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)

---

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. 88274599 CROWN STERLING(Standard Characters, see http://uspto.report/TM/88274599/mark.png) has been amended as follows:

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

The office action dated April 7, 2019 identified Reg. No. 4813197 as the basis for a Section 2(d) Refusal. However, an assignment was recently recorded with the USPTO, and as a result, Applicant is the owner of the cited registration. On this basis, Applicant contends that the Refusal under Section 2(d) is moot.

EVIDENCE
Evidence in the nature of Notice of Recordation has been attached.
Original PDF file:
evi_19234252130-20190501154720257303_._S3750_Notice_of_Recordation__S3750.82203US01_.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for software for data security and encryption; software for use in cryptography; software for use in identity and access management; software for use in authentication and digital signatures; software for use in cryptography key generation, distribution and management; software for the creation, development and maintenance of blockchain and cryptocurrencies
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: software for data security and encryption; software for use in cryptography; software for the decryption and encryption of electronic data in the field of cryptography; software for use in identity and access management; software for use in authentication and digital signatures; software for use in cryptography key generation, distribution and management; software for the creation, development and maintenance of blockchain and cryptocurrenciesClass 009 for software for data security and encryption; software for the decryption and encryption of electronic data in the field of cryptography; software for use in identity and access management; software for use in authentication and digital signatures; software for use in cryptography key generation, distribution and management; software for the creation, development and maintenance of blockchain and cryptocurrencies
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Software as a service (SAAS) services featuring software for data security and encryption; Software as a service (SAAS) services featuring software for use in cryptography; Software as a service (SAAS) services featuring software for use in identity and access management; Software as a service (SAAS) services featuring software for use in authentication and digital signatures; Software as a service (SAAS) services featuring software for use in cryptography key generation, distribution and management; Software as a service (SAAS) services featuring software for the creation, development and maintenance of blockchain and cryptocurrencies
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Software as a service (SAAS) services featuring software for data security and encryption; Software as a service (SAAS) services featuring software for use in cryptography; Software as a service (SAAS) services featuring software for the decryption and encryption of electronic data in the field of cryptography; Software as a service (SAAS) services featuring software for use in identity and access management; Software as a service (SAAS) services featuring software for use in authentication and digital signatures; Software as a service (SAAS) services featuring software for use in cryptography key generation, distribution and management; Software as a service (SAAS) services featuring software for the creation, development and maintenance of blockchain and cryptocurrenciesClass 042 for Software as a service (SAAS) services featuring software for data security and encryption; Software as a service (SAAS) services featuring software for the decryption and encryption of electronic data in the field of cryptography; Software as a service (SAAS) services featuring software for use in identity and access management; Software as a service (SAAS) services featuring software for use in authentication and digital signatures; Software as a service (SAAS) services featuring software for use in cryptography key generation, distribution and management; Software as a service (SAAS) services featuring software for the creation, development and maintenance of blockchain and cryptocurrencies
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: CROWN STERLING LIMITED LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      4040 MacArthur Blvd., Suite 200
      Newport Beach, California 92660
      United States

Proposed: CROWN STERLING LIMITED LLC, a limited liability company legally organized under the laws of Delaware, having an address of
      4040 MacArthur Blvd., Suite 310
      Newport Beach, California 92660
      United States

SIGNATURE(S)
Response Signature
Signature: /Rachel Jacques/     Date: 05/01/2019
Signatory's Name: Rachel Jacques
Signatory's Position: Attorney of Record, Utah Bar Member

Signatory's Phone Number: 4352521360

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; 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. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88274599
Internet Transmission Date: Wed May 01 16:01:50 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-201905011601506
71603-88274599-62007c4414635f16c21a767c3
085915a1b2daac13140c72fb349c36b3bcd6cbe1
-N/A-N/A-20190501154720257303