Extension of Time to File SOU

PUSHPAY

Pushpay IP Limited

Request for Extension of Time to File a Statement of Use

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 1581 (Rev 09/2005)
OMB No. 0651-0054 (Exp 12/31/2020)

Request for Extension of Time to File a Statement of Use
(15 U.S.C. Section 1051(d))


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 88050357
LAW OFFICE ASSIGNED LAW OFFICE 115
MARK SECTION
MARK PUSHPAY (see, http://uspto.report/TM/88050357/mark.png)
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
LITERAL ELEMENT PUSHPAY
OWNER SECTION (current)
NAME Pushpay IP Limited
MAILING ADDRESS Level 6 167 Victoria Street West
CITY Auckland
ZIP/POSTAL CODE 1010
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY New Zealand
EMAIL XXXX
OWNER SECTION (proposed)
NAME Pushpay IP Limited
MAILING ADDRESS Level 6 167 Victoria Street West
CITY Auckland
ZIP/POSTAL CODE 1010
STATE/COUNTRY/REGION/JURISDICTION/U.S. TERRITORY New Zealand
EMAIL XXXX
CORRESPONDENCE INFORMATION (current)
NAME Sheila Fox Morrison
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE pdxtrademarks@dwt.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
CORRESPONDENCE INFORMATION (proposed)
NAME Sheila Fox Morrison
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE pdxtrademarks@dwt.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBER 108874.
GOODS AND/OR SERVICES SECTION
INTERNATIONAL CLASS 009
CURRENT IDENTIFICATION Computers; Computer software for facilitating business transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Computer software for use in business administration and management; Computer software for facilitating financial transactions; Computer software for use in facilitating the payment or receipt of monetary and non-monetary contributions; Computer software for use in merchant processing services; Computer software for facilitating others to make monetary contributions to others for charity; Computer software for facilitating others to contribute to religious institutions; Computer software for facilitating others to contribute to educational institutions; Computer software for facilitating others to make charitable contributions; Computer software for facilitating financial transactions with government entities and government-regulated entities; Computer software for use in processing electronic payments; Computer software for use in database management, use as a spreadsheet, and word processing; Computer software for computer system and application development, deployment and management; Computer software for computer system and mobile application development, deployment and management; Computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Apparatus for recording, transmission or reproduction of sound or images; Computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; Computer software for use in processing the exchange of monetary and non-monetary payments, and for compiling information and generating reports for business and tax purposes; Computer software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer application software for mobile phones, portable media players, handheld computers, tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer application software for mobile devices, namely, mobile phones and tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer software for event registration; Financial reconciliation software; Computer software for customer relationship management; Computer software for facilitating video and audio broadcasts; Computer software for use in accessing downloadable MP3 files and MP3 recordings of podcasts in the field of financial information; Computer software for use in promoting the activities and events of others; Computer software for providing information to others, namely, software for managing marketing campaigns; Computer software for facilitating electronic communication between others; Computer software for providing online education in the field of donor management and community engagement; Computer software for use in event registration and event management; Downloadable computer software for facilitating electronic communication between others
GOODS OR SERVICES DELETE ALL ITU GOODS/SERVICES IN THIS CLASS OR PROCESS ACCORDING TO STATEMENT OF USE AND/OR REQUEST TO DIVIDE
