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. 88530235 GRID (Stylized and/or with Design, see http://uspto.report/TM/88530235/mark.png) has been amended as follows:

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

Registration of the applied-for mark has been refused because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 5357834 (GRID and design), 5425065 (GRYD), 5649498 (GRIID), 4948964 (GRID), 3997411 (GRID), 3712611 (GRID), 3446383 (GRID), and 4023030 (GRID). Applicant is amending its description of goods and services by deleting Class 9 and and amending Class 42 to read: Design and development of computer software; providing temporary use of on-line non-downloadable computer software for building and delivering visualizations, narrative and/or interaction on top of data, in particular from spreadsheets. Applicant believes that with the deletion of Class 9 and the amendments to Class 42 the refusals and potential refusals should be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 009 for Computer software

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Design and development of computer equipment and computer software
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Iceland registration number V0112790 registered 05/31/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Design and development of computer equipment and computer software; Design and development of computer software; providing temporary use of on-line non-downloadable computer software for building and delivering visualizations, narrative and/or interaction on top of data, in particular from spreadsheetsClass 042 for Design and development of computer software; providing temporary use of on-line non-downloadable computer software for building and delivering visualizations, narrative and/or interaction on top of data, in particular from spreadsheets
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Iceland registration number V0112790 registered 05/31/2019 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-381422258-132352834_._V0112790_-_GRID_Registered_Trademark_Logo_IS.pdf
Converted PDF file(s) ( 2 pages)
Foreign Registration-1
Foreign Registration-2

The applicant's current attorney information: Susan Neuberger Weller. Susan Neuberger Weller of MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C, is located at

      701 PENNSYLVANIA AVENUE, N.W., SUITE 900
      SUITE 900
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 056111401T01.

The phone number is 202-585-3510.

The fax number is 202-434-7400.

The email address is snweller@mintz.com

The applicants proposed attorney information: Susan Neuberger Weller. Other appointed attorneys are Ingrid A. Beattie, Micha Danzig, John M. Delehanty, Richard G. Gervase, Jr., Michael R. Graif, Fred C. Hernandez, Muriel M. Liberto, Boris A. Matvenko, Michael Renaud, Brad M. Scheller, Andrew Skale, F. Snell, Pedro Suarez, Michael Van Loy, James Wodarski, Karen Won and all attorneys with the firm of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.. Susan Neuberger Weller of MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      701 PENNSYLVANIA AVENUE, N.W., SUITE 900
      SUITE 900
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 056111401T01.

The phone number is 202-585-3510.

The fax number is 202-434-7400.

The email address is snweller@mintz.com

Susan Neuberger Weller 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: SUSAN NEUBERGER WELLER. SUSAN NEUBERGER WELLER of MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C, is located at

      701 PENNSYLVANIA AVENUE, N.W., SUITE 900
      SUITE 900
      WASHINGTON, District of Columbia 20004
      US
The docket/reference number is 056111401T01.

The phone number is 202-585-3510.

The fax number is 202-434-7400.

The email address is snweller@mintz.com; jddib@mintz.com; ipdocketingbos@mintz.com; ACRomanini@mintz.com

The applicants proposed correspondence information: Susan Neuberger Weller. Susan Neuberger Weller of MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C, is located at

      701 PENNSYLVANIA AVENUE, N.W., SUITE 900
      SUITE 900
      WASHINGTON, District of Columbia 20004
      United States
The docket/reference number is 056111401T01.

The phone number is 202-585-3510.

The fax number is 202-434-7400.

The email address is snweller@mintz.com; jddib@mintz.com; ipdocketingbos@mintz.com; ACRomanini@mintz.com

ADDITIONAL STATEMENTS
Color Claim
The color(s) blue and purple is/are claimed as a feature of the mark.

Description of mark
The mark consists of geometric figures consisting of a curved band over an oval-like shape, all of which are in shades of blue, with the stylized wording "GRID" in purple to the right side.

Miscellaneous Statement
Applicant is submitting herewith an exact and true copy of the Icelandic Certificate of Registrations that matches the mark in the foreign registration. Is applicant's software used to control or distribute electricity? No. Are applicant's computer hardware and software design services used for the control or distribution of electricity? No.

Original PDF file:
mis-381422258-20200109132352834234_._V0112790_-_GRID_Registered_Trademark_Logo_IS.pdf
Converted PDF file(s) ( 2 pages)
Miscellaneous File1
Miscellaneous File2

SIGNATURE(S)
Response Signature
Signature: /Susan Neuberger Weller/     Date: 01/09/2020
Signatory's Name: Susan Neuberger Weller
Signatory's Position: Attorney of record

Signatory's Phone Number: 202-585-3510

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:    SUSAN NEUBERGER WELLER
   MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
   701 PENNSYLVANIA AVENUE, N.W., SUITE 900
   SUITE 900
   WASHINGTON, District of Columbia 20004
Mailing Address:    Susan Neuberger Weller
   MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C
   701 PENNSYLVANIA AVENUE, N.W., SUITE 900
   SUITE 900
   WASHINGTON, District of Columbia 20004
        
Serial Number: 88530235
Internet Transmission Date: Thu Jan 09 14:03:09 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20200109140309320
314-88530235-700e6783ebdef51fd67a3c7cffd
f1977d5ae98d1c9f3a6b94edfbd588f8d6a9bbb-
N/A-N/A-20200109132352834234