IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Applicant : Prolexic Technologies, Inc.

Appl. No. : 77/751,162

Filed : 06/03/2009

Mark : Touchless Baselining

Examining Attorney : Lott, Maureen Dall

Law Office : 117

A M E N D M E N T

Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Examining Attorney Lott:

Responsive to the Office action dated September 9, 2009, kindly

amend the above-identified application as follows:

Amend the identification of Goods:

IC 045: Computer network security services, namely,

mitigating distributed denial of service (DDoS) attacks on

Computer servers connected to the Internet computer network

security services, namely, monitoring of public-facing network

traffic for security purposes, for purposes of mitigating

distributed denial of service (DDoS) attacks on computer servers

connected to the Internet
Applic. No. 77/751,162
Response to Office Action Dated September 9, 2009
Response Mailed November 9, 2009

Remarks:

Section 2(e)(1):

Applicants mark is a coined term that suggests qualities of the

service and is more than a merely descriptive term about the

service.

In the Office action, the mark was rejected as being merely

descriptive under Section 2(e)(1). The Examining Attorney’s

analysis of the phrase was not fully correct. While the

Examiner’s understanding of “baselining” was essentially

correct, the Examining Attorney’s interpretation failed to

appreciate the creativity in Applicant’s selection of the term

“touchless”.

To understand the mark, the Examining Attorney needs to

appreciate DDoS attacks. For a synopsis of a DDoS attack the

Examining Attorney should consult the Wikipedia:

http://en.wikipedia.org/wiki/Denial-of-service_attack. The

Applicant sells Internet traffic security services. The service

watches Internet traffic with the Applicant’s server. When a

distributed denial of services (DDoS) attack is launched, the

Applicant’s service detects the change in traffic and implements

strategies to mitigate the attack.

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Applic. No. 77/751,162
Response to Office Action Dated September 9, 2009
Response Mailed November 9, 2009

In one strategy (not the service being sold under this mark),

the Applicant analyzes the client’s actual traffic to create a

baseline. However, many clients consider their traffic

proprietary and will not authorize this type of analysis.

Accordingly, the Applicant has created alternate means for

baselining a client’s traffic that does not involve analyzing

the actual traffic. Applicant uses other, indirect measurements

of information other than the normal traffic itself to

approximate the traffic and to calculate the baseline.

To market these new baselining services that do not require

direct analysis of the actual traffic, Applicant coined the term

“Touchless Baselining”. “Touchless” suggests to client that the

Applicant will not be dealing directly with the traffic while

creating a baseline. Touchless is merely a metaphor created by

Applicant for approximating traffic by analyzing indirect

analyticals without directly analyzing the traffic. An average

consumer would not believe “touchless” describes an attribute of

Applicant’s baselining service.

While “touchless” may at first seem to describe a quality of

Applicant’s service, a deeper examination reveals that the term

is not descriptive. As cited by the Examining Attorney,

“Touchless” means the absence of Touch. However, in this case,

Page 3 of 6
Applic. No. 77/751,162
Response to Office Action Dated September 9, 2009
Response Mailed November 9, 2009

the term “touching” does not describe the alternate type of

baselining that analyzes actual traffic. Accordingly, the term

“touchless” creates no impression as a feature of Applicant’s

services in an ordinary Applicant.

Most importantly, average consumers of Applicant’s service would

at least require some imagination, thought, or perception before

they would interpret Applicant’s touchless baselining as

baselining that is based on indirect analyticals of traffic

rather than baselining based on the traffic itself.

Accordingly, the mark is suggestive, not merely descriptive.

The fact that Applicant coined the term is further evidence that

the mark is more than merely descriptive. Attached is Google

search for the phrase “Touchless Baselining”—no results were

found. This shows that no third parties are using the phrase to

describe their services. It also shows that the term is coined

and that an average customer would have no preconception that

the term had any meaning.

Supplemental Register:

Applicant maintains its request to register the mark on the

Principal Register because the mark is suggestive and,

therefore, is more than merely distinctive.

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Applic. No. 77/751,162
Response to Office Action Dated September 9, 2009
Response Mailed November 9, 2009

Disclaimer:

No claim is made to the exclusive right to use “BASELINING”

apart from the mark as shown.

Information Requirement:

As discussed, Applicant’s service involves baselining a client’s

internet traffic in order to detect and mitigate distributed

denial of service (DDoS) attacks on the client.

In response to the Examining Attorney’s request, the baselining

is done while physically touching Applicant’s computers.

However, Applicant does not think this issue is relevant to

understanding the mark.

The “touchless” baselining being performed is a baselining based

on indirect analyticals that approximate the actual Internet

traffic. That is, the actual Internet traffic of the client is

not being directly analyzed to form the baseline.

Identification and Classification of Services:

The identification of services has been amended. The amendment

should clarify that the services relate to computer network

services in class 045. In particular, Applicant is monitoring

analyzing outward facing (i.e. traffic over the Internet) to
Page 5 of 6
Applic. No. 77/751,162
Response to Office Action Dated September 9, 2009
Response Mailed November 9, 2009

detect and mitigate DDoS attacks. If the description is not

satisfactory or unclear to the Examining Attorney, she is asked

to telephone the undersigned attorney.

Multiple-Classification Requirements:

Applicant elects to pursue this application as a single class

application. No additional filing fee is believed to be due.

Conclusion:

Reconsideration and allowance of the application is requested.

Respectfully submitted,

/Loren D. Pearson/

LOREN DONALD PEARSON
Registered Patent Attorney
Board Certified Intellectual Property Attorney
Reg. No. 42,987
Florida Bar 0095151
FLEIT GIBBONS GUTMAN BONGINI & BIANCO, PL
21355 E. Dixie Highway
Suite 115
Miami, FL 33180
Tel.: (305)830-2600
Fax: (305)830-2605

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