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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88742058 ORACLE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8874205 8/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for computers; computer hardware; integrated computer hardware and computer operating software; computer hardware with preinstalled computer operating software; computer servers; a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, human capital management, public sector administration, public and private utilities, transportation, insurance, processing, analysis and management of financial transactions, governance, risk and compliance management for use in the fields of finance, banking, insurance and capital markets, corporate financials, and corporate governance, risk and compliance, project portfolio management, supply chain management, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business risk management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; database software to manage, monitor, track and organize data; computer software, namely, a full line of middleware software; electronic publications, namely, books, pamphlets, and user manuals concerning computer software and hardware, and related topics, and electronic catalogues offering such goods
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 00/00/1984 and first used in commerce at least as early as 00/00/1984 , and is now in use in such commerce.


Proposed:

Tracked Text Description: computers; computer hardware; integrated computer hardware and computer operating software; integrated computer hardware and downloadable computer operating software; computer hardware with preinstalled computer operating software; computer servers; a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; a full line of downloadable computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; downloadable computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, human capital management, public sector administration, public and private utilities, transportation, insurance, processing, analysis and management of financial transactions, governance, risk and compliance management for use in the fields of finance, banking, insurance and capital markets, corporate financials, and corporate governance, risk and compliance, project portfolio management, supply chain management, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business risk management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; downloadable computer software applications in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, human capital management, public sector administration, public and private utilities, transportation, insurance, processing, analysis and management of financial transactions, governance, risk and compliance management for use in the fields of finance, banking, insurance and capital markets, corporate financials, and corporate governance, risk and compliance, project portfolio management, supply chain management, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business risk management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; database software to manage, monitor, track and organize data; downloadable database software to manage, monitor, track and organize data; computer software, namely, a full line of middleware software; downloadable computer software, namely, a full line of middleware software; electronic publications, namely, books, pamphlets, and user manuals concerning computer software and hardware, and related topics, and electronic catalogues offering such goodsClass 009 for computers; computer hardware; integrated computer hardware and downloadable computer operating software; computer hardware with preinstalled computer operating software; computer servers; a full line of downloadable computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; downloadable computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; downloadable computer software applications in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, human capital management, public sector administration, public and private utilities, transportation, insurance, processing, analysis and management of financial transactions, governance, risk and compliance management for use in the fields of finance, banking, insurance and capital markets, corporate financials, and corporate governance, risk and compliance, project portfolio management, supply chain management, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business risk management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; downloadable database software to manage, monitor, track and organize data; downloadable computer software, namely, a full line of middleware software; electronic publications, namely, books, pamphlets, and user manuals concerning computer software and hardware, and related topics, and electronic catalogues offering such goods
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 00/00/1984 and first used in commerce at least as early as 00/00/1984 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 035 for analysis and consulting services in the field of business information management, namely, business analysis, business enterprise modeling, and business information organization; licensing software; developing, arranging and conducting trade shows in the fields of computers, software, information technology, and cloud services development; promoting sports competitions and events of others
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/30/1986 and first used in commerce at least as early as 06/30/1986 , and is now in use in such commerce.


Proposed:

Tracked Text Description: analysis and consulting services in the field of business information management, namely, business analysis, business enterprise modeling, and business information organization; licensing software; developing, arranging and conducting trade shows in the fields of computers, software, information technology, and cloud services development; promoting sports competitions and events of others; on-line retail store services in the field of computer programs for business, entertainment, scientific, technical, commercial, educational and personal computing uses, and printed material related theretoClass 035 for analysis and consulting services in the field of business information management, namely, business analysis, business enterprise modeling, and business information organization; developing, arranging and conducting trade shows in the fields of computers, software, information technology, and cloud services development; promoting sports competitions and events of others; on-line retail store services in the field of computer programs for business, entertainment, scientific, technical, commercial, educational and personal computing uses, and printed material related thereto
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/30/1986 and first used in commerce at least as early as 06/30/1986 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 038 for broadcasting and communication services, namely, providing a computer network for delivery of computer programs, graphics, text, and other data and information
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 03/10/1993 and first used in commerce at least as early as 03/10/1993 , and is now in use in such commerce.


