TEAS Request Reconsideration after FOA

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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 79243756 AXIUM(Standard Characters, see http://uspto.report/TM/79243756/mark.png) has been amended as follows:

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

This document is filed in response to Office Action No. 1, mailed July 23, 2019. 

 

The Examining Attorney has maintained the refusal to register Applicant's mark on the ground that the mark AXIUM is likely to be confused with the mark in U.S. Registration No. 4526188 for AXIOM in class 36 in the name of Axiom Bancshares, Inc.

       

As noted in the prior response, theClass 36 services associated with the marks AXIUM and AXIOM are unrelated and target different markets. Applicant, Ingenico Group, is using AXIUM in connection with a point-of-sale program for digital e-commerce. Applicant is not offering banking services.

 

Applicant notes that the cited registration is facing a May 6, 2020 deadline to file its Declaration of Continued Use, which period commenced on May 6, 2019. Registrant has not filed a Declaration of Continued Use. As such, Applicant respectfully requests suspension of the subject application pending whether the cited registration is maintained.

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 processing electronic payments and transfers of funds to and from third parties; software for the authentication or identification of individuals especially in a cryptographic or biometric manner; software for assessing transaction risks; software for the security and prevention of fraud in data exchange; equipment for processing and consulting data; apparatus and media for recording, transmission and reproduction of sound, images and signals; computers, micro-computers, computer peripheral devices; printers; cash registers; calculating machines; cell and battery chargers; printed circuits; Computer software for point-of-sale transactions; computer antivirus software; computer software for the creation of firewall; recording media, namely, blank DVDs; magnetic or optical data media, namely, blank magnetic data carriers; telecommunication apparatus, namely, telephone terminals; data processors; computer servers; computer software systems for database management; downloadable electronic data files featuring income tax forms, recipes; electronic payment instruments, namely, cards of payment and apparatus, namely, terminals; electronic installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; electronic systems for secure payment transactions comprised of electronic payment terminals; card and non-contact electronic payment terminals; secure terminals for electronic transactions featuring recorded software for payment and funds transfer systems for memory and microprocessor cards; electronic terminals accepting microchip cards for reading or writing which can be connected to a local or remote computer or to another machine for accessing a network with applications used for electronic transactions on open networks and for payment transactions; electronic payment terminals for payment by card particularly credit, debit and store cards at shop sales counters; electronic keycards, magnetic keycards, magnetic identity cards, machine-readable magnetic encoded keycards and electronic keycards which can be encoded; cards, namely, magnetic coded cards for used for obtaining and storing information; memory cards; magnetically encoded credit cards; magnetically encoded debit card; magnetically encoded payment or prepayment cards; magnetically encoded transaction cards; telephones; telecommunications apparatus, namely, telephones, mobile phones, modems and their accessories, namely, microphones, fuses, indicator lights, electrical transformers, change-over switches, electric capacitors; portable electronic devices, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; electronic apparatus and equipment for remote connection to a computer and/or telecommunication network; secure terminals for the transmission of data with a card or without contact; cryptographic and biometric devices and apparatus for identification verification and detection of impermissible items being carried through a entry security portal; all the aforesaid goods in connection with a point-of-sale platform for digital commerce
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: software for processing electronic payments and transfers of funds to and from third parties; software for the authentication or identification of individuals especially in a cryptographic or biometric manner; software for assessing transaction risks; software for the security and prevention of fraud in data exchange; equipment for processing and consulting data; apparatus and media for recording, transmission and reproduction of sound, images and signals; computers, micro-computers, computer peripheral devices; printers; cash registers; calculating machines; cell and battery chargers; printed circuits; Computer software for point-of-sale transactions; Computer software for processing point-of-sale transactions; computer antivirus software; computer software for the creation of firewall; recording media, namely, blank DVDs; magnetic or optical data media, namely, blank magnetic data carriers; telecommunication apparatus, namely, telephone terminals; data processors; computer servers; computer software systems for