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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88196271 CLIK (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8819627 1/large) has been amended as follows:

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

The Examining Attorney has refused registration on the grounds that “the specimen does not show the mark in the drawing in use in commerce in International Class 9.” (The reference to Class 9 appears to be a clerical error, as this application covers services in Class 42.)

The Examining Attorney states that the mark on the specimen does not match the mark in the drawing because “the specimen displays the mark in a blue font” and “the drawing displays the mark in a white font.” Applicant notes that the drawing shows the mark in a blue font, and the submitted specimen showed the mark in a white font.

Applicant is submitting the following substitute specimens displaying the mark as shown in the drawing:

Lab Guide (eBook) showing the mark on the cover

Screenshot of cover of Lab Guide showing the mark

Screenshot of software loading screen showing the mark and screenshots of the running software beyond the loading page. This beta version of the software was accessible to customers.

In addition, Applicant is submitting the following supporting documentation:

Screenshot of “Help and Tutorials” page

Screenshots from software developer’s site showing the mark

Applicant respectfully submits that the substitute specimens fulfill all requirements, and requests that the Examining Attorney withdraw the objection to registration and allow this application to proceed to publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 042 for providing non-downloadable financial and investment software, namely, software for tracking investments and that provides financial market information; Providing temporary use of non-downloadable software featuring instruction, training, and training simulators, all in the field of investing; non-downloadable software that provides information about market data including past performance of particular investments and markets, helps plan investment strategies and investment decision-making, none of the foregoing to constitute supply chain management software
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.

In International Class 042, the mark was first used at least as early as 11/05/2019 and first used in commerce at least as early as 11/05/2019.


Proposed:
Class 042 for providing non-downloadable financial and investment software, namely, software for tracking investments and that provides financial market information; Providing temporary use of non-downloadable software featuring instruction, training, and training simulators, all in the field of investing; non-downloadable software that provides information about market data including past performance of particular investments and markets, helps plan investment strategies and investment decision-making, none of the foregoing to constitute supply chain management software

Deleted Filing Basis: 1(b)
In International Class 042, the mark was first used at least as early as 11/05/2019 . and first used in commerce at least as early as 11/05/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 042. The specimen(s) submitted consists of Lab Guide (eBook) showing the mark on the cover; Screenshot of cover of Lab Guide showing the mark; Screenshot of software loading screen showing the mark and screenshots of the running software beyond the loading page; Screenshot of ?Help and Tutorials? page; Screenshots from software developer?s site showing the mark.
"The substitute (or new, or originally submitted, 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, or originally submitted, 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]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU0-26016c0c100ef0f52a38 d3c0738a09-20201104085100 810007_._CliK_Lab_Guide.pdf
Converted PDF file(s) ( 7 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6Specimen File7
Original PDF file:
SPU0-26016c0c100ef0f52a38 d3c0738a09-20201104085100 810007_._CliK_Lab_Guide_c over_screenshot.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-26016c0c100ef0f52a38 d3c0738a09-20201104085100 810007_._CLIK_loading_scr een_and_running_software.pdf
Converted PDF file(s) ( 6 pages) Specimen File1Specimen File2Specimen File3Specimen File4Specimen File5Specimen File6
Original PDF file:
SPU0-26016c0c100ef0f52a38 d3c0738a09-20201104085100 810007_._CLIK_Help_and_Tu torials.pdf
Converted PDF file(s) ( 1 page) Specimen File1
Original PDF file:
SPU0-26016c0c100ef0f52a38 d3c0738a09-20201104085100 810007_._CliK_screenshots -developer_site.pdf
Converted PDF file(s) ( 2 pages) Specimen File1Specimen File2

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Matrix Financial Technologies, Inc., a corporation of California, having an address of

            Suite 200      17780 Fitch
      Irvine, California 92614
      United States

Proposed: Matrix Financial Technologies, Inc., a corporation of California, having an address of
      Suite 200
      17780 Fitch
      Irvine, California 92614
      United States
      Email Address: XXXX
Correspondence Information (current):
      Janice Housey
      PRIMARY EMAIL FOR CORRESPONDENCE: jhousey@symbus.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Janice Housey
      PRIMARY EMAIL FOR CORRESPONDENCE: jhousey@symbus.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).

SIGNATURE(S)
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 allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU 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 filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; 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: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, 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; 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 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.

Signature: /Janice Housey/      Date: 11/04/2020
Signatory's Name: Janice Housey
Signatory's Position: Attorney of Record, Virginia State Bar Membe

Response Signature
Signature: /Janice Housey/     Date: 11/04/2020
Signatory's Name: Janice Housey
Signatory's Position: Attorney of Record, VA Bar

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:    Janice Housey
   SYMBUS LAW GROUP, LLC
   
   PO BOX 777
   BERRYVILLE, Virginia 22611
Mailing Address:    Janice Housey
   SYMBUS LAW GROUP, LLC
   PO BOX 777
   BERRYVILLE, Virginia 22611
        
Serial Number: 88196271
Internet Transmission Date: Wed Nov 04 11:42:48 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XXX:XXXX:XXX:XXXX:XXXX:XX
XX:XXXX-20201104114248619224-88196271-75
05ab160348ece47e387e17eeb1a8615da3f9fe17
96f515ab5946df023123b-N/A-N/A-2020110408
5100810007