Response to Office Action

SILK

Silk Ventures

Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 79220238
LAW OFFICE ASSIGNED LAW OFFICE 125
MARK SECTION
MARK http://uspto.report/TM/79220238/mark.png
LITERAL ELEMENT SILK
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
OWNER SECTION (current)
NAME Silk Ventures
STREET One Canada Square Level 39: HGS 24
CITY London E14 5AB
COUNTRY United Kingdom
OWNER SECTION (proposed)
NAME Silk Ventures
STREET One Canada Square Level 39: HGS 24
CITY London
ZIP/POSTAL CODE E14 5AB
COUNTRY United Kingdom
LEGAL ENTITY SECTION (current)
TYPE APPLICANT ENTERED NO DATA
LEGAL ENTITY SECTION (proposed)
TYPE limited company (ltd.)
STATE/COUNTRY WHERE LEGALLY ORGANIZED United Kingdom
ARGUMENT(S)
Registration has been refused because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 3208547; 3246906; 2895006. Applicant has with this response significantly limited the scope of services in a manner that Applicant believes sufficient to remove any likelihood of confusion, inasmuch as Applicant?s services are not at all related to real estate services, and are not similar to the certificate-of-deposit type of services offered under the cited registrations, but are instead limited to investment banking services. Applicant therefore respectfully requests that the refusal under Section 2(d) be withdrawn and the mark passed for publication.
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS 036
DESCRIPTION
Financial and monetary services, and banking; financing and funding services; venture capital services; venture capital (services for the finding of -); venture capital (services for the provision of -); investment services; financial underwriting and securities issuance (investment banking); investment banking services; administration of funds and investments; arranging of investments; capital investment; financial transfers and transactions, and payment services; bank card, credit card, debit card and electronic payment card services; cash, check (cheque) and money order services; tax and duty payment services; financial information, data, advice and consultancy services; financial appraisal services; financial planning services; financial rating and credit reports; currency trading and exchange services; loan and credit, and lease-finance services; securities and commodities trading services; financial management of shares in other companies
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS 036
TRACKED TEXT DESCRIPTION
Financial and monetary services, and banking; Financial and monetary services, namely, venture capital financing and private equity fund investment services, venture capital fund management, management of private equity funds, investment of funds, investment management, investment consultation related to cross-border investment activities; financing and funding services; venture capital services; venture capital (services for the finding of -); venture capital (services for the provision of -); investment services; financial underwriting and securities issuance (investment banking); investment banking services; administration of funds and investments; arranging of investments; capital investment; financial transfers and transactions, and payment services; bank card, credit card, debit card and electronic payment card services; cash, check (cheque) and money order services; tax and duty payment services; financial information, data, advice and consultancy services; financial appraisal services; financial planning services; financial rating and credit reports; currency trading and exchange services; loan and credit, and lease-finance services; securities and commodities trading services; financial management of shares in other companies
FINAL DESCRIPTION
Financial and monetary services, namely, venture capital financing and private equity fund investment services, venture capital fund management, management of private equity funds, investment of funds, investment management, investment consultation related to cross-border investment activities
NEW ATTORNEY SECTION
NAME Nicholas D Wells
FIRM NAME Legends Law Group, PLLC
INDIVIDUAL ATTORNEY
DOCKET/REFERENCE NUMBER
5765.201
OTHER APPOINTED ATTORNEY Stephen H. Bean
STREET 330 N. Main St.
CITY Kaysville
STATE Utah
ZIP/POSTAL CODE 84037
COUNTRY United States
PHONE 8013374500
EMAIL nwells@legendslaw.com
AUTHORIZED EMAIL COMMUNICATION Yes
CORRESPONDENCE SECTION
ORIGINAL ADDRESS Silk Ventures
One Canada Square Level 39: HGS 24
London E14 5AB
GB
NEW CORRESPONDENCE SECTION
NAME Nicholas D Wells
FIRM NAME Legends Law Group, PLLC
DOCKET/REFERENCE NUMBER 5765.201
STREET 330 N. Main St.
CITY Kaysville
STATE Utah
ZIP/POSTAL CODE 84037
COUNTRY United States
PHONE 8013374500
EMAIL nwells@legendslaw.com;docket@legendslaw.com
AUTHORIZED EMAIL COMMUNICATION Yes
SIGNATURE SECTION
RESPONSE SIGNATURE /Nicholas Wells/
SIGNATORY'S NAME Nicholas D Wells
SIGNATORY'S POSITION Attorney of record, New York bar member
SIGNATORY'S PHONE NUMBER 8013374500
DATE SIGNED 02/09/2018
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Fri Feb 09 17:16:09 EST 2018
TEAS STAMP USPTO/ROA-XX.XX.XXX.XX-20
180209171609998233-792202
38-510863214f2a1f928d1fa7
0d6cb8cedc45a521bd11e28ea
7229b99ac0ef39fbe24-N/A-N
/A-20180209171343629466



Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
PTO Form 1957 (Rev 10/2011)
OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 79220238 SILK(Standard Characters, see http://uspto.report/TM/79220238/mark.png) has been amended as follows:

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

Registration has been refused because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 3208547; 3246906; 2895006. Applicant has with this response significantly limited the scope of services in a manner that Applicant believes sufficient to remove any likelihood of confusion, inasmuch as Applicant?s services are not at all related to real estate services, and are not similar to the certificate-of-deposit type of services offered under the cited registrations, but are instead limited to investment banking services. Applicant therefore respectfully requests that the refusal under Section 2(d) be withdrawn and the mark passed for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial and monetary services, and banking; financing and funding services; venture capital services; venture capital (services for the finding of -); venture capital (services for the provision of -); investment services; financial underwriting and securities issuance (investment banking); investment banking services; administration of funds and investments; arranging of investments; capital investment; financial transfers and transactions, and payment services; bank card, credit card, debit card and electronic payment card services; cash, check (cheque) and money order services; tax and duty payment services; financial information, data, advice and consultancy services; financial appraisal services; financial planning services; financial rating and credit reports; currency trading and exchange services; loan and credit, and lease-finance services; securities and commodities trading services; financial management of shares in other companies
Original Filing Basis:
Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

Proposed:
Tracked Text Description: Financial and monetary services, and banking; Financial and monetary services, namely, venture capital financing and private equity fund investment services, venture capital fund management, management of private equity funds, investment of funds, investment management, investment consultation related to cross-border investment activities; financing and funding services; venture capital services; venture capital (services for the finding of -); venture capital (services for the provision of -); investment services; financial underwriting and securities issuance (investment banking); investment banking services; administration of funds and investments; arranging of investments; capital investment; financial transfers and transactions, and payment services; bank card, credit card, debit card and electronic payment card services; cash, check (cheque) and money order services; tax and duty payment services; financial information, data, advice and consultancy services; financial appraisal services; financial planning services; financial rating and credit reports; currency trading and exchange services; loan and credit, and lease-finance services; securities and commodities trading services; financial management of shares in other companiesClass 036 for Financial and monetary services, namely, venture capital financing and private equity fund investment services, venture capital fund management, management of private equity funds, investment of funds, investment management, investment consultation related to cross-border investment activities

Filing Basis Section 66(a) , Request for Extension of Protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Silk Ventures having an address of
      One Canada Square Level 39: HGS 24
      London E14 5AB,
      United Kingdom

Proposed: Silk Ventures, limited company (ltd.) legally organized under the laws of United Kingdom, having an address of
      One Canada Square Level 39: HGS 24
      London, E14 5AB
      United Kingdom

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Nicholas D Wells of Legends Law Group, PLLC, having an address of
330 N. Main St. Kaysville, Utah 84037
United States
nwells@legendslaw.com
8013374500
The attorney docket/reference number is 5765.201 .
The Other Appointed Attorney(s): Stephen H. Bean.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
Silk Ventures
One Canada Square Level 39: HGS 24
London E14 5AB
GB

Proposed:
Nicholas D Wells of Legends Law Group, PLLC, having an address of
330 N. Main St. Kaysville, Utah 84037
United States
nwells@legendslaw.com;docket@legendslaw.com
8013374500
The docket/reference number is 5765.201 .



SIGNATURE(S)
Response Signature
Signature: /Nicholas Wells/     Date: 02/09/2018
Signatory's Name: Nicholas D Wells
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 8013374500

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

Mailing Address:    Nicholas D Wells
   Legends Law Group, PLLC
   330 N. Main St.
   Kaysville, Utah 84037
        
Serial Number: 79220238
Internet Transmission Date: Fri Feb 09 17:16:09 EST 2018
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20180209171609998
233-79220238-510863214f2a1f928d1fa70d6cb
8cedc45a521bd11e28ea7229b99ac0ef39fbe24-
N/A-N/A-20180209171343629466



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