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. 88213990 ALIPAYCONNECT (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8821399 0/large) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Scientific, nautical, photographic, optical, signaling, measuring, checking as in supervision, life-saving apparatus and instruments, namely, telephones, punch clocks, time recording devices in the nature of time clocks, weighing equipment in the nature of scales and balances, graduated rulers, electronic pocket translators, neon signs, electronic notice boards, transparency projection apparatus, kilometer recorders in the nature of odometers for vehicles, telescopes, mechanisms for counter operated apparatus in the nature of point-of-sale terminals, fire extinguishers, acoustic alarms in the name of smoke and fire alarms, eyeglasses, batteries, and exposed files in the nature of exposed camera film; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric wires, electric switches, electrolysis apparatus for electroplating purposes, and electrified fences, namely, electric fences; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers and blank recordable optical discs, namely, CD-R, CD-RW, DVD-R and DVD-RW discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; software for processing electronic payments to and from others; authentication software, namely, software for authenticating the identity of a payer; computer software applications for mobile devices and computers, namely, software for financial analysis, planning and management, software for securing and protecting data on mobile devices and computers, software for authenticating user identification, software for controlling access to and communications with mobile devices and computers; software applications for use with mobile devices, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of shopping, purchasing, communication, product and service reviews, entertainment, health and fitness, lifestyle, media and video, music and audio, photography and social network; computer software that may be downloaded from a global computer network for posting information, creating electronic product catalogs, responding to requests and placing and fulfilling orders for products, services and business opportunities via local and global computer networks, for use in document management, for searching, browsing and receiving transmissions of text, electronic documents, graphics and audiovisual information on local and remote area networks and global computer networks, on intranets, or on directories of information available on computer networks, for use in software development and web authoring, for use in exchanging information via global computer networks and online from a computer database and the internet, for business use for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances, and marketing information management, for data mining, for high-speed massive e-commerce data processing, and for data customization, all of the foregoing for use by third parties in connection with an interactive website in the field of e-commerce; downloadable computer software applications for use with mobile devices and computers, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of e-commerce, data management, customer relationship management, entertainment, education and telecommunications provided via the Internet; on-line downloadable electronic publications in the nature of magazines, articles, brochures, leaflets, datasheets, informational materials, instructional materials in the field of business, e-commerce, information technology, cloud computing, telecommunications, the Internet, business and e-commerce training, business, sales, marketing and financial management; instant messaging software; file sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless and telecommunication networks; computer software for processing images, graphics, audio, video and text; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable computer software for use in the field of business for financial management and financial planning; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable cloud-computing software for deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform; downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for accessing, viewing and controlling remote computers and computer networks; computer software for use in the search and retrieval of computerized information from global information networks and network systems about hobbies, collectibles, auctions and products; data storage programs, namely, software used for the storage of electronic data and documents and data on hard discs, compact discs, tapes and optical discs; computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal portable media players; mobile telephones; smart phones; digital cameras; battery chargers; computer workstations comprising computers and computer monitors; servers, namely, computer servers; computer and telecommunications networking computer hardware; computer network adaptors, switches, routers, hubs; wireless and wired modems and communication cards and devices, namely, cable modems, computer fax modem cards, external modems, internal modems, modem cables, modems; laptop holders in the nature of protective sleeves and carrying cases, computer bags; fire-extinguishing apparatus; computer hardware and firmware for use in the field of business for financial management and financial planning; downloadable computer software for use in the field of business for financial management and financial planning; computer software for use with global positioning system (GPS) navigation systems for navigation, route guidance and electronic mapping; computer software for use with route planners, electronic maps and digital dictionaries for navigation and translation purposes; satellite-aided navigation systems in the nature of automobile navigation system featuring interactive digital map displays, interactive instructions and user generated information; compact discs featuring music; computer