Trademark/Service Mark Application, Principal Register
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 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2021)
Trademark/Service Mark Application, Principal Register
The mark consists of standard characters, without claim to any particular font style, size, or color.
REGISTER
Principal
APPLICANT INFORMATION
*OWNER OF MARK
Pushpay IP Limited
*STREET
Level 6, 167 Victoria Street West
*CITY
Auckland
*COUNTRY
New Zealand
*ZIP/POSTAL CODE
(Required for U.S. and certain international addresses)
1010
LEGAL ENTITY INFORMATION
TYPE
limited company (ltd.)
STATE/COUNTRY WHERE LEGALLY ORGANIZED
New Zealand
GOODS AND/OR SERVICES AND BASIS INFORMATION
INTERNATIONAL CLASS
009
*IDENTIFICATION
Computers; Computer software for facilitating business transactions, namely, e-commerce software to allow users to perform electronic business
transactions via a global computer network; Computer software for use in business administration and management; Computer software for facilitating financial transactions; Computer software for use
in facilitating the payment or receipt of monetary and non-monetary contributions; Computer software for use in merchant processing services; Computer software for facilitating others to make
monetary contributions to others for charity; Computer software for facilitating others to contribute to religious institutions; Computer software for facilitating others to contribute to educational
institutions; Computer software for facilitating others to make charitable contributions; Computer software for facilitating financial transactions with government entities and government-regulated
entities; Computer software for use in processing electronic payments; Computer software for use in database management, use as a spreadsheet, and word processing; Computer software for computer
system and application development, deployment and management; Computer software for computer system and mobile application development, deployment and management; 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; 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; 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; Computer software for use in processing
tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; 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; 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; Computer software for event registration; Financial reconciliation software; Computer software
for customer relationship management; Computer software for facilitating video and audio broadcasts; Computer software for use in accessing downloadable MP3 files and MP3 recordings of podcasts in
the field of financial information; Computer software for use in promoting the activities and events of others; Computer software for providing information to others; Computer software for
facilitating the exchange of information; Computer software for facilitating communication between others; Computer software for promoting the goods and services of others; Computer software for
providing online education; Computer software for use in event registration and event management; Downloadable computer software for facilitating communication between others
FILING BASIS
SECTION 1(b)
INTERNATIONAL CLASS
035
*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; 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; Event registration for charitable fundraising purposes and
events; 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
FILING BASIS
SECTION 1(b)
INTERNATIONAL CLASS
036
*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; 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 payment and transaction processing services; Financial payment and financial transaction services in the form of credit card, debit card
loyalty program and 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
FILING BASIS
SECTION 1(b)
INTERNATIONAL CLASS
038
*IDENTIFICATION
Communication services in the nature of short message services (SMS), electronic transmission of push notifications and electronic
transmission of emails; Video broadcasting services over the Internet or other communication network
FILING BASIS
SECTION 1(b)
INTERNATIONAL CLASS
041
*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
FILING BASIS
SECTION 1(b)
INTERNATIONAL CLASS
042
*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; Computer services, namely, remote management of databases 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; Special event planning for business
purposes; 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 containing information in the field of customer services relationship management; Providing online non-downloadable computer software to facilitate communication between
others; Design, creation, hosting, maintenance of websites for others; Hosting the software, websites and other computer applications of others on a managed hosted environment 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 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
FILING BASIS
SECTION 1(b)
INTERNATIONAL CLASS
045
*IDENTIFICATION
Personal and social services rendered by others to meet the needs of individuals, namely, companionship services; Conducting religious prayer
services; Providing religious counseling services
FILING BASIS
SECTION 1(b)
ATTORNEY INFORMATION
NAME
David L. May
ATTORNEY DOCKET NUMBER
069066-112
FIRM NAME
Nixon Peabody LLP
STREET
799 9th Street NW, Suite 500
CITY
Washington
STATE
District of Columbia
COUNTRY
United States
ZIP/POSTAL CODE
20001
PHONE
202-585-8000
FAX
202-585-8080
EMAIL ADDRESS
nptm@nixonpeabody.com
AUTHORIZED TO COMMUNICATE VIA EMAIL
Yes
OTHER APPOINTED ATTORNEY
Jeffrey L. Costellia, Lauren J. Arnold, Jennette E. Wiser, Alexis P. Grilli
CORRESPONDENCE INFORMATION
NAME
David L. May
FIRM NAME
Nixon Peabody LLP
STREET
799 9th Street NW, Suite 500
CITY
Washington
STATE
District of Columbia
COUNTRY
United States
ZIP/POSTAL CODE
20001
PHONE
202-585-8000
FAX
202-585-8080
*EMAIL ADDRESS
nptm@nixonpeabody.com
*AUTHORIZED TO COMMUNICATE VIA EMAIL
Yes
FEE INFORMATION
APPLICATION FILING OPTION
TEAS RF
NUMBER OF CLASSES
7
APPLICATION FOR REGISTRATION PER CLASS
275
*TOTAL FEE DUE
1925
*TOTAL FEE PAID
1925
SIGNATURE INFORMATION
SIGNATURE
/Donald Alsbury/
SIGNATORY'S NAME
Donald Alsbury
SIGNATORY'S POSITION
In-house Legal Counsel
SIGNATORY'S PHONE NUMBER
4255777195
DATE SIGNED
12/12/2018
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 1478 (Rev 09/2006)
OMB No. 0651-0009 (Exp 02/28/2021)
Trademark/Service Mark Application, Principal Register
Serial Number:88226634
Filing Date:12/12/2018
To the Commissioner for Trademarks:
MARK: ASSURED (Standard Characters, see mark)
The literal element of the mark consists of ASSURED.