Proposed:

Tracked Text Description: broadcasting and communication services, namely, providing a computer network for delivery of computer programs, graphics, text, and other data and information; broadcasting and communication services by means of a computer network for delivery of computer programs, graphics, text, and other data and informationClass 038 for broadcasting and communication services by means of a computer network for delivery of computer programs, graphics, text, and other data and information
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 03/10/1993 and first used in commerce at least as early as 03/10/1993 , and is now in use in such commerce.
Applicant proposes to amend the following:

Current:
Class 042 for computer services, namely, consultation in the field of computer software, computers and computer hardware; programming, design, development, implementation, maintenance, updating and repair of computer software for others; technical support services for computer software, namely, providing updates, upgrades, patches, fixes and technical documentation; providing information via the internet in the fields of computers, computer hardware, computer programming, and computer software; computer services, namely, creating and maintaining web sites for others; hosting the web sites of others on computer servers for local area networks, intranets, and the Internet; consultation services and providing technical assistance related to the design, creation, hosting, maintenance, operation, and management of web sites for others; and providing information in the fields of computers and computer software; on-line retail store services in the field of computer programs for business, entertainment, scientific, technical, commercial, educational and personal computing uses, and printed material related thereto; hosting of computer software; leasing and rental of computer hardware; leasing access to computer hardware; computer services, namely, providing access to non-downloadable computer software; computer services, namely, providing computer software, platforms, infrastructure, databases and data as a service; computer services, namely, providing cloud computing services in the following fields: a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; database software to manage, monitor, track and organize data; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, computer software to automate data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, and computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications to manage, monitor, track and organize data in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing computer software as a service (SaaS) to collect, manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing platforms as a service (PaaS) and infrastructure as a service (IaaS) featuring computer software and hardware platforms for creating web applications, data storage and backup, database management, virtualization, networking, collaboration, access, support, cloud computing, data sharing, data security, administration and management of computer software and hardware, and distribution and transmission of data and information; computer services, namely, providing databases as a service (DBaaS), namely, cloud hosting of computer databases for others; computer services, namely, providing data as a service through a customizable software platform for collecting, analyzing, integrating, transforming and providing access to data and information; platform as a service (PAAS) featuring computer software platforms for multi-chain, multi-cloud network management that deploys nodes and connects them to blockchains, and that enables users to manage blockchain applications; providing on-line non-downloadable computer software for enabling users to electronically create, exchange, store, send, receive, accept, and transmit digital tokens based on the blockchain technology; computer services, namely, providing on-line non-downloadable computer software for developing, building, and operating distributed applications; software as a service (SAAS) services featuring software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using blockchain technology; platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security computer software for blockchain-based platforms; electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information; developing and updating of computer software for use in managing blockchain data; application service provider (ASP) featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; application service provider (ASP), namely, hosting computer application software for the purpose of developing, testing, and integrating blockchain applications and software; software as a service (SAAS) featuring software for developing, deploying, updating, and monitoring the performance of machine learning, deep learning, data science, predictive analytics, automation, and artificial intelligence applications; platform as a service (PAAS) featuring computer software platforms for building, hosting, and deploying chatbots and digital assistants; software as a service (SAAS) services featuring software for building, hosting, and deploying chatbots and digital assistants; application service provider (ASP) featuring application programming interface (API) software for building, hosting, and deploying chatbots and digital assistants; consulting services in the field of software as a service (SAAS), namely, providing machine learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systems
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/00/1986 and first used in commerce at least as early as 06/00/1986 , and is now in use in such commerce.


Proposed:

Tracked Text Description: computer services, namely, consultation in the field of computer software, computers and computer hardware; programming, design, development, implementation, maintenance, updating and repair of computer software for others; technical support services for computer software, namely, providing updates, upgrades, patches, fixes and technical documentation; providing information via the internet in the fields of computers, computer hardware, computer programming, and computer software; computer services, namely, creating and maintaining web sites for others; hosting the web sites of others on computer servers for local area networks, intranets, and the Internet; consultation services and providing technical assistance related to the design, creation, hosting, maintenance, operation, and management of web sites for others; and providing information in the fields of computers and computer software; and providing an Internet website portal offering in the fields of computers and computer software; on-line retail store services in the field of computer programs for business, entertainment, scientific, technical, commercial, educational and personal computing uses, and printed material related thereto; ; hosting of computer software; hosting of computer software of others on a virtual private server; leasing and rental of computer hardware; leasing of computer hardware for use in cloud computing and rental of computer hardware; leasing access to computer hardware; leasing of computer hardware; computer services, namely, providing access to non-downloadable computer software; computer services, namely, providing computer software, platforms, infrastructure, databases and data as a service; computer services, namely, providing cloud computing services in the field of a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; computer services, namely, providing cloud computing services in the following fields: a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; providing temporary use of on-line downloadable database software to manage, monitor, track and organize data; database software to manage, monitor, track and organize data; providing temporary use of on-line downloadable computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, computer software to automate data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, and computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, computer software to automate data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, and computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; providing temporary use of on-line downloadable computer software applications to manage, monitor, track and organize data in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer software applications to manage, monitor, track and organize data in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing computer software as a service (SaaS) to collect, manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing platforms as a service (PaaS) and infrastructure as a service (IaaS) featuring computer software and hardware platforms for creating web applications, data storage and backup, database management, virtualization, networking, collaboration, access, support, cloud computing, data sharing, data security, administration and management of computer software and hardware, and distribution and transmission of data and information; computer services, namely, providing databases as a service (DBaaS), namely, cloud hosting of computer databases for others; computer services, namely, providing data as a service through a customizable software platform for collecting, analyzing, integrating, transforming and providing access to data and information; platform as a service (PAAS) featuring computer software platforms for multi-chain, multi-cloud network management that deploys nodes and connects them to blockchains, and that enables users to manage blockchain applications; providing on-line non-downloadable computer software for enabling users to electronically create, exchange, store, send, receive, accept, and transmit digital tokens based on the blockchain technology; computer services, namely, providing on-line non-downloadable computer software for developing, building, and operating distributed applications; software as a service (SAAS) services featuring software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using blockchain technology; platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security computer software for blockchain-based platforms; electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information; developing and updating of computer software for use in managing blockchain data; application service provider (ASP) featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; application service provider (ASP), namely, hosting computer application software for the purpose of developing, testing, and integrating blockchain applications and software; software as a service (SAAS) featuring software for developing, deploying, updating, and monitoring the performance of machine learning, deep learning, data science, predictive analytics, automation, and artificial intelligence applications; platform as a service (PAAS) featuring computer software platforms for building, hosting, and deploying chatbots and digital assistants; software as a service (SAAS) services featuring software for building, hosting, and deploying chatbots and digital assistants; application service provider (ASP) featuring application programming interface (API) software for building, hosting, and deploying chatbots and digital assistants; consulting services in the field of software as a service (SAAS), namely, providing machine learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systemsClass 042 for computer services, namely, consultation in the field of computer software, computers and computer hardware; programming, design, development, implementation, maintenance, updating and repair of computer software for others; technical support services for computer software, namely, providing updates, upgrades, patches, fixes and technical documentation; providing information via the internet in the fields of computers, computer hardware, computer programming, and computer software; computer services, namely, creating and maintaining web sites for others; hosting the web sites of others on computer servers for local area networks, intranets, and the Internet; consultation services and providing technical assistance related to the design, creation, hosting, maintenance, operation, and management of web sites for others; and providing an Internet website portal offering in the fields of computers and computer software;; hosting of computer software of others on a virtual private server; leasing of computer hardware for use in cloud computing and rental of computer hardware; leasing of computer hardware; computer services, namely, providing computer software, platforms, infrastructure, databases and data as a service; computer services, namely, providing cloud computing services in the field of a full line of computer software to manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information from computer databases, applications and the internet, and for the development, analysis, management, integration, deployment, virtualization and maintenance of computer software and hardware; providing temporary use of on-line downloadable database software to manage, monitor, track and organize data; providing temporary use of on-line downloadable computer software applications to manage, monitor, track and organize data, namely, web services software, application server software, business intelligence software, internet and intranet portal software, computer software to automate data warehousing, content management software, telephony software, electronic mail software, electronic messaging software, scheduling software, social networking software, wireless communications software, operating system software, computer utility software, computer networking software, security and identity management software, virtualization software, cloud computing software, voice enablement software, and computer programs for use in developing and executing other computer programs on computers, computer networks, and global communications networks; providing temporary use of on-line downloadable computer software applications to manage, monitor, track and organize data in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing computer software as a service (SaaS) to collect, manage, analyze, retrieve, monitor, maintain, report on, structure, model, forecast, present and display data and information in the fields of marketing, sales, customer service, contracts, human resources, clinical research, health care, health sciences, education, communications and telecommunications, call centers, customer relationship management, public sector administration, public and private utilities, transportation, insurance, financial transaction processing, analysis and management, governance, risk and compliance management, management of supply chains, orders, procurement, inventory, assets, projects and manufacturing, business process outsourcing, business consolidation management, business quality management, business project management, business stakeholder-shareholder relationship management, and strategic business, simulation, enterprise and resource planning; computer services, namely, providing platforms as a service (PaaS) and infrastructure as a service (IaaS) featuring computer software and hardware platforms for creating web applications, data storage and backup, database management, virtualization, networking, collaboration, access, support, cloud computing, data sharing, data security, administration and management of computer software and hardware, and distribution and transmission of data and information; computer services, namely, providing databases as a service (DBaaS), namely, cloud hosting of computer databases for others; computer services, namely, providing data as a service through a customizable software platform for collecting, analyzing, integrating, transforming and providing access to data and information; platform as a service (PAAS) featuring computer software platforms for multi-chain, multi-cloud network management that deploys nodes and connects them to blockchains, and that enables users to manage blockchain applications; providing on-line non-downloadable computer software for enabling users to electronically create, exchange, store, send, receive, accept, and transmit digital tokens based on the blockchain technology; computer services, namely, providing on-line non-downloadable computer software for developing, building, and operating distributed applications; software as a service (SAAS) services featuring software for the encryption and authentication of the integrity of all data, digital assets, documents, and files across multiple channels using blockchain technology; platform as a service (PAAS) featuring blockchain-based computer software platforms and distributed computing software platforms for auditing and verifying digital information and codes; design, development and implementation of audit and security computer software for blockchain-based platforms; electronic data storage, namely, providing a blockchain technology-based, distributed database ledger for the storage of public, private or encrypted data, transactions and information; developing and updating of computer software for use in managing blockchain data; application service provider (ASP) featuring application programming interface (API) software for providing a platform for the development, testing, and integration of blockchain software applications; application service provider (ASP), namely, hosting computer application software for the purpose of developing, testing, and integrating blockchain applications and software; software as a service (SAAS) featuring software for developing, deploying, updating, and monitoring the performance of machine learning, deep learning, data science, predictive analytics, automation, and artificial intelligence applications; platform as a service (PAAS) featuring computer software platforms for building, hosting, and deploying chatbots and digital assistants; software as a service (SAAS) services featuring software for building, hosting, and deploying chatbots and digital assistants; application service provider (ASP) featuring application programming interface (API) software for building, hosting, and deploying chatbots and digital assistants; consulting services in the field of software as a service (SAAS), namely, providing machine learning based predictive security, threat detection, security analytics, remediation and in-context cognitive advice to users seeking to protect and secure computer systems
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 06/00/1986 and first used in commerce at least as early as 06/00/1986 , and is now in use in such commerce.
Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for licensing software
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided specimen shows the mark in use in commerce (see specimen statement below). For a collective trademark, collective service mark, collective membership mark, or certification mark application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the application filing date. For a certification mark application: The applicant is not engaged 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 mark was first used at least as early as 00/00/1984 and first used in commerce at least as early as 00/00/1984 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 045 . The specimen(s) submitted consists of promotional material .
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-9978108231-202009301 15827413257_._Specimen_-_ Class_45.pdf
Converted PDF file(s) ( 4 pages) Specimen File1Specimen File2Specimen File3Specimen File4