INTERNATIONAL CLASS 035
CURRENT IDENTIFICATION Advertising services; Business management; Business administration; Providing office functions; Providing incentive award programs for customers through processing of debit card loyalty program points for on-line purchase transactions of a company's goods and services; Customer relationship management; Developing and managing the charitable giving programs of others; insurance and financial services, namely, financial record-keeping for insurance risk management; remote management of computer databases for others; Financial services, namely, providing an online computer website that provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; Facilitating the exchange of needed information for financial compensation via the Internet; Providing a website for managing, conducting and organizing online auctions that are designed to raise money for charities; Developing and managing the charitable programs of others; Promoting charitable giving that that reflects the core values of the donor by providing a method to identify the donor's core values and to select charities that foster those values; Association services, namely, promoting awareness of charitable giving; Event planning for businesses; Event registration for charitable fundraising purposes and events; Event registration for educational institutions; Marketing service, namely, promotional services in the field of planned-giving for non-profit and charitable organizations; Promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness; business data analytic services in the nature of providing analysis of charitable giving data; Special event planning for business purposes; Event planning and management for marketing, branding, promoting or advertising the goods and services of others; Providing an online portal for event registration for fundraising events; Online portal for event registration for religious events in the nature of meetings; Online portal for event registration for educational events, cultural events, and social entertainment events
GOODS OR SERVICES DELETE ALL ITU GOODS/SERVICES IN THIS CLASS OR PROCESS ACCORDING TO STATEMENT OF USE AND/OR REQUEST TO DIVIDE
INTERNATIONAL CLASS 036
CURRENT IDENTIFICATION Financial services, namely, merchant payment transaction processing services; Financial consulting services in the field of planned giving for non-profit and charitable organizations; Financial planning services, namely, developing and managing charitable giving programs; Providing on-line information in the field of charitable monetary giving; Financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, business fundraising provided over a computer network such as the Internet and providing on-line stored value accounts in an electronic commerce environment; Financial affairs, namely, financial information, management and analysis services; Monetary affairs services in the form of monetary strategy consultation and research and monetary exchange operations; Financial and monetary affairs transaction management services, namely, providing secure commercial transaction services and payment options and providing an internet website portal in the field of financial transaction and payment processing services; Payment processing, namely, credit card and debit card transaction processing services; Online payment and transaction processing services; Financial payment and financial transaction services in the form of credit card, debit card loyalty program and payment transaction processing services; Transaction services in the form of providing cash and other rebates for credit card use and debit card use as part of a customer credit card and debit card loyalty program; Financial transaction services, namely, providing secure commercial transactions and payment options; Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; Merchant services, namely, payment transaction processing services; Providing financial data analysis for others, namely, compiling and analyzing church tithing collection statistics for financial purposes
GOODS OR SERVICES DELETE ALL ITU GOODS/SERVICES IN THIS CLASS OR PROCESS ACCORDING TO STATEMENT OF USE AND/OR REQUEST TO DIVIDE
INTERNATIONAL CLASS 038
