PTO Form 1960 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Request for Reconsideration after Final Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`85711094
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 102
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`The Examining Attorney has maintained her refusal of Applicant’s specimen with respect to Class 9 of U.S.
`Trademark App. No. 85/711,094 for the mark ENDGAME (the “Application”). (cid:160) The Examining Attorney has
`stated that “the specimen is not acceptable as a display associated with the goods and appears to be mere
`advertising material.” (cid:160) Specifically, the Examiner has alleged that the specimen is unacceptable because it
`consists of a webpage that does not include the means for ordering the goods.(cid:160) However, telephone
`numbers and/or email addresses are capable of
`transforming material otherwise deemed to be mere
`advertising, provided that the telephone number or email address is accompanied by special instructions for
`placing or accepting orders.(cid:160) TMEP 904.03(i)(C)(2).(cid:160) Thus, in light of the fact that Applicant’s substitute
`specimen submitted in connection with this response clearly provides a dedicated sales email address
`through which consumers may place orders, Applicant respectfully asserts that the substitute specimen
`meets the requirements and requests that the Examining Attorney accept the specimen and allow the
`
`application to proceed to registration.(cid:160)(cid:160)
`
`Specifically, the TMEP notes that an email address constitutes an acceptable means of ordering if the
`address itself indicates that orders may be placed or are accepted via email. See TMEP 904.03(i)(C)(2).(cid:160)
`Here,
`the substitute specimen displays the dedicated enterprisesales@endgame.com email address
`through which orders are accepted and may be placed.(cid:160)
`Importantly, the email address itself indicates that
`consumers wishing to contact Applicant’s sales department should write to that address.(cid:160) Further, this
`dedicated sales email address is displayed directly beneath the header ENTERPRISE SALES,
`unmistakably identifying this email address as a means through which the consumer may place an order.
`
`(cid:160)I
`
`n addition, we note that the TMEP specifically notes that complex or sophisticated goods for which
`technical assistance may be required in selecting or determining the product specifications constitutes a
`special situation for which a telephone number or email address would suffice.(cid:160) See TMEP 904.03(i)(C)(2).
`Applicant offers highly specialized software products that provide enterprise-wide defense mechanisms
`against highly advanced cyber threats.(cid:160) Applicant’s products are primarily used by the federal government
`in order to protect national security interests and large commercial enterprises.(cid:160)
`Importantly, Applicant’s
`software is not marketed to the general public.(cid:160) Likewise, Applicant’s software is not available to members
`of the general public through retail or online retail outlets.(cid:160) Rather, Applicant’s software is acquired by highly
`sophisticated information technology professionals in the public and private sector.(cid:160) Applicant’s software
`requires substantial financial
`investment, and as a result, Applicant’s consumers generally have myriad
`inquiries about the software’s capabilities before consummating their purchase.(cid:160) Accordingly, Applicant’s
`sales process is a multi-layered series of interactions between Applicant and its prospective purchasers.(cid:160)
`While Applicant’s goods are available through the ENTERPRISE SALES email address noted above, the
`vast majority of Applicant’s consumers elect to contact Applicant to obtain additional information before
`making a purchase.
`
`

`
`(cid:160)T
`
`hus, in light of the fact that the substitute specimen includes an email address that indicates that orders
`may be placed through such email address, coupled with the highly complex and sophisticated nature of
`Applicant’s goods, Applicant respectfully asserts that the substitute specimen meets the requirements and
`requests that
`the Examining Attorney accept
`the specimen and allow the application to proceed to
`registration.(cid:160)
`
`GOODS AND/OR SERVICES SECTION (009)(current)
`
`INTERNATIONAL CLASS
`
`009
`
`DESCRIPTION
`
`software for use in cyber and network security management; software for use in data analytics and
`visualization
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE ANYWHERE DATE
`
`At least as early as 03/01/2013
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160) FIRST USE IN COMMERCE DATE
`
`At least as early as 03/01/2013
`
`FILING BASIS
`
`Section 1(b)
`
`GOODS AND/OR SERVICES SECTION (009)(proposed)
`
`INTERNATIONAL CLASS
`
`009
`
`DESCRIPTION
`
`software for use in cyber and network security management; software for use in data analytics and
`visualization
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE ANYWHERE DATE
`
`At least as early as 03/01/2013
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FIRST USE IN COMMERCE DATE
`
`At least as early as 03/01/2013
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)STATEMENT TYPE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)SPECIMEN
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)FILE NAME(S)
`
`"The substitute (or new, if appropriate) specimen(s)
`was/were in use in commerce at least as early as the filing
`date of the application"[for an application based on Section
`1(a), Use in Commerce] OR "The substitute (or new, if
`appropriate) specimen(s) was/were in use in commerce
`prior either to the filing of the Amendment to Allege Use
`or expiration of the filing deadline for filing a Statement
`of Use" [for an application based on Section 1(b) Intent-to-
`Use].