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Oracle International Corporation, a corporation of California, having an address of
      500 Oracle Parkway
      Redwood City, California 94065
      United States

Proposed: Oracle International Corporation, a corporation of California, having an address of
      500 Oracle Parkway
      Redwood City, California 94065
      United States
      Email Address: XXXX
Correspondence Information (current):
      JILL K. TOMLINSON
      PRIMARY EMAIL FOR CORRESPONDENCE: tmadmin@kilpatricktownsend.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): jtomlinson@kilpatricktownsend.com

The docket/reference number is 1159667.
Correspondence Information (proposed):
      Jill K. Tomlinson
      PRIMARY EMAIL FOR CORRESPONDENCE: jtomlinson@kilpatricktownsend.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): tmadmin@kilpatricktownsend.com; dvargas@kilpatricktownsend.com

The docket/reference number is 1159667.

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).

FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Todd Adler/      Date: 09/30/2020
Signatory's Name: Todd Adler
Signatory's Position: Managing Counsel
Signatory's Phone Number: contact attorney of record


Response Signature
Signature: /Jill K. Tomlinson/     Date: 09/30/2020
Signatory's Name: JILL K TOMLINSON
Signatory's Position: Attorney of record, New York Bar member

Signatory's Phone Number: 2127758753

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

Mailing Address:    JILL K. TOMLINSON
   KILPATRICK TOWNSEND & STOCKTON LLP
   1100 PEACHTREE STREET, SUITE 2800
   MAILSTOP IP DOCKETING 22
   ATLANTA, Georgia 30309
Mailing Address:    Jill K. Tomlinson
   KILPATRICK TOWNSEND & STOCKTON LLP
   1100 PEACHTREE STREET, SUITE 2800
   MAILSTOP IP DOCKETING 22
   ATLANTA, Georgia 30309
        
RAM Sale Number: 88742058
RAM Accounting Date: 09/30/2020
        
Serial Number: 88742058
Internet Transmission Date: Wed Sep 30 14:05:11 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020093014051117
9740-88742058-750fb7aaf2cea6775c76faf7f3
773f68d0104049fe49de71ed162d384588ac2ad-
CC-05070735-20200930115827413257