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)

---

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. 88136621  (Stylized and/or with Design, see http://uspto.report/TM/88136621/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for Credit cards; debit cards; coupons; voucher books; reward program cards, loyalty cards, cards for use in connection with loyalty programs, sales and promotional incentive schemes and promotional services
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 1891081 filed 03/29/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Credit cards; Credit cards without magnetic encoding; debit cards; debit cards without magnetic encoding; coupons; voucher books; reward program cards, loyalty cards, cards for use in connection with loyalty programs, sales and promotional incentive schemes and promotional services; reward program cards, loyalty cards, cards without magnetic encoding for use in connection with loyalty programs, sales and promotional incentive schemes and promotional servicesClass 016 for Credit cards without magnetic encoding; debit cards without magnetic encoding; coupons; voucher books; reward program cards, loyalty cards, cards without magnetic encoding for use in connection with loyalty programs, sales and promotional incentive schemes and promotional services
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 1891081 filed 03/29/2018]. 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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Retail store reward programs; administration of consumer loyalty programs; promoting the sale of goods and services through a consumer loyalty program; credit card services; debit card services; charge card services; credit card reward program services; providing extended warranties of others on products sold through credit cards; providing extended warranty programs of others on products; providing promotional coupon and voucher programs pertaining to goods and services of others; distribution of coupons and voucher books; program for the giving of cash bonuses to retail customers through the issuance and redemption of cash bonus coupons; operation of a customer incentive, reward and loyalty program; sales and promotional incentive schemes and promotional services, namely, provision of bonus incentive rewards to customers; advertising services; business management; business administration services; business management of retail and online retail stores; computer services facilitating an online search engine; providing assistance in the management of business affairs and commercial functions; electronic transfer of money; marketing insurance services of others, namely, personal accident insurance; providing travel insurance services and emergency assistance services of others for credit card holders; providing purchase security insurance of others to indemnify credit card holders for damaged goods; providing car rental collision and loss damage waiver insurance of others to provide coverage for credit card holders; Providing concierge service of others to assist credit card holders with arranging travel, entertainment, business and shopping; Providing auto club services, namely, emergency automobile road and towing services for credit card holders; providing insurance products of others to indemnify customers against inability to pay charge account balances; providing insurance services of others, namely, accidental death and dismemberment insurance; Offering membership in a monitoring service permitting users to report lost debit and credit cards and request replacement cards; offering rewards leading to the arrest and conviction of anyone using stolen debit or credit cards; offering membership in a service that provides monetary coverage in the event of improper use of stolen or lost mobile phones; service provided to member whereby any merchants with which member has a preauthorized payment are notified that new payment details are required. Offering membership in a data monitoring system that monitors and secures personal information; offering membership in a monitoring service that monitors credit ratings; offering membership in a service that provides personalized labels to assist in securing return of lost electronic devices; offering membership in a service that provides computer tune up and service and online data backup so that members can back up computer files; offering rewards for returning lost electronic devices; travel benefits, namely, emergency airline tickets, travel funds and message relay to contacts in Canada, travel voice mail service, pre-trip travel information; valuable document registry for storage of passport numbers, insurance policy numbers and birth certificates; sale price guarantee program; change of address notification service; important date reminder service; and passport expiry date reminder
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 1891081 filed 03/29/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Retail store reward programs; administration of consumer loyalty programs; business administration of consumer loyalty programs; promoting the sale of goods and services through a consumer loyalty program; credit card services; credit card services, namely, credit card registration services, promoting the sale of goods and services of others by awarding purchase points for credit card use; debit card services; debit card services, namely, debit card registration services, promoting the sale of goods and services of others by awarding purchase points for debit card use; charge card services; charge card services, namely, charge card registration services, promoting the sale of goods and services of others by awarding purchase points for charge card use; credit card reward program services; credit card reward program services, namely, arranging and conducting incentive reward programs to promote the sale of a wide variety of consumer goods and services; providing extended warranties of others on products sold through credit cards; providing promotional coupon and voucher programs to promote the goods and services of others; providing extended warranty programs of others on products; distribution of coupons and voucher books to promote the goods and services of others; providing promotional coupon and voucher programs pertaining to goods and services of others; retail store services in the field of automotive, tools and hardware, home products, sports, outdoor living, clothing, workwear, footwear featuring a bonus incentive program for customers in the nature of giving of cash bonuses to retail customers through the issuance and redemption of cash bonus coupons; distribution of coupons and voucher books; operation of a customer incentive, reward and loyalty program through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty; program for the giving of cash bonuses to retail customers through the issuance and redemption of cash bonus coupons; sales and promotional incentive schemes and promotional services, namely, provision of bonus incentive rewards to customers; operation of a customer incentive, reward and loyalty program; advertising services; business management; business administration services; business management of retail and online retail stores; computer shopping facilitation services, namely, providing an online comparison-shopping search engine for obtaining purchasing information; providing assistance in the management of business affairs and commercial functions; computer services facilitating an online search engine; marketing insurance services of others, namely, personal accident insurance; sale price guarantee program, namely, providing a guaranteed pricing program service; electronic transfer of money; providing travel insurance services and emergency assistance services of others for credit card holders; providing purchase security insurance of others to indemnify credit card holders for damaged goods; providing car rental collision and loss damage waiver insurance of others to provide coverage for credit card holders; Providing concierge service of others to assist credit card holders with