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)

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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 1957 (Rev 10/2011)

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

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87554490 STANDARD (Stylized and/or with Design, see http://uspto.report/TM/87554490/mark.png) has been amended as follows:

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

Please see the actual argument text attached within the Evidence section.

EVIDENCE
Evidence in the nature of Applicant's actual argument text and accompanying exhibits has been attached.
Original PDF file:
evi_1-2161710153-20180425111300982898_._Office_Action_Response_-_STANDARD__Design.pdf
Converted PDF file(s) ( 12 pages)
Evidence-1
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Original PDF file:
evi_1-2161710153-20180425111300982898_._Exhibits_-_STANDARD___Design.pdf
Converted PDF file(s) ( 80 pages)
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; electric and electronic apparatus and hardware, equipment for the storage and transmission of data and information for use in relation to banking, financial, insurance and general commercial transactions, including those conducted online via the Internet or a computer network, or by telephone or cellular telephone; software, systems, devices and platforms used to enable and facilitate electronic banking, financial, insurance or other commercial transactions, including those via the Internet or a computer network, or by telephone or cellular telephone; including data processing equipment and software for use in relation to banking and financial services including data processing equipment and software; downloadable electronic publications; apparatus and equipment for the electronic transfer of and/or financial data; telecommunication equipment; automated teller machines; money dispensing machines, electronic fund transfer, payment or point of sale apparatus, machines and terminals; card and bar code scanners; magnetic and magnetically encoded cards; programmable cards; smart cards; cards bearing coded data in magnetic form; cards bearing data for use in computers; cards bearing coded data in punched-out form; cards bearing data for use in data processing apparatus; cards bearing data for use in data storage apparatus; cards bearing electronically recorded data; cards bearing integrated circuits; cards bearing magnetic or encoded data for input; cards bearing micro-chips and computer cards containing chips; credit, charge, debit and/or cash cards; prepayment cards; loyalty or gift cards, readers, scanners, parts and fittings for the aforementioned goods
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. For a certification 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, and 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; electric and electronic apparatus and hardware, equipment for the storage and transmission of data and information for use in relation to banking, financial, insurance and general commercial transactions, including those conducted online via the Internet or a computer network, or by telephone or cellular telephone; software, systems, devices and platforms used to enable and facilitate electronic banking, financial, insurance or other commercial transactions, including those via the Internet or a computer network, or by telephone or cellular telephone; computer software, computer operating systems, computer peripheral devices and computer software platforms used to enable and facilitate electronic banking, financial, insurance or other commercial transactions, including those via the Internet or a computer network, or by telephone or cellular telephone, including data processing equipment and software for use in relation to banking and financial services including data processing equipment and software; including data processing equipment and software for use in relation to banking and financial services including data processing equipment and software; downloadable electronic publications, in the nature of newsletters, magazines, reports, guides, charts, worksheets, forms, instructional materials, educational materials, bulletins, pamphlets, and booklets in the field of banking, financing, financial services, insurance, securities and investment; downloadable electronic publications; apparatus and equipment for the electronic transfer of and/or financial data, namely, computer terminals, computer peripheral devices, computer software, computer programs and mobile applications; apparatus and equipment for the electronic transfer of and/or financial data; electronic equipment, namely, transformers, baluns and cables, all used in connection with computers, computer peripheral devices, televisions, audio-video equipment, closed-circuit TV equipment and telecommunication equipment excluding radio transmitters, radio receivers or paging systems; telecommunication equipment; automated teller machines; money counting and sorting machines, point-of-sale terminals for making contactless payments; money dispensing machines, electronic fund transfer, payment or point of sale apparatus, machines and terminals; card and bar code scanners; magnetic and magnetically encoded key, debit and charge cards; magnetic and magnetically encoded cards; magnetically and non-magnetically encoded and programmable cards for use as identity cards, security clearance cards, time-tracking and recording cards, access control cards, debit cards, credit cards, charge cards, stored value cards, gift cards and loyalty cards; programmable cards; blank smart cards; smart cards; computer equipment, namely, wireless cards; cards bearing coded data in magnetic form; interface cards for data processing equipment in the form of printed circuits; cards bearing data for use in computers; cards bearing data for use in data processing apparatus; cards bearing coded data in punched-out form; cards bearing data for use in data storage apparatus; cards bearing electronically recorded data; cards bearing integrated circuits; cards bearing magnetic