Response to Office Action

VERSE

DECENTRALIZED GLOBAL PAYMENTS S.L.

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 79281904
LAW OFFICE ASSIGNED LAW OFFICE 124
MARK SECTION
MARK FILE NAME http://uspto.report/TM/79281904/mark.png
LITERAL ELEMENT VERSE
STANDARD CHARACTERS NO
USPTO-GENERATED IMAGE NO
COLOR(S) CLAIMED
(If applicable)
The color(s) sky blue is/are claimed as a feature of the mark.
OWNER SECTION (1st owner)(current)
NAME DECENTRALIZED GLOBAL PAYMENTS S.L.
OWNER SECTION(1st owner)(proposed)
NAME DECENTRALIZED GLOBAL PAYMENTS S.L.
EMAIL XXXX
LEGAL ENTITY SECTION (1st owner)(current)
TYPE sociedad limitada
LEGAL ENTITY SECTION (1st owner)(proposed)
TYPE Limited company in Barcelona
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY WHERE LEGALLY ORGANIZED Spain
OWNER SECTION (2nd owner)(current)
NAME VERSE TECHNOLOGIES INC
OWNER SECTION(2nd owner)(proposed)
NAME VERSE TECHNOLOGIES INC
EMAIL XXXX
LEGAL ENTITY SECTION (2nd owner)(current)
TYPE corporation
LEGAL ENTITY SECTION (2nd owner)(proposed)
TYPE corporation
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY OF INCORPORATION California
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILE evi_1721149548-2020061718 2831434569_._Likelihood_o f_Confusion_Argument.pdf
       CONVERTED PDF FILE(S)
       (3 pages)
\\TICRS\EXPORT18\IMAGEOUT 18\792\819\79281904\xml8\ ROA0002.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\792\819\79281904\xml8\ ROA0003.JPG
        \\TICRS\EXPORT18\IMAGEOUT 18\792\819\79281904\xml8\ ROA0004.JPG
DESCRIPTION OF EVIDENCE FILE PDF of argument.
GOODS AND/OR SERVICES SECTION (009) (current)
INTERNATIONAL CLASS 009
DESCRIPTION
Software for mobile phones (Apps); computer software for mobile telephones; software applications for mobile telephones; software and applications for mobile devices
GOODS AND/OR SERVICES SECTION (009) (proposed)
INTERNATIONAL CLASS 009
TRACKED TEXT DESCRIPTION
Software for mobile phones (Apps); Downloadable software for mobile phones, namely, software for enabling the electronic transfer of money between users; computer software for mobile telephones; downloadable computer software for mobile telephones enabling the electronic transfer of money between users; software applications for mobile telephones; downloadable software applications for mobile telephones enabling the transfer of funds, splitting of funds, and sharing of funds between users; software and applications for mobile devices; downloadable software for enabling processing of electronic funds transfers and payments made via ACH (automated clearing house), credit card, debit card, electronic check and electronic, mobile and online payments; magnetically encoded debit cards; downloadable software and downloadable mobile application software for promoting the goods and services of others, namely, providing information regarding rewards, discounts, cash back, coupons, rebates, vouchers and special offers for the goods and services of others
FINAL DESCRIPTION
Downloadable software for mobile phones, namely, software for enabling the electronic transfer of money between users; downloadable computer software for mobile telephones enabling the electronic transfer of money between users; downloadable software applications for mobile telephones enabling the transfer of funds, splitting of funds, and sharing of funds between users; downloadable software for enabling processing of electronic funds transfers and payments made via ACH (automated clearing house), credit card, debit card, electronic check and electronic, mobile and online payments; magnetically encoded debit cards; downloadable software and downloadable mobile application software for promoting the goods and services of others, namely, providing information regarding rewards, discounts, cash back, coupons, rebates, vouchers and special offers for the goods and services of others
GOODS AND/OR SERVICES SECTION (036) (current)
INTERNATIONAL CLASS 036
DESCRIPTION Financial, monetary and banking services
GOODS AND/OR SERVICES SECTION (036) (proposed)
INTERNATIONAL CLASS 036
TRACKED TEXT DESCRIPTION
Financial, monetary and banking services; Financial, monetary and banking services, namely: the electronic transfer of money for others; providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic, mobile and online payments; electronic splitting and sharing of funds between users; reimbursement of payment processing for fraudulent transactions, transaction errors, and disputed transactions, namely, transactions concerning lost, damaged, misrepresented, or incorrect products or services, all in the field of electronic payment purchases; providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks, namely, providing dispute resolution services and reimbursement services for disputed transactions in the field of electronic payment purchases; financial and banking services, namely, debit card transaction processing services featuring cash back rewards to customers that make incentivized purchases
FINAL DESCRIPTION
Financial, monetary and banking services, namely: the electronic transfer of money for others; providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic, mobile and online payments; electronic splitting and sharing of funds between users; reimbursement of payment processing for fraudulent transactions, transaction errors, and disputed transactions, namely, transactions concerning lost, damaged, misrepresented, or incorrect products or services, all in the field of electronic payment purchases; providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks, namely, providing dispute resolution services and reimbursement services for disputed transactions in the field of electronic payment purchases; financial and banking services, namely, debit card transaction processing services featuring cash back rewards to customers that make incentivized purchases
GOODS AND/OR SERVICES SECTION (038) (current)
INTERNATIONAL CLASS 038
DESCRIPTION Telecommunications
GOODS AND/OR SERVICES SECTION (038) (proposed)
INTERNATIONAL CLASS 038
TRACKED TEXT DESCRIPTION
Telecommunications; Telecommunications, namely, enabling users to communicate with one and other regarding the transfer of funds, splitting of funds, and sharing of funds
FINAL DESCRIPTION
Telecommunications, namely, enabling users to communicate with one and other regarding the transfer of funds, splitting of funds, and sharing of funds
ADDITIONAL STATEMENTS SECTION
DESCRIPTION OF THE MARK
(and Color Location, if applicable)
The mark consists of a design of three sky blue outlined geometric shapes with transparent centers forming a crest. Following the graphic is the lowercase word "verse" in sky blue.
ATTORNEY INFORMATION (new)
NAME David Schnider
ATTORNEY BAR MEMBERSHIP NUMBER XXX
YEAR OF ADMISSION XXXX
U.S. STATE/ COMMONWEALTH/ TERRITORY XX
FIRM NAME NOLAN HEIMANN LLP
STREET 16133 Ventura Blvd., Ste. 820
CITY Encino
STATE California
POSTAL CODE 91436
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY United States
EMAIL dschnider@nolanheimann.com
CORRESPONDENCE INFORMATION (current)
NAME ROUSAUD COSTAS DURAN S.L.P.
CORRESPONDENCE INFORMATION (proposed)
NAME David Schnider
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE dschnider@nolanheimann.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) marnold@nolanheimann.com
SIGNATURE SECTION
RESPONSE SIGNATURE /Margo Arnold/
SIGNATORY'S NAME Margo Arnold
SIGNATORY'S POSITION Attorney of Record, California Bar Member
SIGNATORY'S PHONE NUMBER 8185745710
DATE SIGNED 06/17/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Jun 17 18:49:06 ET 2020
TEAS STAMP USPTO/ROA-XXX.XXX.XX.XX-2
0200617184906645831-79281
904-710729d69ec57e41ff56b
c93eee9ad7321b3e174d783ca
7f15eed7d5367c45ec-N/A-N/
A-20200617182831434569



