| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79278746 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/79278746/mark.png |
| LITERAL ELEMENT | BITMEX |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
The color(s) blue, green and black is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The outline of the square design is green on the left and blue on the right and the word "BitMEX" is in black. |
| OWNER SECTION (current) | |
| NAME | HDR SG PTE. LTD. |
| OWNER SECTION (proposed) | |
| NAME | HDR SG PTE. LTD. |
| XXXX | |
| LEGAL ENTITY SECTION (current) | |
| TYPE | limited company |
| STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY WHERE LEGALLY ORGANIZED | Singapore |
| LEGAL ENTITY SECTION (proposed) | |
| TYPE | limited company (ltd.) |
| STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY WHERE LEGALLY ORGANIZED | Singapore |
| ARGUMENT(S) | |
|
RESPONSE TO NONFINAL OFFICE ACTION Dear Commissioner: Applicant timely responds to the Nonfinal Office Action (“Office Action”) sent electronically on March 31, 2020 in the above-identified application. In the Office Action, the Examining Attorney states that a response must be received within six months of the “date on which the notification was sent to WIPO” located on the WIPO cover letter. The mailing date on the WIPO cover letter (reference number 812/1342125801) was March 31, 2020. The Examining Attorney issued a provisional refusal to register Applicant’s design mark (“Applicant’s Mark”), requesting that Applicant present arguments in support of registration by addressing the issue of the prior pending applications; amend the identification of goods and services; amend the mark description; specify Applicant’s legal entity; and designate a U.S.-licensed attorney. Applicant responds with the following amendments and remarks. AMENDMENTS I. Mark Description and Color Claim The Examining Attorney requests an amended description and color claim of Applicant’s Mark. Applicant thanks the Examining Attorney for the suggested description and color claim, and amends to the following underlined language: Color claim: The colors white, green, blue, and black are claimed as a feature of the mark. Description: The mark consists of the following: the outline of a square design that is green on the left, white in the middle, and blue on the right; to the right of the design is the word "BitMEX" in black. II. Identification of Goods and Services The Examining Attorney alleges that the identification of goods and services contains wording that is overly broad and indefinite. In the interest of compact prosecution, Applicant amends the identification of goods and services to the below, with additions shown with an underline and deletions shown with a strikethrough: Downloadable c Financial services, namely, online trading cryptocurrency, in particular bitcoin and bitcoin derivatives; electronic financial trading services;
cryptocurrency exchange services; currency trading; international commodity trading and exchanges services for others; REMARKS III. Prior Pending Applications The Examining Attorney references U.S. Application Serial Nos. 87/856,272 and 87/607,952 (both for BITMEX) as prior-filed pending applications. Both of these applications were filed by applicant HDR Global Trading Limited, which is a limited company owned by the same founders as Applicant. Applicant submits that these prior-filed pending applications therefore do not present a bar to the registration of Applicant’s Mark, and respectfully requests that the Examining Attorney withdraws this provisional refusal. IV. Legal Entity Required The Examining Attorney requests that Applicant must specify its form of business or type of legal entity and its national citizenship or foreign country of organization or incorporation. Applicant is a Singaporean limited company and is organized in Singapore. V. U.S. Counsel Required The Examining Attorney notes that Applicant’s former domicile was Canada. The undersigned attorney has been appointed as Applicant’s U.S. counsel, and submits the appropriate TEAS response form with this Response. CONCLUSION In view of the foregoing, Applicant respectfully submits that the issues raised in the outstanding Office Action have been addressed and that Applicant’s Mark should be advanced to publication. It is respectfully requested that the Examining Attorney reconsiders and withdraws the provisional refusal in light of the evidence of record. If it would be helpful in expediting the prosecution of this application, the undersigned would welcome a telephone call at the number listed herein at the Examining Attorney’s convenience. |
|
| GOODS AND/OR SERVICES SECTION (009) (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Computer software; application software; downloadable software for trading crypto-products and providing crypto-currency information; authentication and authorization software; automatic banking machines; computer hardware and software relating to banking and currency trading; computer programs for use in trading stocks and bonds; electronic publications, downloadable; software for use in relation to trading, clearing and settlement and handling securities, the operation of stock exchanges and other financial marketplaces; software for use in relation to cryptocurrency exchange services | |
| GOODS AND/OR SERVICES SECTION (009) (proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Downloadable computer software for trading cryptocurrency, namely bitcoin and bitcoin derivatives; downloadable software in the nature of a mobile application for trading cryptocurrency, namely bitcoin and bitcoin derivatives; downloadable software for trading crypto-products and providing crypto-currency information | |