programs and computer software for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances and marketing information management, all in the field of e-commerce and business; digital music downloadable from the Internet; telecommunications apparatus, namely, VOIP phones, network telephones, electronic facsimile machines, portable digital electronic device for sending and receiving electronic mails, and instant messaging communication tool in the nature of portable telecommunication instant messaging devices; mouse pads; mobile phone handsets; mobile phone accessories, namely, battery chargers, cases, covers, ear phones, headsets and hands-free calling devices; downloadable computer game software, pictures in the field of aircrafts, automobiles, buildings, natural scenery and pets, motion pictures and movies in the field of children's entertainment, family entertainment, drama, action, adventure and fantasy and music via the internet and wireless devices; alarm monitoring systems; security cameras; mobile radio and television broadcasting units, namely, transmitting and receiving apparatus for radio and television broadcasting and for long-distance transmission; television broadcasting equipment, namely, video cameras, film cameras, monitors, flat panel display screens, audio monitors, audio recorders, video recorders, electronic switchers, cables for the transmission of sounds and images, lights for use with video cameras and film cameras, camera lenses, camera tripods, camera cases, blank videotape, audio mixing boards and video editing computer hardware; cameras; video cameras; headphones; ear pieces, namely, ear buds; speakers, namely, loud speakers; global positioning system (GPS) apparatus and equipment, namely, GPS systems; downloadable computer, electronic and video games programs and software via the Internet; liquid crystal displays for telecommunications and electronic equipment; set top box; remote control for radios, televisions, stereos, computers, video recorders, audio systems and playback machines; spectacles and sunglasses; electronic signboards; magnetically encoded bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; electronic book readers
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Hong Kong registration number 304747177 registered 05/24/2019 with a renewal date of __________ and an expiration date of 11/25/2028 ], 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: Scientific, nautical, photographic, optical, signaling, measuring, checking as in supervision, life-saving apparatus and instruments, namely, telephones, punch clocks, time recording devices in the nature of time clocks, weighing equipment in the nature of scales and balances, graduated rulers, electronic pocket translators, neon signs, electronic notice boards, transparency projection apparatus, kilometer recorders in the nature of odometers for vehicles, telescopes, mechanisms for counter operated apparatus in the nature of point-of-sale terminals, fire extinguishers, acoustic alarms in the name of smoke and fire alarms, eyeglasses, batteries, and exposed files in the nature of exposed camera film; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric wires, electric switches, electrolysis apparatus for electroplating purposes, and electrified fences, namely, electric fences; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers and blank recordable optical discs, namely, CD-R, CD-RW, DVD-R and DVD-RW discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; software for processing electronic payments to and from others; authentication software, namely, software for authenticating the identity of a payer; computer software applications for mobile devices and computers, namely, software for financial analysis, planning and management, software for securing and protecting data on mobile devices and computers, software for authenticating user identification, software for controlling access to and communications with mobile devices and computers; software applications for use with mobile devices, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of shopping, purchasing, communication, product and service reviews, entertainment, health and fitness, lifestyle, media and video, music and audio, photography and social network; computer software that may be downloaded from a global computer network for posting information, creating electronic product catalogs, responding to requests and placing and fulfilling orders for products, services and business opportunities via local and global computer networks, for use in document management, for searching, browsing and receiving transmissions of text, electronic documents, graphics and audiovisual information on local and remote area networks and global computer networks, on intranets, or on directories of information available on computer networks, for use in software development and web authoring, for use in exchanging information via global computer networks and online from a computer database and the internet, for business use for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances, and marketing information management, for data mining, for high-speed massive e-commerce data processing, and for data customization, all of the foregoing for use by third parties in connection with an interactive website in the field of e-commerce; downloadable computer software applications for use with mobile devices and computers, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of e-commerce, data management, customer relationship management, entertainment, education and telecommunications provided via the Internet; on-line downloadable electronic publications in the nature of magazines, articles, brochures, leaflets, datasheets, informational materials, instructional materials in the field of business, e-commerce, information technology, cloud computing, telecommunications, the Internet, business and e-commerce training, business, sales, marketing and financial management; instant messaging software; file sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless and telecommunication networks; computer software for processing images, graphics, audio, video and text; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable cloud-computing software for deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for accessing, viewing and controlling remote computers and computer networks; computer software for use in the search and retrieval of computerized information from global information networks and network systems about hobbies, collectibles, auctions and products; data storage programs, namely, software used for the storage of electronic data and documents and data on hard discs, compact discs, tapes and optical discs; computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal portable media players; mobile telephones; smart phones; digital cameras; battery chargers; computer workstations comprising computers and computer monitors; servers, namely, computer servers; computer and telecommunications networking computer hardware; computer network adaptors, switches, routers, hubs; wireless and wired modems and communication cards and devices, namely, cable modems, computer fax modem cards, external modems, internal modems, modem cables, modems; laptop holders in the nature of protective sleeves and carrying cases, computer bags; fire-extinguishing apparatus; computer hardware and firmware for use in the field of business for financial management and financial planning; downloadable computer software for use in the field of business for financial management and financial planning; computer software for use with global positioning system (GPS) navigation systems for navigation, route guidance and electronic mapping; downloadable computer software for use in the field of business for financial management and financial planning; computer software for use with route planners, electronic maps and digital dictionaries for navigation and translation purposes; satellite-aided navigation systems in the nature of automobile navigation system featuring interactive digital map displays, interactive instructions and user generated information; compact discs featuring music; computer programs and computer software for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances and marketing information management, all in the field of e-commerce and business; digital music downloadable from the Internet; telecommunications apparatus, namely, VOIP phones, network telephones, electronic facsimile machines, portable digital electronic device for sending and receiving electronic mails, and instant messaging communication tool in the nature of portable telecommunication instant messaging devices; mouse pads; mobile phone handsets; mobile phone accessories, namely, battery chargers, cases, covers, ear phones, headsets and hands-free calling devices; downloadable computer game software, pictures in the field of aircrafts, automobiles, buildings, natural scenery and pets, motion pictures and movies in the field of children's entertainment, family entertainment, drama, action, adventure and fantasy and music via the internet and wireless devices; alarm monitoring systems; security cameras; mobile radio and television broadcasting units, namely, transmitting and receiving apparatus for radio and television broadcasting and for long-distance transmission; television broadcasting equipment, namely, video cameras, film cameras, monitors, flat panel display screens, audio monitors, audio recorders, video recorders, electronic switchers, cables for the transmission of sounds and images, lights for use with video cameras and film cameras, camera lenses, camera tripods, camera cases, blank videotape, audio mixing boards and video editing computer hardware; cameras; video cameras; headphones; ear pieces, namely, ear buds; speakers, namely, loud speakers; global positioning system (GPS) apparatus and equipment, namely, GPS systems; downloadable computer, electronic and video games programs and software via the Internet; liquid crystal displays for telecommunications and electronic equipment; set top box; remote control for radios, televisions, stereos, computers, video recorders, audio systems and playback machines; spectacles and sunglasses; electronic digital signboards; magnetically encoded bank credit, debit, cash and identification cards; electronic signboards; automatic teller machines, cash dispensers; electronic book readersClass 009 for Scientific, nautical, photographic, optical, signaling, measuring, checking as in supervision, life-saving apparatus and instruments, namely, telephones, punch clocks, time recording devices in the nature of time clocks, weighing equipment in the nature of scales and balances, graduated rulers, electronic pocket translators, neon signs, electronic notice boards, transparency projection apparatus, kilometer recorders in the nature of odometers for vehicles, telescopes, mechanisms for counter operated apparatus in the nature of point-of-sale terminals, fire extinguishers, acoustic alarms in the name of smoke and fire alarms, eyeglasses, batteries, and exposed files in the nature of exposed camera film; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electric wires, electric switches, electrolysis apparatus for electroplating purposes, and electrified fences, namely, electric fences; apparatus for recording, transmission or reproduction of sound or images; blank magnetic data carriers and blank recordable optical discs, namely, CD-R, CD-RW, DVD-R and DVD-RW discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; software for processing electronic payments to and from others; authentication software, namely, software for authenticating the identity of a payer; computer software applications for mobile devices and computers, namely, software for financial analysis, planning and management, software for securing and protecting data on mobile devices and computers, software for authenticating user identification, software for controlling access to and communications with mobile devices and computers; software applications for use with mobile devices, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of