Extension of Time to File SOU

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 1581 (Rev 09/2005)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 1581 (Rev 09/2005)

OMB No. 0651-0054 (Exp 12/31/2020)

SOU Extension Request
(15 U.S.C. Section 1051(d))

To the Commissioner for Trademarks:

MARK: ASSURED (see, http://uspto.report/TM/88226634/mark.png)
SERIAL NUMBER: 88226634

OWNER AND/OR ENTITY INFORMATION
The owner proposes to amend the following:
Current: Pushpay IP Limited, having an address of
      Level 6, 167 Victoria Street West
      Auckland, 1010
      New Zealand
Proposed: Pushpay IP Limited, having an address of
      Level 6, 167 Victoria Street West
      Auckland, 1010
      New Zealand
      Phone:
      Fax:
      Email: XXXX

The owner requests a six-month extension of time to file the Statement of Use under 37 C.F.R. Section 2.89 in this application.    The Notice of Allowance mailing date was 12/31/2019.

For International Class 009:
Current identification: Computers; Downloadable computer software for facilitating business transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Downloadable computer software for use in business administration and management; Downloadable computer software for facilitating financial transactions; Downloadable computer software for use in facilitating the payment or receipt of monetary and non-monetary contributions; Downloadable computer software for use in merchant processing services; Downloadable computer software for facilitating users to make monetary contributions to others for charity; Downloadable computer software for facilitating others to contribute to religious institutions; Downloadable computer software for facilitating others to contribute to educational institutions; Downloadable computer software for facilitating others to make charitable contributions; Downloadable computer software for facilitating the payment of taxes to government entities; Downloadable computer software for use in processing electronic payments; Downloadable computer software for use in database management, use as a spreadsheet, and for word processing; Downloadable computer software for computer system and application development, deployment and management; Downloadable computer software for computer system and mobile application development, deployment and management; Downloadable computer software for facilitating financial transactions, namely, e-commerce software to allow users to perform electronic business transactions via a global computer network; Apparatus for recording, transmission or reproduction of sound or images; Downloadable computer application software for mobile phones and handheld computing devices, namely, electronic financial platform software that accommodates multiple types of payment and debt transactions in an integrated mobile phone, PDA, and web based environment for use in payment processing and transactions, and software for use in payment transaction processing; Downloadable computer software for use in processing the exchange of monetary and non-monetary payments, and for compiling information and generating reports for business and tax purposes; Downloadable computer software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer application software for mobile phones, portable media players, handheld computers, tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer application software for mobile devices, namely, mobile phones and tablet computers, namely, software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; Downloadable computer software for event registration; Downloadable financial reconciliation software; Downloadable computer software for customer relationship management; Downloadable computer software that enables the streaming of video broadcasts on handheld computing devices; Downloadable computer software for use in accessing downloadable MP3 files and MP3 recordings of podcasts in the field of financial information; Downloadable computer software for use in posting advertisements for church fundraisers; Downloadable computer software for providing charitable fundraising information to others; Downloadable computer software for facilitating the exchange of up to date traffic information among users; Downloadable software for use in social networking; Downloadable computer software for promoting the goods and services of others by creating classified advertisements; Downloadable software for use in accessing online courses at a university; Downloadable computer software for use in event registration and event management

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 035:
Current identification: Advertising; Business management; Business administration; Office functions; Providing incentive award programs for customers through processing of debit card loyalty program points for on-line purchase transactions of a company's goods and services; Customer relationship management; Developing and managing the charitable giving programs of others; insurance and financial services, namely, financial record-keeping for insurance risk management; remote management of computer databases for others; Financial services, namely, providing an online computer website that provides commercial financial transaction data, account management, financial reporting, accounting features and related reference information; Facilitating the exchange of needed information for financial compensation via the Internet; Providing a website for managing, conducting and organizing online auctions that are designed to raise money for charities; Developing and managing the charitable programs of others; Promoting charitable giving that that reflects the core values of the donor by providing a method to identify the donor's core values and to select charities that foster those values; Association services, namely, promoting awareness of charitable giving; Event planning for businesses; On-line event registration for charitable fundraising purposes and events; On-line event registration for educational institutions; Marketing service, namely, promotional services in the field of planned-giving for non-profit and charitable organizations; Promoting the charitable giving of others, namely, tracking and publicizing charitable donations and random acts of kindness; business data analytic services in the nature of providing analysis of charitable giving data; Special event planning for business purposes; Event planning and management for marketing, branding, promoting or advertising the goods and services of others; Providing an online portal for event registration for fundraising events; Online portal for event registration for religious events in the nature of meetings; Online portal for event registration for educational events, cultural events, and social entertainment events. Computer services, namely, remote management of databases for others

