TEAS Response to Suspension Inquiry

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 1822 (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 1822 (Rev 10/2011)

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

Response to Suspension Inquiry or Letter of Suspension

To the Commissioner for Trademarks:

Application serial no. 88106694 PUREVPN(Standard Characters, see http://uspto.report/TM/88106694/mark.png) has been amended as follows:
FOREIGN APPLICATION(S)
The applicant herein elects NOT to proceed to registration under Section 44(e) for any foreign application(s) claimed as a basis for priority.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Computer software; encryption software; computer application software; computer software relating to the operation of web proxies and virtual private networks; computer software relating to the provision of online anonymity, privacy and identity protection; computer software for operating virtual private networks
Original Filing Basis:
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017950614 filed 09/06/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Computer software; computer application software relating to the operation of web proxies and virtual private networks; encryption software; computer application software relating to the provision of online anonymity, privacy and identity protection; computer application software; computer application software for operating virtual private networks computer software relating to the operation of web proxies and virtual private networks; computer software relating to the operation of web proxies and virtual private networks; computer software relating to the provision of online anonymity, privacy and identity protection; computer software for operating virtual private networksClass 009 for computer application software relating to the operation of web proxies and virtual private networks; computer application software relating to the provision of online anonymity, privacy and identity protection; computer application software for operating virtual private networks computer software relating to the operation of web proxies and virtual private networks; computer software relating to the provision of online anonymity, privacy and identity protection; computer software for operating virtual private networks
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2011 and first used in commerce at least as early as 01/00/2013, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 009. The specimen(s) submitted consists of website screenshots.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU0-981105954-2020022516 3526645216_._Class_9.pdf
Converted PDF file(s) (12 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10
Specimen File11
Specimen File12

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017950614 filed 09/06/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 038 for Telecommunications services; web proxy services allowing users to connect to websites through a proxy server and providing a database of open proxy servers
Original Filing Basis:
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017950614 filed 09/06/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Telecommunications services; web proxy services allowing users to connect to websites through a proxy server and providing a database of open proxy serversClass 038 for web proxy services allowing users to connect to websites through a proxy server and providing a database of open proxy servers
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2011 and first used in commerce at least as early as 01/00/2013, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 038. The specimen(s) submitted consists of website screenshots.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU1-981105954-2020022516 3526645216_._Class_38.pdf
Converted PDF file(s) (8 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017950614 filed 09/06/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Encryption services; computer services relating to the provision of online anonymity, privacy and identity protection
Original Filing Basis:
The applicant, or the applicant's related company or licensee, is using the mark in commerce on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended, but has not provided the dates of use by the applicant, or the applicant's related company, licensee, or predecessor in interest, of the mark on or in connection with the identified goods and/or services.

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has had a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017950614 filed 09/06/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Encryption services; Data encryption services; computer services relating to the provision of online anonymity, privacy and identity protectionClass 042 for Data encryption services; computer services relating to the provision of online anonymity, privacy and identity protection
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/00/2011 and first used in commerce at least as early as 01/00/2013, and is now in use in such commerce.
Applicant hereby submits a new specimen for Class 042. The specimen(s) submitted consists of website screenshots.
"The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use].
Original PDF file:
SPU2-981105954-2020022516 3526645216_._Class_42.pdf
Converted PDF file(s) (10 pages)
Specimen File1
Specimen File2
Specimen File3
Specimen File4
Specimen File5
Specimen File6
Specimen File7
Specimen File8
Specimen File9
Specimen File10

Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [European Union Trademark - EUTM application number 017950614 filed 09/06/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant has another basis for registration (Section 1(a) or Section 1(b)) and does NOT intend to rely on Section 44(e) as the basis for registration, but is only asserting a valid claim of priority. The application should not be suspended to await the submission of the foreign registration.


APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: GZ Systems Limited a(n) limited company (ltd.), legally organized under the laws of Hong Kong, having an address of
      
      31/F, Times Square Tower Two,1 Matheson Street, Causeway Bay
      Hong Kong,
      Hong Kong
Proposed: GZ Systems Limited, limited company (ltd.) legally organized under the laws of Hong Kong, having an address of
      31/F, Times Square Tower Two,
      1 Matheson Street, Causeway Bay
      Hong Kong,
      Hong Kong
      Email Address: XXXX

ADDITIONAL STATEMENTS
Miscellaneous Statement
The applicant herein elects not to proceed to registration under Section 44(e) for the EUTM application claimed as a basis for priority, but wishes to retain the priority claim.

The owner's/holder's current attorney information: William C. Wright. Other appointed attorneys are William C. Wright. William C. Wright of EPSTEIN DRANGEL LLP, and the attorney(s) is located at

      60 EAST 42ND STREET, SUITE 2520
      NEW YORK, New York
      United States

The phone number is 212-292-5390.

The email address is mail@ipcounselors.com

The owner's/holder's proposed attorney information: William C. Wright. Other appointed attorneys are Kimberly Klibert, Annmary Ittan, Dwana Dixon, Samuel Klib, Jesse Bader. William C. Wright of EPSTEIN DRANGEL LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      60 EAST 42ND STREET, SUITE 2520
      NEW YORK, New York 10165
      United States
The docket/reference number is 4373-500.

The phone number is 212-292-5390.

The fax number is 212-292-5391.

The email address is mail@ipcounselors.com

William C. Wright submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      WILLIAM C. WRIGHT
      PRIMARY EMAIL FOR CORRESPONDENCE: mail@ipcounselors.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      William C. Wright
      PRIMARY EMAIL FOR CORRESPONDENCE: mail@ipcounselors.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mail@ipcounselors.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the applicant owner/holder and the applicant owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

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 amendment to allege use (AAU) unsigned, all statements in the application or AAU and this submission based on the signatory's own knowledge are true, and all statements in the application or AAU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AAU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AAU 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 application or AAU filing date; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AAU on or in connection with the goods/services/collective membership organization in the application or AAU; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over use of the mark in commerce as of the application or AAU filing date; 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: for a trademark or service mark application, the applicant believes 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; the signatory is properly authorized to execute the declaration on behalf of the applicant; 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 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.

Signatory's Name: Muhammad Ovais
Signatory's Position: VP Business & Legal Counsel

Response Suspension Inquiry Signature
Signature: /William C. Wright/     Date: 02/28/2020
Signatory's Name: William C. Wright
Signatory's Position: Attorney of Record, New York State Bar
Signatory's Phone Number: 212-292-5390

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    WILLIAM C. WRIGHT
   EPSTEIN DRANGEL LLP
   
   60 EAST 42ND STREET, SUITE 2520
   NEW YORK, New York
Mailing Address:    William C. Wright
   EPSTEIN DRANGEL LLP
   60 EAST 42ND STREET, SUITE 2520
   NEW YORK, New York 10165
        
Serial Number: 88106694
Internet Transmission Date: Fri Feb 28 13:32:29 ET 2020
TEAS Stamp: USPTO/RSI-XX.XXX.XX.XX-20200228133229703
607-88106694-7101b51f216f73819c7784a11d6
80c19ea97308d359222ccc54d5c64f77f4194e-N
/A-N/A-20200228130731526918