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. 88347183 PRIVILEGED USER ACCESS(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88347183/large) has been amended as follows:

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

In response to Examiner's refusal to register based on mere descriptiveness, Applicant respectfully requests to amend this application for registration on the Supplemental Register. Applicant files this Response to Office Action in conjunction with its previously-filed Allegation of Use.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software for managing secure application access and authentication credentials for computer networks and applications communicating across networks
Original Filing Basis:
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: Computer software for managing secure application access and authentication credentials for computer networks and applications communicating across networks; Downloadable computer software for managing secure application access and authentication credentials for computer networks and applications communicating across networksClass 009 for Downloadable computer software for managing secure application access and authentication credentials for computer networks and applications communicating across networks
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 class of goods/services in the application:
Current: Class 042 for Software as a service for managing secure application access and authentication credentials for computer networks and applications communicating across networks
Original Filing Basis:
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 for managing secure application access and authentication credentials for computer networks and applications communicating across networks; Software as a service featuring software for managing secure application access and authentication credentials for computer networks and applications communicating across networksClass 042 for Software as a service featuring software for managing secure application access and authentication credentials for computer networks and applications communicating across networks
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.

The applicant's current attorney information: Brian E. Lewis. Brian E. Lewis of ROSEN LEWIS, PLLC, is located at

      120 LAKESIDE AVE SUITE 100
      SEATTLE, Washington 98122
      US

The phone number is 206-204-9660.

The email address is officeactions@rosenlewis.com

The applicants proposed attorney information: Brian E. Lewis. Brian E. Lewis of ROSEN LEWIS, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      120 LAKESIDE AVE SUITE 100
      SEATTLE, Washington 98122
      United States

The phone number is 206-204-9660.

The email address is officeactions@rosenlewis.com

Brian E. Lewis submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: BRIAN E. LEWIS. BRIAN E. LEWIS of ROSEN LEWIS, PLLC, is located at

      120 LAKESIDE AVE SUITE 100
      SEATTLE, Washington 98122
      US

The phone number is 206-204-9660.

The email address is officeactions@rosenlewis.com

The applicants proposed correspondence information: Brian E. Lewis. Brian E. Lewis of ROSEN LEWIS, PLLC, is located at

      120 LAKESIDE AVE SUITE 100
      SEATTLE, Washington 98122
      United States

The phone number is 206-204-9660.

The email address is officeactions@rosenlewis.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use ACCESS apart from the mark as shown.


Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register'). NOTE: The applicant has separately filed an Allegation of Use, to change the basis of this application from Section 1(b), intent-to-use, to Section 1(a), use in commerce.


SIGNATURE(S)
Response Signature
Signature: /EB/     Date: 11/27/2019
Signatory's Name: Eugene Beliy
Signatory's Position: Of Counsel, Rosen Lewis PLLC, Washington Bar Member

Signatory's Phone Number: 2062049660

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:    BRIAN E. LEWIS
   ROSEN LEWIS, PLLC
   
   120 LAKESIDE AVE SUITE 100
   SEATTLE, Washington 98122
Mailing Address:    Brian E. Lewis
   ROSEN LEWIS, PLLC
   120 LAKESIDE AVE SUITE 100
   SEATTLE, Washington 98122
        
Serial Number: 88347183
Internet Transmission Date: Wed Nov 27 15:51:57 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019112715515791
7783-88347183-7007be2e9a6a64fbe1e21a0cd4
ad643f21e22e9f721369def1b5eb96792f9bee-N
/A-N/A-20191127154437769612