shopping, purchasing, communication, product and service reviews, entertainment, health and fitness, lifestyle, media and video, music and audio, photography and social network; computer software that may be downloaded from a global computer network for posting information, creating electronic product catalogs, responding to requests and placing and fulfilling orders for products, services and business opportunities via local and global computer networks, for use in document management, for searching, browsing and receiving transmissions of text, electronic documents, graphics and audiovisual information on local and remote area networks and global computer networks, on intranets, or on directories of information available on computer networks, for use in software development and web authoring, for use in exchanging information via global computer networks and online from a computer database and the internet, for business use for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances, and marketing information management, for data mining, for high-speed massive e-commerce data processing, and for data customization, all of the foregoing for use by third parties in connection with an interactive website in the field of e-commerce; downloadable computer software applications for use with mobile devices and computers, namely, software for use in database management, for use as a spreadsheet, for word processing, for recording, collecting, organizing, storing, archiving, reproducing, searching, retrieving and displaying digital data in the field of e-commerce, data management, customer relationship management, entertainment, education and telecommunications provided via the Internet; on-line downloadable electronic publications in the nature of magazines, articles, brochures, leaflets, datasheets, informational materials, instructional materials in the field of business, e-commerce, information technology, cloud computing, telecommunications, the Internet, business and e-commerce training, business, sales, marketing and financial management; instant messaging software; file sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless and telecommunication networks; computer software for processing images, graphics, audio, video and text; downloadable computer software applications for downloading and transmitting video files, audio files, films, movies and television programs featuring children's entertainment, family entertainment, drama, action, adventure and fantasy; downloadable cloud-computing software for deploying virtual machines to a cloud computing platform, managing virtual machines on a cloud computing platform; downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for accessing, viewing and controlling remote computers and computer networks; computer software for use in the search and retrieval of computerized information from global information networks and network systems about hobbies, collectibles, auctions and products; data storage programs, namely, software used for the storage of electronic data and documents and data on hard discs, compact discs, tapes and optical discs; computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal portable media players; mobile telephones; smart phones; digital cameras; battery chargers; computer workstations comprising computers and computer monitors; servers, namely, computer servers; computer and telecommunications networking computer hardware; computer network adaptors, switches, routers, hubs; wireless and wired modems and communication cards and devices, namely, cable modems, computer fax modem cards, external modems, internal modems, modem cables, modems; laptop holders in the nature of protective sleeves and carrying cases, computer bags; fire-extinguishing apparatus; computer hardware and firmware for use in the field of business for financial management and financial planning; downloadable computer software for use in the field of business for financial management and financial planning; computer software for use with global positioning system (GPS) navigation systems for navigation, route guidance and electronic mapping; computer software for use with route planners, electronic maps and digital dictionaries for navigation and translation purposes; satellite-aided navigation systems in the nature of automobile navigation system featuring interactive digital map displays, interactive instructions and user generated information; compact discs featuring music; computer programs and computer software for financial management, financial planning, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of personal and business finances and marketing information management, all in the field of e-commerce and business; digital music downloadable from the Internet; telecommunications apparatus, namely, VOIP phones, network telephones, electronic facsimile machines, portable digital electronic device for sending and receiving electronic mails, and instant messaging communication tool in the nature of portable telecommunication instant messaging devices; mouse pads; mobile phone handsets; mobile phone accessories, namely, battery chargers, cases, covers, ear phones, headsets and hands-free calling devices; downloadable computer game software, pictures in the field of aircrafts, automobiles, buildings, natural scenery and pets, motion pictures and movies in the field of children's entertainment, family entertainment, drama, action, adventure and fantasy and music via the internet and wireless devices; alarm monitoring systems; security cameras; mobile radio and television broadcasting units, namely, transmitting and receiving apparatus for radio and television broadcasting and for long-distance transmission; television broadcasting equipment, namely, video cameras, film cameras, monitors, flat panel display screens, audio monitors, audio recorders, video recorders, electronic switchers, cables for the transmission of sounds and images, lights for use with video cameras and film cameras, camera lenses, camera tripods, camera cases, blank videotape, audio mixing boards and video editing computer hardware; cameras; video cameras; headphones; ear pieces, namely, ear buds; speakers, namely, loud speakers; global positioning system (GPS) apparatus and equipment, namely, GPS systems; downloadable computer, electronic and video games programs and software via the Internet; liquid crystal displays for telecommunications and electronic equipment; set top box; remote control for radios, televisions, stereos, computers, video recorders, audio systems and playback machines; spectacles and sunglasses; electronic digital signboards; magnetically encoded bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; electronic book readers