database management; downloadable electronic data files featuring income tax forms, recipes; electronic payment instruments, namely, cards of payment and apparatus, namely, terminals; electronic payment instruments, namely, electronic and magnetic ID cards for use in connection with payment for services and apparatus, namely, terminals; electronic installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; electronic systems for secure payment transactions comprised of electronic payment terminals; card and non-contact electronic payment terminals; secure terminals for electronic transactions featuring recorded software for payment and funds transfer systems for memory and microprocessor cards; electronic terminals accepting microchip cards for reading or writing which can be connected to a local or remote computer or to another machine for accessing a network with applications used for electronic transactions on open networks and for payment transactions; electronic payment terminals for payment by card particularly credit, debit and store cards at shop sales counters; electronic keycards, magnetic keycards, magnetic identity cards, machine-readable magnetic encoded keycards and electronic keycards which can be encoded; cards, namely, magnetic coded cards for used for obtaining and storing information; memory cards; magnetically encoded credit cards; magnetically encoded debit card; magnetically encoded payment or prepayment cards; magnetically encoded transaction cards; telephones; telecommunications apparatus, namely, telephones, mobile phones, modems and their accessories, namely, microphones, fuses, indicator lights, electrical transformers, change-over switches, electric capacitors; portable electronic devices, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; electronic apparatus and equipment for remote connection to a computer and/or telecommunication network; secure terminals for the transmission of data with a card or without contact; cryptographic and biometric devices and apparatus for identification verification and detection of impermissible items being carried through a entry security portal; all the aforesaid goods in connection with a point-of-sale platform for digital commerceClass 009 for software for processing electronic payments and transfers of funds to and from third parties; software for the authentication or identification of individuals especially in a cryptographic or biometric manner; software for assessing transaction risks; software for the security and prevention of fraud in data exchange; equipment for processing and consulting data; apparatus and media for recording, transmission and reproduction of sound, images and signals; computers, micro-computers, computer peripheral devices; printers; cash registers; calculating machines; cell and battery chargers; printed circuits; Computer software for processing point-of-sale transactions; computer antivirus software; computer software for the creation of firewall; recording media, namely, blank DVDs; magnetic or optical data media, namely, blank magnetic data carriers; telecommunication apparatus, namely, telephone terminals; data processors; computer servers; computer software systems for database management; downloadable electronic data files featuring income tax forms, recipes; electronic payment instruments, namely, electronic and magnetic ID cards for use in connection with payment for services and apparatus, namely, terminals; electronic installations and instruments for encoding, decoding, transcoding, ciphering, deciphering, recording, transmitting, reproducing information; electronic systems for secure payment transactions comprised of electronic payment terminals; card and non-contact electronic payment terminals; secure terminals for electronic transactions featuring recorded software for payment and funds transfer systems for memory and microprocessor cards; electronic terminals accepting microchip cards for reading or writing which can be connected to a local or remote computer or to another machine for accessing a network with applications used for electronic transactions on open networks and for payment transactions; electronic payment terminals for payment by card particularly credit, debit and store cards at shop sales counters; electronic keycards, magnetic keycards, magnetic identity cards, machine-readable magnetic encoded keycards and electronic keycards which can be encoded; cards, namely, magnetic coded cards for used for obtaining and storing information; memory cards; magnetically encoded credit cards; magnetically encoded debit card; magnetically encoded payment or prepayment cards; magnetically encoded transaction cards; telephones; telecommunications apparatus, namely, telephones, mobile phones, modems and their accessories, namely, microphones, fuses, indicator lights, electrical transformers, change-over switches, electric capacitors; portable electronic devices, namely, portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files; electronic apparatus and equipment for remote connection to a computer and/or telecommunication network; secure terminals for the transmission of data with a card or without contact; cryptographic and biometric devices and apparatus for identification verification and detection of impermissible items being carried through a entry security portal; all the aforesaid goods in connection with a point-of-sale platform for digital commerce