| GOODS AND/OR SERVICES SECTION (036) (current) | |
| INTERNATIONAL CLASS | 036 |
| DESCRIPTION | |
| Financial services; financial trading services; cryptocurrency exchange services; currency trading; international commodity trading and exchanges services for others; international stock exchange price quotation; international financial exchange and monetary services; foreign currency exchange and providing advice relating thereto; integrated financial clearing house services; investment fund transfer and transaction services; trading of financial derivatives; financial derivative and trading services relating to bitcoins; electronic transfer and/or exchange of a virtual currency for use by members of an on-line community via a global computer network; financial services, namely, providing electronic transfer and trading services for a virtual currency; electronic financial trading, namely, trading in the field of digitised assets such as bitcoins, cryptocurrency, digital tokens, virtual currency and digital currency; exchanging money; futures brokerage; mutual funds; capital investment; electronic funds transfer; advisory, consultancy and information services relating to the aforesaid services | |
| GOODS AND/OR SERVICES SECTION (036) (proposed) | |
| INTERNATIONAL CLASS | 036 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Financial services, namely, online trading cryptocurrency, in particular bitcoin and bitcoin derivatives; electronic financial trading services; cryptocurrency exchange services; currency trading; international commodity trading and exchanges services for others; electronic transfer and exchange of a virtual currency for use by members of an on-line community via a global computer network; financial services, namely, providing electronic transfer and trading services for a virtual currency; electronic financial trading, trading in the field of digitised assets such as bitcoins, cryptocurrency, digital tokens, virtual currency and digital currency; exchanging money; advisory, consultancy and information services relating to the aforesaid services | |
| ADDITIONAL STATEMENTS SECTION | |
| COLOR(S) CLAIMED (If applicable) |
The color(s) white, green, blue, and black is/are claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of the outline of a square design that is green on the left, white in the middle, and blue on the right; to the right of the design is the word "BitMEX" in black. |
| ATTORNEY INFORMATION (new) | |
| NAME | J. Damon Ashcraft |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Snell & Wilmer L.L.P. |
| INTERNAL ADDRESS | One Arizona Center |
| STREET | 400 E. Van Buren Street |
| CITY | Phoenix |
| STATE | Arizona |
| POSTAL CODE | 85004 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 602-382-6389 |
| FAX | 602-382-6070 |
| ipdocket@swlaw.com | |
| DOCKET/REFERENCE NUMBER | 75359.05140 |
| OTHER APPOINTED ATTORNEY | Dax Alvarez, Lester J. Anderson, J. Damon Ashcraft, David G. Barker, Anne Bolamperti, Ross E. Breyfogle, Robert A. Clarke, John J. Dabney, Jonathan B. Fitzgerald, Andrew Flior, R. Lee Fraley, Albin H. Gess, Farris J. Gillman, Deborah Gubernick, Mary D. Hallerman, Charles F. Hauff, Jr., Andrew Huah, James L. Johnson, Dwight Kim, Richard Y. Kim, Peter Krehbiel, Grant T. Langton, Sid Leach, Kent A. Lembke, Russell T. Manning, Gabrielle M. Morlock, Jeffrey D. Morton, William F. Mulholland II, Yingchun Ni, David P. Nigro, Paul A. Pappalardo, Cynthia L. Pillote, John H. Platt, Simone T. Raess, Ryan D. Ricks, David E. Rogers, C. Matthew Rozier, Gregory Scheiferstein, Howard I. Sobelman, C. Blake Steel, Joseph Teleoglou, Ketan S. Vakil, Jon Ustundag, and Michele N. Washington |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | CLARK WILSON LLP |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | J. Damon Ashcraft |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ipdocket@swlaw.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | dashcraft@swlaw.com; abolamperti@swlaw.com; cvallens@swlaw.com |
| DOCKET/REFERENCE NUMBER | 75359.05140 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jda51024/ |
| SIGNATORY'S NAME | J. Damon Ashcraft |
| SIGNATORY'S POSITION | Attorney of Record, Arizona Bar Member |
| SIGNATORY'S PHONE NUMBER | 602-382-6389 |
| DATE SIGNED | 09/23/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Sep 23 18:31:58 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 200923183158092346-792787 46-750dff9e1d478b38956e91 47c9f8de42a5b4f1031376050 9feebe9f2666d9e8a565-N/A- N/A-20200923163655685430 |
| 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 NONFINAL OFFICE ACTION
Dear Commissioner:
Applicant timely responds to the Nonfinal Office Action (“Office Action”) sent electronically on March 31, 2020 in the above-identified application. In the Office Action, the Examining Attorney states that a response must be received within six months of the “date on which the notification was sent to WIPO” located on the WIPO cover letter. The mailing date on the WIPO cover letter (reference number 812/1342125801) was March 31, 2020. The Examining Attorney issued a provisional refusal to register Applicant’s design mark (“Applicant’s Mark”), requesting that Applicant present arguments in support of registration by addressing the issue of the prior pending applications; amend the identification of goods and services; amend the mark description; specify Applicant’s legal entity; and designate a U.S.-licensed attorney. Applicant responds with the following amendments and remarks.