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Hong Kong registration number 304747177 registered 05/24/2019 with a renewal date of __________ and an expiration date of 11/25/2028 ], 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:

Current:
Class 042 for Scientific and technological services, namely, research and design in the field of telecommunication software and hardware design, Internet technology, the design of websites for advertising, software design, and e-commerce software and hardware design, and industrial research and analysis services in the field of e-commerce computer software networking systems; industrial research services in the field of business and e-commerce; scientific, technological, research and design services related to telecommunication and navigation signals; design and development of computer hardware and software; software as a service (SaaS) services featuring software for monitoring and management of computer-based information systems and networks; software as a service (SaaS) services featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; providing temporary use of on-line non-downloadable cloud computing software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; cloud computing featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management; providing temporary use of on-line non-downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; providing virtual computer systems and virtual computer environments through cloud computing; computer services, namely, design and development of computer systems for transmitting information, data, documents and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services featuring software for web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; providing technical support services, namely, providing backup computer programs and facilities, troubleshooting of computer software problems to end users by means of telephone or global computer network; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; computer technology advice provided to Internet users by means of a support hotline; computer services, namely, creating indexes of information, sites and resources on computer networks; providing search engines for the Internet; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players for others; design of mobile telephones and smart phone for others; design of digital cameras for others; computer services, namely, computer system administration for others; computer programming; computer systems integration services; computer systems analysis services; computer programming in relation to the defense against virus, namely, computer virus protection services; computer system software services, namely, design and development of online computer software systems; providing direct connection services between computer users for exchanging data, namely, providing temporary use of online non-downloadable software for the exchange of data; computer software design; computer system design; design and development of webpages for others; hosting webpages for others; hosting computer application software for others for use in searching and retrieving information from databases and computer networks; computer software consultancy; computer services, namely, providing customized searching services in the nature of searching and retrieving information from computer databases and websites at the customer's specific request via the Internet, creating, maintaining and hosting websites for others, creating an online community for registered users to develop and collaborate on address books and calendars, software design and development for others, hosting online interactive public calendars, address books and notes that allow multiple participants to share event schedules, facility reservations and transportation requests via local and global computer network; customized searching of computer databases and websites, namely, providing customized online web pages featuring user-defined information which includes online links to third party web sites; customized searching of computer databases and websites, namely, providing search engines for obtaining data from computer files on a global computer network; computer coding and decoding conversion for others; computer code conversion for others; conversion of physical data and documents into electronic media format; testing and evaluation services of the goods and services of others to assure compliance with industry standards; architectural design services; interior design services of buildings, offices and apartments; computer security services, namely, the provision of user certification authority services for others to ensure the security of transmitted information, namely, providing a website that features technology that enables the secure exchange of information by users; providing technological information about computers and computer networks in the field of business and e-commerce; computer security risk management programs, namely, updating of computer software relating to computer security and prevention of computer risks; computer security information, knowledge and testing services, namely, computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; providing quality assurance services in the field of computer software; computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; providing