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides appointment scheduling and appointment notifications; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications, to manage a concierge service; Downloadable computer software and downloadable computer application software for mobile devices, desktop devices, and web applications that provides secure access and storage of documents; Downloadable computer software and programs for managing and monitoring computer systems, databases, and applications, namely, downloadable computer software and programs for providing data extraction, data capturing, data filtering, data analytics, security monitoring, data management, application management, performance optimization, self-management, and backup and recovery of mainframe databases; downloadable computer software and programs for automatically managing, diagnosing, repairing, securing, and optimizing mainframe processes; downloadable computer software and programs for security control of computer systems, namely, downloadable computer software and programs for providing real time notifications of security events, including network attacks, suspicious behavior and policy violations; downloadable computer software and programs for application development, namely, downloadable software that automates change requests into mainframe databases as part of the code lifecycle
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 07/11/2019 and first used in commerce at least as early as 07/11/2019 , 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 The specimens consist of screen shots from Applicant's electronic distribution portal from which Applicant's customers log in to download Applicant's software. .
"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]. Specimen File1
Specimen File2

The applicant's current attorney information: Nathan C. Belzer. Nathan C. Belzer of BELZER PC, is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      US
The docket/reference number is 60009-1US160.

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is nbelzer@belzerlaw.com

The applicants proposed attorney information: Nathan C. Belzer. Nathan C. Belzer of BELZER PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      United States
The docket/reference number is 60009-1US160.

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is nbelzer@belzerlaw.com

Nathan C. Belzer 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: NATHAN C. BELZER. NATHAN C. BELZER of BELZER PC, is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      US
The docket/reference number is 60009-1US160.

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is nbelzer@belzerlaw.com

The applicants proposed correspondence information: Nathan C. Belzer. Nathan C. Belzer of BELZER PC, is located at

      2905 BULL STREET
      SAVANNAH, Georgia 31405
      United States
The docket/reference number is 60009-1US160.

The phone number is 912-236-3001.

The fax number is 912-236-3003.

The email address is nbelzer@belzerlaw.com

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: /Nathan C. Belzer/      Date: 01/09/2020
Signatory's Name: Nathan C. Belzer
Signatory's Position: Attorney for Applicant
Signatory's Phone Number: 912.236.3001


Response Signature
Signature: /Nathan C. Belzer/     Date: 01/09/2020
Signatory's Name: Nathan C. Belzer
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 912.236.3001

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:    NATHAN C. BELZER
   BELZER PC
   
   2905 BULL STREET
   SAVANNAH, Georgia 31405
Mailing Address:    Nathan C. Belzer
   BELZER PC
   2905 BULL STREET
   SAVANNAH, Georgia 31405
        
Serial Number: 88516832
Internet Transmission Date: Thu Jan 09 16:26:45 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202001091626459
68437-88516832-7001a4a3ef6dbe97aa9d7d2b0
9bc8ff0fc555a2f63a24af581e332aae1777d39b
a-N/A-N/A-20200109155218830074