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 11/30/2023)

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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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90081535 ISTARI (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9008153 5/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Computer networking hardware and networks for the communication of data specifically relating to the provision of cybersecurity services; computer cybersecurity software; downloadable computer security software; internet security software; intrusion detection software; security apparatus for computers; mobile application software for use in cybersecurity consulting, assessments, training and services in connection with cybersecurity; computer software for managing responses to cybersecurity incidents; computer software for remediation of cybersecurity incidents
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Computer networking hardware and networks for the communication of data specifically relating to the provision of cybersecurity services; Computer networking hardware and networks consisting of computer hardware for high-speed processing and storage of data using multiple computer processors for the communication of data specifically relating to the provision of cybersecurity services; computer cybersecurity software; recorded computer cybersecurity software for the purpose of monitoring and identifying security events within computer systems and networks; downloadable computer security software; downloadable computer security software for the purpose of monitoring and identifying security events within computer systems and networks; internet security software; downloadable internet security software for the purpose of monitoring and identifying security events within computer systems and networks; intrusion detection software; downloadable intrusion detection software for the purpose of monitoring and identifying security events within computer systems and networks; security apparatus for computers; security apparatus for computers, namely, e.g. Endpoint Detection and Response technology, Network Detection and Response technology Next Generation Antivirus technology, and threat detection technology etc.; mobile application software for use in cybersecurity consulting, assessments, training and services in connection with cybersecurity; downloadable mobile application software for use in cybersecurity consulting, assessments, training and services in connection with cybersecurity; computer software for managing responses to cybersecurity incidents; downloadable computer software for managing responses to cybersecurity incidents; computer software for remediation of cybersecurity incidents; downloadable computer software for remediation of cybersecurity incidentsClass 009 for Computer networking hardware and networks consisting of computer hardware for high-speed processing and storage of data using multiple computer processors for the communication of data specifically relating to the provision of cybersecurity services; recorded computer cybersecurity software for the purpose of monitoring and identifying security events within computer systems and networks; downloadable computer security software for the purpose of monitoring and identifying security events within computer systems and networks; downloadable internet security software for the purpose of monitoring and identifying security events within computer systems and networks; downloadable intrusion detection software for the purpose of monitoring and identifying security events within computer systems and networks; security apparatus for computers, namely, e.g. Endpoint Detection and Response technology, Network Detection and Response technology Next Generation Antivirus technology, and threat detection technology etc.; downloadable mobile application software for use in cybersecurity consulting, assessments, training and services in connection with cybersecurity; downloadable computer software for managing responses to cybersecurity incidents; downloadable computer software for remediation of cybersecurity incidents
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number 40202015714U registered 07/29/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-3897227179-103437444 _.__Reg_Cert__40202015714 U__in_Classes_9__16__35__ 37__41_and_42.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

Applicant proposes to amend the following:

Current:
Class 016 for Booklets for use in conducting cybersecurity instruction and training workshops; instruction manuals relating to the specific use of cybersecurity software; instruction manuals relating to cybersecurity training seminars; presentation brochures relating to the topic of cybersecurity; printed publications on cybersecurity topics; printed computer codes in relation to cybersecurity software; printed matter for cybersecurity purposes; printed material relating to information and security technology; printed training guides in relation to cybersecurity matters; worksheets for cybersecurity training printed publications, namely, newsletters and journals relating to cybersecurity
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Booklets for use in conducting cybersecurity instruction and training workshops; instruction manuals relating to the specific use of cybersecurity software; instruction manuals relating to cybersecurity training seminars; presentation brochures relating to the topic of cybersecurity; printed publications on cybersecurity topics; printed publications in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials on cybersecurity topics; printed computer codes in relation to cybersecurity software; printed publications in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials featuring computer codes in relation to cybersecurity software; printed matter for cybersecurity purposes; printed matter in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials featuring cybersecurity information; printed material relating to information and security technology; printed material in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials relating to cybersecurity information and security technology; printed training guides in relation to cybersecurity matters; worksheets for cybersecurity training printed publications, namely, newsletters and journals relating to cybersecurityClass 016 for Booklets for use in conducting cybersecurity instruction and training workshops; instruction manuals relating to the specific use of cybersecurity software; instruction manuals relating to cybersecurity training seminars; presentation brochures relating to the topic of cybersecurity; printed publications in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials on cybersecurity topics; printed publications in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials featuring computer codes in relation to cybersecurity software; printed matter in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials featuring cybersecurity information; printed material in the nature of pamphlets, brochures, newsletters, journals, magazines, blogs, white papers, reports, research papers, case studies, articles and other similar printed materials relating to cybersecurity information and security technology; printed training guides in relation to cybersecurity matters; worksheets for cybersecurity training printed publications, namely, newsletters and journals relating to cybersecurity
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number 40202015714U registered 07/29/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU1-3897227179-103437444 _.__Reg_Cert__40202015714 U__in_Classes_9__16__35__ 37__41_and_42.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