platform as a service (PAAS) services, namely, providing web-based computer software platform for complaint submission; computer consultancy in the field of data security; consultancy concerning securing telecommunications technology; electronic document and e-mail authentication services; computerized communication network security services, namely, providing temporary use of non-downloadable computer software for conducting private and secure electronic communication over a private or public computer network; providing technological information in the field of Internet, the world wide web, and computerized communication network security; computer security consultancy, namely, consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services; authentication in the field of computer security, namely, authentication of user identity for computer security; computer services in relation to on-line authentication of electronic signatures, namely, design, development, and implementation of software for authenticating digital signatures; off-site data backup; electronic data storage, namely, archiving business documents, personal documents and corporate documents; providing information on computer technology and programming via a web site; cartography services; rental of entertainment software; consultancy, information and advisory services relating to the aforesaid services
Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Hong Kong registration number 304747177 registered 05/24/2019 with a renewal date of __________ and an expiration date of 11/25/2028 ], 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: Scientific and technological services, namely, research and design in the field of telecommunication software and hardware design, Internet technology, the design of websites for advertising, software design, and e-commerce software and hardware design, and industrial research and analysis services in the field of e-commerce computer software networking systems; industrial research services in the field of business and e-commerce; scientific, technological, research and design services related to telecommunication and navigation signals; scientific and technological services, namely, research and design in the field of computer networking hardware related to telecommunication and navigation signals; design and development of computer hardware and software; software as a service (SaaS) services featuring software for monitoring and management of computer-based information systems and networks; software as a service (SaaS) services featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; providing temporary use of on-line non-downloadable cloud computing software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; cloud computing featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management; providing temporary use of on-line non-downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; providing virtual computer systems and virtual computer environments through cloud computing; computer services, namely, design and development of computer systems for transmitting information, data, documents and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services featuring software for web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; providing technical support services, namely, providing backup computer programs and facilities, troubleshooting of computer software problems to end users by means of telephone or global computer network; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; computer technology advice provided to Internet users by means of a support hotline; computer services, namely, creating indexes of information, sites and resources on computer networks; providing search engines for the Internet; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players for others; design of mobile telephones and smart phone for others; design of digital cameras for others; computer services, namely, computer system administration for others; computer programming; computer systems integration services; computer systems analysis services; computer programming in relation to the defense against virus, namely, computer virus protection services; computer system software services, namely, design and development of online computer software systems; providing direct connection services between computer users for exchanging data, namely, providing temporary use of online non-downloadable software for the exchange of data; computer software design; computer system design; design and development of webpages for others; hosting webpages for others; hosting computer application software for others for use in searching and retrieving information from databases and computer networks; computer software consultancy; computer services, namely, providing customized searching services in the nature of searching and retrieving information from computer databases and websites at the customer's specific request via the Internet, creating, maintaining and hosting websites for others, creating an online community for registered users to develop and collaborate on address books and calendars, software design and development for others, hosting online interactive public calendars, address books and notes that allow multiple participants to share event schedules, facility reservations and transportation requests via local and global computer network; customized searching of computer databases and websites, namely, providing customized online web pages featuring user-defined information which includes online links to third party web sites; customized searching of computer databases and websites, namely, providing search engines for obtaining data from computer files on a global computer network; computer coding and decoding conversion for others; computer code conversion for others; conversion of physical data and documents into electronic media format; testing and evaluation services of the goods and services of others to assure compliance with industry standards; architectural design services; interior design services of