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