or encoded data for input; cards bearing micro-chips and computer cards containing chips; magnetically-encoded credit, charge, debit and/or cash cards; electronic and magnetic ID cards for use in connection with payment for services; credit, charge, debit and/or cash cards; electronic loyalty or gift cards, readers, scanners, parts and fittings for the aforementioned goods; prepayment cards; loyalty or gift cards, readers, scanners, parts and fittings for the aforementioned goodsClass 009 for Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; electric and electronic apparatus and hardware, equipment for the storage and transmission of data and information for use in relation to banking, financial, insurance and general commercial transactions, including those conducted online via the Internet or a computer network, or by telephone or cellular telephone; computer software, computer operating systems, computer peripheral devices and computer software platforms used to enable and facilitate electronic banking, financial, insurance or other commercial transactions, including those via the Internet or a computer network, or by telephone or cellular telephone, including data processing equipment and software for use in relation to banking and financial services including data processing equipment and software; downloadable electronic publications, in the nature of newsletters, magazines, reports, guides, charts, worksheets, forms, instructional materials, educational materials, bulletins, pamphlets, and booklets in the field of banking, financing, financial services, insurance, securities and investment; apparatus and equipment for the electronic transfer of and/or financial data, namely, computer terminals, computer peripheral devices, computer software, computer programs and mobile applications; electronic equipment, namely, transformers, baluns and cables, all used in connection with computers, computer peripheral devices, televisions, audio-video equipment, closed-circuit TV equipment and telecommunication equipment excluding radio transmitters, radio receivers or paging systems; automated teller machines; money counting and sorting machines, point-of-sale terminals for making contactless payments; card and bar code scanners; magnetic and magnetically encoded key, debit and charge cards; magnetically and non-magnetically encoded and programmable cards for use as identity cards, security clearance cards, time-tracking and recording cards, access control cards, debit cards, credit cards, charge cards, stored value cards, gift cards and loyalty cards; blank smart cards; computer equipment, namely, wireless cards; interface cards for data processing equipment in the form of printed circuits; cards bearing data for use in data processing apparatus; cards bearing data for use in data storage apparatus; cards bearing electronically recorded data; cards bearing integrated circuits; cards bearing magnetic or encoded data for input; cards bearing micro-chips and computer cards containing chips; magnetically-encoded credit, charge, debit and/or cash cards; electronic and magnetic ID cards for use in connection with payment for services; electronic loyalty or gift cards, readers, scanners, parts and fittings for the aforementioned goods
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. For a certification 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, and 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/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunications and communications services; providing user access to computer networks or the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections to the Internet or data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the aforegoing
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. For a certification 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, and 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/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Telecommunications and communications services; Telecommunication services for providing multiple-user access to a global computer network; providing user access to computer networks or the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; telecommunications services, namely, personal communications services; providing telecommunications connections to the Internet or data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the aforegoing; providing user access to computer networks via the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections via the Internet to data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the foregoingClass 038 for Telecommunication services for providing multiple-user access to a global computer network; telecommunications services, namely, personal communications services; providing user access to computer networks via the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections via the Internet to data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the foregoing
Filing Basis: Section 1(b), Intent to Use: 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 in the 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. For a certification 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, and 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/services that meet the certification standards of the applicant.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Brian J. Winterfeldt/      Date: 04/25/2018
Signatory's Name: Brian J. Winterfeldt
Signatory's Position: Attorney of record, New York bar member
Signatory's Phone Number: 202-903-4422


Response Signature
Signature: /Brian J. Winterfeldt/     Date: 04/25/2018
Signatory's Name: Brian J. Winterfeldt
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 2027595833

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 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 87554490
Internet Transmission Date: Wed Apr 25 12:37:16 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XXX-2018042512371697
0220-87554490-51030dd25059ba39ce4d906fa1
e211bdac4d94a6cee1499ca592f3bc7afb237ebd
-N/A-N/A-20180425111300982898