Applicant proposes to amend the following:

Current:
Class 035 for Business risk assessment services in relation to cybersecurity; business risk management services in relation to cybersecurity
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 035 for Business risk assessment services in relation to cybersecurity; business risk management services in relation to cybersecurity
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number 40202015714U registered 07/29/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU2-3897227179-103437444 _.__Reg_Cert__40202015714 U__in_Classes_9__16__35__ 37__41_and_42.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

Applicant proposes to amend the following:

Current:
Class 037 for Advisory services relating to the installation of security and safety equipment and information technology systems and products; installation of information security systems
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Advisory services relating to the installation of security and safety equipment and information technology systems and products; installation of information security systems; installation of computer systems for information securityClass 037 for Advisory services relating to the installation of security and safety equipment and information technology systems and products; installation of computer systems for information security
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number 40202015714U registered 07/29/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU3-3897227179-103437444 _.__Reg_Cert__40202015714 U__in_Classes_9__16__35__ 37__41_and_42.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

Applicant proposes to amend the following:

Current:
Class 041 for Arranging and conducting workshops and training for cybersecurity matters; conducting training seminars in relation to cybersecurity; providing of cybersecurity training; training services in the field of cybersecurity software development; cybersecurity educational services, namely, conducting conferences, seminars and workshops in the field of cybersecurity and security risk management; cybersecurity training services
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 041 for Arranging and conducting workshops and training for cybersecurity matters; conducting training seminars in relation to cybersecurity; providing of cybersecurity training; training services in the field of cybersecurity software development; cybersecurity educational services, namely, conducting conferences, seminars and workshops in the field of cybersecurity and security risk management; cybersecurity training services
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number 40202015714U registered 07/29/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU4-3897227179-103437444 _.__Reg_Cert__40202015714 U__in_Classes_9__16__35__ 37__41_and_42.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

Applicant proposes to amend the following:

Current:
Class 042 for Advisory and information services relating to cybersecurity software; advisory services relating to cybersecurity hardware; computer security advisory services; cybersecurity advisory services; computer security engineering; computer security services, specifically, design and development of hardware, software and systems, all in relation to cybersecurity services; cybersecurity software advisory services; cybersecurity consultancy; computer virus protection services; consultancy and information services relating to cybersecurity technology; consultancy in the field of cybersecurity software; creating, maintaining and updating cybersecurity software; development of software for cybersecurity network operations; installation of cybersecurity specific software; internet security consultancy; maintenance of cybersecurity software; security assessment services for computer networks; Security risk assessment relating to computer and network systems; server hosting for the provision of cybersecurity services; technical advisory services relating to cybersecurity programs; technological advisory services for cybersecurity matters; updating computer software relating to computer security and prevention of computer risks; testing, analysis and evaluation of the knowledge, skills and abilities of others for the purpose of certification and re-certification in the field of cybersecurity; providing non-downloading computer programs for detection and prevention of malware, intrusions, and other cyber threats, for network defence and for monitoring, assessing and implementing improvements in security of enterprise data, infrastructure, and networks, all in the field of cybersecurity; providing cybersecurity consulting and threat assessments; research and development of new products relating to cybersecurity; research and development services relating to cybersecurity software and hardware
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.

Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Advisory and information services relating to cybersecurity software; advisory services relating to cybersecurity hardware; computer security advisory services; cybersecurity advisory services; cybersecurity advisory services, namely, technology, process and organisational management in the field of cybersecurity; computer security engineering; computer security services, specifically, design and development of hardware, software and systems, all in relation to cybersecurity services; cybersecurity software advisory services; cybersecurity consultancy; cybersecurity consultancy, namely, technology, process and organisational management in the field of cybersecurity; computer virus protection services; consultancy and information services relating to cybersecurity technology; consultancy in the field of cybersecurity software; creating, maintaining and updating cybersecurity software; development of software for cybersecurity network operations; installation of cybersecurity specific software; internet security consultancy; maintenance of cybersecurity software; security assessment services for computer networks; Security risk assessment relating to computer and network systems; server hosting for the provision of cybersecurity services; technical advisory services relating to cybersecurity programs; technical advisory services relating to cybersecurity software; technological advisory services for cybersecurity matters; updating computer software relating to computer security and prevention of computer risks; testing, analysis and evaluation of the knowledge, skills and abilities of others for the purpose of certification and re-certification in the field of cybersecurity; providing non-downloading computer programs for detection and prevention of malware, intrusions, and other cyber threats, for network defence and for monitoring, assessing and implementing improvements in security of enterprise data, infrastructure, and networks, all in the field of cybersecurity; providing non-downloadable computer programs for detection and prevention of malware, intrusions, and other cyber threats, for network defense and for monitoring, assessing and implementing improvements in security of enterprise data, infrastructure, and networks, all in the field of cybersecurity; providing cybersecurity consulting and threat assessments; providing technology cybersecurity consulting and threat assessments; research and development of new products relating to cybersecurity; research and development services relating to cybersecurity software and hardwareClass 042 for Advisory and information services relating to cybersecurity software; advisory services relating to cybersecurity hardware; computer security advisory services; cybersecurity advisory services, namely, technology, process and organisational management in the field of cybersecurity; computer security engineering; computer security services, specifically, design and development of hardware, software and systems, all in relation to cybersecurity services; cybersecurity software advisory services; cybersecurity consultancy, namely, technology, process and organisational management in the field of cybersecurity; computer virus protection services; consultancy and information services relating to cybersecurity technology; consultancy in the field of cybersecurity software; creating, maintaining and updating cybersecurity software; development of software for cybersecurity network operations; installation of cybersecurity specific software; internet security consultancy; maintenance of cybersecurity software; security assessment services for computer networks; Security risk assessment relating to computer and network systems; server hosting for the provision of cybersecurity services; technical advisory services relating to cybersecurity software; technological advisory services for cybersecurity matters; updating computer software relating to computer security and prevention of computer risks; testing, analysis and evaluation of the knowledge, skills and abilities of others for the purpose of certification and re-certification in the field of cybersecurity; providing non-downloadable computer programs for detection and prevention of malware, intrusions, and other cyber threats, for network defense and for monitoring, assessing and implementing improvements in security of enterprise data, infrastructure, and networks, all in the field of cybersecurity; providing technology cybersecurity consulting and threat assessments; research and development of new products relating to cybersecurity; research and development services relating to cybersecurity software and hardware
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.

Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Singapore application number 40202015714U filed 07/29/2020]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number 40202015714U registered 07/29/2020 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU5-3897227179-103437444 _.__Reg_Cert__40202015714 U__in_Classes_9__16__35__ 37__41_and_42.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

ADDITIONAL STATEMENTS
Significance of wording, letter(s), or numeral(s)
ISTARI appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) ISTARI has no meaning in a foreign language.


Miscellaneous Statement
Applicant respectfully requests that if the foreign registration certificate is found to be acceptable, and supportive of all goods and services as amended, that the Intent to Use (ITU) basis be withdrawn and that the application be permitted to publish based upon the foreign registration basis (44e) alone. Thank you.

Correspondence Information (current):
      BRENT E. ROUTMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kwebber@merchantgould.com; 10984.0117US01.active@ef.merchantgould.com; broutman@merchantgould.com

The docket/reference number is 10984.117US1.
Correspondence Information (proposed):
      Brent E. Routman
      PRIMARY EMAIL FOR CORRESPONDENCE: dockmpls@merchantgould.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): 0984.0117US01.active@ef.merchantgould.com; broutman@merchantgould.com

The docket/reference number is 10984.117US1.

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)
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: /ber/      Date: 12/09/2020
Signatory's Name: Brent E. Routman
Signatory's Position: Attorney for the Applicant
Signatory's Phone Number: 6123364619


Response Signature
Signature: /ber/     Date: 12/09/2020
Signatory's Name: Brent E. Routman
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: 6123364619

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:    BRENT E. ROUTMAN
   MERCHANT & GOULD P.C.
   
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
Mailing Address:    Brent E. Routman
   MERCHANT & GOULD P.C.
   P.O. BOX 2910
   MINNEAPOLIS, Minnesota 55402-0910
        
Serial Number: 90081535
Internet Transmission Date: Wed Dec 09 11:03:44 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020120911034464
2181-90081535-750419dc7d28d406f9e6adcba9
e94b38df73b3c3aef35c01ebfd13a26f4de373f9
6-N/A-N/A-20201209103437444526