`
`\\TICRS\EXPORT16\IMAGEOUT
`16\857\110\85711094\xml18 \RFR0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT
`16\857\110\85711094\xml18 \RFR0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT
`16\857\110\85711094\xml18 \RFR0004.JPG
`
`GOODS AND/OR SERVICES SECTION (042)(no change)
`
`SIGNATURE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`/Ryan C. Compton/
`
`Ryan C. Compton
`
`SIGNATORY'S POSITION
`
`Attorney of record, D.C. bar member
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`2027994000
`
`05/20/2015
`
`/Ryan C. Compton/
`
`Ryan C. Compton
`
`SIGNATORY'S POSITION
`
`Attorney of record, D.C. bar member
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`2027994000
`
`05/20/2015
`
`YES
`
`YES
`
`SUBMIT DATE
`
`Wed May 20 21:10:29 EDT 2015
`
`USPTO/RFR-65.175.3.10-201
`50520211029979162-8571109
`4-5305633fd8ca5e9f536dd23
`0c2b430e1bfa84e5c24b49a50
`17f875e531f69cb3-N/A-N/A-
`20150520190752842455
`
`TEAS STAMP
`
`PTO Form 1960 (Rev 9/2007)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 85711094 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`The Examining Attorney has maintained her refusal of Applicant’s specimen with respect to Class 9 of U.S.
`Trademark App. No. 85/711,094 for the mark ENDGAME (the “Application”). (cid:160) The Examining Attorney has
`stated that “the specimen is not acceptable as a display associated with the goods and appears to be mere
`advertising material.”
`(cid:160) Specifically, the Examiner has alleged that the specimen is unacceptable because it
`consists of a webpage that does not include the means for ordering the goods.(cid:160) However, telephone numbers
`
`

`
`and/or email addresses are capable of transforming material otherwise deemed to be mere advertising,
`provided that the telephone number or email address is accompanied by special
`instructions for placing or
`accepting orders.(cid:160) TMEP 904.03(i)(C)(2).(cid:160) Thus, in light of the fact that Applicant’s substitute specimen
`submitted in connection with this response clearly provides a dedicated sales email address through which
`consumers may place orders, Applicant
`respectfully asserts that
`the substitute specimen meets the
`requirements and requests that the Examining Attorney accept the specimen and allow the application to
`
`proceed to registration.(cid:160)(cid:160)
`
`Specifically, the TMEP notes that an email address constitutes an acceptable means of ordering if the address
`itself indicates that orders may be placed or are accepted via email. See TMEP 904.03(i)(C)(2).(cid:160)
`Here, the substitute specimen displays the dedicated enterprisesales@endgame.com email address through
`which orders are accepted and may be placed.(cid:160)
`Importantly, the email address itself indicates that consumers
`wishing to contact Applicant’s sales department should write to that address.(cid:160) Further, this dedicated sales
`email address is displayed directly beneath the header ENTERPRISE SALES, unmistakably identifying this
`email address as a means through which the consumer may place an order.
`
`(cid:160)I
`
`n addition, we note that the TMEP specifically notes that complex or sophisticated goods for which technical
`assistance may be required in selecting or determining the product specifications constitutes a special
`situation for which a telephone number or email address would suffice.(cid:160) See TMEP 904.03(i)(C)(2). Applicant
`offers highly specialized software products that provide enterprise-wide defense mechanisms against highly
`advanced cyber threats.(cid:160) Applicant’s products are primarily used by the federal government in order to protect
`national security interests and large commercial enterprises.(cid:160)
`Importantly, Applicant’s
`software is not
`marketed to the general public.(cid:160) Likewise, Applicant’s software is not available to members of the general
`public through retail or online retail outlets.(cid:160) Rather, Applicant’s software is acquired by highly sophisticated
`information technology professionals in the public and private sector.(cid:160) Applicant’s
`software requires
`substantial financial investment, and as a result, Applicant’s consumers generally have myriad inquiries about
`the software’s capabilities before consummating their purchase.(cid:160) Accordingly, Applicant’s sales process is a
`multi-layered series of interactions between Applicant and its prospective purchasers.(cid:160) While Applicant’s
`goods are available through the ENTERPRISE SALES email address noted above, the vast majority of
`Applicant’s consumers elect to contact Applicant to obtain additional information before making a purchase.