arranging travel, entertainment, business and shopping; Providing auto club services, namely, emergency automobile road and towing services for credit card holders; providing insurance products of others to indemnify customers against inability to pay charge account balances; providing insurance services of others, namely, accidental death and dismemberment insurance; Offering membership in a monitoring service permitting users to report lost debit and credit cards and request replacement cards; offering rewards leading to the arrest and conviction of anyone using stolen debit or credit cards; offering membership in a service that provides monetary coverage in the event of improper use of stolen or lost mobile phones; service provided to member whereby any merchants with which member has a preauthorized payment are notified that new payment details are required. Offering membership in a data monitoring system that monitors and secures personal information; offering membership in a monitoring service that monitors credit ratings; offering membership in a service that provides personalized labels to assist in securing return of lost electronic devices; offering membership in a service that provides computer tune up and service and online data backup so that members can back up computer files; offering rewards for returning lost electronic devices; travel benefits, namely, emergency airline tickets, travel funds and message relay to contacts in Canada, travel voice mail service, pre-trip travel information; valuable document registry for storage of passport numbers, insurance policy numbers and birth certificates; sale price guarantee program; change of address notification service; important date reminder service; and passport expiry date reminderClass 035 for Retail store reward programs; business administration of consumer loyalty programs; promoting the sale of goods and services through a consumer loyalty program; credit card services, namely, credit card registration services, promoting the sale of goods and services of others by awarding purchase points for credit card use; debit card services, namely, debit card registration services, promoting the sale of goods and services of others by awarding purchase points for debit card use; charge card services, namely, charge card registration services, promoting the sale of goods and services of others by awarding purchase points for charge card use; credit card reward program services, namely, arranging and conducting incentive reward programs to promote the sale of a wide variety of consumer goods and services; providing promotional coupon and voucher programs to promote the goods and services of others; distribution of coupons and voucher books to promote the goods and services of others; retail store services in the field of automotive, tools and hardware, home products, sports, outdoor living, clothing, workwear, footwear featuring a bonus incentive program for customers in the nature of giving of cash bonuses to retail customers through the issuance and redemption of cash bonus coupons; operation of a customer incentive, reward and loyalty program through the distribution of prepaid stored value cards for the purpose of promoting and rewarding loyalty; sales and promotional incentive schemes and promotional services, namely, provision of bonus incentive rewards to customers; advertising services; business management; business administration services; business management of retail and online retail stores; computer shopping facilitation services, namely, providing an online comparison-shopping search engine for obtaining purchasing information; providing assistance in the management of business affairs and commercial functions; marketing insurance services of others, namely, personal accident insurance; sale price guarantee program, namely, providing a guaranteed pricing program service
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 1891081 filed 03/29/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Magnetically encoded credit cards and debit cards; magnetically encoded reward program cards, loyalty cards and cards for use in connection with loyalty programs, sales and promotional incentive schemes and promotional services
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 1891081 filed 03/29/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 036 for Credit card services, debit card services and charge card services, namely, credit card, debit card and charge card payment processing; providing extended warranties of others on products sold through credit cards; providing extended warranty programs of others on products; electronic transfer of money; providing travel insurance services and emergency roadside assistance services of others for credit card holders; providing purchase security insurance of others to indemnify credit card holders for damaged goods; providing car rental collision and loss damage waiver insurance of others to provide coverage for credit card holders; providing insurance products of others to indemnify customers against inability to pay charge account balances; providing insurance services of others, namely, accidental death and dismemberment insurance; travel benefits, namely, money lending in the form of travel funds
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 1891081 filed 03/29/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 038 for Electronic messaging services, namely, message relay to contacts in Canada, travel voice mail service; providing e-mail notification alerts of change of address via the internet
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 1891081 filed 03/29/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 039 for Providing auto club services, namely, emergency automobile road and towing services for credit card holders; travel assistance services, namely, arranging for the emergency purchase or replacement of airline tickets; providing pre-trip travel information
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 1891081 filed 03/29/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Computer security services for protecting data and information from unauthorized access, namely, offering membership in a monitoring service permitting users to report lost debit and credit cards and request replacement cards, offering rewards leading to the arrest and conviction of anyone using stolen debit or credit cards, offering membership in a service that provides monetary coverage in the event of improper use of stolen or lost mobile phones, service provided to member whereby any merchants with which member has a preauthorized payment are notified that new payment details are required, offering membership in a data monitoring system that monitors and secures personal information, offering membership in a monitoring service that monitors credit ratings, offering membership in a service that provides personalized labels to assist in securing return of lost electronic devices and offering membership in a service that provides computer tune up and service and online data backup so that members can back up computer files; Electronic storage of files and documents, namely, valuable document registry for storage of passport numbers, insurance policy numbers and birth certificates
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 1891081 filed 03/29/2018]. 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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 045 for Providing concierge service of others to assist credit card holders with arranging travel, entertainment, business and shopping; lost property return, namely, providing rewards for returning lost electronic devices; personal reminder services in the area of upcoming important dates and events including passport expiration date
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 1891081 filed 03/29/2018]. 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.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Canadian Tire Corporation, Limited a(n) Ontario Corporation, having an address of
      2180 Yonge Street
      Toronto, Ontario, M4P2V8
      Canada