buildings, offices and apartments; computer security services, namely, the provision of user certification authority services for others to ensure the security of transmitted information, namely, providing a website that features technology that enables the secure exchange of information by users; providing technological information about computers and computer networks in the field of business and e-commerce; computer security risk management programs, namely, updating of computer software relating to computer security and prevention of computer risks; computer security information, knowledge and testing services, namely, computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; providing quality assurance services in the field of computer software; computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; providing platform as a service (PAAS) services, namely, providing web-based computer software platform for complaint submission; computer consultancy in the field of data security; consultancy concerning securing telecommunications technology; electronic document and e-mail authentication services; computerized communication network security services, namely, providing temporary use of non-downloadable computer software for conducting private and secure electronic communication over a private or public computer network; providing technological information in the field of Internet, the world wide web, and computerized communication network security; computer security consultancy, namely, consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services; authentication in the field of computer security, namely, authentication of user identity for computer security; computer services in relation to on-line authentication of electronic signatures, namely, design, development, and implementation of software for authenticating digital signatures; off-site data backup; electronic data storage, namely, archiving business documents, personal documents and corporate documents; providing information on computer technology and programming via a web site; cartography services; rental of entertainment software; rental of application software; consultancy, information and advisory services relating to the aforesaid servicesClass 042 for Scientific and technological services, namely, research and design in the field of telecommunication software and hardware design, Internet technology, the design of websites for advertising, software design, and e-commerce software and hardware design, and industrial research and analysis services in the field of e-commerce computer software networking systems; industrial research services in the field of business and e-commerce; scientific and technological services, namely, research and design in the field of computer networking hardware related to telecommunication and navigation signals; design and development of computer hardware and software; software as a service (SaaS) services featuring software for monitoring and management of computer-based information systems and networks; software as a service (SaaS) services featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; providing temporary use of on-line non-downloadable cloud computing software for database management, data analysis, document management, document analysis, project management, project planning, budget management and electronic storage of data; cloud computing featuring software for database management, data analysis, document management, document analysis, project management, project planning, budget management; providing temporary use of on-line non-downloadable cloud-based software for storing and managing electronic data, accessing databases and internet security; providing virtual computer systems and virtual computer environments through cloud computing; computer services, namely, design and development of computer systems for transmitting information, data, documents and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services featuring software for web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; providing technical support services, namely, providing backup computer programs and facilities, troubleshooting of computer software problems to end users by means of telephone or global computer network; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities, and engage in social networking; computer technology advice provided to Internet users by means of a support hotline; computer services, namely, creating indexes of information, sites and resources on computer networks; providing search engines for the Internet; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players for others; design of mobile telephones and smart phone for others; design of digital cameras for others; computer services, namely, computer system administration for others; computer programming; computer systems integration services; computer systems analysis services; computer programming in relation to the defense against virus, namely, computer virus protection services; computer system software services, namely, design and development of online computer software systems; providing direct connection services between computer users for exchanging data, namely, providing temporary use of online non-downloadable software for the exchange of data; computer software design; computer system design; design and development of webpages for others; hosting webpages for others; hosting computer application software for others for use in searching and retrieving information from databases and computer networks; computer software consultancy; computer services, namely, providing customized searching services in the nature of searching and retrieving information from computer databases and websites at the customer's specific request via the Internet, creating, maintaining and hosting websites for others, creating an online community for registered users to develop and collaborate on address books and calendars, software design and development for others, hosting online interactive public calendars, address books and notes that allow