The mark consists of standard characters, without claim to any particular font style, size, or color.
The applicant, Pushpay IP Limited, a limited company (ltd.) legally organized under the laws of New Zealand, having an address of
Level 6, 167 Victoria Street West
Auckland 1010
New Zealand
requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C.
Section 1051 et seq.), as amended, for the following:
International Class 009: Computers; Computer software for facilitating business transactions, namely, e-commerce software to allow users to perform
electronic business transactions via a global computer network; Computer software for use in business administration and management; Computer software for facilitating financial transactions;
Computer software for use in facilitating the payment or receipt of monetary and non-monetary contributions; Computer software for use in merchant processing services; Computer software for
facilitating others to make monetary contributions to others for charity; Computer software for facilitating others to contribute to religious institutions; Computer software for facilitating others
to contribute to educational institutions; Computer software for facilitating others to make charitable contributions; Computer software for facilitating financial transactions with government
entities and government-regulated entities; Computer software for use in processing electronic payments; Computer software for use in database management, use as a spreadsheet, and word processing;
Computer software for computer system and application development, deployment and management; Computer software for computer system and mobile application development, deployment and management;
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; 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; 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; Computer software for use in processing tithing payments for churches, compiling and generating reports comprised of information and analysis about church collection activity; 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; 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; Computer software for event registration;
Financial reconciliation software; Computer software for customer relationship management; Computer software for facilitating video and audio broadcasts; Computer software for use in accessing
downloadable MP3 files and MP3 recordings of podcasts in the field of financial information; Computer software for use in promoting the activities and events of others; Computer software for
providing information to others; Computer software for facilitating the exchange of information; Computer software for facilitating communication between others; Computer software for promoting the
goods and services of others; Computer software for providing online education; Computer software for use in event registration and event management; Downloadable computer software for facilitating
communication between others
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.
International Class 035: 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; 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; Event registration for charitable fundraising
purposes and events; 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
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.
International Class 036: 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; 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 payment and transaction processing services; Financial payment and financial transaction services in the form of credit card, debit card
loyalty program and 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
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.
International Class 038: Communication services in the nature of short message services (SMS), electronic transmission of push notifications and electronic
transmission of emails; Video broadcasting services over the Internet or other communication network
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.
International Class 041: 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
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.
International Class 042: 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; Computer services, namely, remote management of databases 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; Special event planning for business
purposes; 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 containing information in the field of customer services relationship management; Providing online non-downloadable computer software to facilitate communication between
others; Design, creation, hosting, maintenance of websites for others; Hosting the software, websites and other computer applications of others on a managed hosted environment 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 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
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.
International Class 045: Personal and social services rendered by others to meet the needs of individuals, namely, companionship services; Conducting
religious prayer services; Providing religious counseling services
Intent to Use: The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services.
The applicant's current Attorney Information:
David L. May and Jeffrey L. Costellia, Lauren J. Arnold, Jennette E. Wiser, Alexis P. Grilli of Nixon Peabody LLP 799 9th Street
NW, Suite 500
Washington, District of Columbia 20001
United States
202-585-8000(phone)
202-585-8080(fax)
nptm@nixonpeabody.com (authorized)
The attorney docket/reference number is 069066-112.
The applicant's current Correspondence Information:
David L. May
Nixon Peabody LLP
799 9th Street NW, Suite 500
Washington, District of Columbia 20001
202-585-8000(phone)
202-585-8080(fax)
nptm@nixonpeabody.com (authorized) E-mail Authorization: I authorize the USPTO to send e-mail correspondence concerning the application to the applicant, the applicant's attorney, or the applicant's domestic representative at
the e-mail address provided in this application. I understand that a valid e-mail address must be maintained and that the applicant or the applicant's attorney must file the relevant subsequent
application-related submissions via the Trademark Electronic Application System (TEAS). Failure to do so will result in the loss of TEAS Reduced Fee status and a requirement to submit an additional
processing fee of $125 per international class of goods/services.
A fee payment in the amount of $1925 has been submitted with the application, representing payment for 7 class(es).
Serial Number: 88226634
Internet Transmission Date: Wed Dec 12 14:36:42 EST 2018
TEAS Stamp: USPTO/BAS-XXX.XXX.XX.XXX-201812121436423
97584-88226634-6104e06deac182fa77b384ee8
0f62e2fe27d71a523944b2b7cb482a44c57b20fe
-DA-1000-20181207185922324852