`
`(cid:160)T
`
`hus, in light of the fact that the substitute specimen includes an email address that indicates that orders may
`be placed through such email address, coupled with the highly complex and sophisticated nature of
`Applicant’s goods, Applicant respectfully asserts that the substitute specimen meets the requirements and
`requests that the Examining Attorney accept the specimen and allow the application to proceed to registration.
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 009 for software for use in cyber and network security management; software for use in
`data analytics and visualization
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: The applicant has had a bona fide intention to use or use
`through the applicant's related company or licensee the mark in commerce on or in connection with the
`identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).
`
`In International Class 009, the mark was first used at least as early as 03/01/2013 and first used in
`commerce at least as early as 03/01/2013 .
`
`Proposed: Class 009 for software for use in cyber and network security management; software for use in
`data analytics and visualization
`
`(cid:160)
`

`
`Deleted Filing Basis: 1(b)
`In International Class 009, the mark was first used at least as early as 03/01/2013 . and first used in
`commerce at least as early as 03/01/2013 .
`
`Applicant hereby submits one(or more) specimen(s) for Class 009 .
`" The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early
`as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "
`The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the
`filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of
`Use " [for an application based on Section 1(b) Intent-to-Use] . Specimen File1
`Specimen File2
`Specimen File3
`
`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. Section 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 amendment to allege use (AAU) unsigned, all
`statements in the application or AAU and this submission based on the signatory's own knowledge are
`true, and all statements in the application or AAU and this submission made on information and belief are
`believed to be true.
`
`STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an
`unsigned application under 15 U.S.C. Section 1051(a) or AAU under 15 U.S.C. Section 1051(c), the
`signatory additionally believes that: the applicant is the owner of the trademark/service mark sought to be
`registered; the applicant or the applicant's related company or licensee is using the mark in commerce and
`has been using the mark in commerce as of the filing date of the application or AAU on or in connection
`with the goods/services in the application or AAU, and such use by the applicant's related company or
`licensee inures to the benefit of the applicant; the original specimen(s), if applicable, shows the mark in
`use in commerce as of the filing date of the application or AAU on or in connection with the
`goods/services in the application or AAU; and to the best of the signatory's knowledge and belief, no other
`person has 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 of such other person, to cause
`confusion or mistake, or to deceive.
`
`STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION: If the applicant filed
`an unsigned application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the
`signatory additionally believes that: the applicant is entitled to use the mark in commerce; the applicant
`has a bona fide intention and has had a bona fide intention as of the application filing date to use or use
`through the applicant's related company or licensee the mark in commerce on or in connection with the
`goods/services in the application; and to the best of the signatory's knowledge and belief, no other person
`has 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 of such other person, to cause confusion or
`mistake, or to deceive.
`
`Signature: /Ryan C. Compton/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 05/20/2015
`Signatory's Name: Ryan C. Compton
`
`

`
`Signatory's Position: Attorney of record, D.C. bar member
`Signatory's Phone Number: 2027994000
`
`Request for Reconsideration Signature
`Signature: /Ryan C. Compton/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 05/20/2015
`Signatory's Name: Ryan C. Compton
`Signatory's Position: Attorney of record, D.C. bar member
`
`Signatory's Phone Number: 2027994000
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
`highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
`territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
`the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
`attorney/agent not currently associated with his/her company/firm previously represented the applicant in
`this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
`of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
`applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing
`him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 85711094
`Internet Transmission Date: Wed May 20 21:10:29 EDT 2015
`TEAS Stamp: USPTO/RFR-65.175.3.10-201505202110299791
`62-85711094-5305633fd8ca5e9f536dd230c2b4
`30e1bfa84e5c24b49a5017f875e531f69cb3-N/A
`-N/A-20150520190752842455
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`
`Béfirams Search sw x
`
`cg usnro TSDF. Ca:.-:
`
`)1 " @ usrrro TSDR Cas.-' x J)”, E Endgame Enterp'
`
`:: ‘5 M1nboxt5)— binkste x
`
`;_’-1 RDMS TMEP -Jar. x @ uspro TSDR Ca:-'-
`
`3:
`
`.
`
`°zJ3iI13:'
`
`C‘ Qhttp5:,J,“www,endgame.com,-’enterprfsE
`-
`(-
`,_ Apps &IMyZrnanim.com-'IrL.. gaommw finem.-ms3IagAdm'n DCl'ents.r’MaI‘lers Dire“.
`
`izmasonicand Kabbalu.
`
`|j Rant 3 Sprilzlet
`
`Q
`iDashboard|Le>(o1u...
`
`W
`
`fit § G] E
`ficmherbookmanzs
`
`mm
`
`E'"£rpri2
`
`Fadera.
`
`Ainu-.