CURRENT IDENTIFICATION Communication services in the nature of short message services (SMS), electronic transmission of push notifications and electronic transmission of emails; Video broadcasting services over the Internet or other communication network
GOODS OR SERVICES DELETE ALL ITU GOODS/SERVICES IN THIS CLASS OR PROCESS ACCORDING TO STATEMENT OF USE AND/OR REQUEST TO DIVIDE
INTERNATIONAL CLASS 041
CURRENT IDENTIFICATION Providing information on education provided on-line from a computer database or the internet; Production and distribution of videos in the field of finance and financial translations; Providing continuing business education courses; Education services, namely, providing tutorial sessions in the field of finance and financial translations; Education services, namely, providing live and on-line classes, seminars, workshops in the fields of finance and financial transactions, charitable giving, customer relationship management, business administration, business management, marketing, event planning and event registration; Providing religious instruction
GOODS OR SERVICES DELETE ALL ITU GOODS/SERVICES IN THIS CLASS OR PROCESS ACCORDING TO STATEMENT OF USE AND/OR REQUEST TO DIVIDE
INTERNATIONAL CLASS 042
CURRENT IDENTIFICATION Design and development of computer hardware and software; Providing a social networking website which features technology that enables users to give charitable financial gifts to others; Web site design and development for others; Computer software development for others; Computer software development for others, namely, custom development, deployment, and management of mobile application software for others; Computer services, namely, remote management of databases for others; Software as a service (SAAS) services featuring data dashboards for use in monitoring and managing of church tithing collection operations; Software as a service (SAAS) services featuring data dashboards for use in customer relationship management, monitoring and managing of financial transactions, business administration, business management, marketing, event planning and event registration; Software as a service (SAAS) services featuring software for e-mail campaign management, and development and management of charitable donations and pledges; Software as a service (SAAS) services featuring software containing information in the field of customer services relationship management; Providing online non-downloadable computer software to facilitate electronic communication between others; Design, creation, hosting, maintenance of websites for others; Hosting the software, websites and other computer applications of others on a managed hosted environment in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Hosting, managing, developing maintaining applications, software and websites of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Designing, creating, maintaining and hosting online electronic commerce websites for others; Design, creation, hosting and maintenance of internet sites for third parties; Application service provider (ASP), namely, hosting computer software applications of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management
GOODS OR SERVICES DELETE ALL ITU GOODS/SERVICES IN THIS CLASS OR PROCESS ACCORDING TO STATEMENT OF USE AND/OR REQUEST TO DIVIDE
INTERNATIONAL CLASS 045
CURRENT IDENTIFICATION Personal and social services rendered by others to meet the needs of individuals, namely, companionship services services for church members and non-profit donors; Conducting religious prayer services; Providing religious counseling service
GOODS OR SERVICES KEEP ALL LISTED
REQUEST TO DIVIDE YES
EXTENSION SECTION
EXTENSION NUMBER 2
ONGOING EFFORT product or service research or development
ALLOWANCE MAIL DATE 09/17/2019
STATEMENT OF USE NO
PAYMENT SECTION
NUMBER OF CLASSES 1
SUBTOTAL AMOUNT [EXTENSION FEE] 125
TOTAL AMOUNT 125
SIGNATURE SECTION
SIGNATURE /Sheila F. Morrison/
SIGNATORY'S NAME Morrison, Sheila Fox
SIGNATORY'S POSITION Attorney of Record, Oregon bar member
DATE SIGNED 09/17/2020
SIGNATORY'S PHONE NUMBER 0000000000
FILING INFORMATION
SUBMIT DATE Thu Sep 17 12:07:04 ET 2020
TEAS STAMP USPTO/ESU-XXX.XXX.XX.XX-2
0200917120704512199-88050
357-7509cb0b530cacf8a5cc9
70ccf9153bfd8ce9917cafcc5
df1b1af478c17a1152b-DA-07
032505-202009161810416893
52