AMENDMENTS
I. Mark Description and Color Claim
The Examining Attorney requests an amended description and color claim of Applicant’s Mark. Applicant thanks the Examining Attorney for the suggested description and color claim, and amends to the following underlined language:
Color claim: The colors white, green, blue, and black are claimed as a feature of the mark.
Description: The mark consists of the following: the outline of a square design that is green on the left, white in the middle, and blue on the right; to the right of the design is the word "BitMEX" in black.
II. Identification of Goods and Services
The Examining Attorney alleges that the identification of goods and services contains wording that is overly broad and indefinite. In the interest of compact prosecution, Applicant amends the identification of goods and services to the below, with additions shown with an underline and deletions shown with a strikethrough:
Downloadable cComputer software for trading cryptocurrency, namely bitcoin and bitcoin derivatives;
downloadable application software in the nature of a mobile application for trading cryptocurrency, namely bitcoin and bitcoin derivatives; downloadable software for trading
crypto-products and providing crypto-currency information; authentication and authorization software; automatic banking machines; computer hardware and software relating to banking and currency
trading; computer programs for use in trading stocks and bonds; electronic publications, downloadable; software for use in relation to trading, clearing and settlement and handling securities, the
operation of stock exchanges and other financial marketplaces; software for use in relation to cryptocurrency exchange services (in Int’l Class 9);
Financial services, namely, online trading cryptocurrency, in particular bitcoin and bitcoin derivatives; electronic financial trading services;
cryptocurrency exchange services; currency trading; international commodity trading and exchanges services for others; international stock exchange price quotation; international financial
exchange and monetary services; foreign currency exchange and providing advice relating thereto; integrated financial clearing house services; investment fund transfer and transaction services;
trading of financial derivatives; financial derivative and trading services, relating to bitcoins; electronic transfer and/or exchange of a virtual currency for use by
members of an on-line community via a global computer network; financial services, namely, providing electronic transfer and trading services for a virtual currency; electronic financial trading,
namely, trading in the field of digitised assets such as bitcoins, cryptocurrency, digital tokens, virtual currency and digital currency; exchanging money; futures brokerage; mutual funds;
capital investment; electronic funds transfer; advisory, consultancy and information services relating to the aforesaid services (in Int’l Class 36).
REMARKS
III. Prior Pending Applications
The Examining Attorney references U.S. Application Serial Nos. 87/856,272 and 87/607,952 (both for BITMEX) as prior-filed pending applications. Both of these applications were filed by applicant HDR Global Trading Limited, which is a limited company owned by the same founders as Applicant. Applicant submits that these prior-filed pending applications therefore do not present a bar to the registration of Applicant’s Mark, and respectfully requests that the Examining Attorney withdraws this provisional refusal.
IV. Legal Entity Required
The Examining Attorney requests that Applicant must specify its form of business or type of legal entity and its national citizenship or foreign country of organization or incorporation. Applicant is a Singaporean limited company and is organized in Singapore.
V. U.S. Counsel Required
The Examining Attorney notes that Applicant’s former domicile was Canada. The undersigned attorney has been appointed as Applicant’s U.S. counsel, and submits the appropriate TEAS response form with this Response.
CONCLUSION
In view of the foregoing, Applicant respectfully submits that the issues raised in the outstanding Office Action have been addressed and that Applicant’s Mark should be advanced to publication. It is respectfully requested that the Examining Attorney reconsiders and withdraws the provisional refusal in light of the evidence of record. If it would be helpful in expediting the prosecution of this application, the undersigned would welcome a telephone call at the number listed herein at the Examining Attorney’s convenience.