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. 87721669 MOOLA(Standard Characters, see http://uspto.report/TM/87721669/mark.png) has been amended as follows:

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

CONFUSION CITATIONS

The examining attorney has refused registration based on her opinion that the subject mark is likely to be confused with U.S. Registration No. 4313311 for MOOLA BANKING and 4313312 for MOOLA CHECKING (“the cited registrations”). The applicant does not agree that the marks are likely to cause confusion for the reasons that follow.

The cited registrations cover services only, namely:

- Class 35 – providing promotional services to banking and financial institutions, namely, administering an incentive program to encourage a customer of a financial institution to deposit monetary funds in a deposit product serviced by the financial institution and to encourage transactions between the customer and merchants; and

- Class 36 – checking account services.

The registrant’s class 35 services are essentially marketing services provided to banks and financial institutions, which the applicant does not provide. Based on a review of the specimens of use, the registrant’s class 36 services are geared toward children and parents of children who would be looking to set up the child’s first bank account. The inclusion of the words BANKING and CHECKING in the cited registrations reinforces that the registrant’s services are in the nature of traditional banking services.

On the contrary, the applicant is not a financial institution and does not target children or customers seeking traditional banking services. The subject application has been amended to delete all services, leaving only goods in the nature of software applications, which are not covered by the cited registrations. Moreover, to differentiate the applicant’s goods from the services of the registrant, the applicant’s goods have been amended to clarify that they relate specifically to crypto currency and gift card transactions.

To the extent that the applicant’s software applications are related to financial transactions, they are not in the nature of traditional online banking services. Rather, the applicant’s primary focus is on enabling ordinary consumers to manage and transfer crypto currency and gift card balances and to carry out e-commerce merchant payments using their mobile devices.

Given the significant differences in the parties’ respective goods and services, it is unlikely that customers seeking the services of the registrant would encounter the applicant’s software applications, and vice versa. 

FOREIGN REGISTRATION

The applicant advises that it intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration.  The corresponding foreign application has not yet issued to registration.  Thus, it is respectfully requested that this subject application be placed in suspension pending receipt of the foreign registration document.  

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 036 for financial services, namely, electronic funds transfer, direct electronic debit transactions, electronic payment processing services, electronic commerce merchant payment services, peer to peer electronic payments, and peer-to-peer money transfers

Applicant hereby deletes the following class of goods/services from the application.
Class 038 for mobile telephone roaming services and wireless internet roaming services

Applicant hereby deletes the following class of goods/services from the application.
Class 042 for computer network security services; mobile device management services in the field of enterprise mobility management (EMM), namely, remote management of mobile devices' software applications, access, and security; software as a service (SAAS) services in the field of enterprise mobility management (EMM), featuring software for mobile device management, mobile application management, mobile security management and managing personal business information on mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers; software as a service (SAAS) services in the field of enterprise mobility management (EMM), featuring software for the operation, management, security and maintenance of enterprise computer networks; software as a service (SAAS) services featuring software to enable users to initiate financial transactions, namely, software to initiate electronic funds transfers, electronic payments, person-to-person money transfers, and person-to-person electronic payments; software as a service (SAAS) services featuring software to enable users to access transaction and account information in connection with electronic funds transfers and electronic payments

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software in the field of enterprise mobility management (EMM) for mobile device management namely, mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, for managing software applications used on mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, for mobile security management, and for managing personal business information on mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers; computer software in the field of enterprise mobility management (EMM) for the operation, management, security and maintenance of enterprise computer networks; downloadable computer software to enable users to initiate financial transactions via a wireless communication device, namely, software to initiate electronic funds transfers, electronic payments, person-to person money transfers, and person-to-person electronic payments; downloadable computer software to enable users to access transaction and account information in connection with electronic funds transfers and electronic payments
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.

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 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 1872700 filed 12/12/2017]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software in the field of enterprise mobility management (EMM) for mobile device management namely, mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, for managing software applications used on mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, for mobile security management, and for managing personal business information on mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers; computer software in the field of enterprise mobility management (EMM) for the operation, management, security and maintenance of enterprise computer networks; downloadable computer software to enable users to initiate financial transactions via a wireless communication device, namely, software to initiate electronic funds transfers, electronic payments, person-to person money transfers, and person-to-person electronic payments; downloadable computer software to enable users to initiate financial transactions via a wireless communication device, namely, software to initiate electronic funds transfers, electronic payments, person-to person money transfers, and person-to-person electronic payments all relating to crypto currency and gift card transactions; downloadable computer software to enable users to access transaction and account information in connection with electronic funds transfers and electronic payments; downloadable computer software to enable users to access transaction and account information in connection with electronic funds transfers and electronic payments all relating to crypto currency and gift card transactionsClass 009 for Computer software in the field of enterprise mobility management (EMM) for mobile device management namely, mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, for managing software applications used on mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, for mobile security management, and for managing personal business information on mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers; computer software in the field of enterprise mobility management (EMM) for the operation, management, security and maintenance of enterprise computer networks; downloadable computer software to enable users to initiate financial transactions via a wireless communication device, namely, software to initiate electronic funds transfers, electronic payments, person-to person money transfers, and person-to-person electronic payments all relating to crypto currency and gift card transactions; downloadable computer software to enable users to access transaction and account information in connection with electronic funds transfers and electronic payments all relating to crypto currency and gift card transactions
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.

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 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 1872700 filed 12/12/2017]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

SIGNATURE(S)
Response Signature
Signature: /treitzel/     Date: 10/01/2018
Signatory's Name: Tanya M. Reitzel
Signatory's Position: Agent of Record

Signatory's Phone Number: 604-687-7432

The signatory has confirmed that he/she is a Canadian attorney/agent, or an associate thereof, who represents an owner/holder located in Canada; that he/she is either registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c) or he/she has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline; and, that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney 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 Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87721669
Internet Transmission Date: Mon Oct 01 18:13:26 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.X-201810011813261407
04-87721669-610e030bc654bded31148575c46d
f8a9ac80786e4d7140add473edb47a9f9d315-N/
A-N/A-20181001175855084006