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 1581 (Rev 09/2005)
OMB No. 0651-0054 (Exp 12/31/2020)


SOU Extension Request
(15 U.S.C. Section 1051(d))


To the Commissioner for Trademarks:

MARK: PUSHPAY (see, http://uspto.report/TM/88050357/mark.png)
SERIAL NUMBER: 88050357

OWNER AND/OR ENTITY INFORMATION
The owner proposes to amend the following:
Current: Pushpay IP Limited, having an address of
      Level 6 167 Victoria Street West
      Auckland, 1010
      New Zealand
      Email: XXXX
Proposed: Pushpay IP Limited, having an address of
      Level 6 167 Victoria Street West
      Auckland, 1010
      New Zealand
      Phone:
      Fax:
      Email: XXXX

The owner requests a six-month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application.    The Notice of Allowance mailing date was 09/17/2019.

For International Class 009:
Current identification: Computers; Computer software for facilitating business transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Computer software for use in business administration and management; Computer software for facilitating financial transactions; Computer software for use in facilitating the payment or receipt of monetary and non-monetary contributions; Computer software for use in merchant processing services; Computer software for facilitating others to make monetary contributions to others for charity; Computer software for facilitating others to contribute to religious institutions; Computer software for facilitating others to contribute to educational institutions; Computer software for facilitating others to make charitable contributions; Computer software for facilitating financial transactions with government entities and government-regulated entities; Computer software for use in processing electronic payments; Computer software for use in database management, use as a spreadsheet, and word processing; Computer software for computer system and application development, deployment and management; Computer software for computer system and mobile application development, deployment and management; Computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Apparatus for recording, transmission or reproduction of sound or images; Computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; Computer software for use in processing the exchange of monetary and non-monetary payments, and for compiling information and generating reports for business and tax purposes; Computer software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer application software for mobile phones, portable media players, handheld computers, tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer application software for mobile devices, namely, mobile phones and tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Computer software for event registration; Financial reconciliation software; Computer software for customer relationship management; Computer software for facilitating video and audio broadcasts; Computer software for use in accessing downloadable MP3 files and MP3 recordings of podcasts in the field of financial information; Computer software for use in promoting the activities and events of others; Computer software for providing information to others, namely, software for managing marketing campaigns; Computer software for facilitating electronic communication between others; Computer software for providing online education in the field of donor management and community engagement; Computer software for use in event registration and event management; Downloadable computer software for facilitating electronic communication between others

All ITU goods/services in this class are to be deleted or processed according to a separately filed Statement of Use and/or according to a request to divide.


For International Class 035:
Current identification: Advertising services; Business management; Business administration; Providing office functions; Providing incentive award programs for customers through processing of debit card loyalty program points for on-line purchase transactions of a company's goods and services; Customer relationship management; Developing and managing the charitable giving programs of others; insurance and financial services, namely, financial record-keeping for insurance risk management; remote management of computer databases for others; Financial services, namely, providing an online computer website that provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; Facilitating the exchange of needed information for financial compensation via the Internet; Providing a website for managing, conducting and organizing online auctions that are designed to raise money for charities; Developing and managing the charitable programs of others; Promoting charitable giving that that reflects the core values of the donor by providing a method to identify the donor's core values and to select charities that foster those values; Association services, namely, promoting awareness of charitable giving; Event planning for businesses; Event registration for charitable fundraising purposes and events; Event registration for educational institutions; Marketing service, namely, promotional services in the field of planned-giving for non-profit and charitable organizations; Promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness; business data analytic services in the nature of providing analysis of charitable giving data; Special event planning for business purposes; Event planning and management for marketing, branding, promoting or advertising the goods and services of others; Providing an online portal for event registration for fundraising events; Online portal for event registration for religious events in the nature of meetings; Online portal for event registration for educational events, cultural events, and social entertainment events

All ITU goods/services in this class are to be deleted or processed according to a separately filed Statement of Use and/or according to a request to divide.


For International Class 036:
Current identification: Financial services, namely, merchant payment transaction processing services; Financial consulting services in the field of planned giving for non-profit and charitable organizations; Financial planning services, namely, developing and managing charitable giving programs; Providing on-line information in the field of charitable monetary giving; Financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, business fundraising provided over a computer network such as the Internet and providing on-line stored value accounts in an electronic commerce environment; Financial affairs, namely, financial information, management and analysis services; Monetary affairs services in the form of monetary strategy consultation and research and monetary exchange operations; Financial and monetary affairs transaction management services, namely, providing secure commercial transaction services and payment options and providing an internet website portal in the field of financial transaction and payment processing services; Payment processing, namely, credit card and debit card transaction processing services; Online payment and transaction processing services; Financial payment and financial transaction services in the form of credit card, debit card loyalty program and payment transaction processing services; Transaction services in the form of providing cash and other rebates for credit card use and debit card use as part of a customer credit card and debit card loyalty program; Financial transaction services, namely, providing secure commercial transactions and payment options; Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; Merchant services, namely, payment transaction processing services; Providing financial data analysis for others, namely, compiling and analyzing church tithing collection statistics for financial purposes

All ITU goods/services in this class are to be deleted or processed according to a separately filed Statement of Use and/or according to a request to divide.


For International Class 038:
Current identification: Communication services in the nature of short message services (SMS), electronic transmission of push notifications and electronic transmission of emails; Video broadcasting services over the Internet or other communication network

All ITU goods/services in this class are to be deleted or processed according to a separately filed Statement of Use and/or according to a request to divide.


