Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 90151852 MERKURY (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/9015185 2/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 035 for Providing an online searchable database featuring identity profiles and personal information of individual consumers, households, and business contacts for use for business purposes, namely, profiles of individual consumers, households, and business contacts and data collected and associated with those individual consumers, households, and business contacts for the purpose of using the data for identity resolution and analytic modeling of consumers, households, and business contacts; providing an online searchable platform featuring individual consumer, household, and business contact data and modeling, namely, for use with batch and real-time consumer, household, and business contact identity resolution for business purposes; providing an online service for identity resolution of individuals for business purposes, namely, a service that monitors online and offline personally identifiable information and data for identity resolution of consumers, households, and business contacts for business purposes; website user authentication and identity access management, user identity security, customer relations and engagement through personalizing online service experience; providing a website featuring information regarding the management of business information related to the registration and engagement of website users; advertising and marketing consulting services, namely, providing advertising and marketing services for managing, distributing and serving advertising, improving ad targeting, facilitating buying or selling advertising, providing real-time reporting, and forecasting, managing, monitoring, executing and optimizing the performance of advertising and marketing campaigns; computerized database management; providing online searchable databases in the field of advertising and marketing campaign analytics; conducting business and market research surveys; preparing business reports electronically relating to customer satisfaction and attitude, organizational climate or effectiveness, and the use of web sites; providing business intelligence services in the field of advertising and marketing campaign analytics
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: Providing an online searchable database featuring identity profiles and personal information of individual consumers, households, and business contacts for use for business purposes, namely, profiles of individual consumers, households, and business contacts and data collected and associated with those individual consumers, households, and business contacts for the purpose of using the data for identity resolution and analytic modeling of consumers, households, and business contacts; providing an online searchable platform featuring individual consumer, household, and business contact data and modeling, namely, for use with batch and real-time consumer, household, and business contact identity resolution for business purposes; providing an online searchable platform in the nature of an online nondownloadable database featuring individual consumer, household, and business contact data and modeling, namely, for use with batch and realtime consumer, household, and business contact identity resolution for business purposes; providing an online service for identity resolution of individuals for business purposes, namely, a service that monitors online and offline personally identifiable information and data for identity resolution of consumers, households, and business contacts for business purposes; business consulting in the field of customer relations and engagement through personalizing online service experience; website user authentication and identity access management, user identity security, customer relations and engagement through personalizing online service experience; providing a website featuring information regarding the management of business information related to the registration and engagement of website users; advertising and marketing consulting services, namely, providing advertising and marketing services for managing, distributing and serving advertising, improving ad targeting, facilitating buying or selling advertising, providing real-time reporting, and forecasting, managing, monitoring, executing and optimizing the performance of advertising and marketing campaigns; computerized database management; providing online searchable databases in the field of advertising and marketing campaign analytics; conducting business and market research surveys; preparing business reports electronically relating to customer satisfaction and attitude, organizational climate or effectiveness, and the use of web sites; providing business intelligence services in the field of advertising and marketing campaign analytics.; providing business intelligence services in the field of advertising and marketing campaign analyticsClass 035 for Providing an online searchable database featuring identity profiles and personal information of individual consumers, households, and business contacts for use for business purposes, namely, profiles of individual consumers, households, and business contacts and data collected and associated with those individual consumers, households, and business contacts for the purpose of using the data for identity resolution and analytic modeling of consumers, households, and business contacts; providing an online searchable platform in the nature of an online nondownloadable database featuring individual consumer, household, and business contact data and modeling, namely, for use with batch and realtime consumer, household, and business contact identity resolution for business purposes; business consulting in the field of customer relations and engagement through personalizing online service experience; providing a website featuring information regarding the management of business information related to the registration and engagement of website users; advertising and marketing consulting services, namely, providing advertising and marketing services for managing, distributing and serving advertising, improving ad targeting, facilitating buying or selling advertising, providing real-time reporting, and forecasting, managing, monitoring, executing and optimizing the performance of advertising and marketing campaigns; computerized database management; providing online searchable databases in the field of advertising and marketing campaign analytics; conducting business and market research surveys; preparing business reports electronically relating to customer satisfaction and attitude, organizational climate or effectiveness, and the use of web sites; providing business intelligence services in the field of advertising and marketing campaign analytics.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 042 for Computer services, namely, providing computer software as a service (SaaS) to identify, collect, manage, analyze, segment, retrieve, monitor, maintain, report on, structure, model, forecast, present and display identity profiles and personal information of consumers, households, and business contacts for use for business and marketing purposes, namely, profiles of individual consumers, households, and business contacts and data collected and associated with those individual consumers, households, and business contacts for the purpose of using the data for identity resolution and analytic modeling of consumers, households, and business contacts; computer services, namely, providing platforms as a service (PaaS) 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, segmenting, integrating, transforming and providing access to data and information; providing technical support services in the nature of troubleshooting in the fields of computer software and cloud computing; software leasing 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.


