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. 88061776 TEMASEK NOMINEES(Standard Characters, see http://uspto.report/TM/88061776/mark.png) has been amended as follows:

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

(1) The registration cited as a duplicate of this application has been surrendered.

 

(2)The applicant owns the marks stated as a basis for a refusal under Section 2(d).

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Business management; business administration; professional business consultancy; business management and organization consultancy; business management consultancy; advisory services for business management; recording of inter parties transactions in respect of shares, namely, recording and registering the transfer of stocks, shares and securities
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Singapore registration number T1013834D registered 10/22/2010 with a renewal date of __________ and an expiration date of 10/22/2020 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Business management; business administration; business administration services; professional business consultancy; business management and organization consultancy; business management consultancy; advisory services for business management; recording of inter parties transactions in respect of shares, namely, recording and registering the transfer of stocks, shares and securitiesClass 035 for Business management; business administration services; professional business consultancy; business management and organization consultancy; business management consultancy; advisory services for business management; recording of inter parties transactions in respect of shares, namely, recording and registering the transfer of stocks, shares and securities
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number T1013834D registered 10/22/2010 with a renewal date of __________ and an expiration date of 10/22/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Financial services, namely, financial planning, financial research, financial management, financial consultation; investment services, namely, mutual fund investment; financial consultancy services; financial management services; fund investments; capital investments; mutual funds, namely, mutual fund distribution and establishing mutual funds for others; financial information; stock exchange quotations; insurance information; financial evaluation for insurance purposes; charitable collections in the nature of fundraising; provision of information relating to the real estate property market in the field of real estate values; pricing information services, namely, quotation of stock market prices; investment information services; information about stock broking services; provision of information relating to shares prices, and corporate savings account services; provision of information relating to real estate and real property in the field of evaluation of real property; computerized financial information relating to commodities and securities; computerized financial services for retail businesses; provision of financial information relating to rates of exchange; real estate property appraisal services; real estate property brokerage services; real estate property consultancy services; real estate property evaluation services; real estate property financing services; real estate property investment services; real estate rental property management services; commercial property investment services; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property, namely, real estate mortgage brokerage; collection of credit sales being credit recovery and collection services; collection of payment being rent; Financial administration of stock exchange trading of shares in financial markets; brokerage of shares; computerized information services relating to share prices; financial management of shares; financial information relating to shares; Financial services, namely, the trading of shares; automated banking services relating to electronic charge card and credit card transactions; computerized information services relating to banking matters; providing information about banking services; provision of financial news
Original Filing Basis:
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Singapore registration number T1013834D registered 10/22/2010 with a renewal date of __________ and an expiration date of 10/22/2020 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Financial services, namely, financial planning, financial research, financial management, financial consultation; investment services, namely, mutual fund investment; financial consultancy services; financial management services; fund investments; mutual and hedge fund investments; capital investments; mutual funds, namely, mutual fund distribution and establishing mutual funds for others; mutual funds services, namely, mutual fund distribution and establishing mutual funds for others; financial information; stock exchange quotations; insurance information; financial evaluation for insurance purposes; charitable collections in the nature of fundraising; provision of information relating to the real estate property market in the field of real estate values; pricing information services, namely, quotation of stock market prices; investment information services; information about stock broking services; provision of information about stock broking services; provision of information relating to shares prices, and corporate savings account services; provision of information relating to real estate and real property in the field of evaluation of real property; computerized financial information relating to commodities and securities; computerized financial services for retail businesses; computerized financial services for retail businesses in the nature of electronic financial trading services, online financial planning services, financial analysis and research services provision of financial information relating to rates of exchange; provision of financial information relating to rates of exchange; real estate property appraisal services; real estate property brokerage services; real estate property consultancy services; real estate property evaluation services; real estate property financing services; real estate property investment services; real estate rental property management services; commercial property investment services; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property, namely, real estate mortgage brokerage; collection of credit sales being credit recovery and collection services; collection of payment being rent; Financial administration of stock exchange trading of shares in financial markets; brokerage of shares and other securities; brokerage of shares; computerized information services relating to share prices; financial management of securities portfolios, namely, shares; financial management of shares; financial information relating to shares; Financial services, namely, the trading of shares and other securities; Financial services, namely, the trading of shares; automated banking services relating to electronic charge card and credit card transactions; providing financial information, namely, computerized information services relating to banking matters; computerized information services relating to banking matters; providing information about banking services; provision of financial news in the fields of finance, securities and other financial instruments; provision of financial newsClass 036 for Financial services, namely, financial planning, financial research, financial management, financial consultation; investment services, namely, mutual fund investment; financial consultancy services; financial management services; mutual and hedge fund investments; capital investments; mutual funds services, namely, mutual fund distribution and establishing mutual funds for others; financial information; stock exchange quotations; insurance information; financial evaluation for insurance purposes; charitable collections in the nature of fundraising; provision of information relating to the real estate property market in the field of real estate values; pricing information services, namely, quotation of stock market prices; investment information services; provision of information about stock broking services; provision of information relating to shares prices, and corporate savings account services; provision of information relating to real estate and real property in the field of evaluation of real property; computerized financial information relating to commodities and securities; computerized financial services for retail businesses in the nature of electronic financial trading services, online financial planning services, financial analysis and research services provision of financial information relating to rates of exchange; real estate property appraisal services; real estate property brokerage services; real estate property consultancy services; real estate property evaluation services; real estate property financing services; real estate property investment services; real estate rental property management services; commercial property investment services; estate trust management services relating to real estate and property; financial services relating to the acquisition and sale of property, namely, real estate mortgage brokerage; collection of credit sales being credit recovery and collection services; collection of payment being rent; Financial administration of stock exchange trading of shares in financial markets; brokerage of shares and other securities; computerized information services relating to share prices; financial management of securities portfolios, namely, shares; financial information relating to shares; Financial services, namely, the trading of shares and other securities; automated banking services relating to electronic charge card and credit card transactions; providing financial information, namely, computerized information services relating to banking matters; providing information about banking services; provision of financial news in the fields of finance, securities and other financial instruments
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Singapore registration number T1013834D registered 10/22/2010 with a renewal date of __________ and an expiration date of 10/22/2020 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
LAWRENCE E. ABELMAN
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE
NEW YORK
New York
US
10017

Proposed:
LAWRENCE E. ABELMAN of ABELMAN, FRAYNE & SCHWAB, having an address of
10th Floor 666 THIRD AVENUE NEW YORK, New York 10017
United States
fterranella@lawabel.com;docket@lawabel.com
212-949-9022
212-949-9190
The docket/reference number is 879353 .



ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use NOMINEES for International classes 35 and 36 apart from the mark as shown.


Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 4220111 and 4075414.


Translation
The English translation of TEMASEK in the mark is SEA TOWN.


SIGNATURE(S)
Response Signature
Signature: /ft/     Date: 03/01/2019
Signatory's Name: Frank Terranella
Signatory's Position: Attorney for Owner, NY Bar member

Signatory's Phone Number: 2129499022

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.

Mailing Address:    LAWRENCE E. ABELMAN
   ABELMAN, FRAYNE & SCHWAB
   10th Floor
   666 THIRD AVENUE
   NEW YORK, New York 10017
        
Serial Number: 88061776
Internet Transmission Date: Fri Mar 01 14:09:35 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20190301140935609
734-88061776-6201396334717537de2ed959c3d
0ada0d95232fe9b9ade507a5e97f912dbdfb5-N/
A-N/A-20190301140307067962