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. 79281904 VERSE (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/7928190 4/large) has been amended as follows:

EVIDENCE
Evidence has been attached: PDF of argument.
Original PDF file:
evi_1721149548-2020061718 2831434569_._Likelihood_o f_Confusion_Argument.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Software for mobile phones (Apps); computer software for mobile telephones; software applications for mobile telephones; software and applications for mobile devices
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 mobile phones (Apps); Downloadable software for mobile phones, namely, software for enabling the electronic transfer of money between users; computer software for mobile telephones; downloadable computer software for mobile telephones enabling the electronic transfer of money between users; software applications for mobile telephones; downloadable software applications for mobile telephones enabling the transfer of funds, splitting of funds, and sharing of funds between users; software and applications for mobile devices; downloadable software for enabling processing of electronic funds transfers and payments made via ACH (automated clearing house), credit card, debit card, electronic check and electronic, mobile and online payments; magnetically encoded debit cards; downloadable software and downloadable mobile application software for promoting the goods and services of others, namely, providing information regarding rewards, discounts, cash back, coupons, rebates, vouchers and special offers for the goods and services of othersClass 009 for Downloadable software for mobile phones, namely, software for enabling the electronic transfer of money between users; downloadable computer software for mobile telephones enabling the electronic transfer of money between users; downloadable software applications for mobile telephones enabling the transfer of funds, splitting of funds, and sharing of funds between users; downloadable software for enabling processing of electronic funds transfers and payments made via ACH (automated clearing house), credit card, debit card, electronic check and electronic, mobile and online payments; magnetically encoded debit cards; downloadable software and downloadable mobile application software for promoting the goods and services of others, namely, providing information regarding rewards, discounts, cash back, coupons, rebates, vouchers and special offers for the goods and services of others

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:

Current:
Class 036 for Financial, monetary and banking 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.


