| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
Response to Office Action
The table below presents the data as entered.
| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
88649857 PREDDIO(Standard Characters, see http://uspto.report/TM/88649857/mark.png) has been amended as follows:
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current:
Class 035 for Business data analysis services for commercial or industrial installations for gathering and analyzing data associated with mechanical devices and predicting replacement or service of
the mechanical devices; collection and analysis of data associated with mechanical devices in commercial or industrial installations
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: Business data analysis services for commercial or industrial installations for gathering and analyzing data associated with mechanical devices and
predicting replacement or service of the mechanical devices;
collection and analysis of data associated with mechanical devices in commercial or industrial
installations;
collection and analysis of operational data associated with mechanical devices in commercial or industrial installationsClass 035 for
Business data analysis services for commercial or industrial installations for gathering and analyzing data associated with mechanical devices and predicting replacement or service of the mechanical
devices; collection and analysis of operational data associated with mechanical devices in commercial or industrial installations
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
Applicant proposes to amend the following:
Current:
Class 042 for Software as a service (SaaS) services featuring software for collecting and analyzing data from sensors attached to mechanical devices in the field of commercial or industrial
installations; data mining; providing non-downloadable mobile application based, cloud based, or web based software for data collection and analysis services using proprietary software for
collecting, analyzing, and evaluating data associated with sensors attached to mechanical devices in the field of commercial or industrial installations
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: Software as a service (SaaS) services featuring software for collecting and analyzing data from sensors attached to mechanical devices
in the field of commercial or industrial installations;
Software as a service (SaaS) services featuring software for collecting and analyzing operational data
from sensors attached to mechanical devices in the field of commercial or industrial installations;
data mining;
providing non-downloadable mobile
application based, cloud based, or web based software for data collection and analysis services using proprietary software for collecting, analyzing, and evaluating data associated with sensors
attached to mechanical devices in the field of commercial or industrial installationsClass 042 for Software as a service (SaaS) services featuring software for collecting and analyzing
operational data from sensors attached to mechanical devices in the field of commercial or industrial installations; data mining; providing non-downloadable mobile application based, cloud based, or
web based software for data collection and analysis services using proprietary software for collecting, analyzing, and evaluating data associated with sensors attached to mechanical devices in the
field of commercial or industrial installations
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.
Webpage URL: None Provided
Webpage Date of Access: None Provided
ADDITIONAL STATEMENTS
Miscellaneous Statement
The Examiner requested a clarification as to the type of data (associated with mechanical devices in commercial or industrial settings) that is collected and analyzed. The Examiner suggested either
"business" data in class 35, or "financial" data in class 36. However, the data collected is not particularly well described by either of those options. Rather, the data relates to the operation of
such machines (e.g., their performance, functionality, tolerances, capacity, activity, etc.) as collected by various sensors associated with the machines (and mentioned in Applicant's class 42
services). Applicant therefore proposes the word "operational" instead. If the Examiner needs further clarification, Applicant is happy to provide same. With respect to software in class 42,
Applicant has made the same clarification as above. However, the Examiner also requested clarification as to the field in which such services are provided to commercial or industrial installations.
Applicant notes that its class 42 software and apps are field agnostic. Any field that employs industrial or commercial machines is of relevance. As non-limiting examples, any field that includes
manufacturing or chemical processing or transportation or construction or the like, would all be potentially relevant. Applicant's software uses sensors to monitor various conditions of such
machinery as desired (e.g., vibration, movement, temperature, actuation, power consumption, or the like). As such, limiting Applicant's services beyond "in the field of commercial or industrial
installations" would be inappropriate.
Correspondence Information (current):
Dan S. Cohn
PRIMARY EMAIL FOR CORRESPONDENCE: pto-sl@huschblackwell.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
The docket/reference number is 548007.5.
Correspondence Information (proposed):
Dan S. Cohn
PRIMARY EMAIL FOR CORRESPONDENCE: pto-sl@huschblackwell.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
The docket/reference number is 548007.5.
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: /Dan Cohn/ Date: 03/01/2021
Signatory's Name: Dan S. Cohn
Signatory's Position: Attorney of record, Missouri bar member
Signatory's Phone Number: 314-480-1500 Signature method: Sent to third party for signature
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: Dan S. Cohn
Husch Blackwell LLP
190 Carondelet Plaza, Suite 600
St. Louis, Missouri 63105
Mailing Address: Dan S. Cohn
Husch Blackwell LLP
190 Carondelet Plaza, Suite 600
St. Louis, Missouri 63105
Serial Number: 88649857
Internet Transmission Date: Mon Mar 01 16:57:14 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2021030116571483
7794-88649857-770cb668e9818927b55dff4e2f
5afb96845832d4cf288f95de7518714cb8d330-N
/A-N/A-20210301150759095873