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)

---

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. 88642330 LUMEN(Standard Characters, see http://uspto.report/TM/88642330/mark.png) has been amended as follows:

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

See attachments.

EVIDENCE
Evidence has been attached: Comments and consent agreements from Tenable Network Security, Inc. and Sunrise Senior Living, LLC are attached.
Original PDF file:
evi_732426127-20200409005 051029671_._Arguments_and _Consent_Agreements__LUME N_.pdf
Converted PDF file(s) ( 21 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16Evidence-17Evidence-18Evidence-19Evidence-20Evidence-21

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 037 for Advisory services relating to the installation of wireless networks and computer equipment; Installation, maintenance and repair of telecommunications networking hardware; Consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments; Maintenance and repair of telecommunications networking hardware, apparatus, and instruments; Integration, testing and support of wireless networks; Integration, installation and testing of billing systems
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 00/00/2007 and first used in commerce at least as early as 00/00/2007 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Advisory services relating to the installation of wireless networks and computer equipment; installation, maintenance and repair of telecommunications networking hardware; consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments; maintenance and repair of telecommunications networking hardware, apparatus, and instruments; Integration, testing and support of wireless networks; technical support of wireless networks, namely, technical advice related to the installation and repair of wireless network hardware and troubleshooting in the nature of installation and repair of wireless network hardware; Integration, installation and testing of billing systems; installation of computerized billing systems and billing systems networking hardwareClass 037 for Advisory services relating to the installation of wireless networks and computer equipment; installation, maintenance and repair of telecommunications networking hardware; consulting in the field of maintenance and repair of telecommunications network hardware, apparatus, and instruments; maintenance and repair of telecommunications networking hardware, apparatus, and instruments; technical support of wireless networks, namely, technical advice related to the installation and repair of wireless network hardware and troubleshooting in the nature of installation and repair of wireless network hardware; installation of computerized billing systems and billing systems networking hardware
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 00/00/2007 and first used in commerce at least as early as 00/00/2007 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 038 for Telecommunications consultation; Information about telecommunication; IP telecommunications services; Rental (lease) of equipment for telecommunications
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 00/00/2007 and first used in commerce at least as early as 00/00/2007 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Telecommunications consultation; Information about telecommunication; providing information in the field of telecommunications; IP telecommunications services; VOIP telecommunications services; Rental (lease) of equipment for telecommunications; rental of telecommunications apparatus and installationsClass 038 for Telecommunications consultation; providing information in the field of telecommunications; VOIP telecommunications services; rental of telecommunications apparatus and installations
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 00/00/2007 and first used in commerce at least as early as 00/00/2007 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 042 for Installation of computer software; Installation and maintenance of Internet access software; Computer security consultancy; Computer security threat analysis for protecting data; Technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; Technical support services, namely, migration of data servers and database applications; Telecommunications engineering consultancy; Data security consultancy; Internet security consultancy; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Updating and maintaining computer software through patches; Computer network configuration services; Consulting in the field of configuration management for computer hardware and software; Computer systems integration services; Integration of computer systems and networks
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 00/00/2007 and first used in commerce at least as early as 00/00/2007 , and is now in use in such commerce.


Proposed:

Tracked Text Description: Installation of computer software; installation and maintenance of internet access software; computer security consultancy; computer security threat analysis for protecting data; technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; technical support services, namely, migration of data servers and database applications; telecommunications engineering consultancy; data security consultancy; internet security consultancy; computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; updating and maintaining computer software through patches; computer network configuration services; consulting in the field of configuration management for computer hardware and software; computer systems integration services; integration of computer systems and networks; integration and testing of wireless network systems; technical support of wireless network systems, namely, providing backup computer programs and troubleshooting in the nature of diagnosing computer hardware and software problems; integration and testing of computerized billing systems; installation of billing system computer softwareClass 042 for Installation of computer software; installation and maintenance of internet access software; computer security consultancy; computer security threat analysis for protecting data; technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; technical support services, namely, migration of data servers and database applications; telecommunications engineering consultancy; data security consultancy; internet security consultancy; computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; updating and maintaining computer software through patches; computer network configuration services; consulting in the field of configuration management for computer hardware and software; computer systems integration services; integration of computer systems and networks; integration and testing of wireless network systems; technical support of wireless network systems, namely, providing backup computer programs and troubleshooting in the nature of diagnosing computer hardware and software problems; integration and testing of computerized billing systems; installation of billing system computer software
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 00/00/2007 and first used in commerce at least as early as 00/00/2007 , and is now in use in such commerce.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Lumen Technologies, Inc., a corporation of Texas, having an address of
      131 E. Sears Street
      Denison, Texas 75021
      United States

Proposed: Lumen Technologies, Inc., a corporation of Texas, having an address of
      131 E. Sears Street
      Denison, Texas 75021
      United States
      Email Address: XXXX
Correspondence Information (current):
      SCOTT W. JOHNSTON
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 18269.7US01.
Correspondence Information (proposed):
      Scott W. Johnston
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): dmattessich@merchantgould.com

The docket/reference number is 18269.7US01.

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: /daniellemattessich/     Date: 04/08/2020
Signatory's Name: Danielle I. Mattessich
Signatory's Position: Attorney

Signatory's Phone Number: 612-332-5300

The signatory has confirmed that an authorized U.S. licensed attorney has been appointed to represent the owner/holder; that he/she has been granted reciprocal recognition under 37 C.F.R. §11.14(c)(1) by the USPTO's Office of Enrollment and Discipline; and, that he/she is an authorized signatory based on 37 C.F.R. §11.14(c)(2).

Mailing Address:    SCOTT W. JOHNSTON
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
Mailing Address:    Scott W. Johnston
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
        
Serial Number: 88642330
Internet Transmission Date: Thu Apr 09 00:57:40 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20200409005740336
886-88642330-710967713f0d3c34145f2fd8cb2
256cd81e6d6c157b0215e1529fe2ddc8aa910-N/
A-N/A-20200409005051029671