For International Class 041:
Current identification: Providing information on education provided on-line from a computer database or the internet; Production and distribution of videos in the field of finance and financial translations; Providing continuing business education courses; Education services, namely, providing tutorial sessions in the field of finance and financial translations; Education services, namely, providing live and on-line classes, seminars, workshops in the fields of finance and financial transactions, charitable giving, customer relationship management, business administration, business management, marketing, event planning and event registration; Providing religious instruction

All ITU goods/services in this class are to be deleted or processed according to a separately filed Statement of Use and/or according to a request to divide.


For International Class 042:
Current identification: Design and development of computer hardware and software; Providing a social networking website which features technology that enables users to give charitable financial gifts to others; Web site design and development for others; Computer software development for others; Computer software development for others, namely, custom development, deployment, and management of mobile application software for others; Computer services, namely, remote management of databases for others; Software as a service (SAAS) services featuring data dashboards for use in monitoring and managing of church tithing collection operations; Software as a service (SAAS) services featuring data dashboards for use in customer relationship management, monitoring and managing of financial transactions, business administration, business management, marketing, event planning and event registration; Software as a service (SAAS) services featuring software for e-mail campaign management, and development and management of charitable donations and pledges; Software as a service (SAAS) services featuring software containing information in the field of customer services relationship management; Providing online non-downloadable computer software to facilitate electronic communication between others; Design, creation, hosting, maintenance of websites for others; Hosting the software, websites and other computer applications of others on a managed hosted environment in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Hosting, managing, developing maintaining applications, software and websites of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Designing, creating, maintaining and hosting online electronic commerce websites for others; Design, creation, hosting and maintenance of internet sites for third parties; Application service provider (ASP), namely, hosting computer software applications of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management

All ITU goods/services in this class are to be deleted or processed according to a separately filed Statement of Use and/or according to a request to divide.


For International Class 045:
Current identification: Personal and social services rendered by others to meet the needs of individuals, namely, companionship services services for church members and non-profit donors; Conducting religious prayer services; Providing religious counseling service

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


The applicant has submitted a Request to Divide in paper or is filing a Request to Divide as part of the TEAS Allegation of Use form. This is the second extension request. The applicant has made the following ongoing efforts to use the mark in commerce on or in connection with each of those goods/services covered by the extension request: product or service research or development

Correspondence Information (current):
      Sheila Fox Morrison
      PRIMARY EMAIL FOR CORRESPONDENCE: pdxtrademarks@dwt.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Correspondence Information (proposed):
      Sheila Fox Morrison
      PRIMARY EMAIL FOR CORRESPONDENCE: pdxtrademarks@dwt.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED


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).





A fee payment in the amount of $125 will be submitted with the form, representing payment for 1 class.


Declaration

STATEMENTS: The signatory believes that: the applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all the goods/services under Section 1(b) in the notice of allowance or as subsequently modified, or, if applicable, the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with all the goods/services/collective membership organization under Section 1(b) in the notice of allowance or as subsequently modified; and that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, members and 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.

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 resulting registration, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.


Signature: /Sheila F. Morrison/      Date Signed: 09/17/2020
Signatory's Name: Morrison, Sheila Fox
Signatory's Position: Attorney of Record, Oregon bar member
Signatory's Phone: 0000000000

RAM Sale Number: 88050357
RAM Accounting Date: 09/17/2020

Serial Number: 88050357
Internet Transmission Date: Thu Sep 17 12:07:04 ET 2020
TEAS Stamp: USPTO/ESU-XXX.XXX.XX.XX-2020091712070451
2199-88050357-7509cb0b530cacf8a5cc970ccf
9153bfd8ce9917cafcc5df1b1af478c17a1152b-
DA-07032505-20200916181041689352



Extension of Time to File SOU [image/jpeg]


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