Proposed:

Tracked Text Description: Computer services, namely, providing computer software as a service (SaaS) to identify, collect, manage, analyze, segment, retrieve, monitor, maintain, report on, structure, model, forecast, present and display identity profiles and personal information of consumers, households, and business contacts for use for business and marketing purposes, namely, profiles of individual consumers, households, and business contacts and data collected and associated with those individual consumers, households, and business contacts for the purpose of using the data for identity resolution and analytic modeling of consumers, households, and business contacts; Computer services, namely, providing computer software as a service (SaaS) featuring software to identify, collect, manage, analyze, segment, retrieve, monitor, maintain, report on, structure, model, forecast, present and display identity profiles and personal information of consumers, households, and business contacts for use for business and marketing purposes, namely, profiles of individual consumers, households, and business contacts and data collected and associated with those individual consumers, households, and business contacts for the purpose of using the data for identity resolution and analytic modeling of consumers, households, and business contacts; computer services, namely, providing platforms as a service (PaaS) 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, segmenting, integrating, transforming and providing access to data and information; computer services, namely, providing data as a service in the nature of a customizable online non-downloadable software platform for collecting, analyzing, segmenting, integrating, transforming and providing access to data and information; providing technical support services in the nature of troubleshooting in the fields of computer software and cloud computing; software leasing services; providing an online non-downloadable software for identity resolution of individuals for business purposes, namely, online non-downloadable software that monitors online and offline personally identifiable information and data for identity resolution of consumers, households, and business contacts for business purposes; Website user identification and authentication services using email, device identifier, cookie, and IP address for user experience, targeting, and tracking within and across websites, online applications, and digitally-connected devices; Identity access management and user identity security, namely, profiling website and online application visitors and users, presenting content based on captured, recorded or inferred preferences, and disallowing tracking according to user electionsClass 042 for Computer services, namely, providing computer software as a service (SaaS) featuring software to identify, collect, manage, analyze, segment, retrieve, monitor, maintain, report on, structure, model, forecast, present and display identity profiles and personal information of consumers, households, and business contacts for use for business and marketing purposes, namely, profiles of individual consumers, households, and business contacts and data collected and associated with those individual consumers, households, and business contacts for the purpose of using the data for identity resolution and analytic modeling of consumers, households, and business contacts; computer services, namely, providing platforms as a service (PaaS) 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 in the nature of a customizable online non-downloadable software platform for collecting, analyzing, segmenting, integrating, transforming and providing access to data and information; providing technical support services in the nature of troubleshooting in the fields of computer software and cloud computing; software leasing services; providing an online non-downloadable software for identity resolution of individuals for business purposes, namely, online non-downloadable software that monitors online and offline personally identifiable information and data for identity resolution of consumers, households, and business contacts for business purposes; Website user identification and authentication services using email, device identifier, cookie, and IP address for user experience, targeting, and tracking within and across websites, online applications, and digitally-connected devices; Identity access management and user identity security, namely, profiling website and online application visitors and users, presenting content based on captured, recorded or inferred preferences, and disallowing tracking according to user elections
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Webpage URL: None Provided
Webpage Date of Access: None Provided

Correspondence Information (current):
      MARK H. TIDMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mtidman@bakerlaw.com; lgehman@bakerlaw.com; ahsu@bakerlaw.com

The docket/reference number is 111399.21034.
Correspondence Information (proposed):
      Mark H. Tidman
      PRIMARY EMAIL FOR CORRESPONDENCE: bhipdocket@bakerlaw.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mtidman@bakerlaw.com; lgehman@bakerlaw.com; ahsu@bakerlaw.com

The docket/reference number is 111399.21034.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Mark H. Tidman/     Date: 07/01/2021
Signatory's Name: Mark H. Tidman
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 202-861-1500 Signature method: Sent to third party for signature

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    MARK H. TIDMAN
   BAKER & HOSTETLER LLP
   WASHINGTON SQUARE, SUITE 1100
   1050 CONNECTICUT AVENUE, NW
   WASHINGTON, District of Columbia 20036-5304
Mailing Address:    Mark H. Tidman
   BAKER & HOSTETLER LLP
   WASHINGTON SQUARE, SUITE 1100
   1050 CONNECTICUT AVENUE, NW
   WASHINGTON, District of Columbia 20036-5304
        
Serial Number: 90151852
Internet Transmission Date: Thu Jul 01 16:46:18 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021070116461809
3800-90151852-7805a9eff25d325190f032c93e
26ef9e6ba9a2b32a64d4e78146d74b298ba06385
-N/A-N/A-20210701150523757163