Proposed: Canadian Tire Corporation, Limited, Ontario Corporation legally organized under the laws of Canada, having an address of
      2180 Yonge Street
      Toronto, Ontario, M4P2V8
      Canada

ADDITIONAL STATEMENTS
Color Claim
The color(s) red, purple and green is/are claimed as a feature of the mark.

Description of mark
The mark consists of of three concentric triangles with the innermost one in red, the middle one in purple and the outermost triangle in green.

Miscellaneous Statement
Applicant requests that the application be placed on suspension pending the issuance of the corresponding foreign registration.


FEE(S)
Fee(s) in the amount of $1650 is being submitted.

SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_19294203253-182726141_._Concentric_Triangles.pdf
Converted PDF file(s) (3 pages)
Signature File1
Signature File2
Signature File3
Signatory's Name: Cynthia Hill
Signatory's Position: Vice President Legal & Associate General Counsel

Response Signature
Signature: /Catherine Mitros/     Date: 07/16/2019
Signatory's Name: Catherine Mitros
Signatory's Position: Associate attorney, Venable LLP, DC bar member

Signatory's Phone Number: 202-344-4998

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.

        
RAM Sale Number: 88136621
RAM Accounting Date: 07/17/2019
        
Serial Number: 88136621
Internet Transmission Date: Tue Jul 16 18:55:00 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201907161855006
81079-88136621-620fb57e03f65cfa6245c721a
a6a5df6f7259e7e308f3bb68d5c11cd523b3ea95
6-DA-7575-20190716182726141349