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. 90475889 OPENPATH(Standard Characters, see http://uspto.report/TM/90475889/mark.png) has been amended as follows:

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

See the attached Response in PDF and accompanying packets of Exhibits A, B, and of Exhibit Composite C.

EVIDENCE
Evidence has been attached: Response to Office Action, in PDF, and accompanying packets of Exhibits A, B, and of Exhibit Composite C.
Original PDF file:
evi_204911723-20211227173 426145791_._nse_to_Office _Action_OPENPATH_Serial_N o._90475889_122721_pdf.pdf
Converted PDF file(s) ( 11 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11
Original PDF file:
evi_204911723-20211227173 426145791_._OPENPATH_Seri al_No._90475889_Exhibits_ A__B_pdf.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6
Original PDF file:
evi_204911723-20211227173 426145791_._OPENPATH_Seri al_No._90475889_Exhibit_C omposite_C_pdf.pdf
Converted PDF file(s) ( 16 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7Evidence-8Evidence-9Evidence-10Evidence-11Evidence-12Evidence-13Evidence-14Evidence-15Evidence-16

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Downloadable computer software, namely, proprietary implementation of software stack and application programming interface (API); downloadable computer software, namely, propriety implementation of collection of independent software components that work together to support the execution of an application; downloadable computer program, namely, downloadable program for creating and managing a software stack and application program interface (API); downloadable computer software for creating and managing software stack and application programming interface (API); computer hardware integrated with downloadable software for creating and managing a software stack and application program interface (API); downloadable computer software for use in automating the creation, distribution and execution of computer program applications; downloadable computer software for use in designing, developing and deploying other computer software; downloadable computer software utilities that facilitate writing other programs; downloadable computer software for monitoring and testing other computer software; downloadable computer software for use in designing, developing and deploying other computer software; downloadable computer software utilities that facilitate writing other programs; downloadable computer software for testing other computer software
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: Downloadable computer software, namely, proprietary implementation of software stack and application programming interface (API); Downloadable computer software, namely, being a proprietary implementation of downloadable software stack and downloadable application programming interface (API) software; downloadable computer software, namely, propriety implementation of collection of independent software components that work together to support the execution of an application; downloadable computer software, namely, being a proprietary implementation of collection of independent software components that work together to support the execution of an application; downloadable computer program, namely, downloadable program for creating and managing a software stack and application program interface (API); downloadable computer software for creating and managing software stack and application programming interface (API); computer hardware integrated with downloadable software for creating and managing a software stack and application program interface (API); downloadable computer software for use in automating the creation, distribution and execution of computer program applications; downloadable computer software for use in designing, developing and deploying other computer software; downloadable computer software utilities that facilitate writing other programs; downloadable computer software for monitoring and testing other computer software; downloadable computer software for use in designing, developing and deploying other computer software; downloadable computer software utilities that facilitate writing other programs; downloadable computer software for testing other computer softwareClass 009 for Downloadable computer software, namely, being a proprietary implementation of downloadable software stack and downloadable application programming interface (API) software; downloadable computer software, namely, being a proprietary implementation of collection of independent software components that work together to support the execution of an application; downloadable computer program, namely, downloadable program for creating and managing a software stack and application program interface (API); downloadable computer software for creating and managing software stack and application programming interface (API); computer hardware integrated with downloadable software for creating and managing a software stack and application program interface (API); downloadable computer software for use in automating the creation, distribution and execution of computer program applications; downloadable computer software for use in designing, developing and deploying other computer software; downloadable computer software utilities that facilitate writing other programs; downloadable computer software for monitoring and testing other computer software; downloadable computer software for use in designing, developing and deploying other computer software; downloadable computer software utilities that facilitate writing other programs; downloadable computer software for testing other computer software
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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


Applicant proposes to amend the following:

Current:
Class 035 for Promoting public awareness of the need for technology standards and interoperability of software stack and application programming interface (API); business services for others to test for professional competency, namely, testing, analysis, and evaluation of the level of knowledge, skills and abilities of others in the field of computing software and administration; association services, namely, promoting the adoption and acceptance of open source computer technologies through the creation and promotion of common industry standards for software and hardware development; promoting the exchange of information and resources within the software technology community; consortium business and professional management in the field of open source computer software and open source computer technologies; business advisory and consulting services for consortium management related to open source computer software and open source computer technologies
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: Promoting public awareness of the need for technology standards and interoperability of software stack and application programming interface (API); business services for others to test for professional competency, namely, testing, analysis, and evaluation of the level of knowledge, skills and abilities of others in the field of computing software and administration; association services, namely, promoting the adoption and acceptance of open source computer technologies through the creation and promotion of common industry standards for software and hardware development; promoting the exchange of information and resources within the software technology community; consortium business and professional management in the field of open source computer software and open source computer technologies; consortium business and professional business management in the field of open source computer software and open source computer technologies; business advisory and consulting services for consortium management related to open source computer software and open source computer technologiesClass 035 for Promoting public awareness of the need for technology standards and interoperability of software stack and application programming interface (API); business services for others to test for professional competency, namely, testing, analysis, and evaluation of the level of knowledge, skills and abilities of others in the field of computing software and administration; association services, namely, promoting the adoption and acceptance of open source computer technologies through the creation and promotion of common industry standards for software and hardware development; promoting the exchange of information and resources within the software technology community; consortium business and professional business management in the field of open source computer software and open source computer technologies; business advisory and consulting services for consortium management related to open source computer software and open source computer technologies
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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


The owner's/holder's current attorney information: Belinda J. Scrimenti. Belinda J. Scrimenti of PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      200 SOUTH WACKER DRIVE, SUITE 2900
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 444-00-00988.
      The phone number is 312-554-7935.
      The fax number is (312) 554-8015.
      The email address is bscrimenti@pattishall.com
Correspondence Information (current):
      BELINDA J. SCRIMENTI
      PRIMARY EMAIL FOR CORRESPONDENCE: bscrimenti@pattishall.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kep@pattishall.com; sm@pattishall.com

The docket/reference number is 444-00-00988.
Correspondence Information (proposed):
      Belinda J. Scrimenti
      PRIMARY EMAIL FOR CORRESPONDENCE: bscrimenti@pattishall.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): kep@pattishall.com; sm@pattishall.com

The docket/reference number is 444-00-00988.

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: /Belinda J. Scrimenti/     Date: 12/27/2021
Signatory's Name: Belinda J. Scrimenti
Signatory's Position: Attorney of Record, Illinois Bar Member

Signatory's Phone Number: 312-554-7935 Signature method: Signed directly within the form

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:    BELINDA J. SCRIMENTI
   PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS
   
   200 SOUTH WACKER DRIVE, SUITE 2900
   CHICAGO, Illinois 60606
Mailing Address:    Belinda J. Scrimenti
   PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDS
   200 SOUTH WACKER DRIVE, SUITE 2900
   CHICAGO, Illinois 60606
        
Serial Number: 90475889
Internet Transmission Date: Mon Dec 27 18:18:16 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20211227181816121
498-90475889-8004306af58bc96c1f1660e95d7
1cc26246b41ea474faca8efd97457d96fdf6-N/A
-N/A-20211227173426145791