From:
`
`To:
`
`CC:
`
`Subject:
`
`laperle@apple.com (laperle@apple.com)
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`ecom103@uspto.gov (SMTP:ecom103@uspto.gov)
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`laperle@apple.com (SMTP:laperle@apple.com)
`
`Response to Office Action for Apple Logo (Black) Class 42-Serial No.
`78146716
`
`Received:
`
`2/27/03 4:26:13 PM
`
`Attachments:
`
`AMENDMENT AND RESPONSE TO FEBRUARY 7, 2003 OFFICE ACTION
`FROM LAW OFFICE 103
`VIA EMAIL ONLY
`
`Mark: DESIGN ONLY ("APPLE LOGO" SOLID)
`Applicant: Apple Computer, Inc.
`Serial Number: 78/146716
`Trademark Law Office: 103
`Examining Attorney: James A. Rauen
`
`Correspondent's Reference/Docket Number: TM 7252
`
`CERTIFICATE OF TRANSMISSION
`I hereby certify that this correspondence is being transmitted by electronic
`mail to the United States Patent and Trademark Office on the date shown
`below.
`
`By: Thomas R. La Perle
`Title: Intellectual Property Counsel
`Dated: February 27, 2003
`Signature: /Thomas R. La Perle/
`
`AMENDMENT AND RESPONSE TO February 7, 2003 OFFICE ACTION
`FROM LAW OFFICE 103
`
`Dear Sirs,
`
`This is in response to a February 7, 2003 Office Action regarding
`the above noted application. In that Office Action, the Examining Attorney
`1) noted that applicant's amended recitation of services has been made of
`record and is acceptable with several exceptions. Applicant will respond
`to those exceptions herein.
`
`RECITATION OF GOODS: AMENDMENT
`
`

`
`The Examining Attorney has requested that Applicant amend the following
`recitations:
`
`1. clarify the recitation of services by inserting the
`wording "computer consultation, namely" before the wording "analyzing data
`to detect, eradicate, and prevent the occurrence of computer viruses."
`
`2. clarify the recitation of services by inserting the
`wording "computer consultation, namely" before the wording "services
`relating to the protection of computer hardware, computer software computer
`networks and computer systems against computer viruses, attacks or
`failures."
`
`3. clarify the recitation of services by inserting the
`wording "computer consultation, namely" before the wording "services for
`optimizing the performance and functionality of computer software and
`communications networks."
`
`Applicant would like to thank the Examining Attorney for his suggestions and
`hereby agrees to amend the recitations as set forth above.
`
`4. The Examining Attorney has also noted that the classification
`"association services" in International Class 42 is improper, as the correct
`classification is in Class 35. The Examining Attorney has requested that
`Applicant either delete this recitation or add Class 35 to the application.
`Applicant would like to delete these services.
`
`Given the above three amendments and one deletion, Applicant believes the
`application should now cover the following services, as amended (changes
`highlighted in upper case):
`
`"Application service provider (ASP), namely, hosting computer software
`applications of others; computer services, namely, displaying the web sites
`and images of others on a computer server; computer diagnostic services;
`installation of computer software; updating of computer software;
`maintenance of computer software; computer hardware development; integration
`of computer systems and networks; monitoring the computer systems of others
`for technical purposes and providing back-up computer programs and
`facilities; computer consultation, design, and testing services; consulting
`services in the field of design, selection, implementation and use of
`computer hardware and software systems for others; computer data recovery;
`computer programming for others; research and development of computer
`hardware and software; website design, creation and hosting services;
`computer services, namely, designing and implementing web sites for others;
`computer services, namely, providing search engines for obtaining data on a
`global computer network; providing use of on-line non-downloadable software
`for communications via local or global communications networks, including
`the Internet, intranets, and extranets; COMPUTER CONSULTATION, NAMELY,
`analyzing data to detect, eradicate, and prevent the occurrence of computer
`
`

`
`viruses; COMPUTER CONSULTATION, NAMELY, services relating to the protection
`of computer hardware, computer software, computer networks and computer
`systems against computer viruses, attacks, or failures; COMPUTER
`CONSULTATION, NAMELY, services for optimizing the performance and
`functionality of computer software and communications networks; technical
`support services, namely, troubleshooting of computers, computer software,
`telecommunications, and the Internet systems; leasing of computers, computer
`peripherals and computer software; leasing computer facilities; providing
`information in a wide variety of fields over computer networks and global
`communication networks; computer services, namely, creating indexes of
`information, web sites and other information sources available on computer
`networks; providing information concerning a wide range of text, electronic
`documents, databases, graphics and audiovisual information;"
`
`CONCLUSION
`
`Applicant believes it has addressed all the issues presented in the above
`noted Office Action. Applicant believes the application is now in condition
`for publication, and action toward that end at an early date is earnestly
`solicited. If the Examining Attorney has any questions, and if a telephone
`conversation can speed the application to registration, Applicant invites
`the Examining Attorney to contact Applicant at the below phone number.
`
`Respectfully submitted,
`
`/Thomas R. La Perle/
`__________________________________
`Thomas R. La Perle
`Intellectual Property Counsel
`
`Apple Computer, Inc.
`1 Infinite Loop, MS: 3TM
`Cupertino, California 95014
`Phone: 408-974-2385
`Fax: 408-253-0186