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. 88226770 BLOCKCHAIN KEYSTORE(Standard Characters, see http://uspto.report/TM/88226770/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 009 for Smartphones; Downloadable computer software for use with mobile devices and smartphones, namely, software for the storage and management of private keys to authenticate blockchain transactions; Recorded computer software for use with mobile devices and smartphones, namely, software for the storage and management of private keys to authenticate blockchain transactions; Downloadable computer software platforms for blockchains, namely, public blockchain platforms for managing cryptocurrency transactions using blockchain technology, and to record transactions and execute smart contracts; Recorded computer software platforms for blockchains, namely, public blockchain platforms for managing cryptocurrency transactions using blockchain technology, and to record transactions and execute smart contracts; Downloadable software or software application in the field of blockchain technology, namely, for verifying and managing cryptocurrency transactions using blockchain technology, and for managing electronic asset exchange transactions; Recorded software or software application in the field of blockchain technology, namely, for verifying and managing cryptocurrency transactions using blockchain technology, and for managing electronic asset exchange transactions
Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 017997752 filed 12/10/2018]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 009 for Smartphones; Downloadable computer software for use with mobile devices and smartphones, namely, software for the storage and management of private keys to authenticate blockchain transactions; Recorded computer software for use with mobile devices and smartphones, namely, software for the storage and management of private keys to authenticate blockchain transactions; Downloadable computer software platforms for blockchains, namely, public blockchain platforms for managing cryptocurrency transactions using blockchain technology, and to record transactions and execute smart contracts; Recorded computer software platforms for blockchains, namely, public blockchain platforms for managing cryptocurrency transactions using blockchain technology, and to record transactions and execute smart contracts; Downloadable software or software application in the field of blockchain technology, namely, for verifying and managing cryptocurrency transactions using blockchain technology, and for managing electronic asset exchange transactions; Recorded software or software application in the field of blockchain technology, namely, for verifying and managing cryptocurrency transactions using blockchain technology, and for managing electronic asset exchange transactions
Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 017997752 filed 12/10/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Korea, South registration number 40-1528834 registered 10/07/2019 with a renewal date of __________ and an expiration date of 10/07/2029 ], 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.
Original PDF file:
FRU0-4517136138-122016735 _._To_submit_BlockChain_K R_cert_with_trans.pdf
Converted PDF file(s) ( 5 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3Foreign Registration-4Foreign Registration-5

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Samsung Electronics Co., Ltd., a corporation of Korea, South, having an address of
      129, Samsung-ro, Yeongtong-gu
      Suwon-si, Gyeonggi-do,
      Korea, South

Proposed: Samsung Electronics Co., Ltd., a corporation of Korea, South, having an address of
      129, Samsung-ro, Yeongtong-gu
      Suwon-si, Gyeonggi-do, 16677
      Korea, South
      Email Address: XXXX

ADDITIONAL STATEMENTS
Supplemental Register
The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental Register').


Miscellaneous Statement
Applicant is filing a copy of the corresponding Korean registration to satisfy the requirements of a Section 44(e) basis. The foreign registration that is the basis of the U.S. application under Section 44(e) includes a claim of standard characters or the country of origin's standard character equivalent


The owner's/holder's current attorney information: Diane J. Mason. Diane J. Mason of Drinker Biddle & Reath LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Four Embarcadero Center, 27th Floor
      San Francisco, California 94111
      United States
      The phone number is 4155917506.
      The email address is sftrademarks@dbr.com

The owner's/holder's proposed attorney information: Diane J. Mason. Diane J. Mason of Faegre Drinker Biddle & Reath LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      Four Embarcadero Center, 27th Floor
      San Francisco, California 94111
      United States
      The phone number is 4155917506.
      The email address is sftrademarks@faegredrinker.com

Diane J. Mason 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):
      Diane J. Mason
      PRIMARY EMAIL FOR CORRESPONDENCE: sftrademarks@dbr.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sftrademarks@dbr.com
Correspondence Information (proposed):
      Diane J. Mason
      PRIMARY EMAIL FOR CORRESPONDENCE: sftrademarks@faegredrinker.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): sftrademarks@faegredrinker.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /djm/      Date: 03/30/2020
Signatory's Name: Diane J. Mason
Signatory's Position: Attorney of Record, California Bar
Signatory's Phone Number: 4155917506


Response Signature
Signature: /djm/     Date: 03/30/2020
Signatory's Name: Diane J. Mason
Signatory's Position: Attorney of Record, California Bar

Signatory's Phone Number: 4155917506

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:    Diane J. Mason
   Drinker Biddle & Reath LLP
   
   Four Embarcadero Center, 27th Floor
   San Francisco, California 94111
Mailing Address:    Diane J. Mason
   Faegre Drinker Biddle & Reath LLP
   Four Embarcadero Center, 27th Floor
   San Francisco, California 94111
        
Serial Number: 88226770
Internet Transmission Date: Mon Mar 30 17:23:28 ET 2020
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2020033017232826
3874-88226770-710908d5c253c13a3f9f7cb3c8
31bfa0d25c19faad9bba75a24a9fafa7df3d4074
-N/A-N/A-20200330122016735953