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. 88517636 A DOC AS POWERFUL AS AN APP(Standard Characters, see http://uspto.report/TM/88517636/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 Downloadable cloud-based software for collaborating, creating, customizing, editing, manipulating, storing, accessing, and managing electronic documents and spreadsheets with image, video, text, and graphic functionality; computer software for mobile phones for collaborating, creating, customizing, editing, manipulating, storing, accessing, and managing electronic documents and spreadsheets with image, video, text, and graphic; application and software development tools; downloadable software for document and application development
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: Downloadable cloud-based software for collaborating, creating, customizing, editing, manipulating, storing, accessing, and managing electronic documents and spreadsheets with image, video, text, and graphic functionality; computer software for mobile phones for collaborating, creating, customizing, editing, manipulating, storing, accessing, and managing electronic documents and spreadsheets with image, video, text, and graphic; downloadable computer software for mobile phones for collaborating, creating, customizing, editing, manipulating, storing, accessing, and managing electronic documents and spreadsheets with image, video, text, and graphic; application and software development tools; downloadable software application and software development tools; downloadable software for document and application developmentClass 009 for Downloadable cloud-based software for collaborating, creating, customizing, editing, manipulating, storing, accessing, and managing electronic documents and spreadsheets with image, video, text, and graphic functionality; downloadable computer software for mobile phones for collaborating, creating, customizing, editing, manipulating, storing, accessing, and managing electronic documents and spreadsheets with image, video, text, and graphic; downloadable software application and software development tools; downloadable software for document and application development
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.

The applicant's current attorney information: Diana Rutowski & Eileen Aghnami. Diana Rutowski & Eileen Aghnami of ORRICK, HERRINGTON & SUTCLIFFE LLP, is located at

      2050 MAIN ST., SUITE 1100
      IRVINE, California 92614
      US
The docket/reference number is 30979.6005.

The phone number is 213-612-2370.

The fax number is 9495676710.

The email address is ipprosecution@orrick.com

The applicants proposed attorney information: Diana Rutowski & Eileen Aghnami. Other appointed attorneys are Thomas H. Zellerbach, Peter D. Vogl, Beth M. Goldman, Kristin S. Cornuelle, Betsy W. Lee, Christopher Civil, Briggs Wright. Diana Rutowski & Eileen Aghnami of ORRICK, HERRINGTON & SUTCLIFFE 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

      IP Prosecution Department
      2050 MAIN ST., SUITE 1100
      IRVINE, California 92614
      United States
The docket/reference number is 30979.6005.

The phone number is 213-612-2370.

The fax number is 9495676710.

The email address is ipprosecution@orrick.com

Diana Rutowski & Eileen Aghnami 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: DIANA RUTOWSKI & EILEEN AGHNAMI. DIANA RUTOWSKI & EILEEN AGHNAMI of ORRICK, HERRINGTON & SUTCLIFFE LLP, is located at

      2050 MAIN ST., SUITE 1100
      IRVINE, California 92614
      US
The docket/reference number is 30979.6005.

The phone number is 213-612-2370.

The fax number is 9495676710.

The email address is ipprosecution@orrick.com; eaghnami@orrick.com; mweddington@orrick.com

The applicants proposed correspondence information: Diana Rutowski & Eileen Aghnami. Diana Rutowski & Eileen Aghnami of ORRICK, HERRINGTON & SUTCLIFFE LLP, is located at

      IP Prosecution Department
      2050 MAIN ST., SUITE 1100
      IRVINE, California 92614
      United States
The docket/reference number is 30979.6005.

The phone number is 213-612-2370.

The fax number is 9495676710.

The email address is ipprosecution@orrick.com; eaghnami@orrick.com; mweddington@orrick.com

ADDITIONAL STATEMENTS
Miscellaneous Statement
Applicant seeks to amend the identification of goods to move certain goods from the current application to the pending companion application at App. Serial No. 88517638 in Class 42. Because Applicant has a pending companion application for the same mark in Class 42, Applicant seeks to move the amended goods "providing temporary use of online, non-downloadable application and software development tools" from the current application to the pending companion application in Class 42, pursuant to TMEP Section 1402.08 and the Examining Attorney's requirement that certain goods in the current application in Class 9 be reclassified in Class 42. The companion applications were filed on the same day, neither application has been published, and both applications were filed under Section 1. A separate amendment is being concurrently filed under the companion application at App. Serial No. 88517638 as well, pursuant to TMEP Section 1402.08.


SIGNATURE(S)
Response Signature
Signature: /Eileen Z. Aghnami/     Date: 11/18/2019
Signatory's Name: Eileen Z. Aghnami
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 213-612-2370

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:    DIANA RUTOWSKI & EILEEN AGHNAMI
   ORRICK, HERRINGTON & SUTCLIFFE LLP
   
   2050 MAIN ST., SUITE 1100
   IRVINE, California 92614
Mailing Address:    Diana Rutowski & Eileen Aghnami
   ORRICK, HERRINGTON & SUTCLIFFE LLP
   IP Prosecution Department
   2050 MAIN ST., SUITE 1100
   IRVINE, California 92614
        
Serial Number: 88517636
Internet Transmission Date: Mon Nov 18 14:25:35 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.X.XXX-201911181425353444
38-88517636-7009f7445eaea7ff75ed1f9581a6
2382e7777db571936c5ebaf40f8714af30-N/A-N
/A-20191118141209834811