`
`F'.ecu'.rte:
`
`Etcg
`
`Czrset
`
`Ccmm
`
`ENDGAME. ENTERPRISE
`
`INSTANT DETECTION AND ACTIVE
`RESPONSE
`
`lzndclzrne rmterr 52 I5 tr-2 If1.JStrv'5fI’ElEffl|:’.‘ nt aelecmon anilesnonse[EDRID\atformthat|1e|»e'5 ear .- war'II.1g.n'5I:eI'tfietecucI'.3nd acme resaonse to advanced II-teats. Enaqzme [:'IteI':>::se neuer aw-seas.
`conmucus .2 mo tame vow erase ms ror threat; m 3592:‘ by trauuwrxal defenses. reatunw ad\.'a'\ced threat mtaui-qence. here»-::.'a ana~vs-5.a'Ir.'1 attacq cnam mode ur a. endgame Erttarurlse 't'ur'.ks I ke the acuersar.-".
`er ahl rm cuatcnmzrs in detect. am: mspund PasL-,=r m .JI‘knGwn Lnraazs :J'Eu-3r‘(In[.I mam ace and less,
`
`HOW IT WORKS
`
`

`
`® Status sec-«In sr.
`
`x
`
`'@ usnro TS-E)-R Ca:-
`
`x ®'USPTO TSDR Ca:-
`
`x
`:!BEndgaIn;_lI1-5-EEI1:
`
`x "'k—I‘-".1";Uc>:<[5J-binkst
`
`x"
`
`RDMSTMEP-Jar
`
`>6‘ @-USPTOTSII-DE Ca:
`
`x
`
`mm:
`
`a E
`
`(- -) C‘ E1https:3,-'www‘endgame‘com
` Apps El Mylmaninmcom - In”. E ROMARIN B Remaris Blog Admin Q Clients.-‘Matters Dire.” Q Masonic and Kabbalu.
`
`i_; Rant
`
`‘El.
`Spritzlet W Dashboard | Lexola...
`
`H
`
`ENQGAME
`
`
`
`=e:e'3.
`
`;=:-.—_
`
`
`
`E.-:g
`
`§ GI
`Q Other boakmafts
`E-w
`:.:.~u:
`
`Curse’:
`
`ENDGAME. ENTERPRISE
`instant d-ztechon and active rr_-spanse to the
`most advancccl advcvsaries.
`
`nnqxne hnlevun
`
`Lalrn M
`
`buu
`
`How the SWO-RUSS a'1C5-her Pact Further;
`the Geopolitical Dig\ta\ D u de
`
`Whi:e Pauer. T.Jrn the Van Around to
`Pre-ve'1tDan1age and Loss from Cyber
`Attacks
`
`SCIUI on Bnef. DE-ta-\.t'rg Adveserxes and
`ReS:JO|‘di|‘g Rapicly m we C.\cud
`
`
`
`THE ENDC-AME ADVANTAGE
`
`EARLY W‘ -’-\|?N|NC:
` ' "ed w
`
`I-Y r 1,1 'J‘.IaL'k
`
`
`
`

`
`" " ® usnro TSDR Cas.-' x J?’ E Endgame Enterp'
`as
`cg USPTO TSDR Caz.-:
`éstatus Search SN )2
`(-
`-
`C‘ Q htlpswwww.endgamelcom,-’enterp rise
`555 Apps Q: MyZn:am'm.com-'IrL.. 3 ROMARIN Q Remams3IagAd.min Q ciemsmianers Dire“. E; Masonicand Kabbalu.
`
`at If M Inbox £5) — binkste x
`
`:_'-I RDMS TMEP -Jar x ® usvro TSDR Ca:-'-
`
`lj Rm 3 Spritzlet
`
`Dashboard | Lexodo...
`
`.
`
`2:
`W
`
`PE I_ILfl
`J9? 3! § G] E
`fi Olherbookmrlzs
`
`I
`
`Enterprise
`
`Federal
`
`About
`
`Resources
`
`Btog
`
`Careers
`
`Contact
`
`_
`
`EN DGAM E. ENTERPRISE
`
`Media Inquiries
`
`Customer Support
`
`Enterprise Sales
`
`INSTANT DETECTION AND ACTIVE
`RESPONSE
`
`Endgame Enterprise is the industry’s first endpoint detection and response (EDR) platform that delivers early
`warning instant detection, and active response to advanced threats. Endgame Enterprise never sleeps,
`continuously monitoring your endpoints for threats missed by traditional defenses. Featuring advanced threat
`intelligence, behavioral analysis, and attack chain modeling, Endgame Enterprise "thinks like the adversary",
`enabling customers to detect and respond faster to unknown threats, preventing damage and loss.
`
`1. S5i'110‘34[1]pdf
`
`'
`
`l- Showaildu
`
`loads...
`
`at