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. 88588366 ANDROID (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8858836 6/large) has been amended as follows:

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

The Examining Attorney has noted that application no. 86288617 ("Prior Application") precedes the filing date of the subject application and may serve as a basis for refusal if registered. Applicant respectfully submits that the Prior Application appears likely to lapse in the near future due to the applicant's failure to respond to an office action by its May 14, 2020 deadline. Moreover, because the prior application is pending refusal due to a citation to one of Applicant's own prior registrations for its well-known ANDROID mark, Applicant does not anticipate that the Prior Application will ever mature to registration and should not serve as a bar to registration here. Under the circumstances, Applicant respectfully requests that the instant application be permitted to advance to registration, or if necessary, suspended until the Prior Application is finally refused.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Mobile phones; downloadable operating system software; downloadable software for use in developing, executing, and running other software on mobile devices, computers, computer networks, and global communication networks; computer software development tools; downloadable software for use in transmitting and receiving data over computer networks and global communication networks; downloadable software for managing communications and data exchange among and between mobile devices and desktop computers; computer middleware, namely, software that mediates between the operating system of a mobile device and the application software of a mobile device; computer application software for mobile phones, namely, software development tools for the creation of mobile software applications
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: Mobile phones; downloadable operating system software; downloadable software for use in developing, executing, and running other software on mobile devices, computers, computer networks, and global communication networks; computer software development tools; downloadable computer software development tools; downloadable software for use in transmitting and receiving data over computer networks and global communication networks; downloadable software for managing communications and data exchange among and between mobile devices and desktop computers; computer middleware, namely, software that mediates between the operating system of a mobile device and the application software of a mobile device; downloadable computer middleware, namely, software that mediates between the operating system of a mobile device and the application software of a mobile device; computer application software for mobile phones, namely, software development tools for the creation of mobile software applications; downloadable computer application software for mobile phones, namely, downloadable software development tools for the creation of mobile software applicationsClass 009 for Mobile phones; downloadable operating system software; downloadable software for use in developing, executing, and running other software on mobile devices, computers, computer networks, and global communication networks; downloadable computer software development tools; downloadable software for use in transmitting and receiving data over computer networks and global communication networks; downloadable software for managing communications and data exchange among and between mobile devices and desktop computers; downloadable computer middleware, namely, software that mediates between the operating system of a mobile device and the application software of a mobile device; downloadable computer application software for mobile phones, namely, downloadable software development tools for the creation of mobile software applications
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.

Applicant proposes to amend the following:

Current:
Class 038 for Telecommunications services; transmission of data by global computer network; streaming of audio, visual and audiovisual material via a global computer network
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: Telecommunications services; Telecommunications services, namely, transfer of data by telecommunications; telecommunications services, namely, personal communications services; telecommunications services, namely, providing electronic message alerts via the internet; telecommunications services, namely, providing advanced calling features; transmission of data by global computer network; streaming of audio, visual and audiovisual material via a global computer networkClass 038 for Telecommunications services, namely, transfer of data by telecommunications; telecommunications services, namely, personal communications services; telecommunications services, namely, providing electronic message alerts via the internet; telecommunications services, namely, providing advanced calling features; transmission of data by global computer network; streaming of audio, visual and audiovisual material via a global computer network
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.

Applicant proposes to amend the following:

Current:
Class 042 for Application service provider featuring application programming interface (API) software for the design, development, and testing of mobile software applications; application service provider featuring software for the design, development, and testing of mobile software applications; Software as a Service (SaaS) services for use in designing, developing and testing mobile software applications; Software as a Service (SaaS) services featuring compiler programs, debugger programs, and utility programs for creating mobile software applications; application service provider, namely, hosting computer software applications of others
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: Application service provider featuring application programming interface (API) software for the design, development, and testing of mobile software applications; application service provider featuring software for the design, development, and testing of mobile software applications; Software as a Service (SaaS) services for use in designing, developing and testing mobile software applications; Software as a Service (SaaS) services featuring software for use in designing, developing and testing mobile software applications; Software as a Service (SaaS) services featuring compiler programs, debugger programs, and utility programs for creating mobile software applications; application service provider, namely, hosting computer software applications of othersClass 042 for Application service provider featuring application programming interface (API) software for the design, development, and testing of mobile software applications; application service provider featuring software for the design, development, and testing of mobile software applications; Software as a Service (SaaS) services featuring software for use in designing, developing and testing mobile software applications; Software as a Service (SaaS) services featuring compiler programs, debugger programs, and utility programs for creating mobile software applications; application service provider, namely, hosting computer software applications of others
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.
Correspondence Information (current):
      GOOGLE LLC
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@google.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Google LLC
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdocketing@google.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jlawrence@google.com; gavinc@google.com

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)
Response Signature
Signature: /GLC/     Date: 05/29/2020
Signatory's Name: Gavin Charlston
Signatory's Position: Trademark Counsel at Google LLC, California Bar member

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:    GOOGLE LLC
   
   
   1600 AMPHITHEATRE PARKWAY
   MOUNTAIN VIEW, California 94043
Mailing Address:    Google LLC
   1600 Amphitheatre Parkway
   Mountain View, California 94043
        
Serial Number: 88588366
Internet Transmission Date: Fri May 29 14:35:43 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020052914354357
2871-88588366-71070ee21cdd4b6465c2089bd7
e953070b6c58e9a406428438903b5fbd5983e88-
N/A-N/A-20200529141500396790