Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85855932 SMOOTH(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85855932) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Electronic vending machines, computer software to allow users to perform electronic monetary transactions via a global computer network, electronic gift cards, electronic stored value cards, electronic prepaid cards, point of sale terminals, computer software for the operation of point of sale terminals, payment kiosks
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1607456 filed 12/19/2012]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Electronic vending machines, computer software to allow users to perform electronic monetary transactions via a global computer network, electronic gift cards, electronic stored value cards, electronic prepaid cards, point of sale terminals, computer software for the operation of point of sale terminals, payment kiosks; Computer software to allow users to perform electronic monetary transactions via a global computer network; electronically encoded gift cards; electronically encoded stored value cards; electronically encoded prepaid cards; point of sale terminals; computer software for the operation of point of sale terminals; interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use in processing paymentsClass 009 for Computer software to allow users to perform electronic monetary transactions via a global computer network; electronically encoded gift cards; electronically encoded stored value cards; electronically encoded prepaid cards; point of sale terminals; computer software for the operation of point of sale terminals; interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use in processing payments
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1607456 filed 12/19/2012]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Vending machine services, providing electronic gift cards via a global computer network, providing electronic stored value cards via a global computer network, providing electronic prepaid cards via a global computer network, operating consumer loyalty programs for others
Original Filing Basis:
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1601496 filed 11/07/2012]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Vending machine services, providing electronic gift cards via a global computer network, providing electronic stored value cards via a global computer network, providing electronic prepaid cards via a global computer network, operating consumer loyalty programs for others; Vending machine services; promoting the goods and services of others by means of providing electronically encoded gift cards and electronically encoded prepaid cards via a global computer network; operating consumer loyalty programs which provides administration of a consumer loyalty program to promote the goods and services of others, namely, restaurants, retail stores and e-commerce websitesClass 035 for Vending machine services; promoting the goods and services of others by means of providing electronically encoded gift cards and electronically encoded prepaid cards via a global computer network; operating consumer loyalty programs which provides administration of a consumer loyalty program to promote the goods and services of others, namely, restaurants, retail stores and e-commerce websites
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1601496 filed 11/07/2012]. 15 U.S.C.Section 1126(d), as amended.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Debit card processing services via a global computer network, electronic commerce payment processing services via a global computer network, offering digital wallet services via a global computer network, payment gateway services, point of sale terminal services, mobile payment services, namely, facilitating electronic funds transfer via mobile computing devices, payment kiosk services; credit card processing services via a global computer network
Original Filing Basis:
Based on Foreign Application: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

Proposed:
Tracked Text Description: Debit card processing services via a global computer network, electronic commerce payment processing services via a global computer network, offering digital wallet services via a global computer network, payment gateway services, point of sale terminal services, mobile payment services, namely, facilitating electronic funds transfer via mobile computing devices, payment kiosk services; Debit card transaction processing services via a global computer network; electronic commerce payment processing services, namely, loyalty program payment processing services, processing electronic payments made through prepaid cards and electronic accounts] via a global computer network; offering digital wallet services, namely, storing customer account information to access coupons, vouchers, voucher codes and rebates at retailers and to obtain loyalty or monetary rewards that can be credited to their accounts via a global computer network; payment gateway services, namely, authorizing and processing secure, real-time and recurring payments made via credit cards]; financial transaction services, namely, providing secure commercial transactions and payment options using a mobile point of sale terminals; mobile payment services, namely, processing electronic funds transfer via mobile computing devices; payment kiosk services, namely, processing electronic payments made through prepaid cards available at on-site in retail stores; credit card processing services via a global computer networkClass 036 for Debit card transaction processing services via a global computer network; electronic commerce payment processing services, namely, loyalty program payment processing services, processing electronic payments made through prepaid cards and electronic accounts] via a global computer network; offering digital wallet services, namely, storing customer account information to access coupons, vouchers, voucher codes and rebates at retailers and to obtain loyalty or monetary rewards that can be credited to their accounts via a global computer network; payment gateway services, namely, authorizing and processing secure, real-time and recurring payments made via credit cards]; financial transaction services, namely, providing secure commercial transactions and payment options using a mobile point of sale terminals; mobile payment services, namely, processing electronic funds transfer via mobile computing devices; payment kiosk services, namely, processing electronic payments made through prepaid cards available at on-site in retail stores; credit card processing services via a global computer network
Based on Foreign Application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and will submit a copy of a foreign registration, and translation thereof, if appropriate. 15 U. S.C. Section 1126(d), as amended.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The Office is respectfully informed that the foreign applications are still pending at this time. It is the applicant's intent to rely on the Canadian registrations, once they are issued, as the basis of registration of the mark, at the same time reserving the right to proceed solely on your current intent-to-use in the US. Applicant requests suspension of the instant application pending issuance of the Canadian registrations, which will be submitted to the Office as soon as available.


SIGNATURE(S)
Declaration Signature
Signature
Signatory's Name: Brian Deck
Signatory's Position: CEO

Response Signature
Signature: /Thilo C. Agthe/     Date: 11/27/2013
Signatory's Name: Thilo C. Agthe
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 212-509-5050

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 applicant'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 applicant in this matter: (1) the applicant 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 applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant'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.

        
Serial Number: 85855932
Internet Transmission Date: Wed Nov 27 14:21:44 EST 2013
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2013112714214404
1066-85855932-500e74e7cfffe229b52962c2bd
ce2c84946d95868ec4d7b5db66513546536c-N/A
-N/A-20131127141556226697