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 036:
Current identification: Financial services, namely, merchant payment transaction processing services; Financial consulting services in the field of planned giving for non-profit and charitable organizations; Financial planning services, namely, developing and managing charitable giving programs on behalf of wealthy individuals or families; Providing on-line information in the field of charitable monetary giving; Financial services rendered in connection with the issuance, receipt and transfer of lines of credit, namely, credit processing services; Financial services, namely, providing electronic transfer of a virtual currency for use by members of an on-line community via a global computer network; Financial services, namely, business fundraising provided over a computer network such as the Internet and providing on-line stored value accounts in an electronic commerce environment; Financial affairs, namely, financial information, management and analysis services; Monetary affairs services in the form of monetary strategy consultation and research and monetary exchange operations; Financial and monetary affairs transaction management services, namely, providing secure commercial transaction services and payment options and providing an internet website portal in the field of financial transaction and payment processing services; Payment processing, namely, credit card and debit card transaction processing services; Online gift card payment and transaction processing services; Financial payment and financial transaction services in the form of credit card, debit card loyalty program and credit and debit card payment transaction processing services; Transaction services in the form of providing cash and other rebates for credit card use and debit card use as part of a customer credit card and debit card loyalty program; Financial transaction services, namely, providing secure commercial transactions and payment options; Financial transaction services, namely, providing secure commercial transactions and payment options using a mobile device at a point of sale; Merchant services, namely, payment transaction processing services; Providing financial data analysis for others, namely, compiling and analyzing church tithing collection statistics for financial purposes

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 038:
Current identification: Communication services in the nature of short message services (SMS); telecommunication services, namely, providing e-mail notification alerts via the internet; Video broadcasting services over the Internet or other communication network

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 041:
Current identification: Providing information on education provided on-line from a computer database or the internet; Production and distribution of videos in the field of finance and financial translations; Providing continuing business education courses; Education services, namely, providing tutorial sessions in the field of finance and financial translations; Education services, namely, providing live and on-line classes, seminars, workshops in the fields of finance and financial transactions, charitable giving, customer relationship management, business administration, business management, marketing, event planning and event registration; Providing religious instruction

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 042:
Current identification: Design and development of computer hardware and software; Providing a social networking website which features technology that enables users to give charitable financial gifts to others; Web site design and development for others; Computer software development for others; Computer software development for others, namely, custom development, deployment, and management of mobile application software for others; Software as a service (SAAS) services featuring data dashboards for use in monitoring and managing of church tithing collection operations; Software as a service (SAAS) services featuring data dashboards for use in customer relationship management, monitoring and managing of financial transactions, business administration, business management, marketing, event planning and event registration; Software as a service (SAAS) services featuring software for e-mail campaign management, and development and management of charitable donations and pledges; Software as a service (SAAS) services featuring software for use in customer services relationship management; Providing online non-downloadable computer software for use in social networking; Design, creation, hosting, maintenance of websites for others; Hosting the software, websites and other computer applications of others on a virtual private server in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Hosting, managing, developing and maintaining applications, software and websites of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management; Designing, creating, maintaining and hosting online electronic commerce websites for others; Design, creation, hosting and maintenance of internet sites for third parties; Application service provider (ASP), namely, hosting computer software applications of others in the fields of finance, financial transactions, payment transaction processing, marketing, event planning, registration, customer relationship management, education, business administration, business management, mobile engagement solutions, charitable fundraising, and e-mail campaign management

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


For International Class 045:
Current identification: Personal and social services rendered by others to meet the needs of individuals, namely, companionship services for church members and non-profit donors; Conducting religious prayer services; Providing religious counseling services

For a trademark/service mark: The applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all of the goods/services listed in the Notice of Allowance or as subsequently modified for this specific class; for a collective/certification mark: the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with the goods/services/collective membership organization listed in the Notice of Allowance, or as subsequently modified for this specific class.


This is the first extension request.

Correspondence Information (current):
      Sheila Fox Morrison
      PRIMARY EMAIL FOR CORRESPONDENCE: pdxtrademarks@dwt.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Correspondence Information (proposed):
      Sheila Fox Morrison
      PRIMARY EMAIL FOR CORRESPONDENCE: pdxtrademarks@dwt.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).





A fee payment in the amount of $875 will be submitted with the form, representing payment for 7 classes.


Declaration

STATEMENTS: The signatory believes that: the applicant has a continued bona fide intention, and is entitled, to use the mark in commerce on or in connection with all the goods/services under Section 1(b) in the notice of allowance or as subsequently modified, or, if applicable, the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce on or in connection with all the goods/services/collective membership organization under Section 1(b) in the notice of allowance or as subsequently modified; and that to the best of the signatory's knowledge and belief, no other persons, except, if applicable, members and 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.

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 resulting registration, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.


Signature: /Sheila F. Morrison/      Date Signed: 06/16/2020
Signatory's Name: Morrison, Sheila Fox
Signatory's Position: Attorney of Record, Oregon bar member
Signatory's Phone: 5032412300

RAM Sale Number: 88226634
RAM Accounting Date: 06/16/2020

Serial Number: 88226634
Internet Transmission Date: Tue Jun 16 11:46:55 ET 2020
TEAS Stamp: USPTO/ESU-XXX.XXX.XX.XX-2020061611465595
3322-88226634-710c7e23b5f895a9b2b67129f9
a2a1f66faa05ce47782cf97351ac924ed5a845d-
DA-46553141-20200615102826948987