Proposed:

Tracked Text Description: Financial, monetary and banking services; Financial, monetary and banking services, namely: the electronic transfer of money for others; providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic, mobile and online payments; electronic splitting and sharing of funds between users; reimbursement of payment processing for fraudulent transactions, transaction errors, and disputed transactions, namely, transactions concerning lost, damaged, misrepresented, or incorrect products or services, all in the field of electronic payment purchases; providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks, namely, providing dispute resolution services and reimbursement services for disputed transactions in the field of electronic payment purchases; financial and banking services, namely, debit card transaction processing services featuring cash back rewards to customers that make incentivized purchasesClass 036 for Financial, monetary and banking services, namely: the electronic transfer of money for others; providing electronic processing of electronic funds transfer, ACH, credit card, debit card, electronic check and electronic, mobile and online payments; electronic splitting and sharing of funds between users; reimbursement of payment processing for fraudulent transactions, transaction errors, and disputed transactions, namely, transactions concerning lost, damaged, misrepresented, or incorrect products or services, all in the field of electronic payment purchases; providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks, namely, providing dispute resolution services and reimbursement services for disputed transactions in the field of electronic payment purchases; financial and banking services, namely, debit card transaction processing services featuring cash back rewards to customers that make incentivized purchases

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:

Current:
Class 038 for Telecommunications
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: Telecommunications; Telecommunications, namely, enabling users to communicate with one and other regarding the transfer of funds, splitting of funds, and sharing of fundsClass 038 for Telecommunications, namely, enabling users to communicate with one and other regarding the transfer of funds, splitting of funds, and sharing of funds

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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: DECENTRALIZED GLOBAL PAYMENTS S.L. a(n) sociedad limitada
Proposed: DECENTRALIZED GLOBAL PAYMENTS S.L., Limited company in Barcelona legally organized under the laws of Spain
      Email Address: XXXX

Applicant proposes to amend the following:
Current: VERSE TECHNOLOGIES INC
Proposed: VERSE TECHNOLOGIES INC, a corporation of California
      Email Address: XXXX

ADDITIONAL STATEMENTS
Description of mark
The mark consists of a design of three sky blue outlined geometric shapes with transparent centers forming a crest. Following the graphic is the lowercase word "verse" in sky blue.

The owner's/holder's proposed attorney information: David Schnider. David Schnider of NOLAN HEIMANN LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      16133 Ventura Blvd., Ste. 820
      Encino, California 91436
      United States
is appointed to submit this Response to Office Action Form on behalf of the applicant.
      The email address is dschnider@nolanheimann.com

David Schnider 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.Correspondence Information (current):
      ROUSAUD COSTAS DURAN S.L.P.
Correspondence Information (proposed):
      David Schnider
      PRIMARY EMAIL FOR CORRESPONDENCE: dschnider@nolanheimann.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): marnold@nolanheimann.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Margo Arnold/     Date: 06/17/2020
Signatory's Name: Margo Arnold
Signatory's Position: Attorney of Record, California Bar Member

Signatory's Phone Number: 8185745710

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.

Mailing Address:    ROUSAUD COSTAS DURAN S.L.P.
   
   
   Escoles Pies, 102
   E-08017 Barcelona,
Mailing Address:    David Schnider
   NOLAN HEIMANN LLP
   16133 Ventura Blvd., Ste. 820
   Encino, California 91436
        
Serial Number: 79281904
Internet Transmission Date: Wed Jun 17 18:49:06 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XX-2020061718490664
5831-79281904-710729d69ec57e41ff56bc93ee
e9ad7321b3e174d783ca7f15eed7d5367c45ec-N
/A-N/A-20200617182831434569


Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]

Response to Office Action [image/jpeg]


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