multiple participants to share event schedules, facility reservations and transportation requests via local and global computer network; customized searching of computer databases and websites, namely, providing customized online web pages featuring user-defined information which includes online links to third party web sites; customized searching of computer databases and websites, namely, providing search engines for obtaining data from computer files on a global computer network; computer coding and decoding conversion for others; computer code conversion for others; conversion of physical data and documents into electronic media format; testing and evaluation services of the goods and services of others to assure compliance with industry standards; architectural design services; interior design services of buildings, offices and apartments; computer security services, namely, the provision of user certification authority services for others to ensure the security of transmitted information, namely, providing a website that features technology that enables the secure exchange of information by users; providing technological information about computers and computer networks in the field of business and e-commerce; computer security risk management programs, namely, updating of computer software relating to computer security and prevention of computer risks; computer security information, knowledge and testing services, namely, computer security consultancy in the field of scanning and penetration testing of computers and networks to assess information security vulnerability; providing quality assurance services in the field of computer software; computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; providing platform as a service (PAAS) services, namely, providing web-based computer software platform for complaint submission; computer consultancy in the field of data security; consultancy concerning securing telecommunications technology; electronic document and e-mail authentication services; computerized communication network security services, namely, providing temporary use of non-downloadable computer software for conducting private and secure electronic communication over a private or public computer network; providing technological information in the field of Internet, the world wide web, and computerized communication network security; computer security consultancy, namely, consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services; authentication in the field of computer security, namely, authentication of user identity for computer security; computer services in relation to on-line authentication of electronic signatures, namely, design, development, and implementation of software for authenticating digital signatures; off-site data backup; electronic data storage, namely, archiving business documents, personal documents and corporate documents; providing information on computer technology and programming via a web site; cartography services; rental of application software; consultancy, information and advisory services relating to the aforesaid services
Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Hong Kong registration number 304747177 registered 05/24/2019 with a renewal date of __________ and an expiration date of 11/25/2028 ], 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.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Alibaba Group Holding Limited, a corporation of Cayman Islands, having an address of

            P.O. Box 847, George Town      Fourth Floor, One Capital Place
      Grand Cayman,
      Cayman Islands

Proposed: Alibaba Group Holding Limited, a corporation of Cayman Islands, having an address of
      P.O. Box 847, George Town
      Fourth Floor, One Capital Place
      Grand Cayman,
      Cayman Islands
      Email Address: XXXX

The owner's/holder's current attorney information: Jeffrey L. Costellia. Jeffrey L. Costellia of NIXON PEABODY LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      799 9TH STREET, NW, SUITE 500
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 074619-198.
      The phone number is 202-585-8000.
      The fax number is 202-585-8080.
      The email address is nptm@nixonpeabody.com

The owner's/holder's proposed attorney information: Jeffrey L. Costellia. Other appointed attorneys are David L. Mey, Lauren J. Anrold, Alexis P. Grilli, Jennette W. Psihoules. Jeffrey L. Costellia of NIXON PEABODY 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

      799 9TH STREET, NW, SUITE 500
      WASHINGTON, District of Columbia 20001
      United States
The docket/reference number is 074619-198.
      The phone number is 202-585-8000.
      The fax number is 202-585-8080.
      The email address is jcostellia@nixonpeabody.com

Jeffrey L. Costellia 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):
      Jeffrey L. Costellia
      PRIMARY EMAIL FOR CORRESPONDENCE: nptm@nixonpeabody.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 074619-198.
Correspondence Information (proposed):
      Jeffrey L. Costellia
      PRIMARY EMAIL FOR CORRESPONDENCE: jcostellia@nixonpeabody.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): larnold@nixonpeabody.om

The docket/reference number is 074619-198.

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)
Response Signature
Signature: /Alexis P Grilli/     Date: 02/17/2020
Signatory's Name: Alexis P. Grilli
Signatory's Position: Attorey of Record, VA Bar Memeber

Signatory's Phone Number: 202-585-8404

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:    Jeffrey L. Costellia
   NIXON PEABODY LLP
   
   799 9TH STREET, NW, SUITE 500
   WASHINGTON, District of Columbia 20001
Mailing Address:    Jeffrey L. Costellia
   NIXON PEABODY LLP
   799 9TH STREET, NW, SUITE 500
   WASHINGTON, District of Columbia 20001
        
Serial Number: 88213990
Internet Transmission Date: Tue Feb 18 10:57:35 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202002181057351
88063-88213990-7104a635d314b79a2d2bfd7fb
791ebf5706261ccce6b3330699c55371037dff0-
N/A-N/A-20200217101335431865