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 proposes to amend the following class of goods/services in the application:
Current: Class 036 for provision of methods of payment, namely, credit card and debit card, payment terminals and secure platforms for on-line financial transactions, namely, secure platform modules and cryptography code processors; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, and particularly payment verification services of the provenance and of the reliability of data used; operation of all kinds of transaction or payment systems, particularly online, and security and anti-fraud services and related thereto, namely, clearing and reconciling payment transactions via a global computer network; electronic wallet (e-wallet) service, namely, electronic transfer of funds; payment card services, namely, credit card payment processing services; management of payment and transaction services, namely, management of reimbursement payments for others via the internet, including providing a dedicated on-line technical platform; currency conversion services
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: provision of methods of payment, namely, credit card and debit card, payment terminals and secure platforms for on-line financial transactions, namely, secure platform modules and cryptography code processors; provision of methods of payment for others, namely, credit card and debit card; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, and particularly payment verification services of the provenance and of the reliability of data used; payment terminals and secure platforms for on-line financial transactions, namely, secure platform modules and cryptography code processors platforms for on-line financial transactions; operation of all kinds of transaction or payment systems, particularly online, and security and anti-fraud services and related thereto, namely, clearing and reconciling payment transactions via a global computer network; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, namely, payment verification services and financial data analysis; operation of financial transaction and payment systems, namely, clearing and reconciling payment transactions via a global computer network; electronic wallet (e-wallet) service, namely, electronic transfer of funds; management of payment and transaction services, namely, management of reimbursement payments for others via the internet, including providing a dedicated on-line technical platform; payment card services, namely, credit card payment processing services; management of payment and transaction services, namely, financial management of reimbursement payments for others via the internet; currency conversion servicesClass 036 for provision of methods of payment for others, namely, credit card and debit card; payment terminals and secure platforms for on-line financial transactions, namely, secure platform modules and cryptography code processors platforms for on-line financial transactions; services rendered in the field of payments and transactions and the provision of guaranteed and secure payments and transactions, namely, payment verification services and financial data analysis; operation of financial transaction and payment systems, namely, clearing and reconciling payment transactions via a global computer network; electronic wallet (e-wallet) service, namely, electronic transfer of funds; payment card services, namely, credit card payment processing services; management of payment and transaction services, namely, financial management of reimbursement payments for others via the internet; currency conversion services

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.

The applicant's current attorney information: Hope V. Shovein. Hope V. Shovein of Brooks Kushman P.C., is located at

      1000 Town Center, 22nd Floor
      Southfield, Michigan 48236
      US
The docket/reference number is MKPS0145TUS.

The email address is trademarks@brookskushman.com

The applicants proposed attorney information: Hope V. Shovein. Hope V. Shovein of Brooks Kushman P.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1000 Town Center, 22nd Floor
      Southfield, Michigan 48236
      United States
The docket/reference number is MKPS0145TUS.

The email address is trademarks@brookskushman.com

Hope V. Shovein submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: Hope V. Shovein. Hope V. Shovein of Brooks Kushman P.C., is located at

      1000 Town Center, 22nd Floor
      Southfield, Michigan 48236
      US
The docket/reference number is MKPS0145TUS.

The email address is trademarks@brookskushman.com; hshovein@brookskushman.com

The applicants proposed correspondence information: Hope V. Shovein. Hope V. Shovein of Brooks Kushman P.C., is located at

      1000 Town Center, 22nd Floor
      Southfield, Michigan 48236
      United States
The docket/reference number is MKPS0145TUS.

The email address is trademarks@brookskushman.com

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /hope v shovein/     Date: 01/23/2020
Signatory's Name: Hope V. Shovein
Signatory's Position: Attorney of record, Michigan bar member

Signatory's Phone Number: 248-358-4400

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.

The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.

Mailing Address:    Hope V. Shovein
   Brooks Kushman P.C.
   
   1000 Town Center, 22nd Floor
   Southfield, Michigan 48236
Mailing Address:    Hope V. Shovein
   Brooks Kushman P.C.
   1000 Town Center, 22nd Floor
   Southfield, Michigan 48236
        
Serial Number: 79243756
Internet Transmission Date: Thu Jan 23 22:52:02 EST 2020
TEAS Stamp: USPTO/RFR-XXX.XXX.XXX.XXX-20200123225202
839654-79243756-70093e3494fdce46e46abea1
42533f7affe9480d2e7da1b94ab3c94c5e224c09
8-N/A-N/A-20200123224739917676